I 
114TH CONGRESS 
1ST SESSION 
H. R. 9 
To amend title 35, United States Code, and the Leahy-Smith America Invents 
Act to make improvements and technical corrections, and for other purposes. 
IN THE HOUSE OF REPRESENTATIVES 
FEBRUARY 5, 2015 
Mr. GOODLATTE (for himself, Mr. DEFAZIO, Mr. ISSA, Mr. NADLER, Mr. 
SMITH of Texas, Ms. LOFGREN, Mr. CHABOT, Ms. ESHOO, Mr. FORBES, 
Mr. PIERLUISI, Mr. CHAFFETZ, Mr. JEFFRIES, Mr. MARINO, Mr. 
FARENTHOLD, Mr. HOLDING, Mr. JOHNSON of Ohio, Mr. HUFFMAN, Mr. 
HONDA, Mr. LARSEN of Washington, and Mr. THOMPSON of California) 
introduced the following bill; which was referred to the Committee on the 
Judiciary 
A BILL 
To amend title 35, United States Code, and the Leahy- 
Smith America Invents Act to make improvements and 
technical corrections, 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; TABLE OF CONTENTS. 
(a) SHORT TITLE.—This Act may be cited as the 
‘‘Innovation Act’’. 
(b) TABLE OF CONTENTS.—The table of contents for 
this Act is as follows: 
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Sec. 1. Short title; table of contents. 
Sec. 2. Definitions. 
Sec. 3. Patent infringement actions. 
Sec. 4. Transparency of patent ownership. 
Sec. 5. Customer-suit exception. 
Sec. 6. Procedures and practices to implement recommendations of the Judicial 
Conference. 
Sec. 7. Small business education, outreach, and information access. 
Sec. 8. Studies on patent transactions, quality, and examination. 
Sec. 9. Improvements and technical corrections to the Leahy-Smith America In-
vents Act. 
Sec. 10. Effective date. 
SEC. 2. DEFINITIONS. 
In this Act: 
(1) DIRECTOR.—The term ‘‘Director’’ means 
the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent 
and Trademark Office. 
(2) OFFICE.—The term ‘‘Office’’ means the 
United States Patent and Trademark Office. 
SEC. 3. PATENT INFRINGEMENT ACTIONS. 
(a) PLEADING REQUIREMENTS.— 
(1) AMENDMENT.—Chapter 29 of title 35, 
United States Code, is amended by inserting after 
section 281 the following: 
‘‘§ 281A. Pleading requirements for patent infringe-
ment actions 
‘‘(a) PLEADING REQUIREMENTS.—Except as pro-
vided in subsection (b), in a civil action in which a party 
asserts a claim for relief arising under any Act of Con-
gress relating to patents, a party alleging infringement 
shall include in the initial complaint, counterclaim, or 
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cross-claim for patent infringement, unless the informa-
tion is not reasonably accessible to such party, the fol-
lowing: 
‘‘(1) An identification of each patent allegedly 
infringed. 
‘‘(2) An identification of each claim of each pat-
ent identified under paragraph (1) that is allegedly 
infringed. 
‘‘(3) For each claim identified under paragraph 
(2), an identification of each accused process, ma-
chine, manufacture, or composition of matter (re-
ferred to in this section as an ‘accused instrumen-
tality’) alleged to infringe the claim. 
‘‘(4) For each accused instrumentality identi-
fied under paragraph (3), an identification with par-
ticularity, if known, of— 
‘‘(A) the name or model number of each 
accused instrumentality; or 
‘‘(B) if there is no name or model number, 
a description of each accused instrumentality. 
‘‘(5) For each accused instrumentality identi-
fied under paragraph (3), a clear and concise state-
ment of— 
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‘‘(A) where each element of each claim 
identified under paragraph (2) is found within 
the accused instrumentality; and 
‘‘(B) with detailed specificity, how each 
limitation of each claim identified under para-
graph (2) is met by the accused instrumen-
tality. 
‘‘(6) For each claim of indirect infringement, a 
description of the acts of the alleged indirect in-
fringer that contribute to or are inducing the direct 
infringement. 
‘‘(7) A description of the authority of the party 
alleging infringement to assert each patent identified 
under paragraph (1) and of the grounds for the 
court’s jurisdiction. 
‘‘(8) A clear and concise description of the prin-
cipal business, if any, of the party alleging infringe-
ment. 
‘‘(9) A list of each complaint filed, of which the 
party alleging infringement has knowledge, that as-
serts or asserted any of the patents identified under 
paragraph (1). 
‘‘(10) For each patent identified under para-
graph (1), whether a standard-setting body has spe-
cifically declared such patent to be essential, poten-
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tially essential, or having potential to become essen-
tial to that standard-setting body, and whether the 
United States Government or a foreign government 
has imposed specific licensing requirements with re-
spect to such patent. 
‘‘(b) INFORMATION NOT READILY ACCESSIBLE.—If 
information required to be disclosed under subsection (a) 
is not readily accessible to a party, that information may 
instead be generally described, along with an explanation 
of why such undisclosed information was not readily acces-
sible, and of any efforts made by such party to access such 
information. 
‘‘(c) CONFIDENTIAL INFORMATION.—A party re-
quired to disclose information described under subsection 
(a) may file, under seal, information believed to be con-
fidential, with a motion setting forth good cause for such 
sealing. If such motion is denied by the court, the party 
may seek to file an amended complaint. 
‘‘(d) EXEMPTION.—A civil action that includes a 
claim for relief arising under section 271(e)(2) shall not 
be subject to the requirements of subsection (a).’’. 
(2) CONFORMING AMENDMENT.—The table of 
sections for chapter 29 of title 35, United States 
Code, is amended by inserting after the item relating 
to section 281 the following new item: 
‘‘281A. Pleading requirements for patent infringement actions.’’. 
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(b) FEES AND OTHER EXPENSES.— 
(1) AMENDMENT.—Section 285 of title 35, 
United States Code, is amended to read as follows: 
‘‘§ 285. Fees and other expenses 
‘‘(a) AWARD.—The court shall award, to a prevailing 
party, reasonable fees and other expenses incurred by that 
party in connection with a civil action in which any party 
asserts a claim for relief arising under any Act of Con-
gress relating to patents, unless the court finds that the 
position and conduct of the nonprevailing party or parties 
were reasonably justified in law and fact or that special 
circumstances (such as severe economic hardship to a 
named inventor) make an award unjust. 
‘‘(b) CERTIFICATION AND RECOVERY.—Upon motion 
of any party to the action, the court shall require another 
party to the action to certify whether or not the other 
party will be able to pay an award of fees and other ex-
penses if such an award is made under subsection (a). If 
a nonprevailing party is unable to pay an award that is 
made against it under subsection (a), the court may make 
a party that has been joined under section 299(d) with 
respect to such party liable for the unsatisfied portion of 
the award. 
‘‘(c) COVENANT NOT TO SUE.—A party to a civil ac-
tion that asserts a claim for relief arising under any Act 
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of Congress relating to patents against another party, and 
that subsequently unilaterally extends to such other party 
a covenant not to sue for infringement with respect to the 
patent or patents at issue, shall be deemed to be a nonpre-
vailing party (and the other party the prevailing party) 
for purposes of this section, unless the party asserting 
such claim would have been entitled, at the time that such 
covenant was extended, to voluntarily dismiss the action 
or claim without a court order under Rule 41 of the Fed-
eral Rules of Civil Procedure.’’. 
(2) CONFORMING
AMENDMENT
AND
AMEND-
MENT.— 
(A) CONFORMING AMENDMENT.—The item 
relating to section 285 of the table of sections 
for chapter 29 of title 35, United States Code, 
is amended to read as follows: 
‘‘285. Fees and other expenses.’’. 
(B) AMENDMENT.—Section 273 of title 
35, United States Code, is amended by striking 
subsections (f) and (g). 
(3) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect on the date of the 
enactment of this Act and shall apply to any action 
for which a complaint is filed on or after the first 
day of the 6-month period ending on that effective 
date. 
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(c) JOINDER
OF INTERESTED PARTIES.—Section 
299 of title 35, United States Code, is amended by adding 
at the end the following new subsection: 
‘‘(d) JOINDER OF INTERESTED PARTIES.— 
‘‘(1) JOINDER.—In a civil action arising under 
any Act of Congress relating to patents in which 
fees and other expenses have been awarded under 
section 285 to a prevailing party defending against 
an allegation of infringement of a patent claim, and 
in which the nonprevailing party alleging infringe-
ment is unable to pay the award of fees and other 
expenses, the court shall grant a motion by the pre-
vailing party to join an interested party if such pre-
vailing party shows that the nonprevailing party has 
no substantial interest in the subject matter at issue 
other than asserting such patent claim in litigation. 
‘‘(2) LIMITATION ON JOINDER.— 
‘‘(A) DISCRETIONARY
DENIAL
OF
MO-
TION.—The court may deny a motion to join an 
interested party under paragraph (1) if— 
‘‘(i) the interested party is not subject 
to service of process; or 
‘‘(ii) joinder under paragraph (1) 
would deprive the court of subject matter 
jurisdiction or make venue improper. 
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‘‘(B) REQUIRED DENIAL OF MOTION.—The 
court shall deny a motion to join an interested 
party under paragraph (1) if— 
‘‘(i) the interested party did not time-
ly receive the notice required by paragraph 
(3); or 
‘‘(ii) within 30 days after receiving 
the notice required by paragraph (3), the 
interested party renounces, in writing and 
with notice to the court and the parties to 
the action, any ownership, right, or direct 
financial interest (as described in para-
graph (4)) that the interested party has in 
the patent or patents at issue. 
‘‘(3) NOTICE
REQUIREMENT.—An interested 
party may not be joined under paragraph (1) unless 
it has been provided actual notice, within 30 days 
after the date on which it has been identified in the 
initial disclosure provided under section 290(b), that 
it has been so identified and that such party may 
therefore be an interested party subject to joinder 
under this subsection. Such notice shall be provided 
by the party who subsequently moves to join the in-
terested party under paragraph (1), and shall in-
clude language that— 
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‘‘(A) identifies the action, the parties 
thereto, the patent or patents at issue, and the 
pleading or other paper that identified the 
party under section 290(b); and 
‘‘(B) informs the party that it may be 
joined in the action and made subject to paying 
an award of fees and other expenses under sec-
tion 285(b) if— 
‘‘(i) fees and other expenses are 
awarded in the action against the party al-
leging infringement of the patent or pat-
ents at issue under section 285(a); 
‘‘(ii) the party alleging infringement is 
unable to pay the award of fees and other 
expenses; 
‘‘(iii) the party receiving notice under 
this paragraph is determined by the court 
to be an interested party; and 
‘‘(iv) the party receiving notice under 
this paragraph has not, within 30 days 
after receiving such notice, renounced in 
writing, and with notice to the court and 
the parties to the action, any ownership, 
right, or direct financial interest (as de-
scribed in paragraph (4)) that the inter-
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‘‘(ii) a person whose sole financial in-
terest in the patent or patents at issue is 
ownership of an equity interest in the 
party alleging infringement, unless such 
person also has the right or ability to influ-
ence, direct, or control the civil action.’’. 
(d) DISCOVERY LIMITS.— 
(1) AMENDMENT.—Chapter 29 of title 35, 
United States Code, is amended by adding at the 
end the following new section: 
‘‘§ 299A. Discovery in patent infringement action 
‘‘(a) DISCOVERY
IN PATENT INFRINGEMENT AC-
TION.—Except as provided in subsections (b) and (c), in 
a civil action arising under any Act of Congress relating 
to patents, if the court determines that a ruling relating 
to the construction of terms used in a patent claim as-
serted in the complaint is required, discovery shall be lim-
ited, until such ruling is issued, to information necessary 
for the court to determine the meaning of the terms used 
in the patent claim, including any interpretation of those 
terms used to support the claim of infringement. 
‘‘(b) DISCRETION TO EXPAND SCOPE
OF DIS-
COVERY.— 
‘‘(1) TIMELY RESOLUTION OF ACTIONS.—In the 
case of an action under any provision of Federal law 
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(including an action that includes a claim for relief 
arising under section 271(e)), for which resolution 
within a specified period of time of a civil action 
arising under any Act of Congress relating to pat-
ents will necessarily affect the rights of a party with 
respect to the patent, the court shall permit dis-
covery, in addition to the discovery authorized under 
subsection (a), before the ruling described in sub-
section (a) is issued as necessary to ensure timely 
resolution of the action. 
‘‘(2) RESOLUTION
OF
MOTIONS.—When nec-
essary to resolve a motion properly raised by a party 
before a ruling relating to the construction of terms 
described in subsection (a) is issued, the court may 
allow limited discovery in addition to the discovery 
authorized under subsection (a) as necessary to re-
solve the motion. 
‘‘(3) SPECIAL CIRCUMSTANCES.—In special cir-
cumstances that would make denial of discovery a 
manifest injustice, the court may permit discovery, 
in addition to the discovery authorized under sub-
section (a), as necessary to prevent the manifest in-
justice. 
‘‘(4) ACTIONS SEEKING RELIEF BASED ON COM-
PETITIVE HARM.—The limitation on discovery pro-
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vided under subsection (a) shall not apply to an ac-
tion seeking a preliminary injunction to redress 
harm arising from the use, sale, or offer for sale of 
any allegedly infringing instrumentality that com-
petes with a product sold or offered for sale, or a 
process used in manufacture, by a party alleging in-
fringement. 
‘‘(c) EXCLUSION FROM DISCOVERY LIMITATION.— 
The parties may voluntarily consent to be excluded, in 
whole or in part, from the limitation on discovery provided 
under subsection (a) if at least one plaintiff and one de-
fendant enter into a signed stipulation, to be filed with 
and signed by the court. With regard to any discovery ex-
cluded from the requirements of subsection (a) under the 
signed stipulation, with respect to such parties, such dis-
covery shall proceed according to the Federal Rules of 
Civil Procedure.’’. 
(2) CONFORMING AMENDMENT.—The table of 
sections for chapter 29 of title 35, United States 
Code, is amended by adding at the end the following 
new item: 
‘‘299A. Discovery in patent infringement action.’’. 
(e) SENSE OF CONGRESS.—It is the sense of Con-
gress that it is an abuse of the patent system and against 
public policy for a party to send out purposely evasive de-
mand letters to end users alleging patent infringement. 
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Demand letters sent should, at the least, include basic in-
formation about the patent in question, what is being in-
fringed, and how it is being infringed. Any actions or liti-
gation that stem from these types of purposely evasive de-
mand letters to end users should be considered a fraudu-
lent or deceptive practice and an exceptional circumstance 
when considering whether the litigation is abusive. 
(f) DEMAND LETTERS.—Section 284 of title 35, 
United States Code, is amended— 
(1) in the first undesignated paragraph, by 
striking ‘‘Upon finding’’ and inserting ‘‘(a) IN GEN-
ERAL.—Upon finding’’; 
(2) in the second undesignated paragraph, by 
striking ‘‘When the damages’’ and inserting ‘‘(b) AS-
SESSMENT BY COURT; TREBLE DAMAGES.—When 
the damages’’; 
(3) by inserting after subsection (b), as des-
ignated by paragraph (2) of this subsection, the fol-
lowing: 
‘‘(c) WILLFUL INFRINGEMENT.—A claimant seeking 
to establish willful infringement may not rely on evidence 
of pre-suit notification of infringement unless that notifi-
cation identifies with particularity the asserted patent, 
identifies the product or process accused, identifies the ul-
timate parent entity of the claimant, and explains with 
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particularity, to the extent possible following a reasonable 
investigation or inquiry, how the product or process in-
fringes one or more claims of the patent.’’; and 
(4) in the last undesignated paragraph, by 
striking ‘‘The court’’ and inserting ‘‘(d) EXPERT 
TESTIMONY.—The court’’. 
(g) EFFECTIVE DATE.—Except as otherwise provided 
in this section, the amendments made by this section shall 
take effect on the date of the enactment of this Act and 
shall apply to any action for which a complaint is filed 
on or after that date. 
SEC. 4. TRANSPARENCY OF PATENT OWNERSHIP. 
(a) AMENDMENTS.—Section 290 of title 35, United 
States Code, is amended— 
(1) in the heading, by striking ‘‘suits’’ and in-
serting ‘‘suits; disclosure of interests’’; 
(2) by striking ‘‘The clerks’’ and inserting ‘‘(a) 
NOTICE OF PATENT SUITS.—The clerks’’; and 
(3) by adding at the end the following new sub-
sections: 
‘‘(b) INITIAL DISCLOSURE.— 
‘‘(1) IN GENERAL.—Except as provided in para-
graph (2), upon the filing of an initial complaint for 
patent infringement, the plaintiff shall disclose to 
the Patent and Trademark Office, the court, and 
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each adverse party the identity of each of the fol-
lowing: 
‘‘(A) The assignee of the patent or patents 
at issue. 
‘‘(B) Any entity with a right to sublicense 
or enforce the patent or patents at issue. 
‘‘(C) Any entity, other than the plaintiff, 
that the plaintiff knows to have a financial in-
terest in the patent or patents at issue or the 
plaintiff. 
‘‘(D) The ultimate parent entity of any as-
signee identified under subparagraph (A) and 
any entity identified under subparagraph (B) or 
(C). 
‘‘(2) EXEMPTION.—The requirements of para-
graph (1) shall not apply with respect to a civil ac-
tion filed under subsection (a) that includes a cause 
of action described under section 271(e)(2). 
‘‘(c) DISCLOSURE COMPLIANCE.— 
‘‘(1) PUBLICLY TRADED.—For purposes of sub-
section (b)(1)(C), if the financial interest is held by 
a corporation traded on a public stock exchange, an 
identification of the name of the corporation and the 
public exchange listing shall satisfy the disclosure re-
quirement. 
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‘‘(2) NOT PUBLICLY TRADED.—For purposes of 
subsection (b)(1)(C), if the financial interest is not 
held by a publicly traded corporation, the disclosure 
shall satisfy the disclosure requirement if the infor-
mation identifies— 
‘‘(A) in the case of a partnership, the 
name of the partnership and the name and cor-
respondence address of each partner or other 
entity that holds more than a 5-percent share 
of that partnership; 
‘‘(B) in the case of a corporation, the 
name of the corporation, the location of incor-
poration, the address of the principal place of 
business, and the name of each officer of the 
corporation; and 
‘‘(C) for each individual, the name and 
correspondence address of that individual. 
‘‘(d) ONGOING DUTY OF DISCLOSURE TO THE PAT-
ENT AND TRADEMARK OFFICE.— 
‘‘(1) IN GENERAL.—A plaintiff required to sub-
mit information under subsection (b) or a subse-
quent owner of the patent or patents at issue shall, 
not later than 90 days after any change in the as-
signee of the patent or patents at issue or an entity 
described under subparagraph (B) or (D) of sub-
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section (b)(1), submit to the Patent and Trademark 
Office the updated identification of such assignee or 
entity. 
‘‘(2) FAILURE TO COMPLY.—With respect to a 
patent for which the requirement of paragraph (1) 
has not been met— 
‘‘(A) the plaintiff or subsequent owner 
shall not be entitled to recover reasonable fees 
and other expenses under section 285 or in-
creased damages under section 284 with respect 
to infringing activities taking place during any 
period of noncompliance with paragraph (1), 
unless the denial of such damages or fees would 
be manifestly unjust; and 
‘‘(B) the court shall award to a prevailing 
party accused of infringement reasonable fees 
and other expenses under section 285 that are 
incurred to discover the updated assignee or en-
tity described under paragraph (1), unless such 
sanctions would be unjust. 
‘‘(e) DEFINITIONS.—In this section: 
‘‘(1) FINANCIAL INTEREST.—The term ‘finan-
cial interest’— 
‘‘(A) means— 
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‘‘(i) with regard to a patent or pat-
ents, the right of a person to receive pro-
ceeds related to the assertion of the patent 
or patents, including a fixed or variable 
portion of such proceeds; and 
‘‘(ii) with regard to the plaintiff, di-
rect or indirect ownership or control by a 
person of more than 5 percent of such 
plaintiff; and 
‘‘(B) does not mean— 
‘‘(i) ownership of shares or other in-
terests in a mutual or common investment 
fund, unless the owner of such interest 
participates in the management of such 
fund; or 
‘‘(ii) the proprietary interest of a pol-
icyholder in a mutual insurance company 
or of a depositor in a mutual savings asso-
ciation, or a similar proprietary interest, 
unless the outcome of the proceeding could 
substantially affect the value of such inter-
est. 
‘‘(2) PROCEEDING.—The term ‘proceeding’ 
means all stages of a civil action, including pretrial 
and trial proceedings and appellate review. 
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‘‘(3) ULTIMATE PARENT ENTITY.— 
‘‘(A) IN GENERAL.—Except as provided in 
subparagraph (B), the term ‘ultimate parent 
entity’ has the meaning given such term in sec-
tion 801.1(a)(3) of title 16, Code of Federal 
Regulations, or any successor regulation. 
‘‘(B) MODIFICATION OF DEFINITION.—The 
Director may modify the definition of ‘ultimate 
parent entity’ by regulation.’’. 
(b) TECHNICAL AND CONFORMING AMENDMENT.— 
The item relating to section 290 in the table of sections 
for chapter 29 of title 35, United States Code, is amended 
to read as follows: 
‘‘290. Notice of patent suits; disclosure of interests.’’. 
(c) REGULATIONS.—The Director may promulgate 
such regulations as are necessary to establish a registra-
tion fee in an amount sufficient to recover the estimated 
costs of administering subsections (b) through (e) of sec-
tion 290 of title 35, United States Code, as added by sub-
section (a), to facilitate the collection and maintenance of 
the information required by such subsections, and to en-
sure the timely disclosure of such information to the pub-
lic. 
(d) EFFECTIVE DATE.—The amendments made by 
this section shall take effect upon the expiration of the 
6-month period beginning on the date of the enactment 
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of this Act and shall apply to any action for which a com-
plaint is filed on or after such effective date. 
SEC. 5. CUSTOMER-SUIT EXCEPTION. 
(a) AMENDMENT.—Section 296 of title 35, United 
States Code, is amended to read as follows: 
‘‘§ 296. Stay of action against customer 
‘‘(a) STAY OF ACTION AGAINST CUSTOMER.—Except 
as provided in subsection (d), in any civil action arising 
under any Act of Congress relating to patents, the court 
shall grant a motion to stay at least the portion of the 
action against a covered customer related to infringement 
of a patent involving a covered product or process if the 
following requirements are met: 
‘‘(1) The covered manufacturer and the covered 
customer consent in writing to the stay. 
‘‘(2) The covered manufacturer is a party to 
the action or to a separate action involving the same 
patent or patents related to the same covered prod-
uct or process. 
‘‘(3) The covered customer agrees to be bound 
by any issues that the covered customer has in com-
mon with the covered manufacturer and are finally 
decided as to the covered manufacturer in an action 
described in paragraph (2). 
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‘‘(4) The motion is filed after the first pleading 
in the action but not later than the later of— 
‘‘(A) the 120th day after the date on which 
the first pleading in the action is served that 
specifically identifies the covered product or 
process as a basis for the covered customer’s al-
leged infringement of the patent and that spe-
cifically identifies how the covered product or 
process is alleged to infringe the patent; or 
‘‘(B) the date on which the first scheduling 
order in the case is entered. 
‘‘(b) APPLICABILITY OF STAY.—A stay issued under 
subsection (a) shall apply only to the patents, products, 
systems, or components accused of infringement in the ac-
tion. 
‘‘(c) LIFT OF STAY.— 
‘‘(1) IN GENERAL.—A stay entered under this 
section may be lifted upon grant of a motion based 
on a showing that— 
‘‘(A) the action involving the covered man-
ufacturer will not resolve a major issue in suit 
against the covered customer; or 
‘‘(B) the stay unreasonably prejudices and 
would be manifestly unjust to the party seeking 
to lift the stay. 
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‘‘(2) SEPARATE
MANUFACTURER
ACTION
IN-
VOLVED.—In the case of a stay entered based on the 
participation of the covered manufacturer in a sepa-
rate action involving the same patent or patents re-
lated to the same covered product or process, a mo-
tion under this subsection may only be made if the 
court in such separate action determines the show-
ing required under paragraph (1) has been met. 
‘‘(d) EXEMPTION.—This section shall not apply to an 
action that includes a cause of action described under sec-
tion 271(e)(2). 
‘‘(e) CONSENT JUDGMENT.—If, following the grant 
of a motion to stay under this section, the covered manu-
facturer seeks or consents to entry of a consent judgment 
relating to one or more of the common issues that gave 
rise to the stay, or declines to prosecute through appeal 
a final decision as to one or more of the common issues 
that gave rise to the stay, the court may, upon grant of 
a motion, determine that such consent judgment or 
unappealed final decision shall not be binding on the cov-
ered customer with respect to one or more of such common 
issues based on a showing that such an outcome would 
unreasonably prejudice and be manifestly unjust to the 
covered customer in light of the circumstances of the case. 
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‘‘(f) RULE OF CONSTRUCTION.—Nothing in this sec-
tion shall be construed to limit the ability of a court to 
grant any stay, expand any stay granted under this sec-
tion, or grant any motion to intervene, if otherwise per-
mitted by law. 
‘‘(g) DEFINITIONS.—In this section: 
‘‘(1) COVERED CUSTOMER.—The term ‘covered 
customer’ means a party accused of infringing a pat-
ent or patents in dispute based on a covered product 
or process. 
‘‘(2) COVERED
MANUFACTURER.—The term 
‘covered manufacturer’ means a person that manu-
factures or supplies, or causes the manufacture or 
supply of, a covered product or process or a relevant 
part thereof. 
‘‘(3) COVERED
PRODUCT
OR
PROCESS.—The 
term ‘covered product or process’ means a product, 
process, system, service, component, material, or ap-
paratus, or relevant part thereof, that— 
‘‘(A) is alleged to infringe the patent or 
patents in dispute; or 
‘‘(B) implements a process alleged to in-
fringe the patent or patents in dispute.’’. 
(b) CONFORMING AMENDMENT.—The table of sec-
tions for chapter 29 of title 35, United States Code, is 
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amended by striking the item relating to section 296 and 
inserting the following: 
‘‘296. Stay of action against customer.’’. 
(c) EFFECTIVE DATE.—The amendments made by 
this section shall take effect on the date of the enactment 
of this Act and shall apply to any action for which a com-
plaint is filed on or after the first day of the 30-day period 
that ends on that date. 
SEC. 6. PROCEDURES AND PRACTICES TO IMPLEMENT REC-
OMMENDATIONS 
OF 
THE 
JUDICIAL 
CON-
FERENCE. 
(a) JUDICIAL CONFERENCE RULES
AND PROCE-
DURES ON DISCOVERY BURDENS AND COSTS.— 
(1) RULES
AND
PROCEDURES.—The Judicial 
Conference of the United States, using existing re-
sources, shall develop rules and procedures to imple-
ment the issues and proposals described in para-
graph (2) to address the asymmetries in discovery 
burdens and costs in any civil action arising under 
any Act of Congress relating to patents. Such rules 
and procedures shall include how and when payment 
for document discovery in addition to the discovery 
of core documentary evidence is to occur, and what 
information must be presented to demonstrate finan-
cial capacity before permitting document discovery 
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in addition to the discovery of core documentary evi-
dence. 
(2) RULES AND PROCEDURES TO BE CONSID-
ERED.—The rules and procedures required under 
paragraph (1) should address each of the following 
issues and proposals: 
(A) DISCOVERY OF CORE DOCUMENTARY 
EVIDENCE.—Whether and to what extent each 
party to the action is entitled to receive core 
documentary evidence and shall be responsible 
for the costs of producing core documentary 
evidence within the possession or control of 
each such party, and whether and to what ex-
tent each party to the action may seek non-
documentary discovery as otherwise provided in 
the Federal Rules of Civil Procedure. 
(B) ELECTRONIC COMMUNICATION.—If the 
parties determine that the discovery of elec-
tronic communication is appropriate, whether 
such discovery shall occur after the parties have 
exchanged initial disclosures and core documen-
tary evidence and whether such discovery shall 
be in accordance with the following: 
(i) Any request for the production of 
electronic communication shall be specific 
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and may not be a general request for the 
production of information relating to a 
product or business. 
(ii) Each request shall identify the 
custodian of the information requested, the 
search terms, and a time frame. The par-
ties shall cooperate to identify the proper 
custodians, the proper search terms, and 
the proper time frame. 
(iii) A party may not submit produc-
tion requests to more than 5 custodians, 
unless the parties jointly agree to modify 
the number of production requests without 
leave of the court. 
(iv) The court may consider contested 
requests for up to 5 additional custodians 
per producing party, upon a showing of a 
distinct need based on the size, complexity, 
and issues of the case. 
(v) If a party requests the discovery 
of electronic communication for additional 
custodians beyond the limits agreed to by 
the parties or granted by the court, the re-
questing party shall bear all reasonable 
costs caused by such additional discovery. 
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(C) ADDITIONAL DOCUMENT DISCOVERY.— 
Whether the following should apply: 
(i) IN GENERAL.—Each party to the 
action may seek any additional document 
discovery otherwise permitted under the 
Federal Rules of Civil Procedure, if such 
party bears the reasonable costs, including 
reasonable attorney’s fees, of the additional 
document discovery. 
(ii) REQUIREMENTS FOR ADDITIONAL 
DOCUMENT DISCOVERY.—Unless the par-
ties mutually agree otherwise, no party 
may be permitted additional document dis-
covery unless such a party posts a bond, or 
provides other security, in an amount suffi-
cient to cover the expected costs of such 
additional document discovery, or makes a 
showing to the court that such party has 
the financial capacity to pay the costs of 
such additional document discovery. 
(iii) LIMITS
ON
ADDITIONAL
DOCU-
MENT DISCOVERY.—A court, upon motion, 
may determine that a request for addi-
tional document discovery is excessive, ir-
relevant, or otherwise abusive and may set 
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limits on such additional document dis-
covery. 
(iv) GOOD CAUSE MODIFICATION.—A 
court, upon motion and for good cause 
shown, may modify the requirements of 
subparagraphs (A) and (B) and any defini-
tion under paragraph (3). Not later than 
30 days after the pretrial conference under 
Rule 16 of the Federal Rules of Civil Pro-
cedure, the parties shall jointly submit any 
proposed modifications of the requirements 
of subparagraphs (A) and (B) and any def-
inition under paragraph (3), unless the 
parties do not agree, in which case each 
party shall submit any proposed modifica-
tion of such party and a summary of the 
disagreement over the modification. 
(v) COMPUTER CODE.—A court, upon 
motion and for good cause shown, may de-
termine that computer code should be in-
cluded in the discovery of core documen-
tary evidence. The discovery of computer 
code shall occur after the parties have ex-
changed initial disclosures and other core 
documentary evidence. 
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(D) DISCOVERY SEQUENCE AND SCOPE.— 
Whether the parties shall discuss and address 
in the written report filed pursuant to Rule 
26(f) of the Federal Rules of Civil Procedure 
the views and proposals of each party on the 
following: 
(i) When the discovery of core docu-
mentary evidence should be completed. 
(ii) Whether additional document dis-
covery will be sought under subparagraph 
(C). 
(iii) Any issues about infringement, 
invalidity, or damages that, if resolved be-
fore the additional discovery described in 
subparagraph (C) commences, might sim-
plify or streamline the case, including the 
identification of any terms or phrases re-
lating to any patent claim at issue to be 
construed by the court and whether the 
early construction of any of those terms or 
phrases would be helpful. 
(3) DEFINITIONS.—In this subsection: 
(A) CORE DOCUMENTARY EVIDENCE.—The 
term ‘‘core documentary evidence’’— 
(i) includes— 
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(I) documents relating to the 
conception of, reduction to practice of, 
and application for, the patent or pat-
ents at issue; 
(II) documents sufficient to show 
the technical operation of the product 
or process identified in the complaint 
as infringing the patent or patents at 
issue; 
(III) documents relating to po-
tentially invalidating prior art; 
(IV) documents relating to any 
licensing of, or other transfer of rights 
to, the patent or patents at issue be-
fore the date on which the complaint 
is filed; 
(V) documents sufficient to show 
profit attributable to the claimed in-
vention of the patent or patents at 
issue; 
(VI) documents relating to any 
knowledge by the accused infringer of 
the patent or patents at issue before 
the date on which the complaint is 
filed; 
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(VII) documents relating to any 
knowledge by the patentee of infringe-
ment of the patent or patents at issue 
before the date on which the com-
plaint is filed; 
(VIII) documents relating to any 
licensing term or pricing commitment 
to which the patent or patents may be 
subject through any agency or stand-
ard-setting body; and 
(IX) 
documents 
sufficient 
to 
show any marking or other notice pro-
vided of the patent or patents at 
issue; and 
(ii) does not include computer code, 
except as specified in paragraph (2)(C)(v). 
(B) ELECTRONIC
COMMUNICATION.—The 
term ‘‘electronic communication’’ means any 
form of electronic communication, including 
email, text message, or instant message. 
(4) 
IMPLEMENTATION
BY
THE
DISTRICT 
COURTS.—Not later than 6 months after the date on 
which the Judicial Conference has developed the 
rules and procedures required by this subsection, 
each United States district court and the United 
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