| 6 | 4 | | AN ACT |
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| 7 | 5 | | relating to bad faith claims of patent infringement; providing a |
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| 8 | 6 | | civil penalty. |
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| 9 | 7 | | BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF TEXAS: |
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| 10 | 8 | | SECTION 1. Chapter 17, Business & Commerce Code, is amended |
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| 11 | 9 | | by adding Subchapter L to read as follows: |
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| 12 | 10 | | SUBCHAPTER L. BAD FAITH CLAIMS OF PATENT INFRINGEMENT |
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| 13 | 11 | | Sec. 17.951. DEFINITION. In this subchapter, "end user" |
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| 14 | 12 | | means a person that purchases, rents, leases, or otherwise obtains |
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| 15 | 13 | | a product, service, or technology in the commercial market that is |
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| 16 | 14 | | not for resale and that is, or later becomes, the subject of a |
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| 17 | 15 | | patent infringement assertion due to the person's use of the |
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| 18 | 16 | | product, service, or technology. |
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| 19 | 17 | | Sec. 17.952. BAD FAITH CLAIM OF PATENT INFRINGEMENT |
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| 20 | 18 | | PROHIBITED. (a) A person may not send to an end user located or |
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| 21 | 19 | | doing business in this state a written or electronic communication |
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| 22 | 20 | | that is a bad faith claim of patent infringement. |
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| 23 | 21 | | (b) A communication is a bad faith claim of patent |
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| 24 | 22 | | infringement if the communication includes a claim that the end |
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| 25 | 23 | | user or a person affiliated with the end user has infringed a patent |
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| 26 | 24 | | and is liable for that infringement and: |
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| 27 | 25 | | (1) the communication falsely states that the sender |
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| 28 | 26 | | has filed a lawsuit in connection with the claim; |
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| 29 | 27 | | (2) the claim is objectively baseless because: |
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| 30 | 28 | | (A) the sender or a person the sender represents |
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| 31 | 29 | | does not have a current right to license the patent to or enforce |
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| 32 | 30 | | the patent against the end user; |
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| 33 | 31 | | (B) the patent has been held invalid or |
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| 34 | 32 | | unenforceable in a final judgment or administrative decision; or |
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| 35 | 33 | | (C) the infringing activity alleged in the |
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| 36 | 34 | | communication occurred after the patent expired; or |
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| 37 | 35 | | (3) the communication is likely to materially mislead |
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| 38 | 36 | | a reasonable end user because the communication does not contain |
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| 39 | 37 | | information sufficient to inform the end user of: |
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| 40 | 38 | | (A) the identity of the person asserting the |
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| 41 | 39 | | claim; |
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| 42 | 40 | | (B) the patent that is alleged to have been |
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| 43 | 41 | | infringed; and |
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| 44 | 42 | | (C) at least one product, service, or technology |
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| 45 | 43 | | obtained by the end user that is alleged to infringe the patent or |
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| 46 | 44 | | the activity of the end user that is alleged to infringe the patent. |
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| 47 | 45 | | Sec. 17.953. ENFORCEMENT BY ATTORNEY GENERAL; INJUNCTION |
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| 48 | 46 | | AND CIVIL PENALTY. (a) If the attorney general believes that a |
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| 49 | 47 | | person has violated or is violating Section 17.952, the attorney |
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| 50 | 48 | | general may bring an action on behalf of the state to enjoin the |
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| 51 | 49 | | person from violating that section. |
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| 52 | 50 | | (b) In addition to seeking an injunction under Subsection |
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| 53 | 51 | | (a), the attorney general may request and the court may order any |
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| 54 | 52 | | other relief that may be in the public interest, including: |
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| 55 | 53 | | (1) the imposition of a civil penalty in an amount not |
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| 56 | 54 | | to exceed $50,000 for each violation of Section 17.952; |
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| 57 | 55 | | (2) an order requiring reimbursement to this state for |
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| 58 | 56 | | the reasonable value of investigating and prosecuting a violation |
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| 59 | 57 | | of Section 17.952; and |
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| 60 | 58 | | (3) an order requiring restitution to a victim for |
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| 61 | 59 | | legal and professional expenses related to the violation. |
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| 62 | 60 | | Sec. 17.954. CONSTRUCTION OF SUBCHAPTER. This subchapter |
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| 63 | 61 | | may not be construed to: |
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| 64 | 62 | | (1) limit rights and remedies available to the state |
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| 65 | 63 | | or another person under any other law; |
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| 66 | 64 | | (2) alter or restrict the attorney general's authority |
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| 67 | 65 | | under other law with regard to conduct involving claims of patent |
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| 68 | 66 | | infringement; or |
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| 69 | 67 | | (3) prohibit a person who owns or has a right to |
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| 70 | 68 | | license or enforce a patent from: |
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| 71 | 69 | | (A) notifying others of the person's ownership or |
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| 72 | 70 | | right; |
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| 73 | 71 | | (B) offering the patent to others for license or |
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| 74 | 72 | | sale; |
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| 75 | 73 | | (C) notifying any person of the person's |
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| 76 | 74 | | infringement of the patent as provided by 35 U.S.C. Section 287; or |
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| 77 | 75 | | (D) seeking compensation for past or present |
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| 78 | 76 | | infringement of the patent or for a license to the patent. |
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| 79 | 77 | | Sec. 17.955. NO PRIVATE CAUSE OF ACTION. This subchapter |
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| 80 | 78 | | does not create a private cause of action for a violation of Section |
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| 81 | 79 | | 17.952. |
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| 82 | 80 | | SECTION 2. This Act takes effect September 1, 2015. |
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