Indiana Patent Troll Statute for Demand Letters HEA Bad Faith Assertions of Patent Infringement

Indiana- Patent Troll Statute- Demand Letters HEA “Bad Faith Assertions of Patent Infringement” –Effective: July 1, 2015  Ceremonial Signing July 22 nd Exempt –Universities –University Tech Transfer Offices –University (or Tech Transfer) Licensees Does not apply to: –Orange Book/Biological Suits- 35 USC 271 (e)(2) or 42 USC 262

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.

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.

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.

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.

Indiana- Patent Troll Statute Demand Letters Required Information Patent number for infringed patent. Name and address of: –Patent Owner, –Assignees of the patent, and –Those retained to enforce the patent. Factual allegations identifying specific areas of target’s product/service infringing the patent.

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, or –Court found claim to be meritless. Other factors court finds relevant.

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.

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.

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 relief –Greater of:  Actual damages, or  Liquidated damages of $5,000/demand letter –Punitive damages = greater of:  $50,000, or  Treble actual damages (3 X Actual Damages)

Want to know more? Chuck Schmal Patent Attorney Woodard, Emhardt, Moriarty, McNett & Henry LLP Chase Tower 111 Monument Circle, Suite 3700 Indianapolis, IN

Indiana Patent Troll Statute for Demand Letters HEA Bad Faith Assertions of Patent Infringement