Inventor Rights Act

I 116TH CONGRESS 1ST SESSION H. R. 5478 To amend title 35, United States Code, restore patent rights to inventors, and for other purposes. IN THE HOUSE OF REPRESENTATIVES DECEMBER 18, 2019 Mr. DANNY K. DAVIS of Illinois (for himself and Mr. GOSAR) introduced the following bill; which was referred to the Committee on the Judiciary A BILL To amend title 35, United States Code, restore patent rights to inventors, and for other purposes. Be it enacted by the Senate and House of Representa- 1 tives of the United States of America in Congress assembled, 2 SECTION 1. SHORT TITLE. 3 This Act may be cited as the ‘‘Inventor Rights Act’’. 4 SEC. 2. FINDINGS. 5 Congress finds the following: 6 (1) Inventors have contributed significantly to 7 innovation in the United States and their continued 8 dedication to inventing and sharing solutions to 9 modern technical challenges is essential for the 10 VerDate Sep 11 2014 00:09 Dec 28, 2019 Jkt 099200 PO 00000 Frm 00001 Fmt 6652 Sfmt 6201 E:\BILLS\H5478.IH H5478 kjohnson on DSK79L0C42 with BILLS 2 •HR 5478 IH United States to maintain leadership in the global 1 economy. 2 (2) Inventors, not employees or investors, are 3 the source of innovation intended by the Constitu- 4 tion (‘‘securing to inventors’’) and the Patent Act 5 ‘‘(Whoever invents or discovers . . . may obtain a 6 patent therefore . . .)’’. 7 (3) Recent changes to patent laws and proce- 8 dures and Supreme Court decisions have adversely 9 affected inventors such that the promise of Article 1, 10 section 8 of the Constitution of ‘‘securing for limited 11 times to inventors the exclusive right to their discov- 12 eries’’ is no longer attainable. 13 (4) Inventors are denied the fundamental right 14 to ‘‘exclude others’’ by the Supreme Court’s 2006 15 decision in eBay Inc. v. MercExchange, LLC. 16 (5) Inventors were stripped of the right to file 17 suit in their own judicial district by the Supreme 18 Court’s 2017 decision in TC Heartland LLC v. 19 Kraft Foods Group Brands LLC. 20 (6) Issued patents fail to secure to inventors 21 their exclusive rights because— 22 (A) the Patent Trial and Appeal Board in- 23 stitutes trials in over 60 percent of cases and 24 VerDate Sep 11 2014 00:09 Dec 28, 2019 Jkt 099200 PO 00000 Frm 00002 Fmt 6652 Sfmt 6201 E:\BILLS\H5478.IH H5478 kjohnson on DSK79L0C42 with BILLS 3 •HR 5478 IH invalidates one or more claims in over 80 per- 1 cent of trials which reach a final decision; 2 (B) many patents are subjected to multiple 3 post issuance reviews; or 4 (C) most inventors cannot afford the costs 5 of defending a patent challenged in a single 6 post issuance review, as these costs can reach 7 hundreds of thousand of dollars. 8 (7) Infringement trials can cost tens of millions 9 of dollars and can take up to ten years to reach a 10 final judgment after all appeals, making legal relief 11 unattainable for inventors. 12 (8) These obstacles have given rise to an ‘‘effi- 13 cient infringement’’ business model whereby large 14 corporations infringe patent rights held by inventors 15 without concern for any legal consequences. 16 (9) Patent protection has led to patient cures, 17 positive changes to the standard of living for all peo- 18 ple in the United States, and improvements to the 19 agricultural, telecommunications, software, biotech, 20 pharmaceutical and electronics industries, among 21 others. 22 VerDate Sep 11 2014 00:09 Dec 28, 2019 Jkt 099200 PO 00000 Frm 00003 Fmt 6652 Sfmt 6201 E:\BILLS\H5478.IH H5478 kjohnson on DSK79L0C42 with BILLS 4 •HR 5478 IH SEC. 3. INVENTOR PROTECTIONS. 1 (a) INVENTOR-OWNED PATENT.—Section 100 of title 2 35, United States Code, is amended by adding at the end 3 the following: 4 ‘‘(k) The term ‘inventor-owned patent’ means a pat- 5 ent with respect to which the inventor of the invention 6 claimed by the patent or an entity controlled by that in- 7 ventor— 8 ‘‘(1) is the patentee; and 9 ‘‘(2) holds all substantial rights.’’. 10 (b) INVENTOR-OWNED PATENT PROTECTIONS.— 11 Chapter 32 of title 35, United States Code, is amended 12 by adding at the end the following new section: 13 ‘‘§ 330. Inventor protections 14 ‘‘(a) PROTECTION FROM POST ISSUANCE PRO- 15 CEEDINGS IN THE UNITED STATES PATENT AND TRADE- 16 MARK OFFICE.—The United States Patent and Trade- 17 mark Office shall not undertake a proceeding to reexam- 18 ine, review, or otherwise make a determination about the 19 validity of an inventor-owned patent without the consent 20 of the patentee. 21 ‘‘(b) CHOICE OF VENUE.—Any civil action for in- 22 fringement of an inventor-owned patent or any action for 23 a declaratory judgment that an inventor-owned patent is 24 invalid or not infringed may be brought in a judicial dis- 25 trict— 26 VerDate Sep 11 2014 00:09 Dec 28, 2019 Jkt 099200 PO 00000 Frm 00004 Fmt 6652 Sfmt 6201 E:\BILLS\H5478.IH H5478 kjohnson on DSK79L0C42 with BILLS 5 •HR 5478 IH ‘‘(1) in accordance with section 1400(b) of title 1 28; 2 ‘‘(2) where the defendant has agreed or con- 3 sented to be sued in the instant action; 4 ‘‘(3) where an inventor named on the patent in 5 suit conducted research or development that led to 6 the application for the patent in suit; 7 ‘‘(4) where a party has a regular and estab- 8 lished physical facility that such party controls and 9 operates, not primarily for the purpose of creating 10 venue, and has— 11 ‘‘(A) engaged in management of significant 12 research and development of an invention 13 claimed in a patent in suit prior to the effective 14 filing date of the patent; 15 ‘‘(B) manufactured a tangible good that is 16 alleged to embody an invention claimed in a 17 patent in suit; or 18 ‘‘(C) implemented a manufacturing process 19 for a tangible good in which the process is al- 20 leged to embody an invention claimed in a pat- 21 ent in suit; or 22 ‘‘(5) in the case of a foreign defendant that 23 does not meet the requirements of section 1400(b) 24 VerDate Sep 11 2014 00:09 Dec 28, 2019 Jkt 099200 PO 00000 Frm 00005 Fmt 6652 Sfmt 6201 E:\BILLS\H5478.IH H5478 kjohnson on DSK79L0C42 with BILLS 6 •HR 5478 IH of title 28, in accordance with section 1391(c)(3) of 1 such title. 2 ‘‘(c) INJUNCTION.— 3 ‘‘(1) PRESUMPTION.—Upon a finding by a 4 court of infringement of an inventor-owned patent 5 not proven invalid or unenforceable, the court shall 6 presume, respectively, that— 7 ‘‘(A) further infringement of the patent 8 would cause irreparable injury; and 9 ‘‘(B) remedies available at law are inad- 10 equate to compensate for that injury. 11 ‘‘(2) OVERCOMING THE PRESUMPTION.—A pre- 12 sumption described under subparagraphs (A) or (B) 13 of paragraph (1) may be overcome if the infringing 14 party shows clear and convincing evidence that the 15 patentee would not be irreparably harmed by further 16 infringement of the patent, including evidence of un- 17 reasonable delay by the patentee from the date on 18 which the infringement was known or reasonably 19 could have been known to the patentee. 20 ‘‘(d) RECOVERY.—A patentee that asserts a claim for 21 infringement of an inventor-owned patent in a civil action 22 under subsection (a), (b), (c), (f), or (g) of section 271 23 may elect, at any time before final judgment is entered 24 by the court, recovery under this subsection in lieu of dam- 25 VerDate Sep 11 2014 00:09 Dec 28, 2019 Jkt 099200 PO 00000 Frm 00006 Fmt 6652 Sfmt 6201 E:\BILLS\H5478.IH H5478 kjohnson on DSK79L0C42 with BILLS 7 •HR 5478 IH ages under section 284. If an election for recovery under 1 this subsection is made, the following provisions apply 2 upon a finding of infringement: 3 ‘‘(1) PROFIT DISGORGEMENT.—The court shall 4 award the patentee the profits from the use made of 5 the invention by the infringer. In assessing profits 6 the patentee shall be required to prove only the in- 7 fringer’s revenues resulting from the infringement; 8 the infringer must prove all elements of cost or de- 9 duction claimed. 10 ‘‘(2) INTEREST AND COSTS.—The court shall 11 award the patentee the costs described under section 12 1920 of title 28. 13 ‘‘(3) INFRINGEMENT FOUND WILLFUL.—If the 14 court finds the infringement to be willful, the court 15 may award the patentee damages equal to no more 16 than three times the amount of the profits found in 17 paragraph (1). 18 ‘‘(4) ATTORNEYS FEES.—The court shall award 19 the patentee any amount of their attorneys fees that 20 exceeds 10 percent of the amount of the profits and 21 damages of paragraphs (1) to (3).’’. 22 (c) TECHNICAL AND CONFORMING AMENDMENT.— 23 The table of sections for chapter 32 of title 35, United 24 VerDate Sep 11 2014 00:09 Dec 28, 2019 Jkt 099200 PO 00000 Frm 00007 Fmt 6652 Sfmt 6201 E:\BILLS\H5478.IH H5478 kjohnson on DSK79L0C42 with BILLS 8 •HR 5478 IH States Code, is amended by adding at the end the fol- 1 lowing: 2 ‘‘330. Inventor protections.’’. Æ VerDate Sep 11 2014 00:09 Dec 28, 2019 Jkt 099200 PO 00000 Frm 00008 Fmt 6652 Sfmt 6301 E:\BILLS\H5478.IH H5478 kjohnson on DSK79L0C42 with BILLS