ORS 646A.810
Patent infringement claim made in bad faith

  • enforcement as unlawful practice
  • limitations
  • rules

(1)

As used in this section:

(a)

“Affiliate” means a person that directly, or indirectly through one or more intermediaries, controls, is controlled by or is under common control with another person.

(b)

“Complaint” means a document or a copy of a document that a person or the person’s affiliate:

(A)

Files with a court, an arbitration panel or another body with power to adjudicate a dispute over patent rights; and

(B)

Serves, sends or otherwise communicates to a recipient in order to commence a judicial, arbitration or administrative proceeding for patent infringement against the recipient.

(c)

“Demand” means an oral or written communication that alleges, asserts or claims that a recipient has infringed or has contributed to infringing a patent or the rights that a patentee has under a patent or has granted to an assignee or a licensee.

(d)

“Patentee” has the meaning given that term in 35 U.S.C. 100, as in effect on March 3, 2014.

(e)

“Person” has the meaning given that term in ORS 646.605 (Definitions for ORS 336.184 and 646.605 to 646.652).

(f)

“Prosecuting attorney” means the Attorney General or the district attorney of any county in which a violation of this section is alleged to have occurred.

(g)

“Recipient” means a person that receives a demand and:

(A)

Resides in this state;

(B)

Maintains a place of business or transacts business within this state; or

(C)

Is a body, officer or agency acting under the statutory authority of this state or under the legal authority of a political subdivision of this state.

(2)

A person or the person’s affiliate may not communicate a demand, or cause another person to communicate a demand, to a recipient if in the demand the person or the person’s affiliate alleges, asserts or claims in bad faith that the recipient has infringed or contributed to infringing a patent or the rights that a patentee has, or has granted to an assignee or licensee, under the patent.

(3)

If a prosecuting attorney receives one or more accusations from a recipient or recipients that a person or the person’s affiliate has violated subsection (2) of this section, the prosecuting attorney may execute and serve an investigative demand on the person or the person’s affiliate under ORS 646.618 (Investigative demand) and may take action against the person or the person’s affiliate under ORS 646.632 (Enjoining unlawful trade practices) for engaging in an unlawful trade practice.

(4)

A court may consider one or more of the following conditions as evidence that a person or the person’s affiliate has, in bad faith, alleged, asserted or claimed an infringement of a patent or rights that a patentee, assignee or licensee has under a patent:

(a)

The demand required the recipient to respond or to pay a license or other fee within a period of time that a reasonable person would consider to be unreasonably short.

(b)

The demand did not include:

(A)

The patent number for the patent that the person or the person’s affiliate alleges, asserts or claims that the recipient infringed;

(B)

Current and accurate contact information for the patentee, assignee or licensee, including a name, address and phone number or other contact information that would enable the recipient to identify and communicate with the patentee, assignee or licensee; and

(C)

A statement of facts, together with an explanation or a description of the facts that would enable a reasonable person to understand the basis of the allegation or claim that the recipient has infringed the patent or the rights of the patentee, assignee or licensee under the patent.

(c)

The person or the person’s affiliate failed to provide the information described in paragraph (b) of this subsection to the recipient within a reasonable time after the recipient requested the information.

(d)

The person or the person’s affiliate, before communicating the demand:

(A)

Failed to compare the claims in the patent to the features or specifications of the recipient’s product, service or technology that the person or the person’s affiliate alleges, asserts or claims is an infringement of the patent or the rights of the patentee, assignee or licensee under the patent; or

(B)

Conducted the comparison described in subparagraph (A) of this paragraph, but in a way that did not enable the person or the person’s affiliate to specifically identify the infringing features or specifications of the recipient’s product, service or technology.

(e)

The person or the person’s affiliate offered to license the patent for an amount that a reasonable person with knowledge of the market value of a license for the invention that is covered by the patent would consider unreasonable.

(f)

The person or the person’s affiliate knew or should have known at the time the person or the person’s affiliate communicated the demand that the allegation, assertion or claim of infringement was without merit or was deceptive.

(g)

The person or the person’s affiliate previously communicated a demand or filed a complaint based on the same or a similar allegation, assertion or claim and:

(A)

The demand did not include the information described in paragraph (b) of this subsection; or

(B)

A court, an arbitration panel or another body with power to adjudicate a patent dispute dismissed the complaint as frivolous or without merit at any point during a proceeding before the court, the panel or the body.

(h)

The person or the person’s affiliate engaged in other conduct that the Attorney General by rule identifies as evidence of alleging, asserting or claiming an infringement in bad faith.

(5)

A court may consider one or more of the following conditions as evidence that a person or the person’s affiliate has, in good faith, alleged, asserted or claimed an infringement of a patent or rights that a patentee, assignee or licensee has under a patent:

(a)

The demand does include the information described in subsection (4)(b) of this section.

(b)

The person or the person’s affiliate provided the information described in subsection (4)(b) of this section to the recipient within a reasonable time after the recipient requested the information, if the demand did not include the information.

(c)

The person or the person’s affiliate, before communicating the demand, attempted to establish that an infringement had occurred by comparing the claims in the patent to the features or specifications of the recipient’s product, service or technology that the person or the person’s affiliate believes is an infringement of the patent, or the rights of the patentee, assignee or licensee under the patent, and specifically identifying the infringing features or specifications of the recipient’s product, service or technology.

(d)

The person or the person’s affiliate, after conducting the comparison described in paragraph (c) of this subsection, attempted in good faith to negotiate a settlement or a license for the patent with the recipient.

(e)

The person or the person’s affiliate has made a substantial investment in using or prosecuting the patent or in producing or selling a product, service or technology covered by the patent.

(f)

The person or the person’s affiliate is:

(A)

Named in the patent as an inventor or an assignee of the inventor;

(B)

An institution of higher education; or

(C)

An organization that an institution of higher education owns or is affiliated with and that has as the organization’s principal purpose the transfer of technology from the institute of higher education.

(g)

The person or the person’s affiliate has:

(A)

Previously and successfully enforced the patent, or the rights the patentee, an affiliate or a licensee has under the patent, before a court, an arbitration panel or another body with power to adjudicate a patent dispute; and

(B)

Otherwise demonstrated integrity and good faith in business practices related to the patent or previous attempts to enforce the patent or the rights the patentee, an assignee or a licensee has under the patent.

(h)

The person or the person’s affiliate engaged in other conduct that the Attorney General by rule identifies as evidence of alleging, asserting or claiming an infringement in good faith.

(6)

A violation of subsection (2) of this section is an unlawful practice under ORS 646.608 (Additional unlawful business, trade practices) that is subject to an action under ORS 646.638 (Civil action by private party). Notwithstanding the definition of “person” in ORS 646.605 (Definitions for ORS 336.184 and 646.605 to 646.652), a recipient is a person for the purpose of bringing an action as a plaintiff under ORS 646.638 (Civil action by private party).

(7)

This section does not limit or affect:

(a)

A right that this state, a political subdivision of this state, an agency, officer, employee or agent of this state or a political subdivision of this state or any other person may have with respect to a patent or rights granted under a patent; or

(b)

Any remedy for patent infringement that a court, an arbitration panel or another body with power to adjudicate a dispute over patent rights may grant to this state, a political subdivision of this state or an agency, officer, employee or agent of this state or a political subdivision of this state or any other person.

(8)

The Attorney General may adopt rules necessary to implement the provisions of this section. [2014 c.19 §2; 2017 c.17 §51]

Source: Section 646A.810 — Patent infringement claim made in bad faith; enforcement as unlawful practice; limitations; rules, https://www.­oregonlegislature.­gov/bills_laws/ors/ors646A.­html.

646A.030
Definitions for ORS 646A.030 to 646A.042
646A.032
Price list for health spa services
646A.034
Contracts
646A.036
Contracts and rules
646A.038
Moneys paid prior to facility opening
646A.040
Waiver of provisions of ORS 646A.030 to 646A.042
646A.042
Remedies and obligations supplementary to existing remedies
646A.050
Definitions
646A.052
Form of purchase agreement
646A.054
Rules
646A.060
Purchase of used goods
646A.062
Penalty for violation of ORS 646A.060
646A.064
Definitions for ORS 646A.064 to 646A.067
646A.065
Records required for transactions involving items of precious metal
646A.066
Applicability to local ordinances
646A.067
Preemption of local requirements applicable to pawnbrokers
646A.068
Penalty for violating ORS 646A.065
646A.070
Sale of telephonic equipment
646A.072
Exceptions to disclosure requirements
646A.075
Required information prior to purchase of dog
646A.077
Qualification for full refund
646A.080
Sale of novelty item containing mercury
646A.081
Prohibition on sale or installation of mercury vapor outdoor lighting fixtures
646A.082
Floral retail sales
646A.085
Sale of rights by distributor to exhibit motion picture without first giving exhibitor opportunity to view motion picture prohibited
646A.090
Offer to sell or lease motor vehicle under retail installment contract or lease agreement
646A.092
Advertisements for sale or lease of motor vehicle
646A.093
Disclosures for handling and shipping consumer goods required in advertisements, offers and sales
646A.095
Disclosure required when purchaser of product offered technical support through information delivery system
646A.097
Payment of sales commissions following termination of contract between sales representative and principal
646A.100
Definitions for ORS 646A.100 to 646A.110
646A.102
Notice of intent to conduct going out of business sale
646A.104
Information required in notice of intent
646A.106
Circumstances in which going out of business sale prohibited
646A.108
Prohibited conduct
646A.110
Applicability of ORS 646A.100 to 646A.110 and 646A.112
646A.112
Injunction of sham sale
646A.115
Software prohibited that interferes with sale of admission tickets to entertainment events
646A.120
Definitions for ORS 646A.120 to 646A.134
646A.122
Applicability of ORS 646A.120 to 646A.134
646A.124
General disclosure requirements
646A.126
Specific disclosure requirements
646A.128
Provisions prohibited in lease-purchase agreements
646A.130
Reinstatement of lease-purchase agreement by consumer
646A.132
Renegotiation or extension of lease-purchase agreement
646A.134
Disclosures required in advertisement for lease-purchase agreements
646A.140
Definitions for ORS 646A.140 and 646A.142
646A.142
Rental vehicle collision damage waiver notice
646A.150
Applicability of ORS 646A.150 to 646A.172
646A.152
Definitions for ORS 646A.150 to 646A.172
646A.154
Service contract defined
646A.156
Required contents of service contracts
646A.158
Prohibited conduct
646A.160
Service contract obligor as agent of insurer
646A.162
Investigation of violations
646A.164
Complaints and investigations confidential
646A.166
Refusal to continue or suspension or revocation of registration
646A.168
Assessment fee
646A.170
Remedies not exclusive
646A.172
Rules
646A.200
Definitions for ORS 646A.202 and 646A.204
646A.202
Payment processing systems
646A.204
Customer information
646A.206
Rules
646A.210
Requiring credit card number as condition for accepting check or share draft prohibited
646A.212
“Credit card” defined
646A.214
Verification of identity in credit or debit card transactions
646A.220
Credit card solicitation
646A.222
Charge card solicitation
646A.230
Action by Attorney General or district attorney
646A.232
Effect of compliance with federal law
646A.240
Treatment of child support obligations by creditor in applications for extensions of credit
646A.242
“Creditor” defined
646A.244
Cause of action for violation of ORS 646A.240
646A.274
Definitions for ORS 646A.276 and 646A.278
646A.276
Sale of gift card that expires, declines in value, includes fee or does not give option to redeem
646A.278
Requirements for sale of gift card that expires
646A.280
Definitions for ORS 646A.280 to 646A.290
646A.282
Simulated invoices prohibited
646A.284
Cause of action by Attorney General
646A.286
Cause of action by private party
646A.288
Presumptions in cause of action brought under ORS 646A.284 or 646A.286
646A.290
Construction
646A.292
Legislative intent
646A.293
Definitions for ORS 646A.293 and 646A.295
646A.295
Prohibited actions
646A.300
Definitions for ORS 646A.300 to 646A.322
646A.302
Application of ORS 646A.300 to 646A.322 to successor in interest or assignee of supplier
646A.304
Payment for farm implements, parts, software, tools and signs upon termination of retailer agreement
646A.306
Repurchase of inventory by supplier
646A.308
Civil action for supplier’s failure to pay
646A.310
Prohibited conduct by supplier
646A.312
Termination, cancellation or nonrenewal of retailer agreement
646A.314
New or relocated dealership
646A.316
Warranty claims
646A.318
Warranty claims
646A.320
Retailer’s improvements to products
646A.322
Remedies
646A.325
Repurchase of motor vehicle by manufacturer
646A.327
Attorney fees for action under ORS 646A.325
646A.340
Definitions for ORS 646A.340 to 646A.348
646A.342
Prohibited conduct
646A.344
Bond or letter of credit
646A.346
Damages
646A.348
Action by Attorney General
646A.350
Delivery of unrequested hazardous substances prohibited
646A.352
Penalty
646A.360
Unsolicited facsimile machine transmissions
646A.362
Exclusion of name from sweepstakes promotion mailing list
646A.365
Check, draft or payment instrument creating obligation for payment
646A.370
Definitions for ORS 646A.370 to 646A.374
646A.372
Limits on usage of automatic dialing and announcing device
646A.374
Prohibited actions
646A.376
Enforcement
646A.400
Definitions for ORS 646A.400 to 646A.418
646A.402
Availability of remedy
646A.404
Consumer’s remedies
646A.405
Manufacturer action under ORS 646A.404
646A.406
Presumption of reasonable attempt to conform
646A.408
Use of informal dispute settlement procedure as condition for remedy
646A.410
Informal dispute settlement procedure
646A.412
Action in court
646A.414
Limitations on actions against dealers
646A.416
Limitation on commencement of action
646A.418
Remedies supplementary to existing statutory or common law remedies
646A.430
Definitions for ORS 646A.430 to 646A.450
646A.432
Applicability of ORS 646A.430 to 646A.450
646A.434
Sale of vehicle protection product
646A.436
Warrantor registration
646A.438
Reimbursement insurance
646A.440
Required provisions of reimbursement insurance policy
646A.442
Vehicle protection product warranty administrator
646A.444
Recordkeeping requirements for warrantor
646A.446
Prohibited conduct for warrantor
646A.448
Prohibited activities
646A.450
Rules
646A.452
Enforcement by Attorney General
646A.460
Definitions for ORS 646A.460 to 646A.476
646A.462
Express warranty
646A.464
Repair of assistive device
646A.466
Replacement or refund after attempt to repair
646A.468
Procedures for replacement or refund
646A.470
Sale or lease of returned assistive device
646A.472
Dispute resolution
646A.474
Applicability of other laws
646A.476
Civil action for damages
646A.480
Definitions for ORS 646A.480 to 646A.495
646A.482
Estimate required before beginning work
646A.486
Prohibited actions if estimate exceeds $200
646A.490
Additional prohibited actions
646A.495
Owner designee
646A.500
Legislative findings
646A.502
Short title
646A.504
Definitions for ORS 646A.500 to 646A.514
646A.506
Prohibited conduct
646A.508
Penalties
646A.510
Exemptions
646A.512
Private right of action
646A.514
Scope of remedies
646A.525
Definitions for ORS 646A.525 to 646A.535
646A.530
Prohibited sales of certain children’s products
646A.535
Assistance of Attorney General in obtaining recall notices
646A.540
Definitions
646A.542
Requirement to document compliance
646A.544
Local government enforcement
646A.550
Short title
646A.555
License to engage in business activity not required for individual under 17 years of age
646A.560
Legislative findings
646A.562
Definitions for ORS 646A.560 to 646A.566
646A.564
Standards for mercury content in electric lamps
646A.566
Considerations for state agency procurement of lighting devices that contain mercury
646A.575
Definitions for ORS 646A.575 to 646A.590
646A.577
Limited license required
646A.580
Cost of coverage
646A.582
Written disclosure requirements
646A.585
Exceptions to license requirement
646A.588
Restrictions on modification or termination of coverage
646A.590
Rules
646A.592
Enforcement
646A.600
Short title
646A.602
Definitions for ORS 646A.600 to 646A.628
646A.604
Notice of breach of security
646A.606
Security freeze
646A.608
Deadline for placing security freeze
646A.610
Fees not permitted
646A.612
Conditions for lifting or removing security freeze
646A.614
Effect of security freeze on use of consumer reports or protective records
646A.616
Effect of request for consumer report subject to security freeze
646A.618
Prohibition on changes to consumer report subject to security freeze
646A.620
Prohibition on printing, displaying or posting Social Security numbers
646A.622
Requirement to develop safeguards for personal information
646A.624
Powers of director
646A.626
Rules
646A.628
Allocation of moneys
646A.640
Definitions
646A.643
License requirement to engage in debt buying
646A.646
License application
646A.649
Licensee’s principal place of business and registered agent
646A.652
Required notices
646A.655
Compliance with director’s standards
646A.658
Prohibited practices
646A.661
Director’s supervisory authority
646A.664
Enforcement actions
646A.667
Preemption
646A.670
Legal action to collect debt
646A.673
Rules
646A.677
Requirement to screen for financial assistance before transferring medical debt for collection
646A.680
Legislative intent
646A.683
Requirement to report increase in drug price
646A.686
Short title
646A.689
Requirement to report certain information concerning drug manufacturing and pricing
646A.692
Civil penalty
646A.693
Prescription Drug Affordability Board
646A.694
Annual affordability determination for identified drugs and insulin products
646A.695
Annual fees assessed against drug manufacturers
646A.696
Report to Health Care Cost Growth Target program and Legislative Assembly
646A.697
Study of market for generic drugs
646A.700
Short title
646A.702
Definitions for ORS 646A.702 to 646A.720
646A.705
Persons that are not foreclosure consultants
646A.710
Foreclosure consulting contract
646A.715
Cancellation
646A.720
Prohibited acts of foreclosure consultant
646A.725
Definitions for ORS 646A.725 to 646A.750
646A.730
Persons that are not equity purchasers
646A.735
Written contract
646A.740
Cancellation
646A.745
Required and prohibited acts
646A.750
Rebuttable presumptions
646A.755
Acts not precluded
646A.760
Civil action for damages
646A.765
Penalties
646A.770
Definitions
646A.773
Applicability of Insurance Code
646A.776
Required disclosures
646A.779
Determination of amount of waiver
646A.781
Cancellation and expiration
646A.784
Reimbursement insurance policies for guaranteed asset protection waivers
646A.787
Fiduciary responsibilities
646A.790
Unlawful practices
646A.800
Late fees on delinquent cable service accounts
646A.801
Termination of residential cable service or residential telecommunications service for certain persons
646A.803
Contest and sweepstakes solicitations
646A.806
Website with photographs and information about arrested persons
646A.808
Obtaining personal information by false representation via electronic media
646A.810
Patent infringement claim made in bad faith
646A.813
Security requirements for Internet-connected devices
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