throbber
HJU104000 PAGE 1
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`Case No. IPR2013-00010
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`Patent No. 7,516,484
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`Exhibit 2012
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`1
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`ALDERSON REPORTING COMPANY
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`2
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`HJU104000
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`3
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`MARKUP OF H.R. 1249, THE AMERICA INVENTS ACT
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`4
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`Thursday, April 14, 2011
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`5
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`House of Representatives
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`6
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`Committee on the Judiciary
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`7
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`Washington, D.C.
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`8
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` The committee met, pursuant to call, at 10:35 a.m., in
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`9
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`Room 2141, Rayburn Office Building, Hon. Lamar Smith
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`10
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`[chairman of the committee] presiding.
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`11
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` Present: Representatives Smith, Sensenbrenner, Coble,
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`12
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`Gallegly, Goodlatte, Lungren, Chabot, Issa, Pence, Forbes,
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`13
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`King, Franks, Gohmert, Jordan, Poe, Chaffetz, Griffin,
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`14
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`Marino, Gowdy, Ross, Adams, Quayle, Conyers, Berman, Nadler,
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`15
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`Scott, Watt, Lofgren, Jackson Lee, Waters, Cohen, Johnson,
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`16
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`Pierluisi, Quigley, Chu, Deutch, Sanchez, and Wasserman
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`17
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`Schultz.
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`

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`HJU104000 PAGE 2
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`18
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` Staff present: Sean McLaughlin, Chief of Staff;
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`19
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`Allison Halatei, Deputy Chief of Staff/Parliamentarian;
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`20
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`Sarah Kish, Clerk; Perry Apelbaum, Minority Staff Director;
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`21
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`and Chrystal Sheppard.
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`22
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`

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`HJU104000 PAGE 66
`
`1318
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`constructive move. Thank you.
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`1319
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`Chairman Smith. I thank the gentleman.
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`1320
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`If there are no other members who wish to be heard on
`
`1321
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`the amendment, all those in favor, say aye.
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`1322
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`[Chorus of ayes.]
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`1323
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`Chairman Smith. All those opposed, no.
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`1324
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`[No response.]
`
`1325
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`Chairman Smith. In the opinion of the chair, the ayes
`
`1326
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`have it. The amendment to the amendment is agreed to.
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`1327
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`We will now go to the next amendment which is going to
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`1328
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`be offered by the gentlewoman from California, Ms. Lofgren.
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`1329
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`And she is recognized for that purpose.
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`1330
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`Ms. Lofgren. Thank you, Mr. Chairman. I have an
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`1331
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`amendment at the desk, Lofgren number 7.
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`1332
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`Chairman Smith. The clerk will report the amendment.
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`1333
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`Ms. Kish. “Amendment to the amendment offered by Mr.
`
`1334
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`Smith to H.R. 1249 offered by Ms. Zoe Lofgren of
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`1335
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`California.”
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`1336
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`Ms. Lofgren. I would ask unanimous consent that the
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`1337
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`amendment be considered as read.
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`1338
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`Chairman Smith. Without objection the amendment to
`
`1339
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`the amendment will be considered as read.
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`

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`HJU104000 PAGE 67
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`1340
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`[The information follows:]
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`1341
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`

`

`HJU104000 PAGE 68
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`1342
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`Chairman Smith. And the gentlewoman is recognized to
`
`1343
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`explain her amendment.
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`1344
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`Ms. Lofgren. Thank you, Mr. Chairman.
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`1345
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`Current law provides no deadline for a party to file a
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`1346
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`petition for an IPR even after it is sued for infringement
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`1347
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`of the same patent in district court.
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`1348
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`The manager's amendment sets a 12-month deadline for a
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`1349
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`party to file a petition starting from when the party is
`
`1350
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`served with the complaint for infringement.
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`1351
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`My amendment sets the deadline at 30 days after the
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`1352
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`district court enters an order construing the claims of the
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`1353
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`patent, known as the Markman hearing.
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`1354
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`The inter partes review is a crucial tool in our
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`1355
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`patent system. It can provide an effective and less
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`1356
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`expensive alternative to litigation by allowing third
`
`1357
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`parties to request a reexamination of a patent’s validity by
`
`1358
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`the PTO based on specific types of prior art. The procedure
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`1359
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`is, in effect, insurance against patents that should never
`
`1360
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`have been issued in the first place and which do not
`
`1361
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`represent genuine innovation. This is particularly
`
`1362
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`important in the information technology industry. As this
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`1363
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`committee is aware, many IT products from servers to
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`

`

`HJU104000 PAGE 69
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`1364
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`software to websites are ensnared in a thicket of
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`1365
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`overlapping patents, many of which are broadly written,
`
`1366
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`highly abstract, and of dubious validity.
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`1367
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`Director Kappos is taking admirable steps at the PTO
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`1368
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`to improve patent quality and filter out more invalid
`
`1369
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`applications, but even if he succeeds, we are still left to
`
`1370
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`deal with all of the bad patents that already exist. That
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`1371
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`is why inter partes review is so important as an alternative
`
`1372
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`to litigation.
`
`1373
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`Under current law, if someone is sued for patent
`
`1374
`
`infringement, there is no deadline for them to file, as I
`
`1375
`
`mentioned. The manager's amendment changes it to 12 months.
`
`1376
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`I recognize that some deadline is warranted to address the
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`1377
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`worries from patent owners who have worries about undue
`
`1378
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`delay. However, 12 months is an arbitrary figure and it
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`1379
`
`does not square with the reality of many complex patent
`
`1380
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`cases. It is important to understand that defendants often
`
`1381
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`have no prior knowledge or notice of the patents at issue
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`1382
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`before they are sued and, therefore, have no opportunity to
`
`1383
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`file a petition for inter partes review in advance. Many of
`
`1384
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`these suits start out with an overwhelming number of patents
`
`1385
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`and claims at issue. For example, one recent infringement
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`

`

`HJU104000 PAGE 70
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`1386
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`suit involved 31 patents, 1,975 claims, and 65 different
`
`1387
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`defendants. Many patents and claims fall away as the
`
`1388
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`litigation progresses.
`
`1389
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`In a crucial stage of patent litigation, based on what
`
`1390
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`is known as the Markman hearing, the court will reach
`
`1391
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`decisions on claim construction, in other words, what the
`
`1392
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`patents at issue actually mean, to determine at trial
`
`1393
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`whether they were infringed. Until that decision, the
`
`1394
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`defendants often don’t have a clear sense of the core issues
`
`1395
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`in the case or even which specific patents and claims will
`
`1396
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`be raised at trial. This means that they have little basis
`
`1397
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`to prepare an effective petition for IPR that can focus on
`
`1398
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`the genuine issues in litigation. In these instances, 12
`
`1399
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`months is simply not enough time to do the voluminous work
`
`1400
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`that is required to file.
`
`1401
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`My amendment would replace the arbitrary 12-month
`
`1402
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`figure by tying the deadline to the completion of the
`
`1403
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`Markman hearing. Under the amendment, a defendant would
`
`1404
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`have only 30 days to file an inter partes petition after the
`
`1405
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`court reaches a decision on claim construction. By the time
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`1406
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`claim construction happens, we can be confident that the
`
`1407
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`defendant will have had adequate time and notice of the
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`

`

`HJU104000 PAGE 71
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`1408
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`genuine issues in the case in order to prepare an effective
`
`1409
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`petition.
`
`1410
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`I think this is a fair approach for both the patent
`
`1411
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`owner and those accused of infringement. It preserves the
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`1412
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`ability of inter partes while still preventing undue delay,
`
`1413
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`and while there is no deadline tied to litigation in the
`
`1414
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`status quo, proponents of strict deadlines really haven’t
`
`1415
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`given any real world examples that I am aware of of inter
`
`1416
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`partes challenges that have been unduly delayed or harm that
`
`1417
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`would occur therefor.
`
`1418
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`So if there are concerns, they are theoretical, and
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`1419
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`regardless of the deadline, defendants have a significant
`
`1420
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`incentive to file their petitions for IPR as early as
`
`1421
`
`possible. If the defendant waits too long to file, it could
`
`1422
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`lose at trial and be forced into paying damages for
`
`1423
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`infringement before the PTO makes a decision to invalidate
`
`1424
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`the patent.
`
`1425
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`So I think this amendment is a middle ground and
`
`1426
`
`improves the bill, and I hope that the members will see fit
`
`1427
`
`to approve it.
`
`1428
`
`And I yield back.
`
`1429
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`Chairman Smith. Thank you, Ms. Lofgren.
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`

`

`HJU104000 PAGE 72
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`1430
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`I will recognize myself in opposition to the
`
`1431
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`amendment.
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`1432
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`This amendment expands the inter partes review program
`
`1433
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`from 12 months after the filing of a civil action to 30 days
`
`1434
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`after the Markman hearing. This amendment could create an
`
`1435
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`open-ended process because there is actually no guarantee
`
`1436
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`that a Markman hearing will even take place. The inter
`
`1437
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`partes proceeding in H.R. 1249 has been carefully written to
`
`1438
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`balance the need to encourage its use while at same time
`
`1439
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`preventing the serial harassment of patent holders. This
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`1440
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`bill represents a delicate balance, and making such a core
`
`1441
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`change to the deadline may turn the inter partes program
`
`1442
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`into a tool for litigation gamesmanship rather than a
`
`1443
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`meaningful and less expensive alternative to litigation.
`
`1444
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`For those reasons, I oppose the amendment.
`
`1445
`
`Are there other members who wish to be heard on this
`
`1446
`
`amendment?
`
`1447
`
`[No response.]
`
`1448
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`Chairman Smith. If not, we will vote on it. All
`
`1449
`
`those in -- the gentleman from California, Mr. Berman, is
`
`1450
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`recognized.
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`1451
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`Mr. Berman. Mr. Chairman, the issue you raise -- I
`
`

`

`HJU104000 PAGE 73
`
`1452
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`rise to suggest an alternative to the amendment, although I
`
`1453
`
`think the amendment is good.
`
`1454
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`If there is a Markman hearing, that is the logical
`
`1455
`
`time to cut off the ability to stay a court case, 30 days
`
`1456
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`afterwards. So on the face of it, I think the amendment
`
`1457
`
`makes sense. You raise legitimately what if there is no
`
`1458
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`Markman hearing. So what if the gentlelady’s amendment said
`
`1459
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`the Markman hearing or no later than 18 months so that if
`
`1460
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`there were no Markman hearing, the time set, they could not
`
`1461
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`go beyond the 18 months? Would that make it then more
`
`1462
`
`attractive to you? It would deal with this issue of no
`
`1463
`
`Markman hearing.
`
`1464
`
`Remember, under existing law -- first of all, the stay
`
`1465
`
`is never mandated. The court gets to decide whether or not
`
`1466
`
`to have a stay. And your bill, I think, is a positive
`
`1467
`
`improvement on the Senate language which was only 6 months,
`
`1468
`
`but conceptually knowing what claims are going to be
`
`1469
`
`litigated makes the most sense in terms of telling the
`
`1470
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`defendant they no longer can use inter partes reexam as an
`
`1471
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`effort to stall the litigation. They got to do it within 30
`
`1472
`
`days of the Markman hearing or if they haven’t gotten the
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`1473
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`Markman hearing or aren’t going to get a Markman hearing, no
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`

`

`HJU104000 PAGE 74
`
`1474
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`later than 18 months.
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`1475
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`Chairman Smith. Thank you, Mr. Berman.
`
`1476
`
`Mr. Berman. That is my suggestion.
`
`1477
`
`Chairman Smith. At this point, I am not prepared to
`
`1478
`
`accept that suggestion. If the gentlewoman wants to
`
`1479
`
`withdraw the amendment, we can continue talking, but I
`
`1480
`
`wouldn't want to mislead anybody either.
`
`1481
`
`Ms. Lofgren. If there is an interest in pursuing
`
`1482
`
`this, I would be happy to withdraw to pursue it, but if the
`
`1483
`
`chairman is saying I am really not interested in any changes
`
`1484
`
`in the underlying bill, then I would rather have a vote.
`
`1485
`
`Chairman Smith. As I say, I don't want to mislead the
`
`1486
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`gentlewoman from California. Right now, I still feel
`
`1487
`
`strongly opposed to the amendment, and I don't know if that
`
`1488
`
`will change or not. It is up to her to take her risk.
`
`1489
`
`If not, we will proceed then. Are there any other
`
`1490
`
`members who wish to speak on this amendment?
`
`1491
`
`[No response.]
`
`1492
`
`Chairman Smith. If not, we will vote. All those in
`
`1493
`
`favor of the amendment will say aye.
`
`1494
`
`[Chorus of ayes.]
`
`1495
`
`Chairman Smith. All those opposed, no.
`
`

`

`HJU104000 PAGE 75
`
`1496
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`[Chorus of nays.]
`
`1497
`
`Chairman Smith. The noes have it in the opinion of
`
`1498
`
`the chair and the amendment --
`
`1499
`
`Ms. Lofgren. Mr. Chairman, I would like a recorded
`
`1500
`
`vote on that.
`
`1501
`
`Chairman Smith. A recorded vote has been requested,
`
`1502
`
`and the clerk will call the roll.
`
`1503
`
`Ms. Kish. Mr. Smith?
`
`1504
`
`Chairman Smith. No.
`
`1505
`
`Ms. Kish. Mr. Smith votes no.
`
`1506
`
`Mr. Sensenbrenner?
`
`1507
`
`Mr. Sensenbrenner. Aye.
`
`1508
`
`Ms. Kish. Mr. Sensenbrenner votes aye.
`
`1509
`
`Mr. Coble?
`
`1510
`
`[No response.]
`
`1511
`
`Ms. Kish. Mr. Gallegly?
`
`1512
`
`Mr. Gallegly. Aye.
`
`1513
`
`Ms. Kish. Mr. Gallegly votes aye.
`
`1514
`
`Mr. Goodlatte?
`
`1515
`
`Mr. Goodlatte. No.
`
`1516
`
`Ms. Kish. Mr. Goodlatte votes no.
`
`1517
`
`Mr. Lungren?
`
`

`

`HJU104000 PAGE 76
`
`1518
`
`Mr. Lungren. Aye.
`
`1519
`
`Ms. Kish. Mr. Lungren votes aye.
`
`1520
`
`Mr. Chabot?
`
`1521
`
`Mr. Chabot. No.
`
`1522
`
`Ms. Kish. Mr. Chabot votes no.
`
`1523
`
`Mr. Issa?
`
`1524
`
`[No response.]
`
`1525
`
`Ms. Kish. Mr. Pence?
`
`1526
`
`Mr. Pence. No.
`
`1527
`
`Ms. Kish. Mr. Pence votes no.
`
`1528
`
`Mr. Forbes?
`
`1529
`
`Mr. Forbes. No.
`
`1530
`
`Ms. Kish. Mr. Forbes votes no.
`
`1531
`
`Mr. King?
`
`1532
`
`Mr. King. No.
`
`1533
`
`Ms. Kish. Mr. King votes no.
`
`1534
`
`Mr. Franks?
`
`1535
`
`Mr. Franks. No.
`
`1536
`
`Ms. Kish. Mr. Franks votes no.
`
`1537
`
`Mr. Gohmert?
`
`1538
`
`[No response.]
`
`1539
`
`Ms. Kish. Mr. Jordan?
`
`

`

`HJU104000 PAGE 77
`
`1540
`
`[No response.]
`
`1541
`
`Ms. Kish. Mr. Poe?
`
`1542
`
`[No response.]
`
`1543
`
`Ms. Kish. Mr. Chaffetz?
`
`1544
`
`Mr. Chaffetz. No.
`
`1545
`
`Ms. Kish. Mr. Chaffetz votes no.
`
`1546
`
`Mr. Griffin?
`
`1547
`
`Mr. Griffin. No.
`
`1548
`
`Ms. Kish. Mr. Griffin votes no.
`
`1549
`
`Mr. Marino?
`
`1550
`
`Mr. Marino. No.
`
`1551
`
`Ms. Kish. Mr. Marino votes no.
`
`1552
`
`Mr. Gowdy?
`
`1553
`
`Mr. Gowdy. No.
`
`1554
`
`Ms. Kish. Mr. Gowdy votes no.
`
`1555
`
`Mr. Ross?
`
`1556
`
`Mr. Ross. No.
`
`1557
`
`Ms. Kish. Mr. Ross votes no.
`
`1558
`
`Ms. Adams?
`
`1559
`
`[No response.]
`
`1560
`
`Ms. Kish. Mr. Quayle?
`
`1561
`
`Mr. Quayle. No.
`
`

`

`HJU104000 PAGE 78
`
`1562
`
`Ms. Kish. Mr. Quayle votes no.
`
`1563
`
`Mr. Conyers?
`
`1564
`
`Mr. Conyers. Aye.
`
`1565
`
`Ms. Kish. Mr. Conyers votes aye.
`
`1566
`
`Mr. Berman?
`
`1567
`
`Mr. Berman. Aye.
`
`1568
`
`Ms. Kish. Mr. Berman votes aye.
`
`1569
`
`Mr. Nadler?
`
`1570
`
`Mr. Nadler. Aye.
`
`1571
`
`Ms. Kish. Mr. Nadler votes aye.
`
`1572
`
`Mr. Scott?
`
`1573
`
`Mr. Scott. Aye.
`
`1574
`
`Ms. Kish. Mr. Scott votes aye.
`
`1575
`
`Mr. Watt?
`
`1576
`
`Mr. Watt. Aye.
`
`1577
`
`Ms. Kish. Mr. Watt votes aye.
`
`1578
`
`Ms. Lofgren?
`
`1579
`
`Ms. Lofgren. Aye.
`
`1580
`
`Ms. Kish. Ms. Lofgren votes aye.
`
`1581
`
`Ms. Jackson Lee?
`
`1582
`
`[No response.]
`
`1583
`
`Ms. Kish. Ms. Waters?
`
`

`

`HJU104000 PAGE 79
`
`1584
`
`Ms. Waters. Aye.
`
`1585
`
`Ms. Kish. Ms. Waters votes aye.
`
`1586
`
`Mr. Cohen?
`
`1587
`
`Mr. Cohen. Aye.
`
`1588
`
`Ms. Kish. Mr. Cohen votes aye.
`
`1589
`
`Mr. Johnson?
`
`1590
`
`Mr. Johnson. Aye.
`
`1591
`
`Ms. Kish. Mr. Johnson votes aye.
`
`1592
`
`Mr. Pierluisi?
`
`1593
`
`Mr. Pierluisi. No.
`
`1594
`
`Ms. Kish. Mr. Pierluisi votes no.
`
`1595
`
`Mr. Quigley?
`
`1596
`
`[No response.]
`
`1597
`
`Ms. Kish. Ms. Chu?
`
`1598
`
`Ms. Chu. Aye.
`
`1599
`
`Ms. Kish. Ms. Chu votes aye.
`
`1600
`
`Mr. Deutch?
`
`1601
`
`Mr. Deutch. Aye.
`
`1602
`
`Ms. Kish. Mr. Deutch votes aye.
`
`1603
`
`Ms. Sanchez?
`
`1604
`
`[No response.]
`
`1605
`
`Ms. Kish. Ms. Wasserman Schultz?
`
`

`

`HJU104000 PAGE 80
`
`1606
`
`[No response.]
`
`1607
`
`Chairman Smith. The gentleman from California, Mr.
`
`1608
`
`Gallegly?
`
`1609
`
`Mr. Gallegly. How am I recorded?
`
`1610
`
`Ms. Kish. Aye.
`
`1611
`
`Mr. Gallegly. No.
`
`1612
`
`Ms. Kish. Mr. Gallegly votes no.
`
`1613
`
`Chairman Smith. The gentleman from Texas, Mr.
`
`1614
`
`Gohmert?
`
`1615
`
`Mr. Gohmert. No.
`
`1616
`
`Ms. Kish. Mr. Gohmert votes no.
`
`1617
`
`Chairman Smith. The gentleman from California, Mr.
`
`1618
`
`Issa?
`
`1619
`
`Mr. Issa. No.
`
`1620
`
`Ms. Kish. Mr. Issa votes no.
`
`1621
`
`Chairman Smith. Are there other members who wish to
`
`1622
`
`vote or change their vote?
`
`1623
`
`Ms. Jackson Lee. Aye.
`
`1624
`
`Ms. Kish. Ms. Jackson Lee votes aye.
`
`1625
`
`Chairman Smith. The clerk will report.
`
`1626
`
`Ms. Kish. Mr. Chairman, 14 members voted aye; 17
`
`1627
`
`members voted nay.
`
`

`

`HJU104000 PAGE 81
`
`1628
`
`Chairman Smith. In the opinion of the chair, the noes
`
`1629
`
`have it and the amendment to the amendment is not agreed to.
`
`1630
`
`We will now move on to the next amendment, and that
`
`1631
`
`will be offered by the gentleman from Virginia, Mr.
`
`1632
`
`Goodlatte.
`
`1633
`
`Mr. Goodlatte. Thank you, Mr. Chairman. Mr.
`
`1634
`
`Chairman, I have an amendment at the desk, Goodlatte number
`
`1635
`
`8.
`
`1636
`
`Chairman Smith. The clerk will report the amendment.
`
`1637
`
`Ms. Kish. “Amendment to the amendment offered by Mr.
`
`1638
`
`Smith to H.R. 1249 offered by Mr. Goodlatte” --
`
`1639
`
`Chairman Smith. Without objection, the amendment will
`
`1640
`
`be considered as read.
`
`1641
`
`[The information follows:]
`
`1642
`
`

`

`HJU104000 PAGE 89
`
`1786
`
`Chairman Smith. And the gentlewoman from California
`
`1787
`
`is recognized to explain her amendment.
`
`1788
`
`Ms. Chu. Mr. Chair, a longstanding goal of patent
`
`1789
`
`reform has been to improve the U.S. Patent and Trademark
`
`1790
`
`Office’s administrative procedures for challenging poor
`
`1791
`
`quality patents through reexamination. This procedure, if
`
`1792
`
`effective, can be an important tool to avoid costly
`
`1793
`
`litigation and ensure the overall quality of patents by
`
`1794
`
`encouraging the resolution of complex questions of patent
`
`1795
`
`validity by the experts at the PTO instead of lay jurors.
`
`1796
`
`Rather than expanding the availability of the PTO’s
`
`1797
`
`inter partes reexamination, the manager's amendment imposes
`
`1798
`
`new restrictions that makes invoking this procedure more
`
`1799
`
`difficult. Unfortunately, the manager's amendment creates
`
`1800
`
`an unworkable standard for initiating inter partes
`
`1801
`
`reexamination proceedings making it more difficult for
`
`1802
`
`companies to weed out bad patents.
`
`1803
`
`Instead of restricting this important process, my
`
`1804
`
`amendment would keep the current standard of a substantial
`
`1805
`
`new question of patentability. To be clear, this is the
`
`1806
`
`current threshold for entering the inter partes
`
`1807
`
`reexamination process. Since the procedure was first
`
`

`

`HJU104000 PAGE 90
`
`1808
`
`created in 1999, PTO has issued decisions in 221
`
`1809
`
`reexaminations and 90 percent of those resulted in the
`
`1810
`
`invalidation of at least patent claim. Again, 90 percent of
`
`1811
`
`the patents that go through the inter partes process under
`
`1812
`
`the current threshold are found to be defective. Even PTO
`
`1813
`
`Director Kappos testified that the current standard allows
`
`1814
`
`the PTO to weed out meritless petitions.
`
`1815
`
`This is clearly a solution without a problem. I ask
`
`1816
`
`you to support my amendment and reject the unworkable
`
`1817
`
`standard that is in the current manager's amendment.
`
`1818
`
`Chairman Smith. Thank you, Ms. Chu.
`
`1819
`
`I will recognize myself in opposition to the
`
`1820
`
`amendment.
`
`1821
`
`The balance that we have struck in the inter partes by
`
`1822
`
`raising the threshold and extending the deadline to 12
`
`1823
`
`months after the filing of a civil action is a fair deal.
`
`1824
`
`But if we do as this amendment suggests and couple such a
`
`1825
`
`1-year period of time to decide whether or not to even enter
`
`1826
`
`inter partes with a lower threshold, it could create
`
`1827
`
`problems for the PTO and open the program up to litigation
`
`1828
`
`abuse. The lower threshold standard for inter partes really
`
`1829
`
`does not make that much sense for infringing parties. Inter
`
`

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