I 

113TH CONGRESS 

1ST SESSION H. R. 2639 

To amend title 35, United States Code, to add procedural requirements 

for patent infringement suits, and for other purposes. 

IN THE HOUSE OF REPRESENTATIVES 

JULY 10, 2013 

Mr. JEFFRIES (for himself and Mr. FARENTHOLD) introduced the following 

bill; which was referred to the Committee on the Judiciary 

A BILL 

To amend title 35, United States Code, to add procedural 

requirements for patent infringement suits, 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 ‘‘Patent Litigation and 

5 Innovation Act of 2013’’. 

6 SEC. 2. PLEADING REQUIREMENTS. 

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

8 States Code, is amended by inserting after section 281 the 

9 following: 


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1 ‘‘§ 281A. Pleading requirements for patent infringe2 ment actions 

3 ‘‘In a civil action arising under any Act of Congress 

4 relating to patents, a party alleging infringement shall in5 clude in the initial complaint, counterclaim, or cross-claim 

6 for patent infringement— 

7 ‘‘(1) an identification of each patent allegedly 

8 infringed; 

9 ‘‘(2) an identification of each claim of each pat10 ent identified under paragraph (1) that is allegedly 

11 infringed; 

12 ‘‘(3) for each claim identified under paragraph 

13 (2), an identification of each accused apparatus, 

14 product, feature, device, method, system, process, 

15 function, act, service, or other instrumentality (re16 ferred to in this section as an ‘accused instrumen17 tality’) alleged to infringe the claim; 

18 ‘‘(4) for each accused instrumentality identified 

19 under paragraph (3), an identification with particu20 larity, if known, of— 

21 ‘‘(A) the name or model number of the ac22 cused instrumentality; and 

23 ‘‘(B) the name of each accused method, 

24 system, process, function, act, or service, or the 

25 name or model number of each apparatus, 

26 product, feature, or device that, when used, alVerDate Mar 15 2010 03:21 Jul 11, 2013 Jkt 029200 PO 00000 Frm 00002 Fmt 6652 Sfmt 6201 E:\BILLS\H2639.IH H2639

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1 legedly results in the practice of the claimed in2 vention; 

3 ‘‘(5) for each accused instrumentality identified 

4 under paragraph (3), an explanation of— 

5 ‘‘(A) where each element of each asserted 

6 claim identified under paragraph (2) is found 

7 within the accused instrumentality; 

8 ‘‘(B) whether each such element is in9 fringed literally or under the doctrine of equiva10 lents; and 

11 ‘‘(C) with detailed specificity, how the 

12 terms in each asserted claim identified under 

13 paragraph (2) correspond to the functionality of 

14 the accused instrumentality; 

15 ‘‘(6) for each claim that is alleged to have been 

16 infringed indirectly, a description of— 

17 ‘‘(A) the direct infringement; 

18 ‘‘(B) any person alleged to be a direct in19 fringer known to the party alleging infringe20 ment; and 

21 ‘‘(C) the acts of the alleged indirect in22 fringer that contribute to or are inducing the 

23 direct infringement; 

24 ‘‘(7) a description of the right of the party al25 leging infringement to assert each— 


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1 ‘‘(A) patent identified under paragraph 

2 (1); and 

3 ‘‘(B) patent claim identified in paragraph 

4 (2); 

5 ‘‘(8) a description of the principal business of 

6 the party alleging infringement; 

7 ‘‘(9) the identity of any person, other than the 

8 party alleging infringement, who is known to the 

9 party alleging infringement, and who— 

10 ‘‘(A) owns or co-owns a patent identified 

11 under paragraph (1); 

12 ‘‘(B) is the assignee of a patent identified 

13 under paragraph (1); or 

14 ‘‘(C) is an exclusive licensee to a patent 

15 identified under paragraph (1); and 

16 ‘‘(10) the identity of any person, other than the 

17 party alleging infringement, who is known to the 

18 party alleging infringement, and who has a legal or 

19 financial right to enforce a patent identified under 

20 paragraph (1).’’. 

21 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

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

23 States Code, is amended by inserting after the item relat24 ing to section 281 the following: 

‘‘281A. Pleading requirements for patent infringement actions.’’. 


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1 (c) REVIEW OF FORM 18.—Not later than 12 months 

2 after the date of the enactment of this Act, the Supreme 

3 Court shall review and amend Form 18 of the Federal 

4 Rules of Civil Procedure to ensure that Form 18 is con5 sistent with the requirements under section 281A of title 

6 35, United States Code, as added by subsection (a). 

7 (d) RULE OF CONSTRUCTION.—Nothing in this sec8 tion or the amendments made by this section shall be con9 strued to alter existing law or rules relating to joinder. 

10 SEC. 3. JOINDER OF INTERESTED PARTIES. 

11 Section 299 of title 35, United States Code, is 

12 amended by adding at the end the following: 

13 ‘‘(d) JOINDER OF INTERESTED PARTIES.— 

14 ‘‘(1) DEFINITION.—In this subsection, the term 

15 ‘interested party’, with respect to a civil action aris16 ing under any Act of Congress relating to patents— 

17 ‘‘(A) means a person described in para18 graph (9) or (10) of section 281A; and 

19 ‘‘(B) does not include an attorney or law 

20 firm providing legal representation in the action 

21 if the sole basis for the financial interest of the 

22 attorney or law firm in the outcome of the ac23 tion arises from an agreement to provide that 

24 legal representation. 


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1 ‘‘(2) JOINDER OF INTERESTED PARTIES.—In a 

2 civil action arising under any Act of Congress relat3 ing to patents, the court shall grant a motion by a 

4 party defending an infringement claim to join an in5 terested party if the defending party files the motion 

6 to join within 120 days after the first complaint, an7 swer, or counterclaim and shows that the interest of 

8 the plaintiff in any patent identified in the com9 plaint, including a claim asserted in the complaint, 

10 is limited primarily to asserting any such patent 

11 claim in litigation. 

12 ‘‘(3) LIMITATION ON JOINDER.—The court may 

13 deny a motion to join an interested party under 

14 paragraph (2) if— 

15 ‘‘(A) the interested party is not subject to 

16 service of process; or 

17 ‘‘(B) joinder under paragraph (2) would 

18 deprive the court of subject matter jurisdiction 

19 or make venue improper.’’. 

20 SEC. 4. STAY OF ACTION AGAINST SECONDARY PARTIES. 

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

22 States Code, is amended by adding at the end the fol23 lowing: 

24 ‘‘§ 300. Stay of action against secondary parties 

25 ‘‘(a) STAY OF ACTION.— 


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1 ‘‘(1) IN GENERAL.—In any civil action arising 

2 under any Act of Congress relating to patents, the 

3 court shall grant a motion to stay all or part of the 

4 action as to a secondary party with respect to in5 fringement related to a primary party in the same 

6 or another action concerning the same apparatus, 

7 product, feature, device, method, system, process, 

8 function, act, service, or other instrumentality, in 

9 whole or in relevant part, of the disputed patent of 

10 the primary party, if— 

11 ‘‘(A) the primary and secondary parties 

12 consent to the stay in writing; 

13 ‘‘(B) the motion is filed not later than 120 

14 days after service of the first complaint in the 

15 action of the primary party that is asserted as 

16 the basis for the secondary party’s alleged in17 fringement; and 

18 ‘‘(C) the secondary party agrees to be 

19 bound by any judgment entered against the pri20 mary party to the same extent as such primary 

21 party may be bound with respect to issues that 

22 the primary and secondary parties have in com23 mon. 

24 ‘‘(2) TREATMENT OF SECONDARY PARTY.— 

25 During a stay under paragraph (1), the secondary 


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1 party shall be treated as a nonparty to the action 

2 against the primary party for purposes of discovery, 

3 hearings, trial, or otherwise. The stay shall continue 

4 until such time that a final adjudication in the ac5 tion against the primary party has been entered and 

6 all appeals thereof exhausted. 

7 ‘‘(b) OTHER AUTHORITY NOT AFFECTED.—Nothing 

8 in this section shall be construed as abrogating a court’s 

9 discretion to grant any stay or expand any stay granted 

10 pursuant to this section where otherwise permitted by law. 

11 ‘‘(c) DEFINITIONS.—In this section: 

12 ‘‘(1) PRIMARY PARTY.—The term ‘primary 

13 party’ means a person who manufacturers or sup14 plies, or causes the manufacture or supply of, an ap15 paratus, product, feature, device, method, system, 

16 process, function, act, service, or other instrumen17 tality, in whole or in material part— 

18 ‘‘(A) that is alleged to infringe a patent in 

19 dispute; or 

20 ‘‘(B) that uses a process alleged to infringe 

21 a patent in dispute. 

22 ‘‘(2) SECONDARY PARTY.—The term ‘secondary 

23 party’ means a party accused of infringing a patent 

24 in dispute based on the use, distribution, resale, or 


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1 consumption of a product or process by a primary 

2 party.’’. 

3 (b) CONFORMING AMENDMENT.—The table of sec4 tions for chapter 29 of title 35, United States Code, is 

5 amended by adding at the end the following: 

‘‘300. Stay of action against secondary parties.’’. 

6 SEC. 5. STAY OF DISCOVERY. 

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

8 States Code, is amended by adding at the end the fol9 lowing: 

10 ‘‘§ 300A. Stay of discovery in patent infringement 

11 suits 

12 ‘‘(a) IN GENERAL.—Except as provided in sub13 sections (b) and (c), in a civil action arising under any 

14 Act of Congress relating to patents— 

15 ‘‘(1) the court shall stay discovery until after 

16 the court has ruled on— 

17 ‘‘(A) any motion to dismiss the action; and 

18 ‘‘(B) any motion to transfer venue of the 

19 action; and 

20 ‘‘(2) if the court determines that a ruling relat21 ing to the construction of terms used in a patent 

22 claim asserted in the complaint in the action is re23 quired, the court shall stay discovery until after the 

24 court has made the ruling. 


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1 ‘‘(b) EXCEPTION.—Notwithstanding subsection (a), 

2 the court may, in an action described in that subsection, 

3 allow discovery to the extent necessary for the court to 

4 make the ruling under paragraph (1) or (2) of that sub5 section, as the case may be. 

6 ‘‘(c) DISCRETION TO EXPAND SCOPE OF DISCOVERY

7 IN EXTRAORDINARY CIRCUMSTANCES.—If, under any pro8 vision of Federal law (including the Drug Price Competi9 tion and Patent Term Restoration Act (Public Law 98– 

10 417)), the court determines that extraordinary cir11 cumstances exist because resolution within a specified pe12 riod of time of a civil action arising under any Act of Con13 gress relating to patents will have an automatic impact 

14 upon the rights of a party with respect to the patent, the 

15 court may permit discovery in addition to the discovery 

16 authorized under subsection (b) before the ruling de17 scribed in subsection (b) as necessary to ensure timely res18 olution of the action. 

19 ‘‘(d) PRESERVATION OF EVIDENCE.— 

20 ‘‘(1) IN GENERAL.—During the pendency of 

21 any stay of discovery under this section, unless oth22 erwise ordered by the court, any party to the action 

23 with actual notice of the allegations contained in the 

24 complaint shall treat all documents, data compila25 tions (including electronically recorded or stored 


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1 data), and tangible objects that are in the custody 

2 or control of such person and that are relevant to 

3 the allegations, as if they were the subject of a con4 tinuing request for production of documents from an 

5 opposing party under the Federal Rules of Civil Pro6 cedure. 

7 ‘‘(2) SANCTION FOR WILLFUL VIOLATION.—A 

8 party aggrieved by the willful failure of an opposing 

9 party to comply with paragraph (1) may apply to 

10 the court for an order awarding appropriate sanc11 tions.’’. 

12 (b) CONFORMING AMENDMENT.—The table of sec13 tions for chapter 29 of title 35, United States Code, is 

14 amended by adding at the end the following: 

‘‘300A. Stay of discovery in patent infringement suits.’’. 

15 SEC. 6. SANCTIONS FOR ABUSIVE LITIGATION. 

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

17 States Code, is amended by adding at the end the fol18 lowing: 

19 ‘‘§ 300B. Sanctions for abusive litigation 

20 ‘‘(a) MANDATORY REVIEW BY COURT.—In any civil 

21 action arising under any Act of Congress relating to pat22 ents, upon final adjudication of the action, the court shall 

23 include in the record specific findings regarding compli24 ance by each party and each attorney representing any 

25 party with each requirement of Rule 11(b) of the Federal 


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1 Rules of Civil Procedure as to any complaint, responsive 

2 pleading, or dispositive motion. 

3 ‘‘(b) SANCTIONS.—If the court makes a finding 

4 under subsection (a) that a party or attorney violated any 

5 requirement of Rule 11(b) of the Federal Rules of Civil 

6 Procedure as to any complaint, responsive pleading, or dis7 positive motion, the court may impose sanctions on such 

8 party or attorney in accordance with Rule 11 of the Fed9 eral Rules of Civil Procedure. Before making a finding 

10 that any party or attorney has violated Rule 11 of the 

11 Federal Rules of Civil Procedure, the court shall give such 

12 party or attorney notice and an opportunity to respond.’’. 

13 (b) CONFORMING AMENDMENTS.— 

14 (1) TABLE OF CONTENTS.—The table of sec15 tions for chapter 29 of title 35, United States Code, 

16 is amended by adding at the end the following: 

‘‘300B. Sanctions for abusive litigation.’’. 

17 (2) AWARD OF ATTORNEYS FEES IN EXCEP18 TIONAL CASES.—Section 285 of title 35, United 

19 States Code, is amended by striking ‘‘The court’’ 

20 and inserting ‘‘Subject to section 300B(b), the 

21 court’’. 


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1 SEC. 7. EFFECTIVE DATE. 

2 This Act and the amendments made by this Act shall 

3 apply to civil actions commenced on or after the date of 

4 the enactment of this Act. 

Æ 


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