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 end-user has engaged in patent infringement.
(2)Requests or demands the end-user to obtain a license to a patent or to otherwise pay
compensation in order to avoid litigation.
Proposed law defines "end-user" as a consumer, whether an individual, business, or financial
institution, who purchases, rents, leases, or otherwise obtains a product, service, or technology in
the commercial market that is not for resale and is, or later becomes, the subject of a patent
infringement assertion.
Proposed law provides that no person shall make a bad faith assertion of patent infringement
against an end-user.
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 against an end-user:
(1)The demand letter received by the end-user 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 obtained by the end-user, or their use thereof,
infringe the patent or are covered by the claims in the patent.
(2)The person sends a demand letter to an end-user without first making a reasonable effort
to conduct an analysis comparing the claims in the patent to the products, services, or
technology obtained by the end-user, 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 end-user 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 from an end-user within
an unreasonably short period of time.
(5)The claim or assertion of patent infringement against an end-user 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.
Proposed law provides that a court may consider any of the following factors as evidence that an
assertion of patent infringement against an end-user was not made in bad faith:
(1)The demand letter received by an end-user contains certain information.
(2)When the demand letter lacks certain information and the end-user 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 end-user 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 that the attorney general has the sole authority to investigate and pursue
any violation of proposed law as an unfair or deceptive trade practice or act.
Proposed law provides that any person who is found liable shall be liable to the attorney general
for all costs, expenses, and fees related to investigations and proceedings associated with the
violation, including attorney fees. An action to recover costs, expenses, fees, and attorney fees
shall be ancillary to, and shall be filed and heard in the same court as a civil action filed under the
provisions of proposed 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 outside the state asserting patent infringement by an end-
user in the state shall be deemed to be transacting business within the state and shall thereby be
subject to the jurisdiction of the courts of this state.
Effective upon signature of the governor or lapse of time for gubernatorial action.
(Adds R.S. 51:1428)
Summary of Amendments Adopted by Senate
Committee Amendments Proposed by Senate Committee on Commerce, Consumer
Protection, and International Affairs to the original bill
1. Removes the term "target".
2. Defines the term "end-user" as a consumer, whether an individual, business, or
financial institution, who purchases, rents, leases, or otherwise obtains a product,
service, or technology in the commercial market that is not for resale and is, or
later becomes, the subject of a patent infringement assertion.
3. Provides that the attorney general shall have the sole authority to investigate and
pursue any violation of proposed law.
4. Provides that any person violating proposed law shall be liable to the attorney
general for all costs, expenses, and fees related to investigations and proceedings
associated with the violation, including attorney fees.
5. Provides for jurisdiction of state courts when the person asserting patent
infringements against an end-user is outside the state.