Massachusetts 2023-2024 Regular Session

Massachusetts House Bill H277 Compare Versions

Only one version of the bill is available at this time.

Old	New	Differences
1	1	1 of 1
2	2	HOUSE DOCKET, NO. 1262 FILED ON: 1/18/2023
3	3	HOUSE . . . . . . . . . . . . . . . No. 277
4	4	The Commonwealth of Massachusetts
5	5	_________________
6	6	PRESENTED BY:
7	7	Edward F. Coppinger
8	8	_________________
9	9	To the Honorable Senate and House of Representatives of the Commonwealth of Massachusetts in General
10	10	Court assembled:
11	11	The undersigned legislators and/or citizens respectfully petition for the adoption of the accompanying bill:
12	12	An Act to protect innovation and entrepreneurship in the Commonwealth.
13	13	_______________
14	14	PETITION OF:
15	15	NAME:DISTRICT/ADDRESS :DATE ADDED:Edward F. Coppinger10th Suffolk1/18/2023 1 of 5
16	16	HOUSE DOCKET, NO. 1262 FILED ON: 1/18/2023
17	17	HOUSE . . . . . . . . . . . . . . . No. 277
18	18	By Representative Coppinger of Boston, a petition (accompanied by bill, House, No. 277) of
19	19	Edward F. Coppinger relative to bad faith assertions of patent infringement. Consumer
20	20	Protection and Professional Licensure.
21	21	The Commonwealth of Massachusetts
22	22	_______________
23	23	In the One Hundred and Ninety-Third General Court
24	24	(2023-2024)
25	25	_______________
26	26	An Act to protect innovation and entrepreneurship in the Commonwealth.
27	27	Be it enacted by the Senate and House of Representatives in General Court assembled, and by the authority
28	28	of the same, as follows:
29	29	1 The General Laws are hereby amended by inserting after chapter 93L the following new
30	30	2chapter:-
31	31	3 CHAPTER 93M.
32	32	4 BAD FAITH ASSERTIONS OF PATENT INFRINGEMENT.
33	33	5 Section 1. As used in this chapter, the following terms shall, unless the context clearly
34	34	6requires otherwise, have the following meanings:
35	35	7 “Assertion of patent infringement”, (i) the sending or delivering of a demand letter to a
36	36	8target; (ii) the threatening of a target with litigation and asserting, alleging or claiming that the
37	37	9target has engaged in patent infringement; (iii) the sending or delivering of a demand letter to the
38	38	10customers of a target; or (iv) a claim or allegation, other than those made in litigation against a 2 of 5
39	39	11target, that a target has engaged in patent infringement or that a target should obtain a license to a
40	40	12patent in order to avoid litigation, or any similar assertion.
41	41	13 “Demand letter”, a letter, e-mail or other communication asserting, alleging or claiming
42	42	14that the target has engaged in patent infringement or that a target should obtain a license to a
43	43	15patent in order to avoid litigation, or any similar assertion.
44	44	16 “Target”, a person residing in, conducting substantial business in or having its principal
45	45	17place of business in Massachusetts against whom an assertion of patent infringement is made.
46	46	18 Section 2. (a) A person shall not make an assertion of patent infringement in bad faith. In
47	47	19determining whether a person has made an assertion of patent infringement in bad faith, and in
48	48	20addition to any other factor the court finds relevant, a court may consider whether:
49	49	21 (i) the demand letter failed to contain the following information: (A) the patent number;
50	50	22(B) the name and address of the patent owner or owners and assignee or assignees, if any; and
51	51	23(C) factual allegations concerning the specific areas in which the target’s products, services or
52	52	24technology infringe the patent or are covered by the claims in the patent;
53	53	25 (ii) prior to sending the demand letter, the person failed to conduct an analysis comparing
54	54	26the claims in the patent to the target’s products, services and technology, or such an analysis
55	55	27failed to identify specific areas in which the products, services and technology are covered by the
56	56	28claims in the patent;
57	57	29 (iii) the target requested information described in clause (i) that was not included in the
58	58	30demand letter, and the person failed to provide the information within a reasonable period of
59	59	31time; 3 of 5
60	60	32 (iv) the demand letter demanded payment of a license fee or response within an
61	61	33unreasonably short period of time;
62	62	34 (v) the person offers to license the patent for an amount that is not based on a reasonable
63	63	35estimate of the value of the license;
64	64	36 (vi) the claim or assertion of patent infringement was meritless and the person knew, or
65	65	37should have known, that the claim or assertion was meritless;
66	66	38 (vii) the claim or assertion of patent infringement was deceptive;
67	67	39 (viii) the person or its subsidiaries or affiliates have previously filed or threatened to file
68	68	40one or more lawsuits based on the same or similar claim of patent infringement and: (A) those
69	69	41threats or lawsuits lacked the information described in clause (i) of this subsection; or (B) the
70	70	42person attempted to enforce the claim of patent infringement in litigation and a court found the
71	71	43claim to be meritless; and
72	72	44 (ix) the patent has been held invalid or unenforceable in a final judgment or
73	73	45administrative decision.
74	74	46 (b) A court may consider the following factors and any other factors the court finds
75	75	47relevant, as evidence that a person has not made an assertion of patent infringement in bad faith:
76	76	48 (i) the demand letter contained the information described in clause (i) of subsection (a);
77	77	49 (ii) the target requested such information described in said clause (i) of said subsection
78	78	50(a) that was not included in the demand letter and the person provided the information within a
79	79	51reasonable period of time; 4 of 5
80	80	52 (iii) the person engaged in a good faith effort to establish that the target has infringed the
81	81	53patent and to negotiate an appropriate remedy; and
82	82	54 (iv) the person made a substantial investment in the use of the patent or in the production
83	83	55or sale of a product or item covered by the patent.
84	84	56 Section 3. (a) A target or a person aggrieved by a violation of this chapter may bring an
85	85	57action in superior court against a person who has made a bad-faith assertion of patent
86	86	58infringement.
87	87	59 The court may award to a plaintiff who prevails in an action brought pursuant to this
88	88	60chapter 1 or more of the following remedies: (i) equitable relief; (ii) damages; (iii) costs and fees,
89	89	61including reasonable attorneys’ fees; and (iv) exemplary damages in an amount equal to $50,000
90	90	62or 3 times the total of damages, costs, and fees, whichever is greater.
91	91	63 (b) In an action arising out of this section or section 4, any person who has delivered or
92	92	64sent, or caused another to deliver or send, a demand letter to a target in Massachusetts has
93	93	65purposely availed themselves of the privileges of conducting business in the commonwealth and
94	94	66shall be subject to suit in the commonwealth, whether or not the person has transacted other
95	95	67business in the commonwealth.
96	96	68 Any person who by contract, agreement, or otherwise, directly or indirectly, arranged for
97	97	69the bad faith assertion of patent infringement and any person who otherwise caused or is legally
98	98	70responsible for such bad faith assertion of patent infringement under the principles of the
99	99	71common law shall be liable to a prevailing plaintiff for all damages, costs and fees. Such liability
100	100	72shall be joint and several. 5 of 5
101	101	73 (c) A court may award to a defendant who prevails in an action brought pursuant to this
102	102	74section costs and fees, including reasonable attorneys’ fees, if the court finds the action was not
103	103	75well-grounded in fact and warranted by existing law or was interposed for any improper purpose,
104	104	76such as to harass or to cause unnecessary delay or needless increase in the cost of litigation.
105	105	77 (d) This chapter shall not be construed to limit any right or remedy otherwise available
106	106	78under law to the commonwealth or to any person.