House of Representatives State of Utah


         UTAH STATE CAPITOL COMPLEX . 350 STATE CAPITOL
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Graphic file number 0 named letter~1.jpg with height 78 p and width 81 p Left aligned
         P.O. BOX 145030 . SALT LAKE CITY, UTAH 84114-5030 . (801) 538-1029

        February 21, 2014

Madam Speaker:

    The Business and Labor Committee recommends H.B. 117, PATENT INFRINGEMENT AMENDMENTS, by Representative M. McKell, be replaced and reports a favorable recommendation on 1st Sub. H.B. 117, PATENT INFRINGEMENT AMENDMENTS with the following amendments:

1.    Page 3, Lines 63 through 66 :    

             63          (b)

{   Prior to sending the demand letter, the person fails to conduct an analysis

             64      comparing the claims in the patent to the target's products, services, and technology, or an
             65      analysis was done but does not identify specific areas in which the products, services, and
             66      technology are covered by the claims in the patent.   }
  By presenting a demand letter to the target a person is certifying that to the best of the person's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances:

    (i) the demand letter is not being presented for any improper purpose, such as to harass or to cause unnecessary delay or needless increase in the cost of settlement or litigation;
    (ii) the claims, defenses, and other legal contentions are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law; and
    (iii) the allegations and other factual contentions have evidentiary support or, if specifically identified, are likely to have evidentiary support after a reasonable

opportunity for further investigation or discovery.  



2.    Page 4, Lines 88 through 100 :    

             88          (c) The person engages in a good faith effort to establish that the target has infringed
             89      the patent and to negotiate an appropriate remedy.
             90          
{   (d) The person makes a substantial investment in the use of the patent or in the

             91      production or sale of a product or item covered by the patent.
             92          (e) The person is:
             93          (i) the inventor or joint inventor of the patent or, in the case of a patent filed by and
             94      awarded to an assignee of the original inventor or joint inventor, is the original assignee; or
             95          (ii) an institution of higher education or a technology transfer organization owned or
             96      affiliated with an institution of higher education.
             97          (f) The person has:
             98          (i) demonstrated good faith business practices in previous efforts to enforce the patent,
             99      or a substantially similar patent; or
             100          (ii) successfully enforced the patent, or a substantially similar patent, through litigation.   }

    Respectfully,

    James A. Dunnigan
    Committee Chair

Voting: 11-0-5
7 HB0117.HC1.wpd 2/21/14 9:55 am bhowe/BRH ECM/CBL

Bill Number
Action Class
Action Code

*HB0117S01*
*H*
*HCRSUBAMD*

 HB0117S01
H
HCRSUBAMD