The original instrument and the following digest, which constitutes no part of the
legislative instrument, were prepared by Michelle Ducharme.
DIGEST
Martiny (SB 255)
Present law provides relative to the Unfair Trade Practices and Consumer Protection Law.
Proposed law defines the term "demand letter" as a letter, email, or other communication that
does either of the following:
(1)Asserts, alleges, or claims that the target has engaged in patent infringement.
(2)Requests or demands the target to obtain a license to a patent or to otherwise pay
compensation in order to avoid litigation.
Proposed law defines "target" as all 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 litigation for alleged patent infringement.
(3)A person whose customers have received a demand letter asserting that the person's
product, service, or technology, or the use thereof, has infringed a patent.
Proposed law provides that no person shall make a bad faith assertion of patent infringement.
Proposed law provides that a court may consider any of the following factors as evidence that a
person has made a bad faith assertion of patent infringement:
(1)The demand letter received by the target does not contain all of the following
information:
(a)The patent number or the patent application number, if no patent number has been
issued.
(b)The name and address of the patent owner or owners and assignee or assignees, if
any.
(c)The factual allegations concerning the specific areas in which the accused
products, services, or technology, or the target's manufacture, use, sale, or offer
for sale thereof, infringe the patent or are covered by the claims in the patent. (2)The person sends a demand letter to a target without first making a reasonable effort to
conduct an analysis comparing the claims in the patent to the accused products, services,
or technology, or to identify specific areas in which the products, services, or technology
are covered by the claims in the patent.
(3)When the demand letter lacks certain information and the target requests information
from the person, the person fails to provide the requested information within a reasonable
period of time.
(4)The demand letter requires payment of a license fee or response within an unreasonably
short period of time.
(5)The claim or assertion of patent infringement is without merit, and the person knew or
should have known, that the claim or assertion is without merit.
(6)The person or its subsidiaries or affiliates have previously filed or threatened to file one
or more lawsuits based on the same or similar claim of patent infringement and those
lawsuits or threats lacked certain information.
(7)The demand letter or assertion of patent infringement contains any material
misrepresentation of fact.
(8)Any other factor the court finds relevant.
Proposed law provides that a court may consider any of the following factors as evidence that an
assertion of patent infringement was not made in bad faith:
(1)The demand letter received by a target contains certain information.
(2)When the demand letter lacks certain information 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 or may
be infringing the patent and to negotiate an appropriate remedy.
(4)The person makes a substantial investment in the use of the patent or in the production or
sale of a product, service, or technology covered by the patent.
(5)The person is either 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, the original
assignee.
(b)An institution of higher education or a technology transfer organization owned by or affiliated with an institution of higher education.
(6)The person has demonstrated good faith business practices in previous efforts to enforce
the patent, or a substantially similar patent or has successfully enforced the patent, or a
substantially similar patent, through litigation.
(7)Any other factor the court finds relevant.
Proposed law provides any violation of proposed law shall be an unfair or deceptive trade
practice or act and the violator shall be subject to any and all penalties, remedies, actions, and
relief pursuant to the Unfair Trade Practices & Consumer Protection Law.
Proposed law provides that the remedies and rights provided in law are in addition to and do not
preclude any right or remedy otherwise authorized by law.
Proposed law provides that any person who is found liable under the provisions of proposed law
shall be liable for all costs, expenses and fees related to investigations and proceedings associated
with the violation, including attorney fees.
Proposed law provides that an action to recover costs, expenses, fees, and attorney fees shall be
ancillary to, and shall be brought and heard in the same court, as the civil action brought under
the provisions of proposed law.
Effective upon signature of the governor or lapse of time for gubernatorial action.
(Adds R.S. 51:1428)