Nine states, including Florida, have recently enacted “anti-patent troll” legislation in 2015, joining the seventeen states that passed similar legislation last year in 2014. Florida’s HB 439 ch. 501 part VII (“Patent Troll Prevention Act”), enacted in the 2015 session, prohibits bad faith assertions of patent infringement from being made, and provides a number of factors that allow a court to consider whether an allegation was made in bad faith. A determination of bad faith includes damages and reasonable attorney fees.
Specifically, this recent law prohibits the making of bad faith assertions of patent infringement, and allows a defendant in a patent infringement proceeding to move for a bad faith determination and request that a court issue a protective order.
The factors for finding “bad faith” patent infringement include:
(a) The demand letter does not contain the following information:
1. The patent number;
2. The name and address of the patent owner and assignee, if any; and
3. Factual allegations concerning the specific areas in which the target’s products, services, or technology infringe or are covered by the claims in the patent.
(b) Before sending the demand letter, the person failed to conduct an analysis comparing the claims in the patent to the target’s products, services, or technology, or the analysis did not identify specific areas in which the target’s products, services, and technology were covered by the claims of the patent.
(c) The demand letter lacked the information listed under paragraph (a), the target requested the information, and the person failed to provide the information within a reasonable period.
(d) The demand letter requested payment of a license fee or response within an unreasonable period.
(e) The person offered to license the patent for an amount that is not based on a reasonable estimate of the value of the license.
(f) The claim or assertion of patent infringement is unenforceable, and the person knew, or should have known, that the claim or assertion was unenforceable.
(g) The claim or assertion of patent infringement is deceptive.
(h) The person, including its subsidiaries or affiliates, has previously filed or threatened to file one or more lawsuits based on the same or a similar claim of patent infringement and:
1. The threats or lawsuits lacked the information listed under paragraph (a); or
2. The person sued to enforce the claim of patent infringement and a court found the claim to be meritless.
(i) Any other factor the court finds relevant.
If, based on these factors, the court finds for bad faith, the court must require the plaintiff to post a pond in an amount equal to the lesser of $250,000 or a good faith estimate of the target’s expense of litigation including estimated reasonable attorney fees. A person against whom a bad faith assertion of patent infringement is made also may bring an action in a court of competent jurisdiction for relief. If successful, the court may award a plaintiff equitable relief; damages; costs and fees, including reasonable attorney fees; and punitive damages in an amount equal to $50,000 or three times the total damages, costs, and fees, whichever is greater.
An institution of higher education, a technology transfer organization owned by or affiliated with an institution of higher education, or a demand letter or assertion of patent infringement that includes a claim for relief relating to patents for pharmaceutical or biological products are exempt from the bill’s provisions.
The full text of 501.993 Bad faith assertions of patent infringement can be found at the link provided.