for Demand Letters HEA 1102 Bad Faith Assertions of Patent Infringement Indiana Patent Troll Statute Demand Letters HEA 1102 Bad Faith Assertions of Patent Infringement Effective July 1 2015 ID: 317764
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Slide1
Indiana Patent Troll Statute
for Demand Letters
HEA
1102- Bad
Faith Assertions of
Patent
InfringementSlide2
Indiana- Patent Troll Statute- Demand Letters HEA
1102- “Bad Faith Assertions of Patent Infringement”
Effective: July 1, 2015
Ceremonial Signing July 22ndExemptUniversitiesUniversity Tech Transfer OfficesUniversity (or Tech Transfer) Licensees Does not apply to:Orange Book/Biological Suits- 35 USC 271 (e)(2) or 42 USC 262 Slide3
Indiana- Patent Troll Statute- Definitions "Demand letter" means a letter, electronic mail,
or any
other written, including electronic, communication
asserting that a target has engaged in patent infringement.Does not include complaints filed in District Court or ITC. "End user" means a person who purchases, rents, leases, or otherwise obtains a product or service in the commercial market that is not for resale in the commercial market and that is, or later becomes, the subject of a patent infringement allegation.Slide4
Indiana- Patent Troll Statute- Definitions "Target" means any of the following:
(1) An end user who has
received a demand letter
or against whom an assertion of patent infringement has been made.(2) An end user who has been threatened with litigation for patent infringement or against whom a lawsuit has been filed alleging patent infringement.(3) An end user whose customer
has received a demand letter asserting that the person's product, service, or technology has infringed a patent.Slide5
Indiana- Patent Troll Statute Chapter
3. Assertions of Patent Infringements in Bad
Faith Prohibited
Sec. 1. A person may not assert a claim of patent infringement in bad faith.Notes Vague language is present throughout the statute.
No apparent limit to just Indiana targets.Slide6
Indiana- Patent Troll Statute Bad Faith Factors
Demand letter with incomplete information or don’t provide the information in a reasonable time after request for information.
Failure for target to request required demand letter information is
not a defense.Fail to conduct infringement due diligence.Demand payment of license fee or response within unreasonable short period of time.Slide7
Indiana- Patent Troll Statute
Demand Letters Required Information
Patent number for infringed patent.
Name and address of:Patent Owner,
Assignees of the patent, andThose retained to enforce the patent.Factual allegations identifying specific areas of target’s product/service infringing the patent.Slide8
Indiana- Patent Troll Statute
Bad Faith Factors
Offered
licensed amount unreasonable estimate of license value.Deceptive or meritless patent infringement assertion.Previously filed or threatened a lawsuit for a similar claim of patent infringement:Lacked proper demand letter information, orCourt found claim to be meritless.Other factors court finds relevant.Slide9
Indiana- Patent Troll Statute
Bond
- Upon a motion by a target & finding of the court that the target has established a reasonable likelihood of a bad faith assertion. (Either party can request a hearing on the bond request.)
Court require a bond = Good faith estimate of target to litigate +Amounts reasonably likely to recover.Bond may not exceed $250,000.Court can waive bond if available assets equal bond amount or good cause showing. Slide10
Indiana- Patent Troll Statute
Remedies & Damages
Target (or others aggrieved) may bring action.
Within 30 days of filing complaint must deliver copy of complaint to attorney general.Remedies & Damages are in addition to any existing federal or state relief.Slide11
Indiana- Patent Troll Statute
Remedies & Damages
Either Party (prevailing)
- Reasonable attorneys fees and expenses to prevailing party.Complainant (target)- any or all of the following:Equitable reliefGreater of:Actual damages, orLiquidated damages of $5,000/demand letter Punitive damages = greater of:$50,000, or
Treble actual damages (3 X Actual Damages)Slide12
Want to know more?
Chuck Schmal
Patent Attorney
Woodard, Emhardt, Moriarty, McNett & Henry LLP
Chase Tower
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
317.713.4954
cschmal@uspatent.com
www.uspatent.comSlide13
Indiana Patent Troll Statute
for Demand Letters
HEA
1102- Bad
Faith Assertions of Patent
Infringement