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H. B. No. 573 As IntroducedAs Introduced
|130th General Assembly|
Representatives Huffman, Becker, Terhar, Wachtmann, Hood, Scherer, Adams, J., Romanchuk, McClain
To enact sections 2307.66, 2307.67, 2307.68, and
2307.69 of the Revised Code to prohibit a person
from making a bad faith assertion of patent
infringement, to permit a person aggrieved by a
bad faith assertion of patent infringement to
bring a tort action, and to authorize the Attorney
General to investigate and to institute a civil
action if the Attorney General believes a person
has made a bad faith assertion of patent
BE IT ENACTED BY THE GENERAL ASSEMBLY OF THE STATE OF OHIO:
Section 1. That sections 2307.66, 2307.67, 2307.68, and
2307.69 of the Revised Code be enacted to read as follows:
Sec. 2307.66. As used in sections 2307.66 to 2307.69 of the
(A) "Demand letter" means a letter, email, or other
communication asserting or claiming that the target has engaged in
(B) "Institution of higher education" has the same meaning as
in section 2741.01 of the Revised Code.
(C) "Target" means any of the following:
(1) A person who has received a demand letter or against whom
an assertion or allegation of patent infringement has been made;
(2) A person who has been threatened with a tort action or
against whom tort action has been filed alleging patent
(3) A person whose customers have received a demand letter
asserting that the person's product, service, or technology has
infringed a patent.
Sec. 2307.67. (A) No person shall make a bad faith assertion
of patent infringement.
(B) A court may consider the following factors as evidence
that a person has made a bad faith assertion of patent
(1) A demand letter does not contain all of the following
(b) The name and address of the patent owner or owners and
assignee and assignees, if any;
(c) Factual allegations concerning the specific areas in
which the target's products, services, and technology infringe the
patent or are covered by the claims in the patent.
(2) Prior to sending a demand letter, the person fails to
conduct an analysis comparing the claims in the patent to the
target's products, services, and technology or the analysis was
conducted but does not identify the specific areas in which the
products, services, and technology are covered by the claims in
(3) A demand letter does not contain all of the information
described in division (B)(1) of this section, the target requests
the information, and the person fails to provide the information
within a reasonable period of time.
(4) A demand letter demands payment of a license fee or
response within an unreasonably short period of time.
(5) The person offers to license the patent for an amount
that is not based on a reasonable estimate of the value of the
(6) The claim or assertion of patent infringement is
meritless and the person knew, or should have known, that the
claim or assertion is meritless.
(7) The claim or assertion of patent infringement is
(8) The person or the person's subsidiaries or affiliates
have previously filed or threatened to file one or more tort
actions based on the same or similar claims of patent infringement
and either of the following applies to the tort actions and
threats to file tort actions:
(a) The tort action or threat to file a tort action lacked
the information described in division (B)(1) of this section;
(b) The person attempted to enforce the claim of patent
infringement in a tort action and the court found the claim to be
(9) Any other factor that the court finds relevant.
(C) A court may consider the following factors as evidence
that a person has not made a bad faith assertion of patent
(1) A demand letter contains the information described in
division (B)(1) of this section.
(2) If a demand letter does not contain the information
described in division (B)(1) of this section and the target
requests the information, the person provides the information
within a reasonable period of time.
(3) The person engages in a good faith effort to establish
that the target has infringed the patent and to negotiate an
(4) The person makes or has made a substantial investment in
the use of the patent or in the production or sale of a product or
item covered by the patent.
(5) The person is any of the following:
(a) The inventor or joint inventor of the patent or, in the
case of a patent filed by and awarded to an assignee of the
original inventor or joint inventor, is the original assignee;
(b) An institution of higher education or a technology
transfer organization owned or affiliated with an institution of
(6) The person has done either of the following:
(a) Demonstrated good faith business practices in previous
efforts to enforce the patent or a substantially similar patent;
(b) Successfully enforced the patent or a substantially
similar patent through a tort action.
(7) Any other factor that the court finds relevant.
(D) It is not a violation of division (A) of this section for
a person who owns or has the right to license or enforce a patent
to notify a person of that ownership or right of license or
enforcement, to notify a person that the patent is available for
license or sale, to notify a person of the infringement of that
patent pursuant to the provisions of Title 35 of the United States
Code, or to seek compensation from a person on account of a past
or present infringement of that patent, or for a license, when it
is reasonable to believe that the person from whom compensation is
sought may owe such compensation.
(E) Sections 2307.66 to 2307.69 of the Revised Code do not
apply to a demand letter or civil action that includes a claim for
relief under 35 U.S.C. 271(e)(2).
Sec. 2307.68. (A) A target or other person aggrieved by a
bad faith assertion of patent infringement in violation of
division (A) of section 2307.67 of the Revised Code may bring a
tort action in the court of common pleas of the county of the
target's residence or primary place of business.
(B) Upon motion by a target and a finding by the court that a
target has established a reasonable likelihood that a person has
made a bad faith assertion of patent infringement in violation of
section 2307.67 of the Revised Code, the court shall require the
person to post a bond in an amount equal to a good faith estimate
of the target's costs to litigate the tort action and amounts
reasonably likely to be recovered under section 2307.69 of the
Revised Code, conditioned upon payment of any amounts finally
determined to be due to the target. The court shall not order a
bond in excess of two hundred fifty thousand dollars. The court
shall hold a hearing on the bond if the person or target requests
a hearing. The court may waive the bond requirement if the court
finds that the person has available assets equal to the amount of
the proposed bond or for other good cause shown.
(C)(1) A court may award all of the following to a plaintiff
who prevails in an action brought under this section:
(b) Compensatory damages;
(c) Costs and fees of litigation, including reasonable
(d) Exemplary damages in an amount equal to $50,000 or three
times the total of damages, costs, and fees, whichever is greater.
(2) Section 2315.21 of the Revised Code applies to a tort
action brought under division (A) of this section if the target
makes a claim for both compensatory damages and for punitive or
(D) Division (A) of this section does not limit or affect a
target's right to bring a tort action related to patent
infringements under any other provision of state or federal law.
Sec. 2307.69. (A) If the attorney general, by the attorney
general's own inquiries or as a result of complaints, has
reasonable cause to believe that a person has made a bad faith
assertion of patent infringement the attorney general may
investigate. For this purpose, the attorney general may administer
oaths, subpoena witnesses, adduce evidence, and require the
production of relevant matter. If the relevant matter is located
outside the state, the attorney general may designate
representatives, including officials of the state in which the
matter is located, to inspect the matter on the attorney general's
(B) The attorney general may institute a civil action in
accordance with section 109.16 of the Revised Code seeking
injunctive and other equitable relief in connection with a bad
faith assertion of patent infringement if the attorney general
believes that the action would be in the public interest. The
attorney general may bring an action to obtain a temporary
restraining order, preliminary injunction, or permanent injunction
to restrain and prevent a person from taking actions and making
assertions or allegations that constitute a bad faith assertion of
patent infringement. The court may issue a temporary restraining
order, preliminary injunction, or permanent injunction to restrain
or prevent the person from taking actions and making assertions or
allegations that constitute a bad faith assertion of patent
(C) This section does not limit or affect other rights,
duties, privileges, and powers conferred by law upon the courts
and the attorney general.