Yesterday, House Judiciary Committee Chairman Robert W. Goodlatte (R-Va) released a second discussion draft of a patent reform bill directed to concerns about patent litigation abuse, which draft replaces his prior May 2013 discussion draft.  This second discussion draft includes the requirement to plead what standard setting organization obligations apply to an asserted patent, stating:

            § 281A. Pleading requirements for patent infringement actions
            (a) Pleading Requirements. — … a party alleging infringement shall include in the initial complaint, counterclaim, or cross-claim for patent infringement, unless the information is not reasonable accessible, the following:
(1)  An identification of each patent allegedly infringed.

(10) For each patent identified under paragraph (1), whether such patent is subject to any licensing term or pricing commitments through an agency or standard-setting body.

How many procedural issues can you spot (big or small)?

  • Would pleading “whether” a patent is subject to a standard-setting obligation include affirmatively pleading that a patent is not subject to such an obligation (could that be used later to argue that the patent owner was not aware of and, hence, did not comply with an existing obligation)?
  • Would this place a burden on the patent owner to establish any aspect of what it has pled, or must the accused infringer establish all elements of any FRAND-related defense?
  • Would the patent owner satisfy this provision by conditional pleading, such as pleading that a FRAND obligation exists if an asserted patent claim is construed to be essential to a standard?
  • How would an accused infringer respond in its Answer without prejudicing its
    non-infringement or FRAND-related defenses (recall that Apple’s denial that Samsung’s patent was standard essential is a basis for the ITC’s decision to enter its since disapproved exclusion order)?