I 

113TH CONGRESS 

1ST SESSION H. R. 845 

To amend chapter 29 of title 35, United States Code, to provide for the 

recovery of patent litigation costs, and for other purposes. 

IN THE HOUSE OF REPRESENTATIVES 

FEBRUARY 27, 2013 

Mr. DEFAZIO (for himself and Mr. CHAFFETZ) introduced the following bill; 

which was referred to the Committee on the Judiciary 

A BILL 

To amend chapter 29 of title 35, United States Code, to 

provide for the recovery of patent litigation costs, 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 ‘‘Saving High-Tech 

5 Innovators from Egregious Legal Disputes Act of 2013’’. 

6 SEC. 2. RECOVERY OF LITIGATION COSTS. 

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

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

9 following new section: 


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1 ‘‘§ 285A. Recovery of litigation costs 

2 ‘‘(a) IN GENERAL.—In an action involving the valid3 ity or infringement of a patent— 

4 ‘‘(1) a party asserting invalidity or noninfringe5 ment may move for judgment that the adverse party 

6 does not meet at least one of the conditions de7 scribed in subsection (d); 

8 ‘‘(2) not later than 90 days after a party has 

9 moved for the judgment described in paragraph (1), 

10 the adverse party shall be provided an opportunity 

11 to prove such party meets at least one of the condi12 tions described in subsection (d); 

13 ‘‘(3) as soon as practicable after the adverse 

14 party has been provided an opportunity to respond 

15 under paragraph (2), but not later than 120 days 

16 after a party has moved for the judgment described 

17 in paragraph (1), the court shall make a determina18 tion whether the adverse party meets at least one of 

19 the conditions described in subsection (d); and 

20 ‘‘(4) notwithstanding section 285, the Court 

21 shall award the recovery of full costs to any pre22 vailing party asserting invalidity or noninfringement, 

23 including reasonable attorney’s fees, other than the 

24 United States, upon the entry of a final judgment if 

25 the court determines that the adverse party did not 

26 meet at least one of the conditions described in subVerDate Mar 15 2010 03:57 Mar 01, 2013 Jkt 029200 PO 00000 Frm 00002 Fmt 6652 Sfmt 6201 E:\BILLS\H845.IH H845

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1 section (d), unless the court finds that exceptional 

2 circumstances make an award unjust. 

3 ‘‘(b) BOND REQUIRED.—Any party that fails to meet 

4 a condition under subsection (a)(3) shall be required to 

5 post a bond in an amount determined by the court to cover 

6 the recovery of full costs described in subsection (a)(4). 

7 ‘‘(c) TIMING AND EFFECT OF PENDING MOTION.— 

8 With respect to any motion made pursuant to subsection 

9 (a)(1) the following applies: 

10 ‘‘(1) In the case of a motion that is filed before 

11 the moving party’s initial disclosure are due— 

12 ‘‘(A) the court shall limit any discovery to 

13 discovery that is necessary for the disposition of 

14 the motion; and 

15 ‘‘(B) the court may delay issuing any 

16 scheduling order until after ruling on the mo17 tion. 

18 ‘‘(2) In the case of a motion that is filed after 

19 the moving party’s initial disclosures are due the 

20 court may delay ruling on the motion until after the 

21 entry of final judgment. 

22 ‘‘(3) In the case of a motion that is filed after 

23 the entry of final judgment, any such motion must 

24 be combined with a motion for fees to the prevailing 

25 party. 


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1 ‘‘(d) CONDITION DEFINED.—For purposes of this 

2 section, a ‘condition’ means, with respect to the party al3 leging infringement, any of the following: 

4 ‘‘(1) ORIGINAL INVENTOR.—Such party is the 

5 inventor, a joint inventor, or in the case of a patent 

6 filed by and awarded to an assignee of the original 

7 inventor or joint inventor, the original assignee of 

8 the patent. 

9 ‘‘(2) EXPLOITATION OF THE PATENT.—Such 

10 party can provide documentation to the court of sub11 stantial investment made by such party in the ex12 ploitation of the patent through production or sale 

13 of an item covered by the patent. 

14 ‘‘(3) UNIVERSITY OR TECHNOLOGY TRANSFER

15 ORGANIZATION.—Such party is— 

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

17 that term is defined in section 101 of the High18 er Education Act of 1965 (20 U.S.C. 1001); or 

19 ‘‘(B) a technology transfer organization 

20 whose primary purpose is to facilitate the com21 mercialization of technology developed by one or 

22 more institutions of higher education.’’. 

23 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

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


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1 States Code, is amended by inserting after the item relat2 ing to section 285 the following new item: 

‘‘285A. Recovery of litigation costs for patent.’’. 

3 (c) EFFECTIVE DATE.—The amendment made by 

4 subsection (a) shall take effect on the date of the enact5 ment of this Act and shall apply to any action involving 

6 the validity or infringement of a patent for which a com7 plaint is filed on or after the date of the enactment of 

8 this Act. 

Æ 


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