‘‘(2) a substitute statement meeting the re-
quirements of subsection (d) was filed in the earlier 
filed application with respect to the individual; or 
‘‘(3) an assignment meeting the requirements 
of subsection (e) was executed with respect to the 
earlier-filed application by the individual and was re-
corded in connection with the earlier-filed applica-
tion. 
‘‘(h) SUPPLEMENTAL
AND
CORRECTED
STATE-
MENTS; FILING ADDITIONAL STATEMENTS.— 
‘‘(1) IN GENERAL.—Any person making a state-
ment required under this section may withdraw, re-
place, or otherwise correct the statement at any 
time. If a change is made in the naming of the in-
ventor requiring the filing of 1 or more additional 
statements under this section, such additional state-
ments shall be filed in accordance with regulations 
established by the Director. 
‘‘(2) SUPPLEMENTAL
STATEMENTS
NOT
RE-
QUIRED.—If an individual has executed an oath or 
declaration under subsection (a) or an assignment 
meeting the requirements of subsection (e) with re-
spect to an application for patent, the Director may 
not thereafter require that individual to make any 
additional oath, declaration, or other statement
equivalent to those required by this section in con-
nection with the application for patent or any patent 
issuing thereon. 
‘‘(3) SAVINGS CLAUSE.—No patent shall be in-
valid or unenforceable based upon the failure to 
comply with a requirement under this section if the 
failure is remedied as provided under paragraph (1). 
‘‘(i) ACKNOWLEDGMENT OF PENALTIES.—Any dec-
laration or statement filed under this section must contain 
an acknowledgment that any willful false statement is 
punishable by fine or imprisonment, or both, under section 
1001 of title 18.’’. 
(2) RELATIONSHIP
TO
DIVISIONAL
APPLICA-
TIONS.—Section 121 is amended by striking ‘‘If a 
divisional application’’ and all that follows through 
‘‘inventor.’’. 
(3) REQUIREMENTS FOR NONPROVISIONAL AP-
PLICATIONS.—Section 111(a) is amended— 
(A) in paragraph (2)(C), by striking ‘‘by 
the applicant’’ and inserting ‘‘or declaration’’; 
(B) in the heading for paragraph (3), by 
striking ‘‘AND OATH’’; and 
(C) by striking ‘‘and oath’’ each place it 
appears.
(4) CONFORMING AMENDMENT.—The item re-
lating to section 115 in the table of sections for 
chapter 11 is amended to read as follows: 
‘‘115. Inventor’s oath or declaration.’’. 
(b) SPECIFICATION.—Section 112 is amended— 
(1) in the first paragraph—— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(a) IN GENERAL.—The specification’’; 
and 
(B) by striking ‘‘of carrying out his inven-
tion’’ and inserting ‘‘or joint inventor of car-
rying out the invention’’; and 
(2) in the second paragraph— 
(A) by striking ‘‘The specification’’ and in-
serting ‘‘(b) CONCLUSION.—The specification’’; 
and 
(B) by striking ‘‘applicant regards as his 
invention’’ and inserting ‘‘inventor or a joint in-
ventor regards as the invention’’; 
(3) in the third paragraph, by striking ‘‘A 
claim’’ and inserting ‘‘(c) FORM.—A claim’’; 
(4) in the fourth paragraph, by striking ‘‘Sub-
ject to the following paragraph,’’ and inserting ‘‘(d) 
REFERENCE
IN DEPENDENT FORMS.—Subject to 
subsection (e),’’;
(5) in the fifth paragraph, by striking ‘‘A 
claim’’ and inserting ‘‘(e) REFERENCE IN MULTIPLE 
DEPENDENT FORM.—A claim’’; and 
(6) in the last paragraph, by striking ‘‘An ele-
ment’’ and inserting ‘‘(f) ELEMENT IN CLAIM FOR 
A COMBINATION.—An element’’. 
(c) EFFECTIVE DATE.—The amendments made by 
this section— 
(1) shall take effect at the end of the 1-year pe-
riod beginning on the date of the enactment of this 
Act; and 
(2) shall apply to any application for patent, or 
application for reissue patent, that is filed on or 
after the effective date under paragraph (1). 
SEC. 5. RIGHT OF THE INVENTOR TO OBTAIN DAMAGES. 
(a) DAMAGES.—Section 284 is amended— 
(1) in the first paragraph, by striking ‘‘Upon’’ 
and inserting ‘‘(a) IN GENERAL.—Upon’’; 
(2) by designating the second undesignated 
paragraph as subsection (c); 
(3) by inserting after subsection (a) (as des-
ignated by paragraph (1) of this subsection) the fol-
lowing: 
‘‘(b) REASONABLE ROYALTY.—
‘‘(1) IN
GENERAL.— An award pursuant to 
subsection (a) that is based upon a reasonable roy-
alty shall be determined in accordance with this sub-
section. Based on the facts of the case, the court 
shall determine whether paragraph (2), (3), or (4) 
will be used by the court or the jury in calculating 
a reasonable royalty. The court shall identify the 
factors that are relevant to the determination of a 
reasonable royalty under the applicable paragraph, 
and the court or jury, as the case may be, shall con-
sider only those factors in making the determination. 
‘‘(2) RELATIONSHIP
OF
DAMAGES
TO
CON-
TRIBUTIONS OVER PRIOR ART.—Upon a showing to 
the satisfaction of the court that a reasonable roy-
alty should be based on a portion of the value of the 
infringing product or process, the court shall con-
duct an analysis to ensure that a reasonable royalty 
under subsection (a) is applied only to that economic 
value properly attributable to the patent’s specific 
contribution over the prior art. The court shall ex-
clude from the analysis the economic value properly 
attributable to the prior art, and other features or 
improvements, whether or not themselves patented, 
that contribute economic value to the infringing 
product or process.
‘‘(3) ENTIRE MARKET VALUE.—Upon a show-
ing to the satisfaction of the court that the patent’s 
specific contribution over the prior art is the pre-
dominant basis for market demand for an infringing 
product or process, damages may be based upon the 
entire market value of the products or processes in-
volved that satisfy that demand. 
‘‘(4) OTHER
FACTORS.—If neither paragraph 
(2) or (3) is appropriate for determining a reason-
able royalty, the court may consider, or direct the 
jury to consider, the terms of any nonexclusive mar-
ketplace licensing of the invention, where appro-
priate, as well as any other relevant factors under 
applicable law. 
‘‘(5) COMBINATION
INVENTIONS.—For pur-
poses of paragraphs (2) and (3), in the case of a 
combination invention the elements of which are 
present individually in the prior art, the patentee 
may show that the contribution over the prior art 
may include the value of the additional function re-
sulting from the combination, as well as the en-
hanced value, if any, of some or all of the prior art 
elements resulting from the combination.’’;
(4) by amending subsection (c) (as designated 
by paragraph (1) of this subsection) to read as fol-
lows: 
‘‘(c) WILLFUL INFRINGEMENT.— 
‘‘(1) INCREASED DAMAGES.—A court that has 
determined that the infringer has willfully infringed 
a patent or patents may increase the damages up to 
three times the amount of damages found or as-
sessed under subsection (a), except that increased 
damages under this paragraph shall not apply to 
provisional rights under section 154(d). 
‘‘(2) PERMITTED
GROUNDS
FOR
WILLFUL-
NESS.—A court may find that an infringer has will-
fully infringed a patent only if the patent owner pre-
sents clear and convincing evidence that— 
‘‘(A) after receiving written notice from 
the patentee— 
‘‘(i) alleging acts of infringement in a 
manner sufficient to give the infringer an 
objectively reasonable apprehension of suit 
on such patent, and 
‘‘(ii) identifying with particularity 
each claim of the patent, each product or 
process that the patent owner alleges in-
fringes the patent, and the relationship of 
such product or process to such claim, 
the infringer, after a reasonable opportunity to 
investigate, thereafter performed one or more of 
the alleged acts of infringement; 
‘‘(B) the infringer intentionally copied the 
patented invention with knowledge that it was 
patented; or 
‘‘(C) after having been found by a court to 
have infringed that patent, the infringer en-
gaged in conduct that was not colorably dif-
ferent from the conduct previously found to 
have infringed the patent, and that resulted in 
a separate finding of infringement of the same 
patent. 
‘‘(3) LIMITATIONS
ON
WILLFULNESS.—(A) A 
court may not find that an infringer has willfully in-
fringed a patent under paragraph (2) for any period 
of time during which the infringer had an informed 
good faith belief that the patent was invalid or unen-
forceable, or would not be infringed by the conduct 
later shown to constitute infringement of the patent. 
‘‘(B) An informed good faith belief within the 
meaning of subparagraph (A) may be established 
by—
‘‘(i) reasonable reliance on advice of coun-
sel; 
‘‘(ii) evidence that the infringer sought to 
modify its conduct to avoid infringement once it 
had discovered the patent; or 
‘‘(iii) other evidence a court may find suffi-
cient to establish such good faith belief. 
‘‘(C) The decision of the infringer not to 
present evidence of advice of counsel is not relevant 
to a determination of willful infringement under 
paragraph (2). 
‘‘(4) LIMITATION
ON
PLEADING.—Before the 
date on which a court determines that the patent in 
suit is not invalid, is enforceable, and has been in-
fringed by the infringer, a patentee may not plead 
and a court may not determine that an infringer has 
willfully infringed a patent.’’; and 
(5) in the third undesignated paragraph, by 
striking ‘‘The court’’ and inserting ‘‘(d) EXPERT 
TESTIMONY.—The court’’. 
(b) REPORT TO CONGRESSIONAL COMMITTEES.—Not 
later than June 30, 2009, the Under Secretary of Com-
merce for Intellectual Property and Director of the United 
States Patent and Trademark Office (in this subsection 
referred to as the ‘‘Director’’) shall report to the Com-
mittee on the Judiciary of the House of Representatives 
and the Committee on the Judiciary of the Senate the 
findings and recommendations of the Director on the oper-
ation of prior user rights in selected countries in the in-
dustrialized world. The report shall include the following: 
(1) A comparison between the patent laws of 
the United States and the laws of other industri-
alized countries, including the European Union, 
Japan, Canada, and Australia. 
(2) An analysis of the effect of prior user rights 
on innovation rates in the selected countries. 
(3) An analysis of the correlation, if any, be-
tween prior user rights and start-up enterprises and 
the ability to attract venture capital to start new 
companies. 
(4) An analysis of the effect of prior user 
rights, if any, on small businesses, universities, and 
individual inventors. 
(5) An analysis of any legal or constitutional 
issues that arise from placing elements of trade se-
cret law, in the form of prior user rights, in patent 
law. 
In preparing the report, the Director shall consult with 
the Secretary of State and the Attorney General of the 
United States.
(c) EFFECTIVE DATE.—The amendments made by 
this section shall apply to any civil action commenced on 
or after the date of the enactment of this Act. 
(d) REVIEW EVERY 7 YEARS.—Not later than the 
end of the 7-year period beginning on the date of the en-
actment of this Act, and the end of every 7-year period 
thereafter, the Under Secretary of Commerce for Intellec-
tual Property and Director of the United States Patent 
and Trademark Office (in this subsection referred to as 
the ‘‘Director’’) shall— 
(1) conduct a study on the effectiveness and ef-
ficiency of the amendments made by this section; 
and 
(2) submit to the Committees on the Judiciary 
of the House of Representatives and the Senate a 
report on the results of the study, including any rec-
ommendations the Director has on amendments to 
the law and other recommendations of the Director 
with respect to the right of the inventor to obtain 
damages for patent infringement. 
SEC. 6. POST-GRANT PROCEDURES AND OTHER QUALITY 
ENHANCEMENTS. 
(a) CITATION OF PRIOR ART.— 
(1) IN GENERAL.—Section 301 is amended to 
read as follows:
‘‘§ 301. Citation of prior art 
‘‘(a) IN GENERAL.—Any person at any time may cite 
to the Office in writing— 
‘‘(1) prior art consisting of patents or printed 
publications which that person believes to have a 
bearing on the patentability of any claim of a par-
ticular patent; or 
‘‘(2) written statements of the patent owner 
filed in a proceeding before a Federal court or the 
Patent and Trademark Office in which the patent 
owner takes a position on the scope of one or more 
patent claims. 
‘‘(b) SUBMISSIONS PART OF OFFICIAL FILE.—If the 
person citing prior art or written submissions under sub-
section (a) explains in writing the pertinence and manner 
of applying the prior art or written submissions to at least 
one claim of the patent, the citation of the prior art or 
written submissions (as the case may be) and the expla-
nation thereof shall become a part of the official file of 
the patent. 
‘‘(c) PROCEDURES FOR WRITTEN STATEMENTS.— 
‘‘(1) 
SUBMISSION
OF
ADDITIONAL
MATE-
RIALS.—A party that submits written statements 
under subsection (a)(2) in a proceeding shall include 
any other documents, pleadings, or evidence from 
the proceeding that address the patent owner’s
statements or the claims addressed by the written 
statements. 
‘‘(2) LIMITATION ON USE OF STATEMENTS.— 
Written statements submitted under subsection 
(a)(2) shall not be considered for any purpose other 
than to determine the proper meaning of the claims 
that are the subject of the request in a proceeding 
ordered pursuant to section 304 or 313. Any such 
written statements, and any materials submitted 
under paragraph (1), that are subject to an applica-
ble protective order shall be redacted to exclude in-
formation subject to the order. 
‘‘(d) IDENTITY WITHHELD.—Upon the written re-
quest of the person citing prior art or written statements 
under subsection (a), the person’s identity shall be ex-
cluded from the patent file and kept confidential.’’. 
(b) REEXAMINATION.—Section 303(a) is amended to 
read as follows: 
‘‘(a) Within three months after the owner of a patent 
files a request for reexamination under section 302, the 
Director shall determine whether a substantial new ques-
tion of patentability affecting any claim of the patent con-
cerned is raised by the request, with or without consider-
ation of other patents or printed publications. On the Di-
rector’s own initiative, and at any time, the Director may
determine whether a substantial new question of patent-
ability is raised by patents and publications discovered by 
the Director, is cited under section 301, or is cited by any 
person other than the owner of the patent under section 
302 or section 311. The existence of a substantial new 
question of patentability is not precluded by the fact that 
a patent or printed publication was previously considered 
by the Office.’’. 
(c) CONDUCT OF INTER PARTES PROCEEDINGS.— 
Section 314 is amended— 
(1) in the first sentence of subsection (a), by 
striking ‘‘conducted according to the procedures es-
tablished for initial examination under the provisions 
of sections 132 and 133’’ and inserting ‘‘heard by 
an administrative patent judge in accordance with 
procedures which the Director shall establish’’; 
(2) in subsection (b), by striking paragraph (2) 
and inserting the following: 
‘‘(2) The third-party requester shall have the oppor-
tunity to file written comments on any action on the mer-
its by the Office in the inter partes reexamination pro-
ceeding, and on any response that the patent owner files 
to such an action, if those written comments are received 
by the Office within 60 days after the date of service on
the third-party requester of the Office action or patent 
owner response, as the case may be.’’; and 
(3) by adding at the end the following: 
‘‘(d) ORAL HEARING.—At the request of a third 
party requestor or the patent owner, the administrative 
patent judge shall conduct an oral hearing, unless the 
judge finds cause lacking for such hearing.’’. 
(d) ESTOPPEL.—Section 315(c) is amended by strik-
ing ‘‘or could have raised’’. 
(e) REEXAMINATION PROHIBITED AFTER DISTRICT 
COURT DECISION.—Section 317(b) is amended— 
(1) in the subsection heading, by striking 
‘‘FINAL DECISION’’ and inserting ‘‘DISTRICT COURT 
DECISION’’; and 
(2) by striking ‘‘Once a final decision has been 
entered’’ and inserting ‘‘Once the judgment of the 
district court has been entered’’. 
(f) POST-GRANT OPPOSITION PROCEDURES.— 
(1) IN GENERAL.—Part III is amended by add-
ing at the end the following new chapter: 
‘‘CHAPTER 32—POST-GRANT REVIEW 
PROCEDURES 
‘‘Sec. 
‘‘321. Petition for post-grant review. 
‘‘322. Timing and bases of petition. 
‘‘323. Requirements of petition. 
‘‘324. Prohibited filings. 
‘‘325. Submission of additional information; showing of sufficient grounds. 
‘‘326. Conduct of post-grant review proceedings.
‘‘327. Patent owner response. 
‘‘328. Proof and evidentiary standards. 
‘‘329. Amendment of the patent. 
‘‘330. Decision of the Board. 
‘‘331. Effect of decision. 
‘‘332. Settlement. 
‘‘333. Relationship to other pending proceedings. 
‘‘334. Effect of decisions rendered in civil action on post-grant review pro-
ceedings. 
‘‘335. Effect of final decision on future proceedings. 
‘‘336. Appeal. 
‘‘§ 321. Petition for post-grant review 
‘‘Subject to sections 322, 324, 332, and 333, a per-
son who is not the patent owner may file with the Office 
a petition for cancellation seeking to institute a post-grant 
review proceeding to cancel as unpatentable any claim of 
a patent on any ground that could be raised under para-
graph (2) or (3) of section 282(b) (relating to invalidity 
of the patent or any claim). The Director shall establish, 
by regulation, fees to be paid by the person requesting 
the proceeding, in such amounts as the Director deter-
mines to be reasonable. 
‘‘§ 322. Timing and bases of petition 
‘‘A post-grant proceeding may be instituted under 
this chapter pursuant to a cancellation petition filed under 
section 321 only if— 
‘‘(1) the petition is filed not later than 12 
months after the issuance of the patent or a reissue 
patent, as the case may be; or 
‘‘(2) the patent owner consents in writing to the 
proceeding.
‘‘§ 323. Requirements of petition 
‘‘A cancellation petition filed under section 321 may 
be considered only if— 
‘‘(1) the petition is accompanied by payment of 
the fee established by the Director under section 
321; 
‘‘(2) the petition identifies the cancellation peti-
tioner; 
‘‘(3) for each claim sought to be canceled, the 
petition sets forth in writing the basis for cancella-
tion and provides the evidence in support thereof, in-
cluding copies of patents and printed publications, 
or written testimony of a witness attested to under 
oath or declaration by the witness, or any other in-
formation that the Director may require by regula-
tion; and 
‘‘(4) the petitioner provides copies of the peti-
tion, including any evidence submitted with the peti-
tion and any other information submitted under 
paragraph (3), to the patent owner or, if applicable, 
the designated representative of the patent owner. 
‘‘§ 324. Prohibited filings 
‘‘A post-grant review proceeding may not be insti-
tuted under section 322 if the petition for cancellation re-
questing the proceeding—
‘‘(1) identifies the same cancellation petitioner 
and the same patent as a previous petition for can-
cellation filed under such section; or 
‘‘(2) is based on the best mode requirement 
contained in section 112. 
‘‘§ 325. Submission of additional information; show-
ing of sufficient grounds 
‘‘(a) IN GENERAL.—The cancellation petitioner shall 
file such additional information with respect to the peti-
tion as the Director may require. For each petition sub-
mitted under section 321, the Director shall determine if 
the written statement, and any evidence submitted with 
the request, establish that a substantial question of pat-
entability exists for at least one claim in the patent. The 
Director may initiate a post-grant review proceeding if the 
Director determines that the information presented pro-
vides sufficient grounds to believe that there is a substan-
tial question of patentability concerning one or more 
claims of the patent at issue. 
‘‘(b) NOTIFICATION; DETERMINATIONS NOT RE-
VIEWABLE.—The Director shall notify the patent owner 
and each petitioner in writing of the Director’s determina-
tion under subsection (a), including a determination to 
deny the petition. The Director shall make that determina-
tion in writing not later than 60 days after receiving the
petition. Any determination made by the Director under 
subsection (a), including whether or not to institute a 
post-grant review proceeding or to deny the petition, shall 
not be reviewable. 
‘‘§ 326. Conduct of post-grant review proceedings 
‘‘(a) IN GENERAL.—The Director shall prescribe reg-
ulations, in accordance with section 2(b)(2)— 
‘‘(1) establishing and governing post-grant re-
view proceedings under this chapter and their rela-
tionship to other proceedings under this title; 
‘‘(2) establishing procedures for the submission 
of supplemental information after the petition for 
cancellation is filed; and 
‘‘(3) setting forth procedures for discovery of 
relevant evidence, including that such discovery shall 
be limited to evidence directly related to factual as-
sertions advanced by either party in the proceeding, 
and the procedures for obtaining such evidence shall 
be consistent with the purpose and nature of the 
proceeding. 
In carrying out paragraph (3), the Director shall bear in 
mind that discovery must be in the interests of justice. 
‘‘(b) 
POST-GRANT
REGULATIONS.—Regulations 
under subsection (a)(1)—
‘‘(1) shall require that the final determination 
in a post-grant proceeding issue not later than one 
year after the date on which the post-grant review 
proceeding is instituted under this chapter, except 
that, for good cause shown, the Director may extend 
the 1-year period by not more than six months; 
‘‘(2) shall provide for discovery upon order of 
the Director; 
‘‘(3) shall provide for publication of notice in 
the Federal Register of the filing of a petition for 
post-grant review under this chapter, for publication 
of the petition, and documents, orders, and decisions 
relating to the petition, on the website of the Patent 
and Trademark Office, and for filings under seal ex-
empt from publication requirements; 
‘‘(4) shall prescribe sanctions for abuse of dis-
covery, abuse of process, or any other improper use 
of the proceeding, such as to harass or to cause un-
necessary delay or unnecessary increase in the cost 
of the proceeding; 
‘‘(5) may provide for protective orders gov-
erning the exchange and submission of confidential 
information; and 
‘‘(6) shall ensure that any information sub-
mitted by the patent owner in support of any
amendment entered under section 329 is made avail-
able to the public as part of the prosecution history 
of the patent. 
‘‘(c) CONSIDERATIONS.—In prescribing regulations 
under this section, the Director shall consider the effect 
on the economy, the integrity of the patent system, and 
the efficient administration of the Office. 
‘‘(d) CONDUCT OF PROCEEDING.—The Patent Trial 
and Appeal Board shall, in accordance with section 6(b), 
conduct each post-grant review proceeding authorized by 
the Director. 
‘‘§ 327. Patent owner response 
‘‘After a post-grant proceeding under this chapter 
has been instituted with respect to a patent, the patent 
owner shall have the right to file, within a time period 
set by the Director, a response to the cancellation petition. 
The patent owner shall file with the response, through af-
fidavits or declarations, any additional factual evidence 
and expert opinions on which the patent owner relies in 
support of the response. 
‘‘§ 328. Proof and evidentiary standards 
‘‘(a) IN GENERAL.—The presumption of validity set 
forth in section 282 shall not apply in a challenge to any 
patent claim under this chapter.
‘‘(b) BURDEN OF PROOF.—The party advancing a 
proposition under this chapter shall have the burden of 
proving that proposition by a preponderance of the evi-
dence. 
‘‘§ 329. Amendment of the patent 
‘‘(a) IN GENERAL.—In response to a challenge in a 
petition for cancellation, the patent owner may file one 
motion to amend the patent in one or more of the fol-
lowing ways: 
‘‘(1) Cancel any challenged patent claim. 
‘‘(2) For each challenged claim, propose a sub-
stitute claim. 
‘‘(3) Amend the patent drawings or otherwise 
amend the patent other than the claims. 
‘‘(b) ADDITIONAL MOTIONS.—Additional motions to 
amend may be permitted only for good cause shown. 
‘‘(c) SCOPE OF CLAIMS.—An amendment under this 
section may not enlarge the scope of the claims of the pat-
ent or introduce new matter. 
‘‘§ 330. Decision of the Board 
‘‘If the post-grant review proceeding is instituted and 
not dismissed under this chapter, the Patent Trial and 
Appeal Board shall issue a final written decision address-
ing the patentability of any patent claim challenged and 
any new claim added under section 329.
‘‘§ 331. Effect of decision 
‘‘(a) IN GENERAL.—If the Patent Trial and Appeal 
Board issues a final decision under section 330 and the 
time for appeal has expired or any appeal proceeding has 
terminated, the Director shall issue and publish a certifi-
cate canceling any claim of the patent finally determined 
to be unpatentable and incorporating in the patent by op-
eration of the certificate any new claim determined to be 
patentable. 
‘‘(b) NEW CLAIMS.—Any new claim held to be pat-
entable and incorporated into a patent in a post-grant re-
view proceeding shall have the same effect as that speci-
fied in section 252 for reissued patents on the right of 
any person who made, purchased, offered to sell, or used 
within the United States, or imported into the United 
States, anything patented by such new claim, or who made 
substantial preparations therefor, before a certificate 
under subsection (a) of this section is issued. 
‘‘§ 332. Settlement 
‘‘(a) IN GENERAL.—A post-grant review proceeding 
shall be terminated with respect to any petitioner upon 
the joint request of the petitioner and the patent owner, 
unless the Patent Trial and Appeal Board has issued a 
written decision before the request for termination is filed. 
If the post-grant review proceeding is terminated with re-
spect to a petitioner under this paragraph, no estoppel
shall apply to that petitioner. If no petitioner remains in 
the proceeding, the panel of administrative patent judges 
assigned to the proceeding shall terminate the proceeding. 
‘‘(b) AGREEMENT IN WRITING.—Any agreement or 
understanding between the patent owner and a petitioner, 
including any collateral agreements referred to in the 
agreement or understanding, that is made in connection 
with or in contemplation of the termination of a post-grant 
review proceeding, must be in writing. A post-grant review 
proceeding as between the parties to the agreement or un-
derstanding may not be terminated until a copy of the 
agreement or understanding, including any such collateral 
agreements, has been filed in the Office. If any party filing 
such an agreement or understanding requests, the agree-
ment or understanding shall be kept separate from the 
file of the post-grant review proceeding, and shall be made 
available only to Government agencies on written request, 
or to any person on a showing of good cause. 
‘‘§ 333. Relationship to other proceedings 
‘‘(a) IN
GENERAL.—Notwithstanding subsection 
135(a), sections 251 and 252, and chapter 30, the Direc-
tor may determine the manner in which any reexamination 
proceeding, reissue proceeding, interference proceeding 
(commenced with respect to an application for patent filed 
before the effective date provided in section 3(k) of the
Patent Reform Act of 2007), derivation proceeding, or 
post-grant review proceeding, that is pending during a 
post-grant review proceeding, may proceed, including pro-
viding for stay, transfer, consolidation, or termination of 
any such proceeding. 
‘‘(b) STAYS.—The Director may stay a post-grant re-
view proceeding if a pending civil action for infringement 
of a patent addresses the same or substantially the same 
questions of patentability raised against the patent in a 
petition for post-grant review. 
‘‘(c) 
EFFECT
OF
COMMENCEMENT
OF
PRO-
CEEDING.—The commencement of a post-grant review 
proceeding— 
‘‘(1) shall not limit in any way the right of the 
patent owner to commence an action for infringe-
ment of the patent; and 
‘‘(2) shall not be cited as evidence relating to 
the validity of any claim of the patent in any pro-
ceeding before a court or the International Trade 
Commission concerning the patent. 
‘‘§ 334. Effect of decisions rendered in civil action on 
post-grant review proceedings 
‘‘If a final decision is entered against a party in a 
civil action arising in whole or in part under section 1338