I 
109TH CONGRESS 
2D SESSION 
H. R. 5096 
To amend title 35, United States Code, to modify certain procedures relating 
to patents. 
IN THE HOUSE OF REPRESENTATIVES 
APRIL 5, 2006 
Mr. BERMAN (for himself and Mr. BOUCHER) introduced the following bill; 
which was referred to the Committee on the Judiciary 
A BILL 
To amend title 35, United States Code, to modify certain 
procedures relating to patents. 
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 ‘‘Patents Depend on 
Quality Act of 2006’’ or ‘‘PDQ Act’’. 
SEC. 2. OPPOSITION PROCEDURES. 
(a) IN GENERAL.—Title 35, United States Code, is 
amended by inserting after chapter 31 the following new 
chapter: 
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‘‘CHAPTER 32—POST-GRANT OPPOSITION 
PROCEDURES 
‘‘Sec. 
‘‘ 321. Right to oppose patent; opposition request. 
‘‘ 322. Real party in interest. 
‘‘ 323. Timing of opposition request. 
‘‘ 324. Limits on scope of validity issues raised. 
‘‘ 325. Institution of the opposition proceeding. 
‘‘ 326. Patent owner response. 
‘‘ 327. Amendment of claims. 
‘‘ 328. Discovery and sanctions. 
‘‘ 329. Supplemental submissions. 
‘‘ 330. Hearing and briefs. 
‘‘ 331. Written decision. 
‘‘ 332. Burden of proof and evidence. 
‘‘ 333. Reconsideration. 
‘‘ 334. Appeal. 
‘‘ 335. Certificate. 
‘‘ 336. Estoppel. 
‘‘ 337. Duration of opposition. 
‘‘ 338. Settlement. 
‘‘ 339. Intervening rights. 
‘‘ 340. Relationship with reexamination proceedings. 
‘‘§ 321. Right to oppose patent; opposition request 
‘‘(a) FILING OF OPPOSITION.—A person may request 
that the grant or reissue of a patent be reconsidered by 
the Patent and Trademark Office by filing an opposition 
seeking to invalidate 1 or more claims in the patent. The 
Director shall establish, by regulation, fees to be paid by 
the person filing the opposition (in this chapter referred 
to as the ‘opposer’). Copies of patents and printed publica-
tions to be relied upon in support of the request must be 
filed with the request. If an opposer relies on other factual 
evidence or on expert opinions in support of the opposi-
tion, such evidence and opinions must be filed with the 
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request through one or more accompanying affidavits or 
declarations. 
‘‘(b) COPIES PROVIDED TO PATENT OWNER.—Copies 
of any documents filed under subsection (a) must be pro-
vided to the patent owner or, if applicable, the designated 
representative of the patent owner, at the time of filing 
under subsection (a), except that if a request is made that 
the identity of a real party in interest be kept separate 
pursuant to section 322(b), then the identity of the real 
party in interest may be redacted from the copies pro-
vided. 
‘‘(c) FILE AVAILABLE TO THE PUBLIC.—The file of 
any opposition proceeding shall be made available to the 
public, except as provided in section 322. 
‘‘§ 322. Real party in interest 
‘‘(a) IDENTIFICATION.—The person making a request 
under section 321 shall identify in writing each real party 
in interest, and the opposition pursuant to the request 
shall proceed in the name of the real party in interest. 
‘‘(b) IDENTITY KEPT SEPARATE UPON REQUEST.— 
‘‘(1) IN GENERAL.—Subject to paragraph (2), 
if requested by the opposer, the identity of a real 
party in interest shall be kept separate from the file 
of the opposition and made available only to Govern-
ment agencies upon written request, or to any per-
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son upon a showing of good cause. If the identity of 
a real party in interest is kept separate from the file 
under this paragraph, then the opposition shall pro-
ceed in the name of the individual filing the request 
as the representative of the real party in interest. 
‘‘(2) EXCEPTION.—No request under paragraph 
(1) to keep the identity of a real party in interest 
separate from the file of the opposition may be made 
or maintained if the opposer relies upon factual evi-
dence or expert opinions in the form of affidavits or 
declarations during the opposition proceeding or if 
the opposer exercises the right to appeal under sec-
tion 141. 
‘‘§ 323. Timing of opposition request 
‘‘A person may not make an opposition request under 
section 321 later than 9 months after the grant of the 
patent or issuance of the reissue patent, as the case may 
be, or later than 6 months after receiving notice from the 
patent holder alleging infringement of the patent, except 
that, if the patent owner consents in writing, an opposition 
request may be filed anytime during the period of enforce-
ability of the patent. A court having jurisdiction over an 
issue of validity of a patent may not require the patent 
owner to consent to such a request. 
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‘‘§ 324. Limits on scope of validity issues raised 
‘‘An opposition request under section 321 must iden-
tify with particularity the claims that are alleged to be 
invalid and, as to each claim, 1 or more issues of invalidity 
on which the opposition is based. The issues of invalidity 
that may be considered during the opposition proceeding 
are double patenting and any of the requirements for pat-
entability set forth in sections 101, 102, 103, and 112, 
and the fourth paragraph of section 251, except for— 
‘‘(1) any requirement contained in the first 
paragraph of section 112 relating to disclosing the 
best mode; and 
‘‘(2) any issue arising under subsection (c), (f), 
or (g) of section 102. 
‘‘§ 325. Institution of the opposition proceeding 
‘‘(a) DISMISSAL; INSTITUTION.— 
‘‘(1) DISMISSAL.—The Director may dismiss an 
opposition request that the Director determines 
lacks substantial merit. The determination by the 
Director to dismiss an opposition request shall not 
be appealable. The dismissal of an opposition re-
quest shall not be admissible in any civil action re-
lated to the patent against which a dismissed re-
quest was filed. 
‘‘(2) INSTITUTION.—If the Director receives 1 
or more requests that meet the requirements of sec-
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tion 321 regarding the same patent by the Director 
and are not dismissed under paragraph (1), an op-
position proceeding shall be promptly instituted pur-
suant to the request or requests, but not before a 
period of 9 months has elapsed since the date on 
which the patent was granted. 
‘‘(3) CONSOLIDATED PROCEEDING.—If an op-
position proceeding is instituted based upon more 
than 1 opposition request, the opposition shall pro-
ceed as a single consolidated proceeding, unless later 
divided under subsection (c). 
‘‘(b) PARTIES.—The parties to an opposition pro-
ceeding under this section shall be the patent owner and 
each opposer whose request meets the requirements of sec-
tion 321 and has not been dismissed under subsection 
(a)(1). 
‘‘(c) DECISION BY PANEL.—The Director shall as-
sign the opposition proceeding to a panel of three adminis-
trative patent judges (in this chapter referred to as the 
‘panel’). The panel shall decide the questions of patent-
ability raised in each opposition request for which an oppo-
sition proceeding has been instituted. The decision shall 
be based upon the prosecution record that was the basis 
for the grant of the patent and the additional submissions 
by the parties to the opposition proceeding authorized 
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under this chapter. The panel may, in appropriate cases, 
divide the opposition into separate proceedings if the oppo-
sition involves multiple opposition requests by different 
parties. 
‘‘§ 326. Patent owner response 
‘‘After the Director has instituted an opposition pro-
ceeding under section 325, the patent owner shall have 
the right to file, within the time period set by the panel, 
a response to each opposition request that is the subject 
of the proceeding. The patent owner, in responding to an 
opposition request, shall file with the response, through 
affidavits or declarations, any additional factual evidence 
and expert opinions on which the patent owner relies in 
support of the response. 
‘‘§ 327. Amendment of claims 
‘‘The patent owner is entitled to request amendment 
of any claims that are the subject of an opposition pro-
ceeding under this chapter, including by the addition of 
new claims. The patent owner shall file any such request 
for amendment with the patent owner’s response to an op-
position request under section 326. The panel may permit 
further requests for amendment of the claims only upon 
good cause shown by the patent owner. No amendment 
enlarging the scope of the claims of the patent shall be 
permitted in the opposition proceeding. 
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‘‘§ 328. Discovery and sanctions 
‘‘(a) DISCOVERY.—After an opposition proceeding is 
instituted under this chapter, the patent owner shall have 
the right to depose each person submitting an affidavit 
or declaration on behalf of any opposer, and each opposer 
shall have the right to depose each person submitting an 
affidavit or declaration on behalf of the patent owner. 
Such depositions shall be limited to cross-examination on 
matters relevant to the affidavit or declaration. No other 
discovery shall be permitted unless the panel determines 
that additional discovery is required in the interest of jus-
tice. The panel shall determine the schedule for the taking 
of discovery under this subsection. 
‘‘(b) SANCTIONS.—If any party to an opposition pro-
ceeding fails to properly respond to any discovery under 
subsection (a), the panel may draw appropriate adverse 
inferences and take other action permitted by statute, 
rule, or regulation. 
‘‘§ 329. Supplemental submissions 
‘‘The panel may permit one or more supplemental 
submissions to be made by any party to an opposition pro-
ceeding under this chapter, subject to the rights and limi-
tations on discovery under section 328. 
‘‘§ 330. Hearing and briefs 
‘‘Any party to an opposition proceeding under this 
chapter may request an oral hearing within the time set 
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by the panel. If a hearing is requested or the panel deter-
mines sua sponte that a hearing is needed, the panel shall 
set a time for the hearing. The panel may permit the par-
tied to file briefs for the hearing, and shall permit cross- 
examination of all affiants and declarants in the hearing, 
either before the panel or by deposition taken under sec-
tion 328. 
‘‘§ 331. Written decision 
‘‘The panel shall issue a written decision on each 
issue of patentability with respect to each claim that is 
the subject of an opposition proceeding under this chapter. 
The written decision shall consist of findings of fact and 
conclusions of law. The written decision shall become a 
final determination of the Office on the issues raised in 
the opposition unless a party to the opposition files a re-
quest for reconsideration and modification of the written 
decision within a period set by the panel, which shall not 
be less than two weeks from the date of the written deci-
sion. 
‘‘§ 332. Burden of proof and evidence 
‘‘(a) BURDEN OF PROOF.—The opposer in an opposi-
tion proceeding under this chapter shall have the burden 
to prove the invalidity of a claim by a preponderance of 
the evidence. The determination of invalidity shall be 
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based upon the broadest reasonable construction of the 
claim. 
‘‘(b) EVIDENCE.—The Federal Rules of Evidence 
shall apply to the opposition proceeding, except to the ex-
tent inconsistent with any provision of this chapter. 
‘‘§ 333. Reconsideration 
‘‘If a request is filed for reconsideration of the written 
decision in an opposition proceeding under this chapter, 
the panel may authorize a party to the proceeding who 
did not file such a request to file a response to the request 
for reconsideration. Following any reconsideration, the 
panel shall either deny the request for modification of the 
written decision or grant the request and issue a modified 
written decision, which shall constitute the final deter-
mination of the Office on the issues raised in the opposi-
tion proceeding. 
‘‘§ 334. Appeal 
‘‘A party dissatisfied with the final determination of 
the panel in an opposition proceeding under this chapter 
may appeal the determination under sections 141 through 
144. Any party to the opposition proceeding shall have the 
right to be a party to the appeal. 
‘‘§ 335. Certificate 
‘‘When a decision of a panel in an opposition pro-
ceeding under the chapter has become final under section 
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331, 333, or 334, as the case may be, the Director shall 
issue and publish a certificate in accordance with the deci-
sion, canceling any claim of the patent determined to be 
unpatentable, and shall incorporate into the patent any 
new or amended claims determined to be patentable. The 
issuance of the certificate shall terminate the opposition 
proceeding. 
‘‘§ 336. Estoppel 
‘‘(a) ESTOPPEL.— 
‘‘(1) IN GENERAL.—Subject to paragraph (2), 
after a certificate has been issued under section 335 
in accordance with the decision of the panel in an 
opposition proceeding, the determination with re-
spect to an issue of invalidity raised by an opposer 
shall bar that opposer from raising, in any subse-
quent proceeding involving that opposer under this 
title, any issue of fact or law actually decided and 
necessary to the determination of that issue. 
‘‘(2) EXCEPTION.—If an opposer in an opposi-
tion proceeding demonstrates, in a subsequent pro-
ceeding referred to in paragraph (1), that there is 
additional factual evidence that is material to an 
issue of fact actually decided in the opposition pro-
ceeding, and necessary to the final determination in 
the opposition proceeding, that could not reasonably 
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have been discovered or presented in the opposition 
proceeding by that opposer, the opposer may raise, 
in that subsequent proceeding, that issue of fact and 
any determined issue of law for which the issue of 
fact was necessary. 
‘‘(b) EXPANDED DEFINITION
OF OPPOSER.—For 
purposes of this section, the term ‘opposer’ includes the 
person making the request under section 321, any real 
party in interest, and their successors in interest. 
‘‘(c) NEW PARTY-IN-INTEREST.—If a proceeding 
arising by reason of additional factual evidence raised 
under subsection (a)(2) involves a real party in interest 
not identified to the patent owner under section 322, the 
real party in interest shall notify the Director and the pat-
ent owner of that fact and of the proceeding, within 30 
days after receiving notice that the proceeding has been 
filed. 
‘‘§ 337. Duration of opposition 
‘‘The determination of a panel in an opposition pro-
ceeding under this chapter, including any determinations 
pursuant to a request for reconsideration under section 
133, shall be issued not later than 1 year after the date 
on which the opposition proceeding is instituted under sec-
tion 325. Upon good cause shown, the Director may ex-
tend the 1-year period by not more than 6 months. 
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‘‘§ 338. Settlement 
‘‘(a) IN GENERAL.—An opposition proceeding under 
this chapter shall be terminated with respect to any op-
poser upon the joint request of the opposer and the patent 
owner, unless the panel has issued a written decision 
under section 331 before the request for termination is 
filed. If the opposition is terminated with respect to an 
opposer under this section, no estoppel under section 336 
shall apply to that opposer with respect to an issue of inva-
lidity raised in the opposition proceeding. The written de-
cision under section 331 shall thereafter be issued only 
with respect to issues of invalidity raised by opposers that 
remain in the opposition proceeding. 
‘‘(b) AGREEMENTS IN WRITING.—Any agreement or 
understanding between the patent owner and an opposer, 
including any collateral agreements referred to therein, 
that is made in connection with or in contemplation of 
the termination of an opposition proceeding under sub-
section (a) shall be in writing. The opposition with respect 
to the parties to the agreement or understanding shall not 
be terminated until a true copy of the agreement or under-
standing, including any such collateral agreements, has 
been filed in the Patent and Trademark Office. If any 
party filing such an agreement or understanding requests, 
the agreement or understanding shall be kept separate 
from the file of the opposition, and shall be made available 
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only to Government agencies on written request, or to any 
person on a showing of good cause. 
‘‘(c) DISCRETIONARY ACTIONS REVIEWABLE.—Any 
discretionary action of the Director under subsection (b) 
shall be reviewable under chapter 7 of title 5. 
‘‘§ 339. Intervening rights 
‘‘Any proposed amended or new claim determined to 
be patentable and incorporated into a patent following an 
opposition proceeding under this chapter shall have the 
same effect as that specified in section 252 of this title 
for reissued patents on the right of any person who made, 
purchased, or used within the United States, or imported 
into the United States, anything patented by such pro-
posed amended or new claim, or who made substantial 
preparation therefor, before the certificate issued under 
section 335 with respect to that amended or new claim. 
‘‘§ 340. Relationship with reexamination proceedings 
‘‘(a) ESTOPPEL.—A patent for which an opposition 
proceeding has been instituted under this chapter may not 
thereafter be made the subject of a request under section 
302 or 311 for reexamination, by the same opposer or on 
behalf of the same real party in interest, on the same 
claim and on the same issue that was the basis of the 
opposition proceeding. 
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‘‘(b) STAYING OF OTHER PROCEEDINGS.—[If, after 
an opposition proceeding has been instituted under this 
chapter, a request for reexamination under section 302 or 
section 311 is made by or on behalf of a person other than 
the opposer or the same real party in interest, such reex-
amination shall be stayed during the pendency of any op-
position proceeding under this chapter.]’’. 
(b) CLERICAL AMENDMENT.—The table of chapters 
for part III of title 35, United States Code, is amended 
by adding at the end the following: 
‘‘32. Opposition Procedures ...........................................................
321.’’. 
SEC. 3. PUBLICATION OF PATENT APPLICATIONS. 
Section 122 of title 35, United States Code, is 
amended— 
(1) in subsection (b)(2)— 
(A) by striking subparagraph (B); and 
(B) in subparagraph (A)— 
(i) by striking ‘‘(A) An application’’ 
and inserting ‘‘An application’’; and 
(ii) 
by 
redesignating 
clauses 
(i) 
through (iv) as subparagraphs (A) through 
(D), respectively; and 
(2) by striking subsection (c) and redesignating 
subsection (d) as subsection (c). 
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SEC. 4. SUBMISSIONS BY THIRD PARTIES. 
Section 131 of title 35, United States Code, is 
amended— 
(1) by striking ‘‘The Director’’ and inserting 
‘‘(a) IN GENERAL.—The Director’’; and 
(2) by adding at the end the following: 
‘‘(b) THIRD PARTY SUBMISSIONS.—Any party shall 
have the opportunity to submit for consideration and for 
inclusion in the record, prior art (including, but not lim-
ited to, evidence of knowledge or use, or public use or sale, 
under section 102), to determine whether the invention 
was known or used, or was in public use, or on sale, under 
section 102 or would have been obvious under section 103. 
The Director shall consider such submissions if the re-
quest— 
‘‘(1) is made in writing not later than— 
‘‘(A) 6 months after the date on which the 
patent application is published under section 
122, or 
‘‘(B) before the date on which a notice of 
allowance is mailed under section 151 for a pat-
ent on the invention, 
whichever occurs first; 
‘‘(2) is accompanied by the payment of a fee es-
tablished by the Director under section 41 for third 
party submissions; 
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‘‘(3) sets forth the teaching and applicability of 
each reference and the basis on which the submis-
sion is offered; and 
‘‘(4) includes a sworn declaration attesting to 
the relevance and accuracy of the submissions. 
Information submitted under this subsection shall be con-
sidered during the examination of the patent application.’’. 
SEC. 5. INTER PARTES REEXAMINATION. 
(a) ESTOPPEL PROVISION.—Section 315(c) of title 
35, United States Code, is amended by striking ‘‘or could 
have raised’’. 
(b) FINAL DECISION.—Section 317(b) of title 35, 
United States Code, is amended— 
(1) in the heading, by striking ‘‘FINAL DECI-
SION’’ and inserting ‘‘DISTRICT COURT DECISION’’; 
and 
(2) in the first sentence, by striking ‘‘final deci-
sion’’ and inserting ‘‘decision of a district court’’. 
(c) 
APPLICABILITY.—Notwithstanding 
section 
4608(a) of the Intellectual Property and Communications 
Reform Act of 1999, as enacted by section 1000(a)(9) of 
Public Law 106–113 (41 U.S.C. note), sections 311 
through 318 of title 35, United States Code, as amended 
by this section, shall apply to any patent that issues from 
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an original application filed before, on, or after November 
29, 1999. 
SEC. 6. WILLFUL INFRINGEMENT. 
Section 284 of title 35, United States Code, is 
amended— 
(1) in the first paragraph, by striking ‘‘Upon’’ 
and inserting ‘‘(a) AWARD OF DAMAGES.—Upon’’; 
and 
(2) by amending the second paragraph to read 
as follows: 
‘‘(b) 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) of this title. 
‘‘(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— 
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‘‘(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 which resulted in 
a separate finding of infringement of the same 
patent. 
‘‘(3) LIMITATIONS
ON
WILLFULNESS.—(A) A 
court shall not find that an infringer has willfully in-
fringed a patent under paragraph (2) for any period 
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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 
reasonable reliance on advice of counsel. 
‘‘(C) The decision of the infringer not to 
present evidence of advice of counsel shall have no 
relevance to a determination of willful infringement 
under paragraph (2). 
‘‘(4) LIMITATION
ON
PLEADING.—Before the 
date on which a determination has been made that 
the patent in suit is not invalid, is enforceable, and 
has been infringed by the infringer, a patentee may 
not plead, and a court may not determine, that an 
infringer has willfully infringed the patent. The 
court’s determination of an infringer’s willfulness 
shall be made without a jury.’’; and 
(3) in the third paragraph, by striking ‘‘The 
court’’ and inserting ‘‘(c) EXPERT TESTIMONY.— 
The court’’. 
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SEC. 7. VENUE. 
Section 1400 of title 28, United States Code, is 
amended by adding at the end the following new sub-
section: 
‘‘(c) A court shall grant a motion to transfer an ac-
tion to a judicial district or division in which the action 
could have been brought if— 
‘‘(1) such judicial district or division is a more 
appropriate forum for the action, including any judi-
cial district or division where a party to the action 
has substantial evidence or witnesses; 
‘‘(2) the action was not brought in a district or 
division— 
‘‘(A) in which the patentee resides or 
maintains its principal place of business; 
‘‘(B) in which an accused infringer main-
tains its principal place of business; or 
‘‘(C) in the State in which an accused in-
fringer, if a domestic corporation, is incor-
porated; 
‘‘(3) at the time the action was brought, neither 
the patentee nor an accused infringer had substan-
tial evidence or witnesses in the judicial district in 
which the action was brought; and 
‘‘(4) the action has not been previously trans-
ferred under this subsection. 
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‘‘(d) For purposes of subsection (c), the use or sale 
of allegedly infringing subject matter in a judicial district 
shall not, by itself, establish the existence of substantial 
evidence or witnesses in such a judicial district.’’. 
SEC. 8. INJUNCTION. 
Section 283 of title 35, United States Code, is 
amended by adding at the end the following: ‘‘In deter-
mining equity, the court shall consider the fairness of the 
remedy in light of all the facts and the relevant interest 
of the parties associated with the invention. Unless an in-
junction is entered pursuant to a nonappealable judgment 
of infringement, a court shall stay the injunction pending 
an appeal upon an affirmative showing that the stay would 
not result in irreparable harm to the owner of the patent 
and that the balance of hardships from the stay does not 
favor the owner of the patent.’’. 
Æ 
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