II 

113TH CONGRESS 

1ST SESSION S. 1612 

To deter abusive patent litigation by targeting the economic incentives that 

fuel frivolous lawsuits. 

IN THE SENATE OF THE UNITED STATES 

OCTOBER 30, 2013 

Mr. HATCH introduced the following bill; which was read twice and referred 

to the Committee on the Judiciary 

A BILL 

To deter abusive patent litigation by targeting the economic 

incentives that fuel frivolous lawsuits. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 

4 (a) SHORT TITLE.—This Act may be cited as the 

5 ‘‘Patent Litigation Integrity Act of 2013’’. 

6 (b) TABLE OF CONTENTS.—The table of contents for 

7 this Act is as follows: 

Sec. 1. Short title; table of contents. 

TITLE I—MANDATORY FEE SHIFTING 

Sec. 101. Litigation and other expenses. 


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TITLE II—DISCRETIONARY BONDING 

Sec. 201. Motion for a bond. 

1 TITLE I—MANDATORY FEE 

2 SHIFTING 

3 SEC. 101. LITIGATION AND OTHER EXPENSES. 

4 (a) IN GENERAL.—Section 285 of title 35, United 

5 States Code, is amended to read as follows: 

6 ‘‘§ 285. Fees and other expenses 

7 ‘‘The court shall award to a prevailing party reason8 able fees and other expenses, including attorney fees, in9 curred by that party in connection with a civil action in 

10 which any party asserts a claim for relief arising under 

11 any Act of Congress relating to patents, unless the court 

12 finds that the position and conduct of the nonprevailing 

13 party or parties were substantially justified or that special 

14 circumstances make an award unjust.’’. 

15 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

16 The table of sections for chapter 29 of title 35, United 

17 States Code, is amended by striking the item relating to 

18 section 285 and inserting the following: 

‘‘285. Fees and other expenses.’’. 


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1 TITLE II—DISCRETIONARY 

2 BONDING 

3 SEC. 201. MOTION FOR A BOND. 

4 (a) IN GENERAL.—Chapter 29 of title 35, United 

5 States Code, is amended by inserting after section 285 the 

6 following: 

7 ‘‘§ 285A. Motion for a bond 

8 ‘‘(a) IN GENERAL.—The court, on motion by the de9 fendant or a respondent in a proceeding, may order the 

10 party alleging infringement to post a bond sufficient to 

11 ensure payment of the accused infringer’s reasonable fees 

12 and other expenses, including attorney fees. 

13 ‘‘(b) FACTORS TO BE CONSIDERED.—For purposes 

14 of this section, in determining whether a bond requirement 

15 would be unreasonable or unnecessary, the court shall con16 sider— 

17 ‘‘(1) whether the bond will burden the ability of 

18 the party alleging infringement to pursue activities 

19 unrelated to the assertion, acquisition, litigation, or 

20 licensing of any patent; 

21 ‘‘(2) whether the party alleging infringement 

22 is— 

23 ‘‘(A) an institution of higher education (as 

24 defined in section 101(a) of the Higher Edu25 cation Act of 1965 (20 U.S.C. 1001(a))); or 


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1 ‘‘(B) a non-profit technology transfer orga2 nization whose primary purpose is to facilitate 

3 the commercialization of technologies developed 

4 by one or more institutions of higher education; 

5 ‘‘(3) whether a licensee, who has an exclusive 

6 right under a patent held by an institution of higher 

7 education or a non-profit organization described in 

8 paragraph (2), conducts further research on or de9 velopment of the subject matter to make the subject 

10 matter more licensable; 

11 ‘‘(4) whether the party alleging infringement is 

12 a named inventor of or an original assignee to an as13 serted patent; 

14 ‘‘(5) whether the party alleging infringement 

15 makes or sells a product related to the subject mat16 ter described in an asserted patent; 

17 ‘‘(6) whether the party alleging infringement 

18 can demonstrate that it has and will have the ability 

19 to pay the accused infringer’s fees and other ex20 penses if ordered to do so; and 

21 ‘‘(7) whether any party will agree to pay the ac22 cused infringer’s shifted fees and other expenses, 

23 provided that the person or entity can demonstrate 

24 that it has and will have the ability to pay the ac25 cused infringer’s shifted fees and other expenses.’’. 


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1 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

2 The table of sections for chapter 29 of title 35, United 

3 States Code, as amended by section 101, is amended by 

4 inserting after the item relating to section 285 the fol5 lowing: 

‘‘285A. Motion for a bond.’’. 

Æ 


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