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. 
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled, 
SECTION 1. SHORT TITLE. 
This Act may be cited as the ‘‘Saving High-Tech 
Innovators from Egregious Legal Disputes Act of 2013’’. 
SEC. 2. RECOVERY OF LITIGATION COSTS. 
(a) AMENDMENT.—Chapter 29 of title 35, United 
States Code, is amended by inserting after section 285 the 
following new section: 
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‘‘§ 285A. Recovery of litigation costs 
‘‘(a) IN GENERAL.—In an action involving the valid-
ity or infringement of a patent— 
‘‘(1) a party asserting invalidity or noninfringe-
ment may move for judgment that the adverse party 
does not meet at least one of the conditions de-
scribed in subsection (d); 
‘‘(2) not later than 90 days after a party has 
moved for the judgment described in paragraph (1), 
the adverse party shall be provided an opportunity 
to prove such party meets at least one of the condi-
tions described in subsection (d); 
‘‘(3) as soon as practicable after the adverse 
party has been provided an opportunity to respond 
under paragraph (2), but not later than 120 days 
after a party has moved for the judgment described 
in paragraph (1), the court shall make a determina-
tion whether the adverse party meets at least one of 
the conditions described in subsection (d); and 
‘‘(4) notwithstanding section 285, the Court 
shall award the recovery of full costs to any pre-
vailing party asserting invalidity or noninfringement, 
including reasonable attorney’s fees, other than the 
United States, upon the entry of a final judgment if 
the court determines that the adverse party did not 
meet at least one of the conditions described in sub-
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section (d), unless the court finds that exceptional 
circumstances make an award unjust. 
‘‘(b) BOND REQUIRED.—Any party that fails to meet 
a condition under subsection (a)(3) shall be required to 
post a bond in an amount determined by the court to cover 
the recovery of full costs described in subsection (a)(4). 
‘‘(c) TIMING AND EFFECT OF PENDING MOTION.— 
With respect to any motion made pursuant to subsection 
(a)(1) the following applies: 
‘‘(1) In the case of a motion that is filed before 
the moving party’s initial disclosure are due— 
‘‘(A) the court shall limit any discovery to 
discovery that is necessary for the disposition of 
the motion; and 
‘‘(B) the court may delay issuing any 
scheduling order until after ruling on the mo-
tion. 
‘‘(2) In the case of a motion that is filed after 
the moving party’s initial disclosures are due the 
court may delay ruling on the motion until after the 
entry of final judgment. 
‘‘(3) In the case of a motion that is filed after 
the entry of final judgment, any such motion must 
be combined with a motion for fees to the prevailing 
party. 
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‘‘(d) CONDITION DEFINED.—For purposes of this 
section, a ‘condition’ means, with respect to the party al-
leging infringement, any of the following: 
‘‘(1) ORIGINAL INVENTOR.—Such party is the 
inventor, a joint inventor, or in the case of a patent 
filed by and awarded to an assignee of the original 
inventor or joint inventor, the original assignee of 
the patent. 
‘‘(2) EXPLOITATION
OF
THE
PATENT.—Such 
party can provide documentation to the court of sub-
stantial investment made by such party in the ex-
ploitation of the patent through production or sale 
of an item covered by the patent. 
‘‘(3) UNIVERSITY OR TECHNOLOGY TRANSFER 
ORGANIZATION.—Such party is— 
‘‘(A) an institution of higher education (as 
that term is defined in section 101 of the High-
er Education Act of 1965 (20 U.S.C. 1001); or 
‘‘(B) a technology transfer organization 
whose primary purpose is to facilitate the com-
mercialization of technology developed by one or 
more institutions of higher education.’’. 
(b) TECHNICAL AND CONFORMING AMENDMENT.— 
The table of sections for chapter 29 of title 35, United 
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States Code, is amended by inserting after the item relat-
ing to section 285 the following new item: 
‘‘285A. Recovery of litigation costs for patent.’’. 
(c) EFFECTIVE DATE.—The amendment made by 
subsection (a) shall take effect on the date of the enact-
ment of this Act and shall apply to any action involving 
the validity or infringement of a patent for which a com-
plaint is filed on or after the date of the enactment of 
this Act. 
Æ 
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