IB 
Union Calendar No. 177 
114TH CONGRESS 
1ST SESSION 
H. R. 9 
[Report No. 114–235] 
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 
JULY 29, 2015 
Additional sponsors: Mr. SWALWELL of California, Mr. PEARCE, Mr. SES-
SIONS, Mr. FINCHER, Mr. AMODEI, Mr. HARDY, Mr. CLEAVER, and Mr. 
CULBERSON 
JULY 29, 2015 
Reported with an amendment, committed to the Committee of the Whole 
House on the State of the Union, and ordered to be printed 
[Strike out all after the enacting clause and insert the part printed in italic] 
[For text of introduced bill, see copy of bill as introduced on February 5, 2015] 
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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. 
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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 ‘‘In-
novation Act’’. 
(b) TABLE OF CONTENTS.—The table of contents for 
this Act is as follows: 
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 Prop-
erty 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: 
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‘‘§ 281A. Pleading requirements for patent infringe-
ment actions 
‘‘(a) PLEADING REQUIREMENTS.—Except as provided 
in subsection (b), in a civil action in which a party asserts 
a claim for relief arising under any Act of Congress relating 
to patents, a party alleging infringement shall include in 
the initial complaint, counterclaim, or cross-claim for pat-
ent infringement, unless the information is not reasonably 
accessible to such party, the following: 
‘‘(1) An identification of each patent allegedly 
infringed. 
‘‘(2) An identification of all claims necessary to 
produce the identification (under paragraph (3)) of 
each process, machine, manufacture, or composition of 
matter (referred to in this section as an ‘accused in-
strumentality’) that is alleged to infringe any claim 
of each patent that is identified under paragraph (1). 
‘‘(3) For each claim identified under paragraph 
(2), an identification of each accused instrumentality 
alleged to infringe the claim. 
‘‘(4) For each accused instrumentality identified 
under paragraph (3), an identification with particu-
larity, if known, of— 
‘‘(A) the name or model number (or a rep-
resentative model number) of each accused in-
strumentality; or 
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‘‘(B) if there is no name or model number, 
a description of each accused instrumentality. 
‘‘(5) For each accused instrumentality identified 
under paragraph (3), a clear and concise statement 
of— 
‘‘(A) where each element of each claim iden-
tified 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 instrumentality. 
‘‘(6) For each claim of indirect infringement, a 
description of the acts of the alleged indirect infringer 
that contribute to or are inducing the direct infringe-
ment. 
‘‘(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. 
‘‘(b) INFORMATION NOT READILY ACCESSIBLE.—If in-
formation required to be disclosed under subsection (a) is 
not readily accessible to a party after an inquiry reasonable 
under the circumstances, as required by Rule 11 of the Fed-
eral Rules of Civil Procedure, that information may instead 
be generally described, along with an explanation of why 
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such undisclosed information was not readily accessible, 
and of any efforts made by such party to access such infor-
mation. 
‘‘(c) AMENDMENT OF PLEADINGS.—Nothing in this 
section shall be construed to affect a party’s ability to 
amend pleadings as specified in the Federal Rules of Civil 
Procedure. Amendments permitted by the court are subject 
to the pleading requirements set forth in this section. 
‘‘(d) CONFIDENTIAL INFORMATION.—A party required 
to disclose information described under subsection (a) may 
file, under seal, information believed to be confidential, 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. 
‘‘(e) 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 sec-
tions for chapter 29 of title 35, United States Code, 
is amended by inserting after the item relating to sec-
tion 281 the following new item: 
‘‘281A. Pleading requirements for patent infringement actions.’’. 
(b) FEES AND OTHER EXPENSES.— 
(1) AMENDMENT.—Section 285 of title 35, 
United States Code, is amended to read as follows: 
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‘‘§ 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 Congress 
relating to patents, unless the court finds that the position 
and conduct of the nonprevailing party or parties were rea-
sonably justified in law and fact or that special cir-
cumstances (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 expenses 
if such an award is made under subsection (a). If a nonpre-
vailing 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 who asserts a claim for relief arising under any Act 
of Congress relating to patents against another party, and 
who subsequently unilaterally (i) seeks dismissal of the ac-
tion without consent of the other party and (ii) extends to 
such other party a covenant not to sue for infringement 
with respect to the patent or patents at issue, may be the 
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subject of a motion for attorneys fees under subsection (a) 
as if it were a non-prevailing party, unless the party assert-
ing such claim would have been entitled, at the time that 
such covenant was extended, to dismiss voluntarily the ac-
tion without a court order under Rule 41 of the Federal 
Rules of Civil Procedure, or the interests of justice require 
otherwise.’’. 
(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 sub-
section (f). 
(C) AMENDMENT.— 
(i) IN GENERAL.—Section 273 of title 
35, United States Code, as amended by sub-
paragraph (B), is further amended by strik-
ing subsection (g). 
(ii) EFFECTIVE
DATE.—The amend-
ment made by this subparagraph shall be 
effective as if included in the amendment 
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made by section 3(b)(1) of the Leahy-Smith 
America Invents Act (Public Law 112–29). 
(3) EFFECTIVE DATE.—Except as otherwise pro-
vided in this subsection, the amendments made by 
this subsection shall take effect on the date of the en-
actment 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. 
(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.—Except as otherwise provided 
under this subsection, 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 alle-
gation of infringement of a patent claim, and in 
which the nonprevailing party alleging infringement 
is unable to pay the award of fees and other expenses, 
the court shall grant a motion by the prevailing party 
to join an interested party if such prevailing party 
shows that the nonprevailing party has no substantial 
interest in the subject matter at issue other than as-
serting such patent claim in litigation. 
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‘‘(2) LIMITATION ON JOINDER.— 
‘‘(A) DISCRETIONARY DENIAL OF MOTION.— 
The court may deny a motion to join an inter-
ested 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 ju-
risdiction or make venue improper. 
‘‘(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 timely 
receive the notice required by paragraph 
(3); or 
‘‘(ii) within 30 days after receiving the 
notice required by paragraph (3), the inter-
ested party renounces, in writing and with 
notice to the court and the parties to the ac-
tion, any ownership, right, or direct finan-
cial interest (as described in paragraph (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 
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it has been provided actual notice, within 30 days 
after the expiration of the time period during which 
a certification under paragraph (4)(B) is required to 
be filed, that the interested party has been identified 
in the initial disclosure under section 290(b) and that 
such party may therefore be an interested party sub-
ject to joinder under this subsection. Such notice shall 
be provided by the party who subsequently moves to 
join the interested party under paragraph (1), and 
shall include language that— 
‘‘(A) identifies the action, the parties there-
to, the patent or patents at issue, and the plead-
ing 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 award-
ed in the action against the party alleging 
infringement of the patent or patents at 
issue under section 285(a); 
‘‘(ii) the party alleging infringement is 
unable to pay the award of fees and other 
expenses; 
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ject matter at issue other than asserting the pat-
ent in litigation. 
‘‘(B) CERTIFICATION.—This subsection shall 
not apply to an action if the party alleging in-
fringement files, not later than 45 days after the 
date on which such party is served with the ini-
tial statement described under subparagraph (A), 
a certification that— 
‘‘(i) establishes and certifies to the 
court, under oath, that such party will have 
sufficient funds available to satisfy any 
award of reasonable attorney’s fees and ex-
penses under section 285 if an award is as-
sessed; 
‘‘(ii) demonstrates that such party has 
a substantial interest in the subject matter 
at issue other than asserting the patent in 
litigation; or 
‘‘(iii) is made under oath that there 
are no other interested parties. 
‘‘(5) EXCEPTION FOR UNIVERSITY TECHNOLOGY 
TRANSFER ORGANIZATIONS.—This subsection shall not 
apply to a technology transfer organization whose 
primary purpose is to facilitate the commercializa-
tion of technologies developed by one or more institu-
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tions of higher education (as defined in section 101(a) 
of the Higher Education Act of 1965 (20 U.S.C. 
1001(a))) if such technology transfer organization is 
alleging infringement on behalf of an entity that 
would not be subject to this subsection. 
‘‘(6) INTERESTED PARTY DEFINED.—In this sub-
section, the term ‘interested party’ means a person, 
other than the party alleging infringement, that— 
‘‘(A) is an assignee of the patent or patents 
at issue; 
‘‘(B) has a right, including a contingent 
right, to enforce or sublicense the patent or pat-
ents at issue; or 
‘‘(C) has a direct financial interest in the 
patent or patents at issue, including the right to 
any part of an award of damages or any part 
of licensing revenue, except that a person with a 
direct financial interest does not include— 
‘‘(i) an employee of the party alleging 
infringement— 
‘‘(I) whose principal source of in-
come or employment is employment 
with the party alleging infringement; 
or 
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‘‘(II) whose sole financial interest 
in the patent or patents at issue is a 
salary or hourly wage paid by the 
party alleging infringement; 
‘‘(ii) an attorney or law firm pro-
viding legal representation in the civil ac-
tion described in paragraph (1) if the sole 
basis for the financial interest of the attor-
ney or law firm in the patent or patents at 
issue arises from the attorney or law firm’s 
receipt of compensation reasonably related 
to the provision of the legal representation; 
or 
‘‘(iii) a person whose sole financial in-
terest in the patent or patents at issue is 
ownership of an equity or security interest 
in the party alleging infringement, unless 
such person also has the right or ability to 
direct or control (membership on the board 
of directors alone is not sufficient to dem-
onstrate such right or ability) the civil ac-
tion. 
‘‘(7) SUBSTANTIAL
INTEREST.—In this sub-
section, the term ‘substantial interest’ includes an in-
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terest in the subject matter of a patent at issue if the 
party— 
‘‘(A) invented the subject matter; or 
‘‘(B) commercially practices or implements, 
made substantial preparations directed particu-
larly to commercially practicing or imple-
menting, or is engaged in research and develop-
ment in, technology in the field of the subject 
matter.’’. 
(d) DISCOVERY STAY.— 
(1) AMENDMENT.—Chapter 29 of title 35, United 
States Code, as amended by subsection (a), is further 
amended by inserting after section 281A (as added by 
such subsection) the following new section: 
‘‘§ 281B. Stay of discovery pending a preliminary mo-
tion. 
‘‘(a) IN GENERAL.—Except as provided in subsection 
(d), in an action for patent infringement under section 271 
or an action for a declaratory judgement that a patent is 
invalid or not infringed, discovery shall be stayed if— 
‘‘(1) the defendant moves to— 
‘‘(A) sever a claim or drop a party for 
misjoinder under Rule 21 of the Federal Rules of 
Civil Procedure; 
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‘‘(B) transfer the action under section 
1404(a) of title 28; 
‘‘(C) transfer or dismiss the action under 
section 1406(a) of title 28; or 
‘‘(D) dismiss the action pursuant to Federal 
Rule of Civil Procedure 12(b); and 
‘‘(2) such motion is filed within 90 days after 
service of the complaint and includes a declaration or 
other evidence in support of the motion. 
‘‘(b) EXPIRATION OF STAY.—A stay entered under sub-
section (a) shall expire when all motions that are the basis 
for the stay are decided by the court. 
‘‘(c) PRIORITY OF DECISION.—In an action described 
in subsection (a), the court shall decide a motion to sever 
a claim or drop a party for misjoinder under Rule 21 of 
the Federal Rules of Civil Procedure, to transfer under sec-
tion 1404(a) to title 28, to transfer or dismiss under 
1406(a) of title 28, or to dismiss the action pursuant to 
Federal Rule of Civil Procedure 12(b) before the earlier of 
the date on which the court— 
‘‘(1) decides any other substantive motion, pro-
vided however that the court may decide a question 
of its own jurisdiction at any time; or 
‘‘(2) issues a scheduling order under Rule 16(b) 
of the Federal Rules of Civil Procedure. 
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‘‘(d) EXCEPTION.— 
‘‘(1) DISCOVERY
NECESSARY
TO
DECIDE
MO-
TION.—Notwithstanding subsection (a), the court may 
allow such discovery as the court determines to be 
necessary to decide a motion to sever, drop a party, 
dismiss, or transfer. 
‘‘(2) COMPETITIVE HARM.—Subsections (a) and 
(c) shall not apply to an action in which the patentee 
is granted a preliminary injunction to prevent harm 
arising from the manufacture, use, sale, offer for sale, 
or importation of an allegedly infringing product or 
process that competes with a product or process made, 
sold, or offered for sale by the patentee. 
‘‘(3) CONSENT OF THE PARTIES.—The patentee 
and an opposing party shall be excluded, in whole or 
in part, from the limitations of subsections (a) and 
(c) upon such parties’ filing with the court a signed 
stipulation agreeing to such exclusion. 
‘‘(4) FDA AND BIOLOGICAL PRODUCT APPLICA-
TION.—Subsections (a) and (c) shall not apply to an 
action that includes a cause of action described under 
section 271(e)(2).’’. 
(2) CONFORMING AMENDMENT.—The table of sec-
tions for chapter 29 of title 35, United States Code, 
is amended by inserting after the item relating to sec-
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tion 281A, as added by subsection (a), the following 
new item: 
‘‘281B. Stay of discovery pending a preliminary motion.’’. 
(e) SENSE OF CONGRESS.—It is the sense of Congress 
that it is an abuse of the patent system and against public 
policy for a party to send out purposely evasive demand 
letters to end users alleging patent infringement. Demand 
letters sent should, at the least, include basic information 
about the patent in question, what is being infringed, and 
how it is being infringed. Any actions or litigation that 
stem from these types of purposely evasive demand letters 
to end users should be considered a fraudulent 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: 
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‘‘(c) WILLFUL INFRINGEMENT.—A claimant seeking to 
establish willful infringement may not rely on evidence of 
pre-suit notification of infringement unless that notifica-
tion identifies with particularity the asserted patent, iden-
tifies the product or process accused, identifies the ultimate 
parent entity of the claimant, and explains with particu-
larity, to the extent possible following a reasonable inves-
tigation or inquiry, how the product or process infringes 
one or more claims of the patent.’’; and 
(4) in the last undesignated paragraph, by strik-
ing ‘‘The court’’ and inserting ‘‘(d) EXPERT TESTI-
MONY.—The court’’. 
(g) VENUE.— 
(1) AMENDMENT.—Subsection (b) of section 1400 
of title 28, United States Code, is amended to read as 
follows: 
‘‘(b) VENUE FOR ACTION RELATING TO PATENTS.— 
Notwithstanding subsections (b) and (c) of section 1391 of 
this title, any civil action for patent infringement or any 
action for a declaratory judgment that a patent is invalid 
or not infringed may be brought only in a judicial dis-
trict— 
‘‘(1) where the defendant has its principal place 
of business or is incorporated; 
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‘‘(2) where the defendant has committed an act 
of infringement of a patent in suit and has a regular 
and established physical facility that gives rise to the 
act of infringement; 
‘‘(3) where the defendant has agreed or consented 
to be sued in the instant action; 
‘‘(4) where an inventor named on the patent in 
suit conducted research or development that led to the 
application for the patent in suit; 
‘‘(5) where a party has a regular and established 
physical facility that such party controls and oper-
ates, not primarily for the purpose of creating venue, 
and has— 
‘‘(A) engaged in management of significant 
research and development of an invention 
claimed in a patent in suit prior to the effective 
filing date of the patent; 
‘‘(B) manufactured a tangible product that 
is alleged to embody an invention claimed in a 
patent in suit; or 
‘‘(C) implemented a manufacturing process 
for a tangible good in which the process is al-
leged to embody an invention claimed in a pat-
ent in suit; or 
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‘‘(6) for foreign defendants that do not meet the 
requirements of paragraphs (1) or (2), according to 
section 1391(d) of this title.’’. 
(2) MANDAMUS RELIEF.—For the purpose of de-
termining whether relief may issue under section 
1651 of title 28, United States Code, a clearly and in-
disputably erroneous denial of a motion under section 
1406(a) of such title to dismiss or transfer a case on 
the basis of section 1400(b) of such title shall be 
deemed to cause irremediable interim harm. 
(3) RETAILERS NOT ELIGIBLE FOR CUSTOMER 
STAY.—If a defendant does not meet the definition of 
a retailer under section 296(a)(6) of title 35, United 
States Code, as added by section 5, solely because the 
defendant manufacturers or causes the manufacture of 
the covered product or process in suit, the retail fa-
cilities of such defendant shall not constitute a reg-
ular and established physical facility for purposes of 
section 1400(b)(2) of title 28, United Code, as added 
by paragraph (1). 
(4) TELEWORKERS.—The dwelling or residence 
of an employee or contractor of a defendant who 
works at such dwelling or residence shall not con-
stitute a regular and established physical facility of 
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the defendant for purposes of section 1400(b)(2) of 
title 28, United Code, as added by paragraph (1). 
(h) 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 each ad-
verse party the identity of each of the following: 
‘‘(A) The assignee of the patent or patents 
at issue. 
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‘‘(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). 
‘‘(E) A clear and concise description of the 
principal business, if any, of the party alleging 
infringement. 
‘‘(F) A list of each complaint filed, of which 
the party alleging infringement has knowledge, 
that asserts or asserted any of the patents identi-
fied under subparagraph (A). 
‘‘(G) For each patent identified under sub-
paragraph (A), whether a standard-setting body 
has specifically declared such patent to be essen-
tial, potentially essential, or having potential to 
become essential to that standard-setting body, 
and whether the United States Government or a 
foreign government has imposed specific licens-
ing requirements with respect to such patent. 
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‘‘(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. 
‘‘(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 informa-
tion identifies— 
‘‘(A) in the case of a partnership, the name 
of the partnership and the name and correspond-
ence address of each partner or other entity that 
holds more than a 5-percent share of that part-
nership; 
‘‘(B) in the case of a corporation, the name 
of the corporation, the location of incorporation, 
the address of the principal place of business, 
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and the name of each officer of the corporation; 
and 
‘‘(C) for each individual, the name and cor-
respondence address of that individual. 
‘‘(d) ONGOING DUTY OF DISCLOSURE TO THE PATENT 
AND TRADEMARK OFFICE.— 
‘‘(1) IN GENERAL.—A plaintiff required to sub-
mit information under subsection (b) or a subsequent 
owner of the patent or patents at issue shall, not later 
than 90 days after any change in the assignee of the 
patent or patents at issue or an entity described 
under subparagraph (B) or (D) of subsection (b)(1), 
submit to the Patent and Trademark Office the up-
dated 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 increased 
damages under section 284 with respect to in-
fringing activities taking place during any pe-
riod of noncompliance with paragraph (1), un-
less the denial of such damages or fees would be 
manifestly unjust; and 
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‘‘(B) the court shall award to a prevailing 
party accused of infringement reasonable fees 
and other expenses under section 285 that are in-
curred to discover the updated assignee or entity 
described under paragraph (1), unless such sanc-
tions would be unjust. 
‘‘(e) DEFINITIONS.—In this section: 
‘‘(1) FINANCIAL INTEREST.—The term ‘financial 
interest’— 
‘‘(A) means— 
‘‘(i) with regard to a patent or patents, 
the right of a person to receive proceeds re-
lated to the assertion of the patent or pat-
ents, including a fixed or variable portion 
of such proceeds; and 
‘‘(ii) with regard to the plaintiff, direct 
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 inter-
ests in a mutual or common investment 
fund, unless the owner of such interest par-
ticipates in the management of such fund; 
or 
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‘‘(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. 
‘‘(3) ULTIMATE PARENT ENTITY.— 
‘‘(A) IN GENERAL.—Except as provided in 
subparagraph (B), the term ‘ultimate parent en-
tity’ has the meaning given such term in section 
801.1(a)(3) of title 16, Code of Federal Regula-
tions, 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 chap-
ter 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 registration 
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fee in an amount sufficient to recover the estimated costs 
of administering subsections (b) through (e) of section 290 
of title 35, United States Code, as added by subsection (a), 
to facilitate the collection and maintenance of the informa-
tion required by such subsections, and to ensure the timely 
disclosure of such information to the public. 
(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 of this Act 
and shall apply to any action for which a complaint 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) DEFINITIONS.—In this section: 
‘‘(1) COVERED
CUSTOMER.—The term ‘covered 
customer’ means a retailer or end user that is accused 
of infringing a patent or patents in dispute based 
on— 
‘‘(A) the sale, or offer for sale, of a covered 
product or covered process without material 
modification of the product or process in a man-
ner that is alleged to infringe a patent or patents 
in dispute; or 
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‘‘(B) the use by such retailer, the retailer’s 
end user customer, or an end user of a covered 
product or covered process without material 
modification of the product or process in a man-
ner that is alleged to infringe a patent or patents 
in dispute. 
‘‘(2) COVERED MANUFACTURER.—The term ‘cov-
ered manufacturer’ means a person that manufactures 
or supplies, or causes the manufacture or supply of, 
a covered product or covered process, or a relevant 
part thereof. 
‘‘(3) COVERED
PROCESS.—The term ‘covered 
process’ means a process, method, or a relevant part 
thereof, that is alleged to infringe a patent or patents 
in dispute where such process, method, or relevant 
part thereof is implemented by an apparatus, mate-
rial, system, software, or other instrumentality that is 
provided by the covered manufacturer. 
‘‘(4) COVERED
PRODUCT.—The term ‘covered 
product’ means a product, system, service, component, 
material, or apparatus, or relevant part thereof, 
that— 
‘‘(A) is alleged to infringe a patent or pat-
ents in dispute; or 
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‘‘(B) implements a process alleged to in-
fringe the patent or patents in dispute. 
‘‘(5) END USER.—The term ‘end user’ includes 
an affiliate of an end user, but does not include an 
entity that manufacturers or causes the manufacture 
of a covered product or covered process, or a relevant 
part thereof. 
‘‘(6) RETAILER.—The term ‘retailer’ means an 
entity that generates revenues predominately through 
the sale to the public of consumer goods or services, 
or an affiliate of such entity, but does not include an 
entity that manufacturers or causes the manufacturer 
of a covered product or covered process, or a relevant 
part thereof. 
‘‘(b) STAY OF ACTION AGAINST CUSTOMER.—Except 
as provided in subsection (d), in any civil action in which 
a party asserts a claim for relief arising under any Act 
of Congress relating to patents, the court shall grant a mo-
tion to stay at least the portion of the action against a cov-
ered customer related to infringement of a patent involving 
a covered product or covered process if the following require-
ments are met: 
‘‘(1) PARTY TO THE ACTION.—The covered man-
ufacturer is a party to the action or to a separate ac-
tion (in which a party asserts a claim for relief aris-
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ing under any Act of Congress relating to patents) in-
volving the same patent or patents related to the same 
covered product or covered process. 
‘‘(2) AGREEMENT TO BE BOUND BY ISSUES DE-
TERMINED.—The covered customer agrees to be bound 
as to issues determined in an action described in 
paragraph (1) without a full and fair opportunity to 
separately litigate any such issue, but only as to those 
issues for which all other elements of the common law 
doctrine of issue preclusion are met. 
‘‘(3) DEADLINE TO FILE MOTION.—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 or paper in the action is served 
that specifically identifies the covered product or 
covered process as a basis for the covered cus-
tomer’s alleged infringement of the patent and 
that specifically identifies how the covered prod-
uct or covered process is alleged to infringe the 
patent; or 
‘‘(B) the date on which the first scheduling 
order in the case is entered. 
‘‘(4) MANUFACTURER
CONSENT
IN
CERTAIN 
CASES.—In a case in which the covered manufacturer 
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has been made a party to the action on motion by the 
covered customer, the covered manufacturer and the 
covered customer consent in writing to the stay. 
‘‘(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 manu-
facturer will not resolve a major issue in the suit 
against the covered customer (such as a covered 
product or covered process identified in the mo-
tion to lift the stay is not a material part of the 
claimed invention or inventions in the patent or 
patents in dispute); or 
‘‘(B) the stay unreasonably prejudices or 
would be manifestly unjust to the party seeking 
to lift the stay. 
‘‘(2) SEPARATE
MANUFACTURER
ACTION
IN-
VOLVED.—In the case of a stay entered under this sec-
tion based on the participation of the covered manu-
facturer in a separate action described in subsection 
(b)(1), a motion under paragraph (1) may only be 
granted if the court in such separate action deter-
mines that the showing required under paragraph (1) 
has been made. 
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‘‘(d) EXEMPTION.—This section shall not apply to an 
action that includes a cause of action described under sec-
tion 271(e)(2). 
‘‘(e) WAIVER OF ESTOPPEL EFFECT.—The court may, 
upon motion, determine that a consent judgment or an 
unappealed final order shall not be binding on the covered 
customer with respect to one or more of the issues that gave 
rise to the stay based on a showing that such consent judg-
ment or unappealed final order would unreasonably preju-
dice or be manifestly unjust to the covered customer in light 
of the circumstances of the case if, following the grant of 
a motion to stay under this section, the covered manufac-
turer described in subsection (b)(1)— 
‘‘(1) obtains or consents to entry of a consent 
judgment relating to such issue that gave rise to the 
stay; or 
‘‘(2) fails to prosecute to a final, non-appealable 
judgment such issue that gave rise to the stay. 
‘‘(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 section, 
or grant any motion to intervene, if otherwise permitted 
by law.’’. 
(b) CONFORMING AMENDMENT.—The table of sections 
for chapter 29 of title 35, United States Code, is amended 
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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 complaint 
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) PILOT PROGRAM FOR RULES AND PROCEDURES ON 
DISCOVERY BURDENS
AND COSTS
AND CASE MANAGE-
MENT.— 
(1) DEFINITIONS.—In this subsection, the term 
‘‘electronic communication’’ means any form of elec-
tronic communication, including email, text message, 
and instant message. 
(2) DEVELOPMENT
OF
RULES
AND
PROCE-
DURES.—Not later than 3 months after the date of the 
enactment of this Act, the Director of the Administra-
tive Office of the United States Courts shall designate 
not fewer than 6 of the district courts of the United 
States that are participating in the patent cases pilot 
program established under section 1 of Public Law 
111–349 (28 U.S.C.137 note) to develop rules and 
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procedures to implement the proposals described in 
paragraphs 
(3) 
through 
(5) 
to 
address 
the 
asymmetries in discovery burdens and costs, and to 
establish case management procedures, in any civil 
action arising under any Act of Congress relating to 
patents. 
(3) TYPES OF DISCOVERY RULES AND PROCE-
DURES TO BE CONSIDERED.—The discovery rules and 
procedures required under paragraph (2) shall ad-
dress each of the following: 
(A) DISCOVERY
OF
CORE
DOCUMENTARY 
EVIDENCE.—Whether and to what extent each 
party to the action is entitled to receive core doc-
umentary evidence and should be responsible for 
the costs of producing core documentary evidence 
within the possession or control of each such 
party, and whether and to what extent each 
party may seek non-core documentary discovery 
as otherwise provided in the Federal Rules of 
Civil Procedure. 
(B) ELECTRONIC COMMUNICATION.—If the 
parties request discovery of electronic commu-
nication, how such discovery should be phased to 
occur relative to the exchange of initial disclo-
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sures and core documentary evidence, and ap-
propriate limitations to apply to such discovery. 
(C) SCOPE OF DOCUMENTARY EVIDENCE.— 
The kinds of evidence that should constitute ‘‘core 
documentary evidence’’. 
(4) SPECIFIC
DISCOVERY
RULES
AND
PROCE-
DURES TO BE CONSIDERED FOR ADDITIONAL DOCU-
MENT
DISCOVERY.—The discovery rules and proce-
dures required under paragraph (2) shall address 
whether the following provisions, or variations on the 
following provisions, should apply: 
(A) IN GENERAL.—Whether each party to 
the action may seek any additional document 
discovery otherwise permitted under the Federal 
Rules of Civil Procedure beyond core documen-
tary evidence, if such party bears the reasonable 
costs, including reasonable attorney’s fees, of the 
additional document discovery. 
(B) REQUIREMENTS FOR ADDITIONAL DOC-
UMENT DISCOVERY.—Whether, unless the parties 
mutually agree otherwise, no party may be per-
mitted additional document discovery unless 
such a party posts a bond, or provides other se-
curity, in an amount sufficient to cover the ex-
pected costs of such additional document dis-
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covery, or makes a showing to the court that such 
party has the financial capacity to pay the costs 
of such additional document discovery. 
(C) GOOD CAUSE MODIFICATION.—Whether 
a court, upon motion and for good cause shown, 
may modify the requirements of subparagraphs 
(A) and (B) and any definition of core documen-
tary evidence. 
(D) COMPUTER
CODE.—Whether a court, 
upon motion and for good cause shown, may de-
termine that computer code should be included in 
the discovery of core documentary evidence, and 
whether the discovery of computer code shall 
occur after the parties have exchanged initial 
disclosures and other core documentary evidence. 
(E) 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 described in subparagraphs (A) and 
(B) will be sought. 
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(iii) Any issues about infringement, 
invalidity, or damages that, if resolved be-
fore the additional document discovery de-
scribed in subparagraphs (A) and (B) com-
mences, might simplify or streamline the 
case. 
(5) CASE MANAGEMENT RULES AND PROCEDURES 
TO BE CONSIDERED.—The rules and procedures re-
quired under paragraph (2) shall also address case 
management procedures for any civil action arising 
under any Act of Congress relating to patents, includ-
ing initial disclosure and early case management con-
ference practices that— 
(A) will identify any potential dispositive 
issues of the case; and 
(B) focus on early summary judgment mo-
tions when resolution of issues may lead to expe-
dited disposition of the case. 
(b) IMPLEMENTATION OF RULES AND PROCEDURES.— 
Within 18 months after the designation by the Director of 
the Administrative Office of the 6 district courts to develop 
the rules and procedures pursuant to subsection (a), the 6 
district courts shall complete the development of the rules 
and procedures, and begin to implement them. 
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(c) EXPANSION OF PILOT PROGRAM FOR RULES AND 
PROCEDURES ON DISCOVERY BURDENS AND COSTS AND 
CASE MANAGEMENT.—After the rules and procedures devel-
oped by the pilot program pursuant to subsection (a) have 
been in effect for at least 2 years, the Judicial Conference 
of the United States, using existing resources, may expand 
the application of some or all of those rules and procedures 
to be implemented by all the district courts, and the United 
States Court of Federal Claims, for any civil action arising 
under any Act of Congress relating to patents. 
(d) REVISION
OF FORM
FOR PATENT INFRINGE-
MENT.— 
(1) ELIMINATION
OF
FORM.—The Supreme 
Court, using existing resources, shall eliminate Form 
18 in the Appendix to the Federal Rules of Civil Pro-
cedure (relating to Complaint for Patent Infringe-
ment), effective on the date of the enactment of this 
Act. 
(2) REVISED FORM.—The Supreme Court may 
prescribe a new form or forms setting out model alle-
gations of patent infringement that, at a minimum, 
notify accused infringers of the asserted claim or 
claims, the products or services accused of infringe-
ment, and the plaintiff’s theory for how each accused 
product or service meets each limitation of each as-
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States Code, as added by section 4(a) of this Act; 
and 
(B) any other information the Director de-
termines to be relevant. 
(2) FORMAT.—In order to promote accessibility 
for the public, the information described in paragraph 
(1) shall be searchable by patent number, patent art 
area, and entity. 
SEC. 8. STUDIES ON PATENT TRANSACTIONS, QUALITY, AND 
EXAMINATION. 
(a) STUDY ON SECONDARY MARKET OVERSIGHT FOR 
PATENT TRANSACTIONS TO PROMOTE TRANSPARENCY AND 
ETHICAL BUSINESS PRACTICES.— 
(1) STUDY
REQUIRED.—The Director, in con-
sultation with the Secretary of Commerce, the Sec-
retary of the Treasury, the Chairman of the Securities 
and Exchange Commission, the heads of other rel-
evant agencies, and interested parties, shall, using ex-
isting resources of the Office, conduct a study— 
(A) to develop legislative recommendations 
to ensure greater transparency and account-
ability in patent transactions occurring on the 
secondary market; 
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