TITLE 48

MONOPOLIES AND TRADE PRACTICES

CHAPTER 17

BAD FAITH ASSERTIONS OF PATENT INFRINGEMENT

48-1703.  bad faith assertions of patent infringement. (1) It is unlawful for a person to make a bad faith assertion of patent infringement in a demand letter, a complaint or any other communication.

(2)  A court may consider the following factors as evidence that a person has made a bad faith assertion of patent infringement:

(a)  The person sends a demand letter to a target without first conducting an analysis comparing the claims in the patent to the target’s products, services or technology.

(b)  The demand letter does not contain the following information:

(i)   The patent number;

(ii)  The name and address of the patent owner or owners and assignee or assignees, if any; and

(iii) The factual allegations concerning the specific areas in which the target’s products, services and technology infringe the patent or are covered by the claims in the patent.

(c)  The demand letter does not identify specific areas in which the products, services and technology are covered by the claims in the patent.

(d)  The demand letter demands payment of a license fee or response within an unreasonably short period of time.

(e)  The person offers to license the patent for an amount that is not reasonably based on the value of a license to the patent.

(f)  The person asserting a claim or allegation of patent infringement acts in subjective bad faith, or a reasonable actor in the person’s position would know or reasonably should know that such assertion is meritless.

(g)  The claim or assertion of patent infringement is deceptive.

(h)  The person or its subsidiaries or affiliates have previously filed or threatened to file one (1) or more lawsuits alleging patent infringement based on the same or similar claim, the person attempted to enforce the claim of patent infringement in litigation and a court found the claim to be meritless.

(i)  Any other factor the court finds relevant.

(3)  A court may consider the following factors as evidence that a person has not made a bad faith assertion of patent infringement:

(a)  The person engages in a good faith effort to establish that the target has infringed the patent and to negotiate an appropriate remedy.

(b)  The person makes a substantial investment in the use of the patent or in the production or sale of a product or item covered by the patent.

(c)  The person has:

(i)   Demonstrated good faith in previous efforts to enforce the patent, or a substantially similar patent; or

(ii)  Successfully enforced the patent, or a substantially similar patent, through litigation.

(d)  Any other factor the court finds relevant.

(4)  Any violation of the provisions of this chapter is an unlawful, unfair and deceptive act or practice in trade or commerce for the purpose of applying the Idaho consumer protection act, chapter 6, title 48, Idaho Code.

History:

[48-1703, added 2014, ch. 277, sec. 1, p. 700.]