Rep. Bob Goodlatte, chairman of the House Judiciary Committee, has re-introduced a bill – called the Innovation Act – aimed at reforming certain aspects of the U.S. patent system. This bill revives a similar bill that passed the House in 2014 but stalled in the Senate. Below is a brief recap of some of the key provisions to the Innovation Act of 2015:

• Infringement Charts at Pleading Stage:  The bill would heighten the pleading requirements when making an infringement charge. In particular, a plaintiff filing an infringement lawsuit would need to include infringement charts showing how each limitation of each asserted claim in each asserted patent is found within each accused product or process. However, if the infringement is not readily available after a reasonable pre-filing investigation, the plaintiff would not be required to complete the entire chart.
• Presumption of Attorney Fees to Prevailing Party:  The bill would create a presumption of awarding attorney fees to the prevailing party. In particular, a court would be required to award attorney fees and “other expenses” to the prevailing party “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.” This would change the current rule in patent cases where attorney fees are only awarded in “exceptional cases.”
• Limits to Discovery:  The bill would limit discovery until after a claim construction ruling “if the court determines that a ruling relating to the construction of terms used in a patent claim asserted in the complaint is required….” This provision has the potential of greatly reducing litigation costs since claim construction is often dispositive in patent cases. (On the topic of limiting discovery until after claim construction, I wrote an article with my former colleague Steve Bauer of Proskauer Rose for The Sedona Conference Journal in 2003 setting forth a proposal on a “Simplified Approach to Patent Litigation Trials,” which can be found here.)
• Identity of Ownership:  Under the bill, the patent owner would be required to disclose “the ultimate parent entity” of any assignee of the patent. Further, the patent holder would be under an ongoing duty to update the U.S. Patent Office of any change in ownership.
• Demand Letters and Willful Infringement:  The bill would limit the applicability of pre-litigation demand letters for proving willfulness unless the letter identified: (1) the asserted patent; (2) the accused product or process; (3) the ultimate parent entity that owns the patent; and (4) an explanation of how the product or process infringes the patent.
• Claim Construction in Post-Issuance Proceedings:  The bill would require the U.S. Patent Office to construe claims in post-issuance proceedings (i.e., Inter Partes Review, Post-Grant Review, and Post-Grant Review for Covered Business Methods) in the same manner as would be done by a federal district court and “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.”  If a court has already construed the claim then the Patent Office “shall consider such claim construction.”

The full text of the Innovation Act of 2015 can be found here.

A press release from the House Judiciary Committee can be found here.