I 

115TH CONGRESS 

2D SESSION H. R. 5340 

To strengthen the position of the United States as the world’s leading innovator by amending title 35, United States Code, to protect the property 

rights of the inventors that grow the country’s economy. 

IN THE HOUSE OF REPRESENTATIVES 

MARCH 20, 2018 

Mr. STIVERS (for himself, Mr. FOSTER, Mr. DAVIDSON, Mr. DUFFY, Mr. 

CRAMER, Mr. KING of New York, Ms. VELA ́ZQUEZ, Mr. HUIZENGA, Mr. 

JOYCE of Ohio, Mr. BILIRAKIS, Mr. DANNY K. DAVIS of Illinois, Mr. 

RUSH, Mr. BRENDAN F. BOYLE of Pennsylvania, Mr. PETERS, Mrs. 

WATSON COLEMAN, and Mr. GOSAR) introduced the following bill; which 

was referred to the Committee on the Judiciary, and in addition to the 

Committee on Energy and Commerce, for a period to be subsequently determined by the Speaker, in each case for consideration of such provisions 

as fall within the jurisdiction of the committee concerned 

A BILL 

To strengthen the position of the United States as the 

world’s leading innovator by amending title 35, United 

States Code, to protect the property rights of the inventors that grow the country’s economy. 

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 ‘‘Support Technology and Research for Our Nation’s 


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1 Growth and Economic Resilience Patents Act of 2018’’ or 

2 the ‘‘STRONGER Patents Act of 2018’’. 

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

4 this Act is as follows: 

Sec. 1. Short title; table of contents. 

TITLE I—STRONGER PATENTS ACT 

Sec. 101. Findings. 

Sec. 102. Inter partes review. 

Sec. 103. Post-grant review. 

Sec. 104. Composition of post-grant review and inter partes review panels. 

Sec. 105. Reexamination of patents. 

Sec. 106. Restoration of patents as property rights. 

Sec. 107. Elimination of USPTO fee diversion. 

Sec. 108. Infringement of patent. 

Sec. 109. Institutions of higher education. 

Sec. 110. Assisting small businesses in the U.S. patent system. 

TITLE II—TARGETING ROGUE AND OPAQUE LETTERS 

Sec. 201. Definitions. 

Sec. 202. Unfair or deceptive acts or practices in connection with the assertion 

of a United States patent. 

Sec. 203. Enforcement by Federal Trade Commission. 

Sec. 204. Preemption of State laws on patent demand letters and enforcement 

by State attorneys general. 

5 TITLE I—STRONGER PATENTS 

6 ACT 

7 SEC. 101. FINDINGS. 

8 Congress finds that— 

9 (1) the patent property rights enshrined in the 

10 Constitution of the United States provide the foun11 dation for the exceptional innovation environment in 

12 the United States; 

13 (2) strong patent rights encourage United 

14 States inventors to invest their resources in creating 

15 new inventions; 


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1 (3) patent protection has led to patient cures, 

2 positive changes to the standard of living for all peo3 ple in the United States, and improvements to the 

4 agricultural, telecommunications, and electronics in5 dustries, among others; 

6 (4) the United States patent system is an es7 sential part of the country’s economic success; 

8 (5) strong patent protection improves the 

9 chances of success for small companies and increases 

10 their chances of securing financing from investors; 

11 (6) intellectual property-intensive industries in 

12 the United States generate tens of millions of jobs 

13 for individuals in the United States; 

14 (7) intellectual property-intensive industries in 

15 the United States account for more than one-third 

16 of the country’s gross domestic product; 

17 (8) in the highly competitive global economy, 

18 the United States needs to uphold strong patent 

19 protections to maintain its position as the world’s 

20 premier innovative country; 

21 (9) Congress last enacted comprehensive re22 forms of the patent system just recently, in 2011; 

23 (10) unintended consequences of the com24 prehensive 2011 reform of patent laws are con25 tinuing to become evident, including the strategic filVerDate Sep 11 2014 03:53 Mar 31, 2018 Jkt 079200 PO 00000 Frm 00003 Fmt 6652 Sfmt 6201 E:\BILLS\H5340.IH H5340

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1 ing of post-grant review proceedings to depress stock 

2 prices and extort settlements, the filing of repetitive 

3 petitions for inter partes and post-grant reviews that 

4 have the effect of harassing patent owners, and the 

5 unnecessary duplication of work by the district 

6 courts of the United States and the Patent Trial 

7 and Appeal Board; 

8 (11) the Judicial Conference of the United 

9 States has made significant revisions to rules gov10 erning pleadings and discovery in the Federal Rules 

11 of Civil Procedure, which took effect in December 

12 2015; 

13 (12) the Supreme Court recently issued rulings 

14 in Octane Fitness, LLC v. Icon Health & Fitness, 

15 Inc., 134 S.Ct. 1749 (2014) and Highmark Inc. v. 

16 Allcare Health Management System, Inc., 134 S.Ct. 

17 1744 (2014) that significantly reduced the burden 

18 on an alleged infringer to recover attorney fees from 

19 the patent owner, and increased the incidence of fees 

20 shifted to the losing party; and 

21 (13) efforts by Congress to reform the patent 

22 system without careful scrutiny create a serious risk 

23 of making it more costly and difficult for legitimate 

24 innovators to protect their patents from infringeVerDate Sep 11 2014 03:53 Mar 31, 2018 Jkt 079200 PO 00000 Frm 00004 Fmt 6652 Sfmt 6201 E:\BILLS\H5340.IH H5340

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1 ment, thereby weakening United States companies 

2 and the United States economy. 

3 SEC. 102. INTER PARTES REVIEW. 

4 (a) CLAIM CONSTRUCTION.—Section 316(a) of title 

5 35, United States Code, is amended— 

6 (1) in paragraph (9), by inserting after ‘‘sub7 stitute claims,’’ the following: ‘‘including the stand8 ard for how substitute claims should be construed,’’; 

9 (2) in paragraph (12), by striking ‘‘; and’’ and 

10 inserting a semicolon; 

11 (3) in paragraph (13), by striking the period at 

12 the end and inserting ‘‘; and’’; and 

13 (4) by adding at the end the following new 

14 paragraph: 

15 ‘‘(14) providing that for all purposes under this 

16 chapter— 

17 ‘‘(A) each challenged claim of a patent 

18 shall be construed as the claim would be con19 strued under section 282(b) in an action to in20 validate a patent, including by construing each 

21 challenged claim of the patent in accordance 

22 with— 

23 ‘‘(i) the ordinary and customary 

24 meaning of the claim as understood by a 


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1 person having ordinary skill in the art to 

2 which the claimed invention pertains; and 

3 ‘‘(ii) the prosecution history per4 taining to the patent; and 

5 ‘‘(B) if a court has previously construed a 

6 challenged claim of a patent or a challenged 

7 claim term in a civil action to which the patent 

8 owner was a party, the Office shall consider 

9 that claim construction.’’. 

10 (b) BURDEN OF PROOF.—Section 316(e) of title 35, 

11 United States Code, is amended to read as follows: 

12 ‘‘(e) EVIDENTIARY STANDARDS.— 

13 ‘‘(1) PRESUMPTION OF VALIDITY.—The pre14 sumption of validity under section 282(a) shall apply 

15 to a previously issued claim that is challenged dur16 ing an inter partes review under this chapter. 

17 ‘‘(2) BURDEN OF PROOF.—In an inter partes 

18 review instituted under this chapter, the petitioner 

19 shall have the burden of proving a proposition of 

20 unpatentability of a previously issued claim by clear 

21 and convincing evidence.’’. 

22 (c) STANDING.—Section 311 of title 35, United 

23 States Code, is amended by adding at the end the fol24 lowing new subsection: 

25 ‘‘(d) PERSONS THAT MAY PETITION.— 


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

2 ‘charged with infringement’ means a real and sub3 stantial controversy regarding infringement of a pat4 ent exists such that the petitioner would have stand5 ing to bring a declaratory judgment action in Fed6 eral court. 

7 ‘‘(2) NECESSARY CONDITIONS.—A person may 

8 not file with the Office a petition to institute an 

9 inter partes review of a patent unless the person, or 

10 a real party in interest or privy of the person, has 

11 been— 

12 ‘‘(A) sued for infringement of the patent; 

13 or 

14 ‘‘(B) charged with infringement under the 

15 patent.’’. 

16 (d) LIMITATION ON REVIEWS.—Section 314(a) of 

17 title 35, United States Code, is amended to read as fol18 lows: 

19 ‘‘(a) THRESHOLD.— 

20 ‘‘(1) LIKELIHOOD OF PREVAILING.—Subject to 

21 paragraph (2), the Director may not authorize an 

22 inter partes review to be instituted unless the Direc23 tor determines that the information presented in the 

24 petition filed under section 311 and any response 

25 filed under section 313 shows that there is a reasonVerDate Sep 11 2014 03:53 Mar 31, 2018 Jkt 079200 PO 00000 Frm 00007 Fmt 6652 Sfmt 6201 E:\BILLS\H5340.IH H5340

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1 able likelihood that the petitioner would prevail with 

2 respect to at least one of the claims challenged in 

3 the petition. 

4 ‘‘(2) PREVIOUS INSTITUTION.—The Director 

5 may not authorize an inter partes review to be insti6 tuted on a claim challenged in a petition if the Di7 rector has previously instituted an inter partes re8 view or post-grant review with respect to that 

9 claim.’’. 

10 (e) APPEALS FROM INSTITUTION DECISIONS.—Sec11 tion 314 of title 35, United States Code, is amended by 

12 striking subsection (d) and inserting the following: 

13 ‘‘(d) NO APPEAL.—A determination by the Director 

14 not to institute an inter partes review under this section 

15 shall be final and nonappealable. 

16 ‘‘(e) INTERLOCUTORY APPEAL.— 

17 ‘‘(1) RIGHT OF APPEAL.—A determination by 

18 the Director to institute an inter partes review under 

19 this section may be appealed to the United States 

20 Court of Appeals for the Federal Circuit. 

21 ‘‘(2) TIMING.—A party shall file a notice of in22 terlocutory appeal under paragraph (1) not later 

23 than 7 days after the date on which the Director en24 ters the institution decision. 


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1 ‘‘(3) LIMITATION.—An interlocutory appeal 

2 filed under paragraph (1) may challenge the institu3 tion decision on any basis except for the determina4 tion made under section 314(a)(1). 

5 ‘‘(4) EFFECT ON PROCEEDINGS.—An interlocu6 tory appeal filed under paragraph (1) shall not stay 

7 proceedings in the inter partes review unless the Di8 rector or the United States Court of Appeals for the 

9 Federal Circuit so orders. 

10 ‘‘(5) DECISION.—An interlocutory appeal filed 

11 under paragraph (1) may be granted by the United 

12 States Court of Appeals for the Federal Circuit, 

13 which may include consideration of whether— 

14 ‘‘(A) the institution decision appears to be 

15 in error and mere institution of the inter partes 

16 review presents a risk of immediate, irreparable 

17 injury to the patent owner; 

18 ‘‘(B) the institution decision presents an 

19 unsettled and fundamental issue of law, impor20 tant both to the specific proceeding and gen21 erally, that is likely to evade end-of-the-pro22 ceeding review; or 

23 ‘‘(C) the institution decision is manifestly 

24 erroneous.’’. 


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1 (f) ELIMINATING REPETITIVE PROCEEDINGS.—Sec2 tion 315(e) of title 35, United States Code, is amended 

3 to read as follows: 

4 ‘‘(e) ESTOPPEL.— 

5 ‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—A 

6 person petitioning for an inter partes review of a 

7 claim in a patent under this chapter, or the real 

8 party in interest or privy of the petitioner, may not 

9 petition for a subsequent inter partes review before 

10 the Office with respect to that patent on any ground 

11 that the petitioner raised or reasonably could have 

12 raised in the initial petition, unless, after the filing 

13 of the initial petition, the petitioner, or the real 

14 party in interest or privy of the petitioner, is 

15 charged with infringement of additional claims of 

16 the patent. 

17 ‘‘(2) CIVIL ACTIONS AND OTHER PRO18 CEEDINGS.—A person petitioning for an inter partes 

19 review of a claim in a patent under this chapter that 

20 results in an institution decision under section 314, 

21 or the real party in interest or privy of the peti22 tioner, may not assert either in a civil action arising 

23 in whole or in part under section 1338 of title 28 

24 or in a proceeding before the International Trade 

25 Commission under section 337 of the Tariff Act of 


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1 1930 (19 U.S.C. 1337) that the claim is invalid 

2 based on section 102 or 103 of this title, unless the 

3 invalidity argument is based on allegations that the 

4 claimed invention was in public use, on sale, or oth5 erwise available to the public before the effective fil6 ing date of the claimed invention.’’. 

7 (g) REAL PARTY IN INTEREST.— 

8 (1) CLARIFICATION OF DEFINITION.—Section 

9 315 of title 35, United States Code, is amended by 

10 adding at the end the following new subsection: 

11 ‘‘(f) PETITIONER.—For purposes of this chapter, a 

12 person that directly or through an affiliate, subsidiary, or 

13 proxy, makes a financial contribution to the preparation 

14 for, or conduct during, an inter partes review on behalf 

15 of the petitioner shall be considered a real party in interest 

16 of the petitioner.’’. 

17 (2) DISCOVERY OF REAL PARTY IN INTER18 EST.—Section 316(a)(5) of title 35, United States 

19 Code, is amended to read as follows: 

20 ‘‘(5) setting forth standards and procedures for 

21 discovery of relevant evidence, including that such 

22 discovery shall be limited to— 

23 ‘‘(A) the deposition of witnesses submitting 

24 affidavits or declarations; 


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1 ‘‘(B) evidence identifying the petitioner’s 

2 real parties in interest; and 

3 ‘‘(C) what is otherwise necessary in the in4 terest of justice;’’. 

5 (h) PRIORITY OF FEDERAL COURT VALIDITY DE6 TERMINATIONS.— 

7 (1) IN GENERAL.—Section 315 of title 35, 

8 United States Code, as amended by subsections (f) 

9 and (g), is further amended— 

10 (A) by redesignating subsections (c) 

11 through (f) as subsections (d) through (g), re12 spectively; and 

13 (B) by inserting after subsection (b) the 

14 following new subsection: 

15 ‘‘(c) FEDERAL COURT VALIDITY DETERMINA16 TIONS.— 

17 ‘‘(1) INSTITUTION BARRED.—An inter partes 

18 review of a patent claim may not be instituted if, in 

19 a civil action arising in whole or in part under sec20 tion 1338 of title 28 or in a proceeding before the 

21 International Trade Commission under section 337 

22 of the Tariff Act of 1930 (19 U.S.C. 1337), a court 

23 has entered a final judgment— 

24 ‘‘(A) that decides the validity of the patent 

25 claim with respect to section 102 or 103; and 


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1 ‘‘(B) from which an appeal under section 

2 1295 of title 28 may be taken, or from which 

3 an appeal under section 1295 of title 28 was 

4 previously available but is no longer available. 

5 ‘‘(2) STAY OF PROCEEDINGS.— 

6 ‘‘(A) IN GENERAL.—If, in a civil action 

7 arising in whole or in part under section 1338 

8 of title 28 or in a proceeding before the Inter9 national Trade Commission under section 337 

10 of the Tariff Act of 1930 (19 U.S.C. 1337), a 

11 court has entered a final judgment that decides 

12 the validity of a patent claim with respect to 

13 section 102 or 103 and from which an appeal 

14 under section 1295 of title 28 may be taken, 

15 the Patent Trial and Appeal Board shall stay 

16 any ongoing inter partes review of that patent 

17 claim pending a final decision of the court or 

18 Commission, as applicable. 

19 ‘‘(B) TERMINATION.—If the validity of a 

20 patent claim described in subparagraph (A) is 

21 finally upheld by a court or the International 

22 Trade Commission, as applicable, the Patent 

23 Trial and Appeal Board shall terminate the 

24 inter partes review.’’. 


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1 (2) TECHNICAL AND CONFORMING AMEND2 MENTS.—Chapter 31 of title 35, United States 

3 Code, is amended— 

4 (A) in section 315(b), by striking ‘‘sub5 section (c)’’ and inserting ‘‘subsection (d)’’; 

6 (B) in section 316(a)— 

7 (i) in paragraph (11), by striking 

8 ‘‘section 315(c)’’ and inserting ‘‘section 

9 315(d)’’; and 

10 (ii) in paragraph (12), by striking 

11 ‘‘section 315(c)’’ and inserting ‘‘section 

12 315(d)’’; and 

13 (C) in section 317(a), by striking ‘‘section 

14 315(e)’’ and inserting ‘‘section 315(f)’’. 

15 (i) AMENDMENT OF CLAIMS.— 

16 (1) INTER PARTES REVIEW AMENDMENT PRAC17 TICE.—Chapter 31 of title 35, United States Code, 

18 is amended by inserting after section 316 the fol19 lowing new section: 

20 ‘‘§ 316A. Inter partes review amendment practice 

21 ‘‘(a) ACTIONS PERMITTED.—During an inter partes 

22 review instituted under this chapter, the patent owner may 

23 move to take one or more of the following actions with 

24 respect to any challenged patent claim being reviewed: 

25 ‘‘(1) Cancel the claim. 


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1 ‘‘(2) Propose a reasonable number of substitute 

2 claims whose patentability will be adjudicated by the 

3 Patent Trial and Appeal Board in accordance with 

4 subsection (c). 

5 ‘‘(3) Propose a reasonable number of substitute 

6 claims to be examined in an expedited inter partes 

7 review (in this section referred to as ‘expedited 

8 IPR’) reexamination in accordance with subsection 

9 (d). 

10 ‘‘(b) SCOPE OF CLAIMS.—An amendment to a patent 

11 under this section may not enlarge the scope of the claims 

12 of the patent or introduce new matter. 

13 ‘‘(c) AMENDMENT PRACTICE BEFORE THE PATENT

14 TRIAL AND APPEAL BOARD.— 

15 ‘‘(1) PATENT OWNER’S INITIAL MOTION.—For 

16 each challenged claim for which the patent owner 

17 seeks to propose a reasonable number of substitute 

18 claims, the patent owner shall be required to make 

19 a prima facie showing that each substitute claim— 

20 ‘‘(A) responds to each ground of 

21 unpatentability on which the inter partes review 

22 was instituted; 

23 ‘‘(B) meets the written description require24 ment under section 112(a); and 


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1 ‘‘(C) meets the requirement under sub2 section (b) of this section. 

3 ‘‘(2) NEW EVIDENCE.— 

4 ‘‘(A) PETITIONER.—The petitioner may re5 spond to the patent owner’s initial motion 

6 under paragraph (1) by presenting new evi7 dence. 

8 ‘‘(B) PATENT OWNER.—The patent owner 

9 shall have not less than 1 opportunity to re10 spond to any new evidence presented under sub11 paragraph (A). 

12 ‘‘(3) EXPEDITED PATENTABILITY REPORT.— 

13 ‘‘(A) IN GENERAL.—Upon the filing of a 

14 motion under paragraph (1), the Patent Trial 

15 and Appeal Board may order an expedited pat16 entability report from a patent examiner on a 

17 substitute claim. 

18 ‘‘(B) CONTENTS OF REPORT.—In ordering 

19 an expedited patentability report, the Patent 

20 Trial and Appeal Board may— 

21 ‘‘(i) order examination of any ground 

22 of patentability that is assessed by a pat23 ent examiner under chapter 12; and 


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1 ‘‘(ii) request a non-binding rec2 ommendation as to the patentability of a 

3 substitute claim. 

4 ‘‘(C) RIGHT OF REPLY.—Any party to the 

5 inter partes review may file supplemental brief6 ing, including new evidence, addressing the ex7 pedited patentability report. 

8 ‘‘(D) TIMING.—The production of the ex9 pedited patentability report shall be expedited. 

10 ‘‘(E) GOOD CAUSE.—The ordering of an 

11 expedited patentability report shall constitute 

12 good cause, for purposes of section 316(a)(11), 

13 to extend the 1-year period for the inter partes 

14 review. 

15 ‘‘(4) ADJUDICATION OF PATENTABILITY.— 

16 ‘‘(A) NO REBUTTAL.—A patent owner 

17 shall be entitled to a substitute claim if the 

18 prima facie showing required under paragraph 

19 (1) is not rebutted. 

20 ‘‘(B) ADDITIONAL EVIDENCE.—If addi21 tional evidence of record is presented, the pat22 ent owner shall be entitled to a substitute claim 

23 unless a preponderance of that evidence proves 

24 that the patent owner is not so entitled. 


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1 ‘‘(5) PATENT TRIAL AND APPEAL BOARD’S DIS2 CRETION TO ORDER EXPEDITED IPR REEXAMINA3 TION.—Upon issuing a final written decision with 

4 respect to each challenged claim, the Patent Trial 

5 and Appeal Board may order an expedited IPR reex6 amination to be conducted under subsection (d)(2) 

7 to consider a substitute claim in lieu of issuing a 

8 final written decision on that claim. 

9 ‘‘(6) AMENDMENTS TO ADVANCE SETTLE10 MENT.—The Patent Trial and Appeal Board may 

11 consider additional motions to amend upon the joint 

12 request of the petitioner and the patent owner to 

13 materially advance the settlement of a proceeding 

14 under section 317 if the patent owner makes the 

15 prima facie showing required under paragraph (1). 

16 ‘‘(d) AMENDMENT PRACTICE BEFORE A PATENT EX17 AMINER.— 

18 ‘‘(1) MOTION TO CONVERT TO EXPEDITED IPR

19 EXAMINATION.— 

20 ‘‘(A) IN GENERAL.—If the Director deter21 mines to institute an inter partes review on a 

22 challenged claim under section 314, a patent 

23 owner may, before any further substantive 

24 briefing on the patentability of an instituted 

25 claim, move to terminate the inter partes review 


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1 in favor of an expedited IPR reexamination 

2 under paragraph (2) of this subsection. 

3 ‘‘(B) CONTENTS OF MOTION.—A patent 

4 owner shall be required to show good cause for 

5 why an expedited IPR reexamination would fur6 ther the goals of the patent system, including 

7 consideration of whether there are substantial— 

8 ‘‘(i) investments in research directly 

9 related to the claimed invention; 

10 ‘‘(ii) secondary indicia of non-obvious11 ness, such as commercial success, long-felt 

12 but unsolved needs, or failures of persons 

13 skilled in the art to develop the claimed in14 vention; or 

15 ‘‘(iii) changes in case law governing 

16 relevant substantive patentability require17 ments since the patent was issued. 

18 ‘‘(C) NEW EVIDENCE ALLOWED.—The 

19 opening motion and opposition briefs under this 

20 paragraph may include new evidence, and fur21 ther rebuttal evidence may be allowed by the 

22 Patent Trial and Appeal Board. 

23 ‘‘(2) CONDUCT OF EXPEDITED IPR EXAMINA24 TION.— 


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1 ‘‘(A) IN GENERAL.—If the Patent Trial 

2 and Appeal Board grants a motion filed under 

3 paragraph (1), the patent owner shall cancel 

4 each instituted claim and submit a reasonable 

5 number of substitute claims for consideration 

6 by the patent examiner in an expedited IPR ex7 amination under this paragraph. 

8 ‘‘(B) TIMING.—A patent examiner shall 

9 complete an expedited IPR examination, exclud10 ing any time for appeals, within 18 months 

11 after the date on which any substitute claim is 

12 submitted under subparagraph (A). 

13 ‘‘(C) PROCEDURES.—Consideration of the 

14 substitute claims in an expedited IPR examina15 tion shall follow the procedures established for 

16 initial examination under sections 132 and 133, 

17 subject to subsection (b) of this section and 

18 modified as necessary to ensure that the proce19 dures are expedited. 

20 ‘‘(D) APPEAL.— 

21 ‘‘(i) PATENT EXAMINER DECISION.— 

22 If the final decision of a patent examiner 

23 in an expedited IPR examination is ad24 verse to the patentability of a substitute 

25 claim, the patent owner may appeal the deVerDate Sep 11 2014 03:53 Mar 31, 2018 Jkt 079200 PO 00000 Frm 00020 Fmt 6652 Sfmt 6201 E:\BILLS\H5340.IH H5340

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1 cision to the Patent Trial and Appeal 

2 Board under section 134(c). 

3 ‘‘(ii) PATENT TRIAL AND APPEAL

4 BOARD DECISION.—If the final decision in 

5 an appeal of an expedited IPR reexamina6 tion to the Patent Trial and Appeal Board 

7 under section 134(c) is adverse to the pat8 entability of a substitute claim, the patent 

9 owner may appeal the decision to the 

10 United States Court of Appeals for the 

11 Federal Circuit in accordance with sections 

12 141 through 144. 

13 ‘‘(E) CERTIFICATE.—If the patent exam14 iner determines in an expedited IPR examina15 tion that a substitute claim is patentable, and 

16 the time for appeal has expired or any appeal 

17 proceeding has terminated, the Director shall 

18 issue and publish a certificate incorporating in 

19 the patent the substitute claim. 

20 ‘‘(F) INTERVENING RIGHTS.—Any sub21 stitute claim determined to be patentable and 

22 incorporated into a patent following an expe23 dited IPR examination shall have the same ef24 fect as that specified in section 252 for reissued 

25 patents on the right of any person who made, 


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1 purchased, or used within the United States, or 

2 imported into the United States, anything pat3 ented by the substitute claim, or who made sub4 stantial preparation therefor, prior to issuance 

5 of a certificate under subparagraph (E).’’. 

6 (2) TECHNICAL AND CONFORMING AMEND7 MENTS.— 

8 (A) EXPEDITED IPR EXAMINATION AP9 PEALS.— 

10 (i) APPEALS TO PATENT TRIAL AND

11 APPEAL BOARD.—Section 134 of title 35, 

12 United States Code, is amended by adding 

13 at the end the following new subsection: 

14 ‘‘(c) PATENT OWNER IN EXPEDITED IPR EXAMINA15 TION.—A patent owner may appeal from the final rejec16 tion of any substitute claim by the primary examiner in 

17 an expedited IPR examination under section 316A(d) to 

18 the Patent Trial and Appeal Board, having once paid the 

19 fee for such appeal.’’. 

20 (ii) APPEALS TO FEDERAL CIRCUIT.— 

21 Section 141 of title 35, United States 

22 Code, is amended— 

23 (I) by redesignating subsections 

24 (c) and (d) as subsections (d) and (e); 

25 and 


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1 (II) by inserting after subsection 

2 (b) the following new subsection: 

3 ‘‘(c) EXPEDITED IPR EXAMINATIONS.—A patent 

4 owner who is dissatisfied with the final decision in an ap5 peal to the Patent Trial and Appeal Board under section 

6 134(c) of an expedited IPR examination may appeal the 

7 Board’s decision to the United States Court of Appeals 

8 for the Federal Circuit.’’. 

9 (B) CONDUCT OF INTER PARTES RE10 VIEW.—Section 316 of title 35, United States 

11 Code, is amended— 

12 (i) in subsection (a)(9), by striking 

13 ‘‘subsection (d)’’ each place that term ap14 pears and inserting ‘‘section 316A’’; 

15 (ii) by striking subsection (d); and 

16 (iii) by redesignating subsection (e) as 

17 subsection (d). 

18 (C) DECISION OF THE BOARD.—Section 

19 318(a) of title 35, United States Code, is 

20 amended— 

21 (i) by striking ‘‘If’’ and inserting ‘‘Ex22 cept as provided in section 316A(c)(5), if’’; 

23 and 

24 (ii) by striking ‘‘section 316(d)’’ and 

25 inserting ‘‘section 316A’’. 


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1 (D) TABLE OF SECTIONS.—The table of 

2 sections for chapter 31 of title 35, United 

3 States Code, is amended by inserting after the 

4 item relating to section 316 the following new 

5 item: 

‘‘316A. Inter partes review amendment practice.’’. 

6 SEC. 103. POST-GRANT REVIEW. 

7 (a) CLAIM CONSTRUCTION.—Section 326(a) of title 

8 35, United States Code, is amended— 

9 (1) in paragraph (9), by inserting after ‘‘sub10 stitute claims,’’ the following: ‘‘including the stand11 ard for how substitute claims should be construed,’’; 

12 (2) in paragraph (11), by striking ‘‘; and’’ and 

13 inserting a semicolon; 

14 (3) in paragraph (12), by striking the period at 

15 the end and inserting ‘‘; and’’; and 

16 (4) by adding at the end the following new 

17 paragraph: 

18 ‘‘(13) providing that for all purposes under this 

19 chapter— 

20 ‘‘(A) each challenged claim of a patent 

21 shall be construed as the claim would be con22 strued under section 282(b) in an action to in23 validate a patent, including by construing each 

24 challenged claim of the patent in accordance 

25 with— 


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1 ‘‘(i) the ordinary and customary 

2 meaning of the claim as understood by a 

3 person having ordinary skill in the art to 

4 which the claimed invention pertains; and 

5 ‘‘(ii) the prosecution history per6 taining to the patent; and 

7 ‘‘(B) if a court has previously construed a 

8 challenged claim of a patent or a challenged 

9 claim term in a civil action to which the patent 

10 owner was a party, the Office shall consider 

11 that claim construction.’’. 

12 (b) BURDEN OF PROOF.—Section 326(e) of title 35, 

13 United States Code, is amended to read as follows: 

14 ‘‘(e) EVIDENTIARY STANDARDS.— 

15 ‘‘(1) PRESUMPTION OF VALIDITY.—The pre16 sumption of validity under section 282(a) shall apply 

17 to a previously issued claim that is challenged dur18 ing a proceeding under this chapter. 

19 ‘‘(2) BURDEN OF PROOF.—In a post-grant re20 view instituted under this chapter, the petitioner 

21 shall have the burden of proving a proposition of 

22 unpatentability of a previously issued claim by clear 

23 and convincing evidence.’’. 


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1 (c) STANDING.—Section 321 of title 35, United 

2 States Code, is amended by adding at the end the fol3 lowing new subsection: 

4 ‘‘(d) PERSONS THAT MAY PETITION.— 

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

6 ‘charged with infringement’ means a real and sub7 stantial controversy regarding infringement of a pat8 ent exists such that the petitioner would have stand9 ing to bring a declaratory judgment action in Fed10 eral court. 

11 ‘‘(2) NECESSARY CONDITIONS.—A person may 

12 not file with the Office a petition to institute a post13 grant review of the patent unless the person, or a 

14 real party in interest or privy of the person, dem15 onstrates— 

16 ‘‘(A) a reasonable possibility of being— 

17 ‘‘(i) sued for infringement of the pat18 ent; or 

19 ‘‘(ii) charged with infringement under 

20 the patent; or 

21 ‘‘(B) a competitive harm related to the va22 lidity of the patent.’’. 

23 (d) LIMITATION ON REVIEWS.—Section 324(a) of 

24 title 35, United States Code, is amended to read as fol25 lows: 


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1 ‘‘(a) THRESHOLD.— 

2 ‘‘(1) LIKELIHOOD OF PREVAILING.—Subject to 

3 paragraph (2), the Director may not authorize a 

4 post-grant review to be instituted unless the Director 

5 determines that the information presented in the pe6 tition filed under section 321, if such information is 

7 not rebutted, would demonstrate that it is more like8 ly than not that at least one of the claims challenged 

9 in the petition is unpatentable. 

10 ‘‘(2) PREVIOUS INSTITUTION.—The Director 

11 may not authorize a post-grant review to be insti12 tuted on a claim challenged in a petition if the Di13 rector has previously instituted an inter partes or 

14 post-grant review with respect to that claim.’’. 

15 (e) APPEALS FROM INSTITUTION DECISIONS.—Sec16 tion 324 of title 35, United States Code, is amended by 

17 striking subsection (e) and inserting the following: 

18 ‘‘(e) NO APPEAL.—A determination by the Director 

19 not to institute a post-grant review under this section shall 

20 be final and nonappealable. 

21 ‘‘(f) INTERLOCUTORY APPEAL.— 

22 ‘‘(1) RIGHT OF APPEAL.—A determination by 

23 the Director to institute a post-grant review under 

24 this section may be appealed to the United States 

25 Court of Appeals for the Federal Circuit. 


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1 ‘‘(2) TIMING.—A party shall file a notice of in2 terlocutory appeal under paragraph (1) not later 

3 than 7 days after the date on which the Director en4 ters the institution decision. 

5 ‘‘(3) LIMITATION.—An interlocutory appeal 

6 filed under paragraph (1) may challenge the institu7 tion decision on any basis except for the determina8 tion made under section 324(a)(1). 

9 ‘‘(4) EFFECT ON PROCEEDINGS.—An interlocu10 tory appeal filed under paragraph (1) shall not stay 

11 proceedings in the post-grant review unless the Di12 rector or the United States Court of Appeals for the 

13 Federal Circuit so orders. 

14 ‘‘(5) DECISION.—An interlocutory appeal filed 

15 under paragraph (1) may be granted by the United 

16 States Court of Appeals for the Federal Circuit, 

17 which may include consideration of whether— 

18 ‘‘(A) the institution decision appears to be 

19 in error and mere institution presents a risk of 

20 immediate, irreparable injury to the patent 

21 owner; 

22 ‘‘(B) the institution decision presents an 

23 unsettled and fundamental issue of law, impor24 tant both to the specific proceeding and genVerDate Sep 11 2014 03:53 Mar 31, 2018 Jkt 079200 PO 00000 Frm 00028 Fmt 6652 Sfmt 6201 E:\BILLS\H5340.IH H5340

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1 erally, that is likely to evade end-of-the-pro2 ceeding review; or 

3 ‘‘(C) the institution decision is manifestly 

4 erroneous.’’. 

5 (f) ELIMINATING REPETITIVE PROCEEDINGS.—Sec6 tion 325(e)(1) of title 35, United States Code, is amended 

7 to read as follows: 

8 ‘‘(1) PROCEEDINGS BEFORE THE OFFICE.—A 

9 person petitioning for a post-grant review of a claim 

10 in a patent under this chapter, or the real party in 

11 interest or privy of the petitioner, may not petition 

12 for a subsequent post-grant review before the Office 

13 with respect to that patent on any ground that the 

14 petitioner raised or reasonably could have raised in 

15 the initial petition, unless, after the filing of the ini16 tial petition, the petitioner, or the real party in in17 terest or privy of the petitioner, is charged with in18 fringement of additional claims of the patent.’’. 

19 (g) REAL PARTY IN INTEREST.— 

20 (1) CLARIFICATION OF DEFINITION.—Section 

21 325 of title 35, United States Code, is amended by 

22 adding at the end the following new subsection: 

23 ‘‘(g) REAL PARTY IN INTEREST.—For purposes of 

24 this chapter, a person that directly or through an affiliate, 

25 subsidiary, or proxy, makes a financial contribution to the 


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1 preparation for, or conduct during, a post-grant review on 

2 behalf of the petitioner shall be considered a real party 

3 in interest of the petitioner.’’. 

4 (2) DISCOVERY OF REAL PARTY IN INTER5 EST.—Section 326(a)(5) of title 35, United States 

6 Code, is amended to read as follows: 

7 ‘‘(5) setting forth standards and procedures for 

8 discovery of relevant evidence, including that such 

9 discovery shall be limited to— 

10 ‘‘(A) the deposition of witnesses submitting 

11 affidavits or declarations; 

12 ‘‘(B) evidence identifying the petitioner’s 

13 real parties in interest; and 

14 ‘‘(C) what is otherwise necessary in the in15 terest of justice;’’. 

16 (h) PRIORITY OF FEDERAL COURT VALIDITY DE17 TERMINATIONS.— 

18 (1) IN GENERAL.—Section 325 of title 35, 

19 United States Code, as amended by subsections (f) 

20 and (g), is further amended— 

21 (A) by redesignating subsections (c) 

22 through (g) as subsections (d) through (h), re23 spectively; and 

24 (B) by inserting after subsection (b) the 

25 following new subsection: 


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1 ‘‘(c) FEDERAL COURT VALIDITY DETERMINA2 TIONS.— 

3 ‘‘(1) INSTITUTION BARRED.—A post-grant re4 view of a patent claim may not be instituted if, in 

5 a civil action arising in whole or in part under sec6 tion 1338 of title 28 or in a proceeding before the 

7 International Trade Commission under section 337 

8 of the Tariff Act of 1930 (19 U.S.C. 1337), a court 

9 has entered a final judgment— 

10 ‘‘(A) that decides the validity of the patent 

11 claim with respect to section 102 or 103; and 

12 ‘‘(B) from which an appeal under section 

13 1295 of title 28 may be taken, or from which 

14 an appeal under section 1295 of title 28 was 

15 previously available but is no longer available. 

16 ‘‘(2) STAY OF PROCEEDINGS.— 

17 ‘‘(A) IN GENERAL.—If, in a civil action 

18 arising in whole or in part under section 1338 

19 of title 28 or in a proceeding before the Inter20 national Trade Commission under section 337 

21 of the Tariff Act of 1930 (19 U.S.C. 1337), a 

22 court has entered a final judgment that decides 

23 the validity of a patent claim with respect to 

24 section 102 or 103 and from which an appeal 

25 under section 1295 of title 28 may be taken, 


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1 the Patent Trial and Appeal Board shall stay 

2 any ongoing post-grant review of that patent 

3 claim pending a final decision of the court or 

4 Commission, as applicable. 

5 ‘‘(B) TERMINATION.—If the validity of a 

6 patent claim described in subparagraph (A) is 

7 finally upheld by a court or the International 

8 Trade Commission, as applicable, the Patent 

9 Trial and Appeal Board shall terminate the 

10 post-grant review.’’. 

11 (2) TECHNICAL AND CONFORMING AMEND12 MENTS.—Chapter 32 of title 35, United States 

13 Code, is amended— 

14 (A) in section 326(a)(11), by striking ‘‘sec15 tion 325(c)’’ and inserting ‘‘section 325(d)’’; 

16 and 

17 (B) in section 327(a), by striking ‘‘section 

18 325(e)’’ and inserting ‘‘section 325(f)’’. 

19 (i) AMENDMENT OF CLAIMS.— 

20 (1) POST-GRANT REVIEW AMENDMENT PRAC21 TICE.—Chapter 32 of title 35, United States Code, 

22 is amended by inserting after section 326 the fol23 lowing new section: 


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1 ‘‘§ 326A. Post-grant review amendment practice 

2 ‘‘(a) ACTIONS PERMITTED.—During a post-grant re3 view instituted under this chapter, the patent owner may 

4 move to take one or more of the following actions with 

5 respect to any challenged patent claim being reviewed: 

6 ‘‘(1) Cancel the claim. 

7 ‘‘(2) Propose a reasonable number of substitute 

8 claims whose patentability will be adjudicated by the 

9 Patent Trial and Appeal Board in accordance with 

10 subsection (c). 

11 ‘‘(3) Propose a reasonable number of substitute 

12 claims to be examined in an expedited PGR (in this 

13 section referred to as ‘expedited PGR’) reexamina14 tion in accordance with subsection (d). 

15 ‘‘(b) SCOPE OF CLAIMS.—An amendment to a patent 

16 under this section may not enlarge the scope of the claims 

17 of the patent or introduce new matter. 

18 ‘‘(c) AMENDMENT PRACTICE BEFORE THE PATENT

19 TRIAL AND APPEAL BOARD.— 

20 ‘‘(1) PATENT OWNER’S INITIAL MOTION.—For 

21 each challenged claim for which the patent owner 

22 seeks to propose a reasonable number of substitute 

23 claims, the patent owner shall be required to make 

24 a prima facie showing that each substitute claim— 


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1 ‘‘(A) responds to each ground of 

2 unpatentability on which the post-grant review 

3 was instituted; 

4 ‘‘(B) meets the written description require5 ment under section 112(a); and 

6 ‘‘(C) meets the requirement under sub7 section (b) of this section. 

8 ‘‘(2) NEW EVIDENCE.— 

9 ‘‘(A) PETITIONER.—The petitioner may re10 spond to the patent owner’s initial motion 

11 under paragraph (1) by presenting new evi12 dence. 

13 ‘‘(B) PATENT OWNER.—The patent owner 

14 shall have at least 1 opportunity to respond to 

15 any new evidence presented under subpara16 graph (A). 

17 ‘‘(3) EXPEDITED PATENTABILITY REPORT.— 

18 ‘‘(A) IN GENERAL.—Upon the filing of a 

19 motion under paragraph (1), the Patent Trial 

20 and Appeal Board may order an expedited pat21 entability report from a patent examiner on a 

22 substitute claim. 

23 ‘‘(B) CONTENTS OF REPORT.—In ordering 

24 an expedited patentability report, the Patent 

25 Trial and Appeal Board may— 


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1 ‘‘(i) order examination of any ground 

2 of patentability that is assessed by a pat3 ent examiner under chapter 12; and 

4 ‘‘(ii) request a non-binding rec5 ommendation as to the patentability of a 

6 substitute claim. 

7 ‘‘(C) RIGHT OF REPLY.—Any party to the 

8 post-grant review may file supplemental brief9 ing, including new evidence, addressing the ex10 pedited patentability report. 

11 ‘‘(D) TIMING.—The production of the ex12 pedited patentability report shall be expedited. 

13 ‘‘(E) GOOD CAUSE.—The ordering of an 

14 expedited patentability report shall constitute 

15 good cause, for purposes of section 326(a)(11), 

16 to extend the 1-year period for the post-grant 

17 review. 

18 ‘‘(4) ADJUDICATION OF PATENTABILITY.— 

19 ‘‘(A) NO REBUTTAL.—A patent owner 

20 shall be entitled to a substitute claim if the 

21 prima facie showing required under paragraph 

22 (1) is not rebutted. 

23 ‘‘(B) ADDITIONAL EVIDENCE.—If addi24 tional evidence of record is presented, the pat25 ent owner shall be entitled to a substitute claim 


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1 unless a preponderance of that evidence proves 

2 that the patent owner is not so entitled. 

3 ‘‘(5) PATENT TRIAL AND APPEAL BOARD’S DIS4 CRETION TO ORDER EXPEDITED PGR REEXAMINA5 TION.—Upon issuing a final written decision with 

6 respect to each challenged claim, the Patent Trial 

7 and Appeal Board may order an expedited PGR re8 examination to be conducted under section (d)(2) to 

9 consider a substitute claim in lieu of issuing a final 

10 written decision on that claim. 

11 ‘‘(6) AMENDMENTS TO ADVANCE SETTLE12 MENT.—The Patent Trial and Appeal Board may 

13 consider additional motions to amend upon the joint 

14 request of the petitioner and the patent owner to 

15 materially advance the settlement of a proceeding 

16 under section 327 if the patent owner makes the 

17 prima facie showing required under paragraph (1). 

18 ‘‘(d) AMENDMENT PRACTICE BEFORE A PATENT EX19 AMINER.— 

20 ‘‘(1) MOTION TO CONVERT TO EXPEDITED PGR

21 EXAMINATION.— 

22 ‘‘(A) IN GENERAL.—If the Director deter23 mines to institute a post-grant review on a chal24 lenged claim under section 324, a patent owner 

25 may, before any further substantive briefing on 


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1 the patentability of an instituted claim, move to 

2 terminate the post-grant review in favor of an 

3 expedited PGR reexamination under paragraph 

4 (2) of this subsection. 

5 ‘‘(B) CONTENTS OF MOTION.—A patent 

6 owner shall be required to show good cause for 

7 why an expedited PGR reexamination would 

8 further the goals of the patent system, includ9 ing consideration of whether there are substan10 tial— 

11 ‘‘(i) investments in research directly 

12 related to the claimed invention; 

13 ‘‘(ii) secondary indicia of non-obvious14 ness, such as commercial success, long-felt 

15 but unsolved needs, or failures of persons 

16 skilled in the art to develop the claimed in17 vention; or 

18 ‘‘(iii) changes in case law governing 

19 relevant substantive patentability require20 ments since the patent was issued. 

21 ‘‘(C) NEW EVIDENCE ALLOWED.—The 

22 opening motion and opposition briefs under this 

23 paragraph may include new evidence, and fur24 ther rebuttal evidence may be allowed by the 

25 Patent Trial and Appeal Board. 


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1 ‘‘(2) CONDUCT OF EXPEDITED PGR EXAMINA2 TION.— 

3 ‘‘(A) IN GENERAL.—If the Patent Trial 

4 and Appeal Board grants a motion filed under 

5 paragraph (1), the patent owner shall cancel 

6 each instituted claim and submit a reasonable 

7 number of substitute claims for consideration 

8 by the patent examiner in an expedited PGR 

9 examination under this paragraph. 

10 ‘‘(B) TIMING.—A patent examiner shall 

11 complete an expedited PGR examination, ex12 cluding any time for appeals, within 18 months 

13 after the date on which any substitute claim is 

14 submitted under subparagraph (A). 

15 ‘‘(C) PROCEDURES.—Consideration of the 

16 substitute claims in an expedited PGR examina17 tion shall follow the procedures established for 

18 initial examination under sections 132 and 133, 

19 subject to subsection (b) of this section and 

20 modified as necessary to ensure that the proce21 dures are expedited. 

22 ‘‘(D) APPEAL.— 

23 ‘‘(i) PATENT EXAMINER DECISION.— 

24 If the final decision of a patent examiner 

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1 verse to the patentability of a substitute 

2 claim, the patent owner may appeal the de3 cision to the Patent Trial and Appeal 

4 Board under section 134(c). 

5 ‘‘(ii) PATENT TRIAL AND APPEAL

6 BOARD DECISION.—If the final decision in 

7 an appeal of an expedited PGR reexamina8 tion to the Patent Trial and Appeal Board 

9 under section 134(c) is adverse to the pat10 entability of a substitute claim, the patent 

11 owner may appeal the decision to the 

12 United States Court of Appeals for the 

13 Federal Circuit in accordance with sections 

14 141 through 144. 

15 ‘‘(E) CERTIFICATE.—If the patent exam16 iner determines in an expedited PGR examina17 tion that a substitute claim is patentable, and 

18 the time for appeal has expired or any appeal 

19 proceeding has terminated, the Director shall 

20 issue and publish a certificate incorporating in 

21 the patent the substitute claim. 

22 ‘‘(F) INTERVENING RIGHTS.—Any sub23 stitute claim determined to be patentable and 

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1 fect as that specified in section 252 for reissued 

2 patents on the right of any person who made, 

3 purchased, or used within the United States, or 

4 imported into the United States, anything pat5 ented by the substitute claim, or who made sub6 stantial preparation therefor, prior to issuance 

7 of a certificate under subparagraph (E).’’. 

8 (2) TECHNICAL AND CONFORMING AMEND9 MENTS.— 

10 (A) EXPEDITED PGR EXAMINATION AP11 PEALS.— 

12 (i) APPEALS TO PATENT TRIAL AND

13 APPEAL BOARD.—Section 134 of title 35, 

14 United States Code, as amended by section 

15 102(i)(2), is further amended by adding at 

16 the end the following new subsection: 

17 ‘‘(d) PATENT OWNER IN EXPEDITED PGR EXAMINA18 TION.—A patent owner may appeal from the final rejec19 tion of any substitute claim by the primary examiner in 

20 an expedited PGR examination under section 326A(d) to 

21 the Patent Trial and Appeal Board, having once paid the 

22 fee for such appeal.’’. 

23 (ii) APPEALS TO FEDERAL CIRCUIT.— 

24 Section 141 of title 35, United States 


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1 Code, as amended by section 102(i)(2), is 

2 further amended— 

3 (I) by redesignating subsections 

4 (d) and (e) as subsections (e) and (f); 

5 and 

6 (II) by inserting after subsection 

7 (c) the following new subsection: 

8 ‘‘(d) EXPEDITED PGR EXAMINATIONS.—A patent 

9 owner who is dissatisfied with the final decision in an ap10 peal to the Patent Trial and Appeal Board under section 

11 134(c) of an expedited PGR examination may appeal the 

12 Board’s decision to the United States Court of Appeals 

13 for the Federal Circuit.’’. 

14 (B) CONDUCT OF POST-GRANT REVIEW.— 

15 Section 326 of title 35, United States Code, is 

16 amended— 

17 (i) in subsection (a)(9), by striking 

18 ‘‘subsection (d)’’ each place that term ap19 pears and inserting ‘‘section 326A’’; 

20 (ii) by striking subsection (d); and 

21 (iii) by redesignating subsection (e) as 

22 subsection (d). 

23 (C) DECISION OF THE BOARD.—Section 

24 328(a) of title 35, United States Code, is 

25 amended— 


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1 (i) by striking ‘‘If’’ and inserting ‘‘Ex2 cept as provided in section 326A(c)(5), if’’; 

3 and 

4 (ii) by striking ‘‘section 326(d)’’ and 

5 inserting ‘‘section 326A’’. 

6 (D) TABLE OF SECTIONS.—The table of 

7 sections for chapter 32 of title 35, United 

8 States Code, is amended by inserting after the 

9 item relating to section 326 the following new 

10 item: 

‘‘326A. Post-grant review amendment practice.’’. 

11 SEC. 104. COMPOSITION OF POST-GRANT REVIEW AND 

12 INTER PARTES REVIEW PANELS. 

13 Section 6(c) of title 35, United States Code, is 

14 amended to read as follows: 

15 ‘‘(c) 3-MEMBER PANELS.— 

16 ‘‘(1) IN GENERAL.—Each appeal, derivation 

17 proceeding, post-grant review, and inter partes re18 view shall be heard by at least 3 members of the 

19 Patent Trial and Appeal Board, who shall be des20 ignated by the Director. 

21 ‘‘(2) INELIGIBILITY TO HEAR REVIEW.—A 

22 member of the Patent Trial and Appeal Board who 

23 participates in the decision to institute a post-grant 

24 review or an inter partes review of a patent shall be 

25 ineligible to hear the review. 


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1 ‘‘(3) REHEARINGS.—Only the Patent Trial and 

2 Appeal Board may grant rehearings.’’. 

3 SEC. 105. REEXAMINATION OF PATENTS. 

4 (a) REQUEST FOR REEXAMINATION.—Section 302 of 

5 title 35, United States Code, is amended to read as fol6 lows: 

7 ‘‘§ 302. Request for reexamination 

8 ‘‘Any person at any time may file a request for reex9 amination by the Office of any claim of a patent on the 

10 basis of any prior art cited under the provisions of section 

11 301. The request must be in writing and must be accom12 panied by payment of a reexamination fee established by 

13 the Director pursuant to the provisions of section 41. The 

14 request must identify all real parties in interest and certify 

15 that reexamination is not barred under section 303(d). 

16 The request must set forth the pertinency and manner of 

17 applying cited prior art to every claim for which reexam18 ination is requested. Unless the requesting person is the 

19 owner of the patent, the Director promptly will send a 

20 copy of the request to the owner of record of the patent.’’. 

21 (b) REEXAMINATION BARRED BY CIVIL ACTION.— 

22 Section 303 of title 35, United States Code, is amended 

23 by adding at the end the following new subsection: 

24 ‘‘(d) An ex parte reexamination may not be instituted 

25 if the request for reexamination is filed more than 1 year 


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1 after the date on which the requester or a real party in 

2 interest or privy of the requester is served with a com3 plaint alleging infringement of the patent.’’. 

4 SEC. 106. RESTORATION OF PATENTS AS PROPERTY 

5 RIGHTS. 

6 Section 283 of title 35, United States Code, is 

7 amended— 

8 (1) by striking ‘‘The several courts’’ and insert9 ing the following: 

10 ‘‘(a) IN GENERAL.—The several courts’’; and 

11 (2) by adding at the end the following: 

12 ‘‘(b) INJUNCTION.—Upon a finding by a court of in13 fringement of a patent not proven invalid or unenforce14 able, the court shall presume that— 

15 ‘‘(1) further infringement of the patent would 

16 cause irreparable injury; and 

17 ‘‘(2) remedies available at law are inadequate to 

18 compensate for that injury.’’. 

19 SEC. 107. ELIMINATION OF USPTO FEE DIVERSION. 

20 (a) FUNDING.—Section 42 of title 35, United States 

21 Code, is amended— 

22 (1) in subsection (a), by striking ‘‘All fees’’ and 

23 inserting ‘‘FEES FOR SERVICE BY PTO.—All fees’’; 

24 (2) in subsection (b)— 


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1 (A) by striking ‘‘All fees’’ and inserting 

2 ‘‘ ‘INNOVATION PROMOTION FUND.—All fees’ ’’; 

3 and 

4 (B) by striking ‘‘Patent and Trademark 

5 Office Appropriation Account’’ and inserting 

6 ‘‘United States Patent and Trademark Office 

7 Innovation Promotion Fund’’; 

8 (3) in subsection (c)— 

9 (A) by striking ‘‘(C)’’ and inserting ‘‘(C) 

10 COLLECTION OF FUNDS FOR PTO ACTIVI11 TIES.’’ 

12 (B) in paragraph (1)— 

13 (i) by striking ‘‘To the extent’’ and all 

14 that follows through ‘‘fees’’ and inserting 

15 ‘‘Fees’’; and 

16 (ii) by striking ‘‘shall be collected by 

17 and shall, subject to paragraph (2), be 

18 available to the Director’’ and inserting 

19 ‘‘shall be collected by the Director and 

20 shall be available to the Director until ex21 pended’’; 

22 (C) by striking paragraph (2); and 

23 (D) by redesignating paragraph (3) as 

24 paragraph (2); 


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1 (4) by redesignating subsections (d) and (e) as 

2 subsections (e) and (f), respectively; 

3 (5) by inserting after subsection (c) the fol4 lowing new subsection: 

5 ‘‘(d) REVOLVING FUND.— 

6 ‘‘(1) DEFINITIONS.—In this subsection— 

7 ‘‘(A) the term ‘Fund’ means the United 

8 States Patent and Trademark Office Innovation 

9 Promotion Fund established under paragraph 

10 (2); and 

11 ‘‘(B) the term ‘Trademark Act of 1946’ 

12 means the Act entitled ‘An Act to provide for 

13 the registration and protection of trademarks 

14 used in commerce, to carry out the provisions 

15 of certain international conventions, and for 

16 other purposes’, approved July 5, 1946 (15 

17 U.S.C. 1051 et seq.) (commonly referred to as 

18 the ‘Trademark Act of 1946’ or the ‘Lanham 

19 Act’). 

20 ‘‘(2) ESTABLISHMENT.—There is established in 

21 the Treasury a revolving fund to be known as the 

22 ‘United States Patent and Trademark Office Inno23 vation Promotion Fund’. 


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1 ‘‘(3) DERIVATION OF RESOURCES.—There shall 

2 be deposited into the Fund any fees collected 

3 under— 

4 ‘‘(A) this title; or 

5 ‘‘(B) the Trademark Act of 1946. 

6 ‘‘(4) EXPENSES.—Amounts deposited into the 

7 Fund under paragraph (3) shall be available, with8 out fiscal year limitation, to cover— 

9 ‘‘(A) all expenses to the extent consistent 

10 with the limitation on the use of fees set forth 

11 in subsection (c), including all administrative 

12 and operating expenses, determined in the dis13 cretion of the Director to be ordinary and rea14 sonable, incurred by the Director for the contin15 ued operation of all services, programs, activi16 ties, and duties of the Office relating to patents 

17 and trademarks, as such services, programs, ac18 tivities, and duties are described under— 

19 ‘‘(i) this title; and 

20 ‘‘(ii) the Trademark Act of 1946; and 

21 ‘‘(B) all expenses incurred pursuant to any 

22 obligation, representation, or other commitment 

23 of the Office.’’; 


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1 (6) in subsection (e), as redesignated, by strik2 ing ‘‘The Director’’ and inserting ‘‘REFUNDS.—The 

3 Director’’; and 

4 (7) in subsection (f), as redesignated, by strik5 ing ‘‘The Secretary’’ and inserting ‘‘REPORT.—The 

6 Secretary’’. 

7 (b) EFFECTIVE DATE; TRANSFER FROM AND TERMI8 NATION OF OBSOLETE FUNDS.— 

9 (1) EFFECTIVE DATE.—The amendments made 

10 by subsection (a) shall take effect on the first day 

11 of the first fiscal year that begins on or after the 

12 date of the enactment of this Act. 

13 (2) REMAINING BALANCES.—There shall be de14 posited in the Fund, on the effective date described 

15 in paragraph (1), any available unobligated balances 

16 remaining in the Patent and Trademark Office Ap17 propriation Account, and in the Patent and Trade18 mark Fee Reserve Fund established under section 

19 42(c)(2) of title 35, United States Code, as in effect 

20 on the date before the effective date. 

21 (3) TERMINATION OF RESERVE FUND.—Upon 

22 the payment of all obligated amounts in the Patent 

23 and Trademark Fee Reserve Fund under paragraph 

24 (2), the Patent and Trademark Fee Reserve Fund 

25 shall be terminated. 


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1 SEC. 108. INFRINGEMENT OF PATENT. 

2 Section 271 of title 35, United States Code, is 

3 amended— 

4 (1) by striking subsection (b) and inserting the 

5 following: 

6 ‘‘(b) Whoever actively induces infringement of a pat7 ent shall be liable as an infringer upon a showing that 

8 the accused infringer intended to cause the acts that con9 stitute infringement, without regard to whether the ac10 cused infringer knew of the patent.’’; 

11 (2) in subsection (f), by adding at the end the 

12 following new paragraph: 

13 ‘‘(3)(A) Whoever, without authority, supplies or 

14 causes to be supplied in or from the United States a de15 sign for a product embodying a patented invention in such 

16 manner as to actively induce the making of that product 

17 outside the United States in a manner that would infringe 

18 the patent if made in the United States, shall be liable 

19 as an infringer. 

20 ‘‘(B) Whoever, without authority, supplies or causes 

21 to be supplied in or from the United States a specification 

22 for performing a patented process or method in such man23 ner as to actively induce the performance of that process 

24 or method outside the United States in a manner that 

25 would infringe the patent if performed in the United 

26 States, shall be liable as an infringer.’’; and 


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1 (3) by adding at the end the following: 

2 ‘‘(j) For a finding of liability for actively inducing in3 fringement of a process patent under subsection (b), or 

4 for contributory infringement of a process patent under 

5 subsection (c), it shall not be a requirement that the steps 

6 of the patented process be practiced by a single entity.’’. 

7 SEC. 109. INSTITUTIONS OF HIGHER EDUCATION. 

8 Section 123(d) of title 35, United States Code, is 

9 amended to read as follows: 

10 ‘‘(d) INSTITUTIONS OF HIGHER EDUCATION.—For 

11 purposes of this section, a micro entity shall include an 

12 applicant who certifies that— 

13 ‘‘(1) the applicant’s employer, from which the 

14 applicant obtains the majority of the applicant’s in15 come, is an institution of higher education as de16 fined in section 101(a) of the Higher Education Act 

17 of 1965 (20 U.S.C. 1001(a)); 

18 ‘‘(2) the applicant has assigned, granted, con19 veyed, or is under an obligation by contract or law, 

20 to assign, grant, or convey, a license or other owner21 ship interest in the particular applications to such 

22 an institution of higher education; 

23 ‘‘(3) the applicant is such an institution of 

24 higher education; or 


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1 ‘‘(4) the applicant is an organization described 

2 in section 501(c)(3) of the Internal Revenue Code of 

3 1986 and exempt from taxation under section 

4 501(a) of such Code that holds title to patents and 

5 patent applications on behalf of such an institution 

6 of higher education for the purpose of facilitating 

7 commercialization of the technologies of the patents 

8 and patent applications.’’. 

9 SEC. 110. ASSISTING SMALL BUSINESSES IN THE U.S. PAT10 ENT SYSTEM. 

11 (a) DEFINITION.—In this section, the term ‘‘small 

12 business concern’’ has the meaning given the term in sec13 tion 3 of the Small Business Act (15 U.S.C. 632). 

14 (b) SMALL BUSINESS ADMINISTRATION REPORT.— 

15 Not later than 1 year after the date of enactment of this 

16 Act, the Small Business Administration, using existing re17 sources, shall submit to the Committee on Small Business 

18 and Entrepreneurship of the Senate and the Committee 

19 on Small Business of the House of Representatives a re20 port analyzing the impact of— 

21 (1) patent ownership by small business con22 cerns; and 

23 (2) civil actions against small business concerns 

24 arising under title 35, United States Code, relating 

25 to patent infringement. 


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1 (c) EXPANSION OF PATENT PILOT PROGRAM IN CER2 TAIN DISTRICT COURTS.— 

3 (1) IN GENERAL.—Not later than 180 days 

4 after the date of the enactment of this Act, the Di5 rector of the Administrative Office of the United 

6 States Courts shall designate not fewer than 6 of the 

7 district courts of the United States that are partici8 pating in the patent cases pilot program established 

9 under section 1 of Public Law 111–349 (28 U.S.C. 

10 137 note) for the purpose of expanding that pro11 gram to address special issues raised in patent in12 fringement suits against individuals or small busi13 ness concerns. 

14 (2) PROCEDURES FOR SMALL BUSINESSES.— 

15 Not later than 2 years after the date of the enact16 ment of this Act, each district court designated 

17 under paragraph (1) shall develop procedures for ex18 pediting cases in which an individual or small busi19 ness concern is accused of patent infringement. 

20 (3) PARTICIPATING JUDGES.— 

21 (A) IN GENERAL.—In each district court 

22 designated under paragraph (1), each district 

23 court judge participating in the patent cases 

24 pilot program established under section 1 of 

25 Public Law 111–349 may appoint 1 additional 


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1 law clerk or secretary in excess of any other 

2 limitation on the number of such employees. 

3 (B) EDUCATION AND TRAINING.—The 

4 Federal Judicial Center, using existing re5 sources, shall prepare educational and training 

6 materials to assist district court judges de7 scribed in subparagraph (A) in developing ex8 pertise in patent and plant variety protection 

9 cases. 

10 (4) FUNDS.—There are authorized to be appro11 priated such sums as may be necessary to carry out 

12 paragraph (3)(A). 

13 (d) FREE ONLINE AVAILABILITY OF PUBLIC SEARCH

14 FACILITY MATERIALS.—Section 41(i) of title 35, United 

15 States Code, is amended by adding at the end the fol16 lowing new paragraph: 

17 ‘‘(5) FREE ONLINE AVAILABILITY OF PUBLIC

18 SEARCH FACILITY MATERIALS.—The Director shall 

19 make available online and at no charge all patent 

20 and trademark information that is available at the 

21 Public Search Facility of the Office located in Alex22 andria, Virginia, including, except to the extent that 

23 licenses with third-party contractors would make 

24 such provision financially unviable— 

25 ‘‘(A) search tools and databases; 


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1 ‘‘(B) informational materials; and 

2 ‘‘(C) training classes and materials.’’. 

3 TITLE II—TARGETING ROGUE 

4 AND OPAQUE LETTERS 

5 SEC. 201. DEFINITIONS. 

6 In this title: 

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

8 with respect to section 202(a), that the sender— 

9 (A) made knowingly false or knowingly 

10 misleading statements, representations, or omis11 sions; 

12 (B) made statements, representations, or 

13 omissions with reckless indifference as to the 

14 false or misleading nature of such statements, 

15 representations, or omissions; or 

16 (C) made statements, representations, or 

17 omissions with awareness of the high prob18 ability of the statements, representations, or 

19 omissions to deceive and the sender inten20 tionally avoided the truth. 

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

22 means the Federal Trade Commission. 

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

24 determination’’ means, with respect to the invalidity 

25 or unenforceability of a patent, that the invalidity or 


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1 unenforceability has been determined by a court of 

2 the United States or the United States Patent and 

3 Trademark Office in a final decision that is 

4 unappealable or for which any opportunity for ap5 peal is no longer available. 

6 SEC. 202. 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 201(1)) if the sender can demonstrate that such 

22 statements, representations, or omissions were mistakes 

23 made in good faith. Evidence that the sender in the usual 

24 course of business sends written communications that do 

25 not violate the provisions of this title shall be sufficient 


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1 to demonstrate good faith. Good faith may also be dem2 onstrated by other evidence. 

3 (c) RULE OF CONSTRUCTION.—For purposes of sec4 tions 203 and 204, the commission of an act or practice 

5 that is declared under this section to be an unfair or de6 ceptive act or practice within the meaning of section 

7 5(a)(1) of the Federal Trade Commission Act (15 U.S.C. 

8 45(a)(1)) shall be considered to be a violation of this sec9 tion. 

10 SEC. 203. ENFORCEMENT BY FEDERAL TRADE COMMIS11 SION. 

12 (a) VIOLATION OF RULE.—A violation of section 202 

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

14 or deceptive act or practice prescribed under section 

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

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

17 (b) POWERS OF COMMISSION.—The Commission 

18 shall enforce this title in the same manner, by the same 

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

20 as though all applicable terms and provisions of the Fed21 eral Trade Commission Act (15 U.S.C. 41 et seq.) were 

22 incorporated into and made a part of this title. Any person 

23 who violates section 202 shall be subject to the penalties 

24 and entitled to the privileges and immunities provided in 

25 the Federal Trade Commission Act. 


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

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. 204. PREEMPTION OF STATE LAWS ON PATENT DE5 MAND LETTERS AND ENFORCEMENT BY 

6 STATE ATTORNEYS GENERAL. 

7 (a) PREEMPTION.— 

8 (1) IN GENERAL.—This title 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 title 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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1 202, 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 on behalf of 

8 recipients who suffered actual damages as a re9 sult of such violation. 

10 (2) MAXIMUM CIVIL PENALTY.—Notwith11 standing the number of actions which may be 

12 brought against a person under this subsection, a 

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

14 $5,000,000 for a series of related violations of sec15 tion 202. 

16 (3) INTERVENTION BY THE FTC.— 

17 (A) NOTICE AND INTERVENTION.—The at18 torney general of a State shall provide prior 

19 written notice of any action under paragraph 

20 (1) to the Commission and provide the Commis21 sion with a copy of the complaint in the action, 

22 except in any case in which such prior notice is 

23 not feasible, in which case the attorney general 

24 shall serve such notice immediately upon instiVerDate Sep 11 2014 03:53 Mar 31, 2018 Jkt 079200 PO 00000 Frm 00061 Fmt 6652 Sfmt 6201 E:\BILLS\H5340.IH H5340

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1 tuting such action. The Commission shall have 

2 the right— 

3 (i) to intervene in the action; 

4 (ii) upon so intervening, to be heard 

5 on all matters arising therein; and 

6 (iii) to file petitions for appeal. 

7 (B) LIMITATION ON STATE ACTION WHILE

8 FEDERAL ACTION IS PENDING.—If the Commis9 sion has instituted a civil action for violation of 

10 section 202, no State attorney general may 

11 bring an action under this subsection during 

12 the pendency of that action against any defend13 ant named in the complaint of the Commission 

14 for any violation of such section alleged in the 

15 complaint. 

16 (4) CONSTRUCTION.—For purposes of bringing 

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

18 title shall be construed to prevent the attorney gen19 eral of a State from exercising the powers conferred 

20 on the attorney general by the laws of that State 

21 to— 

22 (A) conduct investigations; 

23 (B) administer oaths or affirmations; or 


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1 (C) compel the attendance of witnesses or 

2 the production of documentary and other evi3 dence. 

Æ 


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