RDCSB255 447 4131
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DIGEST
The digest printed below was prepared by House Legislative Services. It constitutes no part
of the legislative instrument. The keyword, one-liner, abstract, and digest do not constitute
part of the law or proof or indicia of legislative intent. [R.S. 1:13(B) and 24:177(E)]
Martiny SB No. 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. RDCSB255 447 4131
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(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.
(4)The person or affiliate 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". RDCSB255 447 4131
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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.
Summary of Amendments Adopted by House
Committee Amendments Proposed by House Committee on Civil Law and Procedure
to the engrossed bill.
1. Deleted the negotiation of an appropriate remedy as a consideration of the court
as to whether a patent infringement was made in bad faith.
2. Added a provision including the affiliate of a person who made a substantial
investment in the use of the patent.
3. Added technical amendments.