I 

116TH CONGRESS 

1ST SESSION H. R. 108 

To provide that certain bad faith communications in connection with the 

assertion of a United States patent are unfair or deceptive acts or 

practices, and for other purposes. 

IN THE HOUSE OF REPRESENTATIVES 

JANUARY 3, 2019 

Mr. BURGESS introduced the following bill; which was referred to the 

Committee on Energy and Commerce 

A BILL 

To provide that certain bad faith communications in connection with the assertion of a United States patent are 

unfair or deceptive acts or practices, and for other purposes. 

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. 

4 This Act may be cited as the ‘‘Targeting Rogue and 

5 Opaque Letters Act of 2019’’. 


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1 SEC. 2. UNFAIR OR DECEPTIVE ACTS OR PRACTICES IN 

2 CONNECTION WITH THE ASSERTION OF A 

3 UNITED STATES PATENT. 

4 (a) IN GENERAL.—It shall be an unfair or deceptive 

5 act or practice within the meaning of section 5(a)(1) of 

6 the Federal Trade Commission Act (15 U.S.C. 45(a)(1)) 

7 for a person, in connection with the assertion of a United 

8 States patent, to engage in a pattern or practice of send9 ing written communications that state or represent that 

10 the recipients are or may be infringing, or have or may 

11 have infringed, the patent and bear liability or owe com12 pensation to another, if— 

13 (1) the sender of the communications, in bad 

14 faith, states or represents in the communications 

15 that— 

16 (A) the sender is a person with the right 

17 to license or enforce the patent at the time the 

18 communications are sent, and the sender is not 

19 a person with such a right; 

20 (B) a civil action asserting a claim of in21 fringement of the patent has been filed against 

22 the recipient; 

23 (C) a civil action asserting a claim of in24 fringement of the patent has been filed against 

25 other persons; 


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1 (D) legal action for infringement of the 

2 patent will be taken against the recipient; 

3 (E) the sender is the exclusive licensee of 

4 the patent asserted in the communications; 

5 (F) persons other than the recipient pur6 chased a license for the patent asserted in the 

7 communications; 

8 (G) persons other than the recipient pur9 chased a license, and the sender does not dis10 close that such license is unrelated to the al11 leged infringement or the patent asserted in the 

12 communications; 

13 (H) an investigation of the recipient’s al14 leged infringement occurred; or 

15 (I) the sender or an affiliate of the sender 

16 previously filed a civil action asserting a claim 

17 of infringement of the patent based on the ac18 tivity that is the subject of the written commu19 nication when the sender knew such activity 

20 was held, in a final determination, not to in21 fringe the patent; 

22 (2) the sender of the communications, in bad 

23 faith, seeks compensation for— 

24 (A) a patent claim that has been held to 

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1 valid, or otherwise unenforceable against the re2 cipient, in a final determination; 

3 (B) activities undertaken by the recipient 

4 after expiration of the patent asserted in the 

5 communications; or 

6 (C) activity of the recipient that the sender 

7 knew was authorized, with respect to the patent 

8 claim or claims that are the subject of the com9 munications, by a person with the right to li10 cense the patent; or 

11 (3) the sender of the communications, in bad 

12 faith, fails to include— 

13 (A) the identity of the person asserting a 

14 right to license the patent to, or enforce the 

15 patent against, the recipient, including the iden16 tity of any parent entity and the ultimate par17 ent entity of such person, unless such person is 

18 a public company and the name of the public 

19 company is identified; 

20 (B) an identification of at least one patent 

21 issued by the United States Patent and Trade22 mark Office alleged to have been infringed; 

23 (C) an identification, to the extent reason24 able under the circumstances, of at least one 

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1 ent that is alleged to infringe the identified pat2 ent; 

3 (D) a description, to the extent reasonable 

4 under the circumstances, of how the product, 

5 service, or other activity of the recipient in6 fringes an identified patent and patent claim; or 

7 (E) a name and contact information for a 

8 person the recipient may contact about the as9 sertions or claims relating to the patent con10 tained in the communications. 

11 (b) AFFIRMATIVE DEFENSE.—With respect to sub12 section (a), there shall be an affirmative defense that 

13 statements, representations, or omissions were not made 

14 in bad faith (as defined in subparagraphs (B) and (C) of 

15 section 5(1)) if the sender can demonstrate that such 

16 statements, representations, or omissions were mistakes 

17 made in good faith, which may be demonstrated by a pre18 ponderance of evidence that the violation was not inten19 tional and resulted from a bona fide error notwithstanding 

20 the maintenance of procedures reasonably adapted to 

21 avoid any such error. 

22 (c) RULE OF CONSTRUCTION.—For purposes of sec23 tions 3 and 4, the commission of an act or practice that 

24 is declared under this section to be an unfair or deceptive 

25 act or practice within the meaning of section 5(a)(1) of 


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1 the Federal Trade Commission Act (15 U.S.C. 45(a)(1)) 

2 shall be considered to be a violation of this section. 

3 SEC. 3. ENFORCEMENT BY FEDERAL TRADE COMMISSION. 

4 (a) VIOLATION OF RULE.—A violation of section 2 

5 shall be treated as a violation of a rule defining an unfair 

6 or deceptive act or practice prescribed under section 

7 18(a)(1)(B) of the Federal Trade Commission Act (15 

8 U.S.C. 57a(a)(1)(B)). 

9 (b) POWERS OF COMMISSION.—The Commission 

10 shall enforce this Act in the same manner, by the same 

11 means, and with the same jurisdiction, powers, and duties 

12 as though all applicable terms and provisions of the Fed13 eral Trade Commission Act (15 U.S.C. 41 et seq.) were 

14 incorporated into and made a part of this Act. Any person 

15 who violates section 2 shall be subject to the penalties and 

16 entitled to the privileges and immunities provided in the 

17 Federal Trade Commission Act. 

18 (c) EFFECT ON OTHER LAWS.—Nothing in this Act 

19 shall be construed in any way to limit or affect the author20 ity of the Commission under any other provision of law. 

21 SEC. 4. PREEMPTION OF STATE LAWS ON PATENT DEMAND 

22 LETTERS AND ENFORCEMENT BY STATE AT23 TORNEYS GENERAL. 

24 (a) PREEMPTION.— 


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1 (1) IN GENERAL.—This Act preempts any law, 

2 rule, regulation, requirement, standard, or other pro3 vision having the force and effect of law of any 

4 State, or political subdivision of a State, expressly 

5 relating to the transmission or contents of commu6 nications relating to the assertion of patent rights. 

7 (2) EFFECT ON OTHER STATE LAWS.—Except 

8 as provided in paragraph (1), this Act shall not be 

9 construed to preempt or limit any provision of any 

10 State law, including any State consumer protection 

11 law, any State law relating to acts of fraud or decep12 tion, and any State trespass, contract, or tort law. 

13 (b) ENFORCEMENT BY STATE ATTORNEYS GEN14 ERAL.— 

15 (1) IN GENERAL.—In any case in which the at16 torney general of a State has reason to believe that 

17 an interest of the residents of that State has been 

18 adversely affected by any person who violates section 

19 2, the attorney general of the State, may bring a 

20 civil action on behalf of such residents of the State 

21 in a district court of the United States of appro22 priate jurisdiction— 

23 (A) to enjoin further such violation by the 

24 defendant; or 

25 (B) to obtain civil penalties. 


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1 (2) MAXIMUM CIVIL PENALTY.—Notwith2 standing the number of actions which may be 

3 brought against a person under this subsection, a 

4 person may not be liable for a total of more than 

5 $5,000,000 for a series of related violations of sec6 tion 2. 

7 (3) INTERVENTION BY THE FTC.— 

8 (A) NOTICE AND INTERVENTION.—The at9 torney general of a State shall provide prior 

10 written notice of any action under paragraph 

11 (1) to the Commission and provide the Commis12 sion with a copy of the complaint in the action, 

13 except in any case in which such prior notice is 

14 not feasible, in which case the attorney general 

15 shall serve such notice immediately upon insti16 tuting such action. The Commission shall have 

17 the right— 

18 (i) to intervene in the action; 

19 (ii) upon so intervening, to be heard 

20 on all matters arising therein; and 

21 (iii) to file petitions for appeal. 

22 (B) LIMITATION ON STATE ACTION WHILE

23 FEDERAL ACTION IS PENDING.—If the Commis24 sion has instituted a civil action for violation of 

25 section 2, no State attorney general may bring 


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1 an action under this subsection during the 

2 pendency of that action against any defendant 

3 named in the complaint of the Commission for 

4 any violation of such section alleged in the com5 plaint. 

6 (4) CONSTRUCTION.—For purposes of bringing 

7 any civil action under paragraph (1), nothing in this 

8 Act shall be construed to prevent the attorney gen9 eral of a State from exercising the powers conferred 

10 on the attorney general by the laws of that State 

11 to— 

12 (A) conduct investigations; 

13 (B) administer oaths or affirmations; or 

14 (C) compel the attendance of witnesses or 

15 the production of documentary and other evi16 dence. 

17 SEC. 5. DEFINITIONS. 

18 In this Act: 

19 (1) BAD FAITH.—The term ‘‘bad faith’’ means, 

20 with respect to section 2(a), that the sender— 

21 (A) made knowingly false or knowingly 

22 misleading statements, representations, or omis23 sions; 

24 (B) made statements, representations, or 

25 omissions with reckless indifference as to the 


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1 false or misleading nature of such statements, 

2 representations, or omissions; or 

3 (C) made statements, representations, or 

4 omissions with awareness of the high prob5 ability of the statements, representations, or 

6 omissions to deceive and the sender inten7 tionally avoided the truth. 

8 (2) COMMISSION.—The term ‘‘Commission’’ 

9 means the Federal Trade Commission. 

10 (3) FINAL DETERMINATION.—The term ‘‘final 

11 determination’’ means, with respect to the invalidity 

12 or unenforceability of a patent, that the invalidity or 

13 unenforceability has been determined by a court of 

14 the United States or the United States Patent and 

15 Trademark Office in a final decision that is 

16 unappealable or for which any opportunity for ap17 peal is no longer available. 

Æ 


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