HR-3309 : Still Just a Bill

Innovation Act - Directs a party alleging infringement in a civil action involving a claim for relief arising under any Act of Congress relating to patents to include in the court pleadings, unless the information is not reasonably accessible, specified details concerning: (1) each claim of each patent allegedly infringed, including each accused apparatus, feature, function, method, service, or other accused instrumentality; (2) the person alleged to be the direct infringer for each claim alleged to have been infringed indirectly; (3) the principal business of the party alleging infringement; (4) each complaint filed that asserts any of the same patents; and (5) whether the patent has been declared essential, potentially essential, or having potential to become essential to any standard-setting body as well as whether the United States or a foreign government has imposed any specific licensing requirements.

Requires courts to award prevailing parties reasonable fees and other expenses incurred in connection with such actions, unless the position of the nonprevailing party was substantially justified or special circumstances make an award unjust.

Allows the court, if a nonprevailing party is unable to pay such fees and expenses, to make the fees and expenses recoverable against any interested party that has been joined to the action.

Requires the court to grant a motion by a party defending against an allegation of infringement to join an interested party if such defending party shows that the party alleging infringement has no substantial interest other than asserting the patent claim in litigation.

Defines "interested party" as a person, other than the party alleging infringement, that: (1) is an assignee of the patent; (2) has a right, including a contingent right, to enforce or sublicense the patent; or (3) has a direct financial interest in the patent, including the right to any part of an award of damages or licensing revenue.

Limits discovery to only the information necessary to determine the meaning of patent terms when the court requires a ruling relating to the construction of terms used in a patent claim asserted in the complaint.

Requires plaintiffs, upon filing an initial complaint, to disclose to the U.S. Patent and Trademark Office (USPTO), the court, and each adverse party the identity of: (1) the assignee, (2) any entity with a right to sublicense or enforce the patent, (3) any entity that the plaintiff knows to have a financial interest in the patent or the plaintiff, and (4) the ultimate parent entity of any such identified assignee or entity.

Requires courts to grant a motion to stay an action against a customer accused of infringing a patent based on a product or process under specified conditions when: (1) the manufacturer is a party to the action or to a separate action involving the same patent related to the same product or process, and (2) the customer agrees to be bound by any judgment entered against such manufacturer.

Exempts from pleading, disclosure, and lift of stay requirements patent actions that include certain claims relating to abbreviated new drug applications for generic drugs under the Federal Food, Drug, and Cosmetic Act and the Public Health Service Act, including animal drugs, veterinary products, and other biological products.

Directs the Judicial Conference of the United States to develop discovery rules and procedures, to be implemented by U.S. districts courts and the U.S. Court of Federal Claims, under which each party to the action is: (1) entitled to receive specified categories of core documentary evidence and is to be responsible for the costs of producing such evidence within its possession or control; and (2) permitted to seek any additional document discovery if the requesting party bears the reasonable costs, including reasonable attorney's fees, of the additional discovery.

Provides for discovery of electronic communications to occur only if the parties determine that it is necessary and only after the parties have exchanged initial disclosures and core documentary evidence.

Makes U.S. bankruptcy law applicable in cross-border bankruptcy cases in which the debtor is a licensor of intellectual property rights and a foreign proceeding is pending in the country where the debtor has the center of its main interests, thereby permitting a licensee to retain its right in such intellectual property if the trustee rejects the underlying executory contract.

Directs the USPTO to notify the public on its website when a patent case is brought in federal court.

Amends the Leahy-Smith America Invents Act (AIA) to:

• repeal a procedure that allows a patent applicant dissatisfied with a decision of the Patent Trial and Appeal Board (PTAB) to seek a patent through a civil action against the USPTO in the U.S. District Court for the Eastern District of Virginia (but retains provisions authorizing the applicant to appeal a PTAB decision to the U.S. Court of Appeals for the Federal Circuit);
• limit the grounds for invalidity of a patent claim that a post-grant review petitioner is prohibited, by estoppel, from asserting in subsequent civil actions (or certain U.S. International Trade Commission [USITC] proceedings) to only those grounds that the petitioner actually raised during post-grant review (currently, the petitioner is estopped from asserting claims that the petitioner raised or could have raised during such review);
• require claims of patent in post-grant and inter partes review proceedings to be construed in the same manner as a court would construe such claims in a civil action to invalidate the patent, including by interpreting the claim in accordance with its ordinary and customary meaning as well as the prosecution history pertaining to the patent (currently, the USPTO construes claims by considering the broadest reasonable interpretation);
• codify judicial doctrine relating to the consideration of prior art in cases of double patenting for the purpose of determining the nonobviousness of a second patent's claimed invention, thereby specifying that such doctrine continues to apply under the AIA's first-inventor-to-file patent system; and
• exclude any time consumed by an applicant's request for continued examination from the calculation of a patent term adjustment that is based on the USPTO failing to issue a patent within three years.

Revises the post-issuance covered business method patent review program to: (1) limit the program to challenges against first-to-invent patents; (2) make the program permanent (currently, an eight-year transitional program); (3) require the definition of "covered business method patent," as it relates to a financial product or service, to be construed consistently with the PTAB institution decision in SAP America, Inc. v. Versata Dev. Group, Inc., which was released on January 9, 2013; (4) expand the scope of prior art that may serve as the basis of a challenge; and (5) permit the USPTO to waive filing fees.