Judge Marra in the Southern District of Florida granted defendant Demandware, Inc.’s motion for leave to amend its answer to allege a counterclaim under the recently-enacted Florida Statute § 501.993, entitled “Patent Troll Prevention Act.” This Statute took effect on July 1, 2015, and prohibits a party from making a bad faith assertion of patent infringement. 

Section 501.993 states that a court may consider a number of factors as evidence of bad faith:

(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.

The Statute also provides that a court may consider the following factors as evidence that a person has not made a bad faith assertion of patent infringement:

(a) The demand letter contained the information listed under paragraph (1)(a).

(b) The demand letter did not contain the information listed under paragraph (1)(a), the target requested the information, and the person provided the information within a reasonable period.

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

(d) The person made a substantial investment in the use of the patented invention or discovery or in a product or sale of a product or item covered by the patent.

(e) The person is the inventor or joint inventor of the patented invention or discovery, or in the case of a patent filed by and awarded to an assignee of the original inventor or joint inventors, is the original assignee.

(f) The person has:

1. Demonstrated good faith business practices in previous efforts to enforce the patent, or a substantially similar patent; or
2. Successfully enforced the patent, or a substantially similar patent, through litigation.

(g) Any other factor that the Court finds relevant.

Given that the defendant moved to amend within weeks of the Statute’s enactment and that the plaintiff could not find any legal basis to preclude applying the Statute retroactively, the court allowed the defendant leave to amend.

Arrival Star, SA and Melvino Technologies Ltd. v. Demandware, Inc., No. 15-cv-80098, in the Southern District of Florida (Aug. 26, 2015).