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Union Calendar No. 688 

114TH CONGRESS 

2D SESSION H. R. 2045 

[Report No. 114–877] 

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 

APRIL 28, 2015 

Mr. BURGESS (for himself, Ms. KAPTUR, Mr. LANCE, Mr. HARPER, Mr. 

MULLIN, and Mr. KINZINGER of Illinois) introduced the following bill; 

which was referred to the Committee on Energy and Commerce 

DECEMBER 16, 2016 

Additional sponsors: Mr. FLEMING and Mr. BROOKS of Alabama 

DECEMBER 16, 2016 

Committed to the Committee of the Whole House on the State of the Union 

and ordered to be printed 


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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. 


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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 2015’’. 

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

7 CONNECTION WITH THE ASSERTION OF A 

8 UNITED STATES PATENT. 

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

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

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

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

13 States patent, to engage in a pattern or practice of send14 ing written communications that state or represent that 

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

16 have infringed, the patent and bear liability or owe com17 pensation to another, if— 

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

19 faith, states or represents in the communications 

20 that— 

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

22 to license or enforce the patent at the time the 

23 communications are sent, and the sender is not 

24 a person with such a right; 


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1 (B) a civil action asserting a claim of in2 fringement of the patent has been filed against 

3 the recipient; 

4 (C) a civil action asserting a claim of in5 fringement of the patent has been filed against 

6 other persons; 

7 (D) legal action for infringement of the 

8 patent will be taken against the recipient; 

9 (E) the sender is the exclusive licensee of 

10 the patent asserted in the communications; 

11 (F) persons other than the recipient pur12 chased a license for the patent asserted in the 

13 communications; 

14 (G) persons other than the recipient pur15 chased a license, and the sender does not dis16 close that such license is unrelated to the al17 leged infringement or the patent asserted in the 

18 communications; 

19 (H) an investigation of the recipient’s al20 leged infringement occurred; or 

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

22 previously filed a civil action asserting a claim 

23 of infringement of the patent based on the ac24 tivity that is the subject of the written commu25 nication when the sender knew such activity 


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1 was held, in a final determination, not to in2 fringe the patent; 

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

4 faith, seeks compensation for— 

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

6 be unenforceable due to inequitable conduct, in7 valid, or otherwise unenforceable against the re8 cipient, in a final determination; 

9 (B) activities undertaken by the recipient 

10 after expiration of the patent asserted in the 

11 communications; or 

12 (C) activity of the recipient that the sender 

13 knew was authorized, with respect to the patent 

14 claim or claims that are the subject of the com15 munications, by a person with the right to li16 cense the patent; or 

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

18 faith, fails to include— 

19 (A) the identity of the person asserting a 

20 right to license the patent to, or enforce the 

21 patent against, the recipient, including the iden22 tity of any parent entity and the ultimate par23 ent entity of such person, unless such person is 

24 a public company and the name of the public 

25 company is identified; 


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1 (B) an identification of at least one patent 

2 issued by the United States Patent and Trade3 mark Office alleged to have been infringed; 

4 (C) an identification, to the extent reason5 able under the circumstances, of at least one 

6 product, service, or other activity of the recipi7 ent that is alleged to infringe the identified pat8 ent; 

9 (D) a description, to the extent reasonable 

10 under the circumstances, of how the product, 

11 service, or other activity of the recipient in12 fringes an identified patent and patent claim; or 

13 (E) a name and contact information for a 

14 person the recipient may contact about the as15 sertions or claims relating to the patent con16 tained in the communications. 

17 (b) AFFIRMATIVE DEFENSE.—With respect to sub18 section (a), there shall be an affirmative defense that 

19 statements, representations, or omissions were not made 

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

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

22 statements, representations, or omissions were mistakes 

23 made in good faith, which may be demonstrated by a pre24 ponderance of evidence that the violation was not inten25 tional and resulted from a bona fide error notwithstanding 


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1 the maintenance of procedures reasonably adapted to 

2 avoid any such error. 

3 (c) RULE OF CONSTRUCTION.—For purposes of sec4 tions 3 and 4, the commission of an act or practice that 

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

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

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

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

9 SEC. 3. ENFORCEMENT BY FEDERAL TRADE COMMISSION. 

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

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

12 or deceptive act or practice prescribed under section 

13 18(a)(1)(B) of the Federal Trade Commission Act (15 

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

15 (b) POWERS OF COMMISSION.—The Commission 

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

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

18 as though all applicable terms and provisions of the Fed19 eral Trade Commission Act (15 U.S.C. 41 et seq.) were 

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

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

22 entitled to the privileges and immunities provided in the 

23 Federal Trade Commission Act. 


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

2 shall be construed in any way to limit or affect the author3 ity of the Commission under any other provision of law. 

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

5 LETTERS AND ENFORCEMENT BY STATE AT6 TORNEYS GENERAL. 

7 (a) PREEMPTION.— 

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

9 rule, regulation, requirement, standard, or other pro10 vision having the force and effect of law of any 

11 State, or political subdivision of a State, expressly 

12 relating to the transmission or contents of commu13 nications relating to the assertion of patent rights. 

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

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

16 construed to preempt or limit any provision of any 

17 State law, including any State consumer protection 

18 law, any State law relating to acts of fraud or decep19 tion, and any State trespass, contract, or tort law. 

20 (b) ENFORCEMENT BY STATE ATTORNEYS GEN21 ERAL.— 

22 (1) IN GENERAL.—In any case in which the at23 torney general of a State has reason to believe that 

24 an interest of the residents of that State has been 

25 adversely affected by any person who violates section 


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1 2, the attorney general of the State, may bring a 

2 civil action on behalf of such residents of the State 

3 in a district court of the United States of appro4 priate jurisdiction— 

5 (A) to enjoin further such violation by the 

6 defendant; or 

7 (B) to obtain civil penalties. 

8 (2) MAXIMUM CIVIL PENALTY.—Notwith9 standing the number of actions which may be 

10 brought against a person under this subsection, a 

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

12 $5,000,000 for a series of related violations of sec13 tion 2. 

14 (3) INTERVENTION BY THE FTC.— 

15 (A) NOTICE AND INTERVENTION.—The at16 torney general of a State shall provide prior 

17 written notice of any action under paragraph 

18 (1) to the Commission and provide the Commis19 sion with a copy of the complaint in the action, 

20 except in any case in which such prior notice is 

21 not feasible, in which case the attorney general 

22 shall serve such notice immediately upon insti23 tuting such action. The Commission shall have 

24 the right— 

25 (i) to intervene in the action; 


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1 (ii) upon so intervening, to be heard 

2 on all matters arising therein; and 

3 (iii) to file petitions for appeal. 

4 (B) LIMITATION ON STATE ACTION WHILE

5 FEDERAL ACTION IS PENDING.—If the Commis6 sion has instituted a civil action for violation of 

7 section 2, no State attorney general may bring 

8 an action under this subsection during the 

9 pendency of that action against any defendant 

10 named in the complaint of the Commission for 

11 any violation of such section alleged in the com12 plaint. 

13 (4) CONSTRUCTION.—For purposes of bringing 

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

15 Act shall be construed to prevent the attorney gen16 eral of a State from exercising the powers conferred 

17 on the attorney general by the laws of that State 

18 to— 

19 (A) conduct investigations; 

20 (B) administer oaths or affirmations; or 

21 (C) compel the attendance of witnesses or 

22 the production of documentary and other evi23 dence. 

24 SEC. 5. DEFINITIONS. 

25 In this Act: 


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

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

3 (A) made knowingly false or knowingly 

4 misleading statements, representations, or omis5 sions; 

6 (B) made statements, representations, or 

7 omissions with reckless indifference as to the 

8 false or misleading nature of such statements, 

9 representations, or omissions; or 

10 (C) made statements, representations, or 

11 omissions with awareness of the high prob12 ability of the statements, representations, or 

13 omissions to deceive and the sender inten14 tionally avoided the truth. 

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

16 means the Federal Trade Commission. 

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

18 determination’’ means, with respect to the invalidity 

19 or unenforceability of a patent, that the invalidity or 

20 unenforceability has been determined by a court of 

21 the United States or the United States Patent and 

22 Trademark Office in a final decision that is 

23 unappealable or for which any opportunity for ap24 peal is no longer available. 


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Union Calendar No. 688 

114TH CONGRESS 

2D SESSION H. R. 2045 

[Report No. 114–877] 

A BILL 

To provide that certain bad faith communications 

practices, and for other purposes. States patent are unfair or deceptive acts or in connection with the assertion of a United 

DECEMBER 16, 2016 

Committed to the Committee of the Whole House on the 

State of the Union and ordered to be printed 


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