`
`(Znngrmiunal 'Ithnrd
`
`United States
`
`tb
`PROCEEDINGS AND DEBATES OF THE 1 12 CONGRESS, FIRST SESSION
`of America
`
`
`Vol. 1 5 7
`
`WASHINGTON, TUESDAY, MARCH 1, 2011
`
`No. 29
`
`House of Representatives
`
`The House met at 10 a.m. and was
`called to order by the Speaker pro tem-
`pore (Mr. WEBSTER).
`——.—
`
`DESIGNATION OF SPEAKER PRO
`TEMPORE
`
`The SPEAKER pro tempore laid be—
`fore the House the following commu-
`nication from the Speaker:
`WASHINGTON, DC,
`March 1, 2011.
`the Honorable DANIEL
`I hereby appoint
`WEBSTER to act as Speaker pro tempore on
`this day.
`
`JOHN A. BOEHNER,
`Speaker of the House of Representatives.
`—.—
`
`MORNING—HOUR DEBATE
`
`The SPEAKER pro tempore. Pursu-
`ant to the order of the House of Janu—
`ary 5, 2011, the Chair will now recog-
`nize Members from lists submitted by
`the majority and minority leaders for
`morning—hour debate.
`The Chair will alternate recognition
`between the parties, with each party
`limited to 1 hour and each Member
`other than the majority and minority
`leaders and the minority whip limited
`to 5 minutes each, but in no event shall
`debate continue beyond 11:50 a.m.
`_‘
`
`GREAT THINGS HAPPENING IN
`CHATI‘ANOOGA
`
`The SPEAKER pro tempore. The
`Chair recognizes the gentleman from
`Tennessee (Mr. FLEISCHMANN)
`for 5
`minutes.
`Mr. FLEISCHMANN. Mr. Speaker, I
`rise today to take this moment
`to
`bring your attention to some exciting
`developments from my hometown of
`Chattanooga, Tennessee. For those of
`you who haven‘t heard, Chattanooga
`has
`undergone
`incredible
`trans-
`formation over the past several years;
`and, now. the story of our progress is
`making news across the globe.
`
`A few decades ago, Chattanooga's
`economy was dwindling. Legacy com-
`panies were closing. Local manufactur—
`ers were folding in the face of global
`competition. We were even said to have
`the dirtiest air in America.
`Today, Chattanooga is a place that
`has attracted more than 84 billion in
`new investment during the recent re—
`cession. It is a place that has the fast-
`est residential Internet service in the
`United States, and Chattanooga is a
`place that one national publication
`called the region with “the greatest
`economic growth potentia ” in Amer—
`ica.
`the buzz about Chat-
`In August,
`tanooga brought an economic and so-
`cial development
`think tank to our
`city for a firsthand look. The group—
`called
`the
`Intelligent Community
`Forum—studies 21st-century growth
`within the global community. It looks
`at cities that are leveraging 21st-cen-
`tury infl-astruoture to create jobs and
`foster innovation. After spending a few
`days in Chattanooga,
`the Intelligent
`Community Forum confirmed some-
`thing we have known for a long while:
`big things are happening in our com-
`munity.
`the Intelligent Community
`What
`Forum saw during its trip to Chat-
`tanooga, and has learned about us
`since, recently led them to name our
`community as one of the seven smart-
`est cities in the world. We are now run—
`ning for the number one spot.
`The awards for top designation go to
`cities that are using information and
`communications technology to move
`every sector of their community ahead.
`These cities are leaders, and to be
`counted among them means you are
`growing in ways the rest of the world is
`not.
`The Intelligent Community Forum is
`saying Chattanooga is a place to
`watch. What they see in our commu—
`nity is what I want
`to talk to you
`about today.
`
`The same Chattanooga that once
`lagged behind the rest of the Nation is
`moving ahead. We’re receiving praise
`from all sides for generating growth in
`an adverse economy and for maintain-
`ing an outstanding quality of life in
`the process. Chattanooga now offers
`the fastest residential Internet service
`in the United States and is one of only
`a handful of cities in the world that
`runs at 1,000 megabits per second. And
`the Electric Power Board, our city’s
`local electric utility, has installed a
`fiber—optic network that uses smart
`meters to process real-time informa-
`tion and adjust transmissions accord—
`ing to the needs of individual homes.
`All 170,000 homes in EPB’s service area
`benefit from this technology.
`in
`But
`Chattanooga’s
`strides
`broadband and digital
`inclusion are
`just part of the picture. Chattanooga
`was one of the first cities to come out
`of the recession, thanks in part to a
`strong business community. Coordi-
`nated efforts between nonprofit organi—
`zations are driving small-company for-
`mation. The Chattanooga—area cham—
`ber of commerce runs one of America’s
`largest business incubators, with 60
`companies employing more than 500
`people under one roof.
`These are just a few examples of the
`way Chattanooga is setting itself apart
`from the rest of the world. Every leap
`we make ahead underscores the forces
`that are fueling our progress: vision
`and collaboration. These are exactly
`the qualities the Intelligent Commu—
`nity Forum looks at in a number one
`city.
`I would like to congratulate Chat-
`tanooga for the recognition it is earn-
`ing, and I hope you will join me in sup-
`porting our quest to become the Most
`Intelligent Community for 2011. Great
`things are happening in Chattanooga
`right now; and, Mr. Speaker, 3. lot more
`are expected to come.
`
`I] This symbol represents the time of day during the House proceedings, e.g., E] 1407 is 2:07 p.m.
`Matter set in this typeface indicates words inserted or appended, rather than spoken, by a Member of the House on the floor.
`
`Printed on recycled paper.
`
`H1393
`
`CE Ex. 2002
`CE Ex. 2002
`Daicel v. Celanese
`Daicel v. Celanese
`|PR2015-00170
`IPR2015-00170
`
`CCI 2012
`
`CCI 2012
`
`

`

`S1041
`March 1, 2011
`CONGRESSIONAL RECORD — SENATE
`out whether the inventor publicly dis-
`nation of subjective elements in patent
`it is these larger parties that benefit
`law, its new proceeding to correct pat-
`from this system. In many cases, small
`closed the invention. If prior art dis-
`ents, and its elimination of current
`inventors such as start ups and univer-
`closed the invention to the public be-
`patent-forfeiture pitfalls that trap le-
`sities simply cannot afford to partici-
`fore the filing date, or if the inventor
`gally unwary inventors, it is clear that
`pate in an interference, and they sur-
`disclosed the invention within a year of
`this bill will benefit inventors both
`render their rights once a well-funded
`filing but the prior art predates that
`large and small.
`party starts such a proceeding.
`disclosure, then the invention is in-
`Allow me to also take a moment to
`Mr. Quinn’s article also responded to
`valid. And if not, the patent is valid
`briefly describe the concerns that Sen-
`critics who allege that the present bill
`against a prior-art challenge.
`ators Feingold and COBURN and I raised
`eliminates the grace period for patent
`Some critics of the first-to-file sys-
`applications. The grace period is the
`in our 2009 Minority Report, and how
`tem also argue that it will be expensive
`one-year period prior to filing when the
`the present bill addresses those con-
`for inventors because they will be
`inventor may disclose his invention
`cerns.
`forced to rush to file a completed appli-
`Senators Feingold and COBURN and I
`without giving up his right to patent.
`cation, rather than being able to rely
`proposed that the bill impose a higher
`Mr. Quinn quotes the very language of
`on their invention date and take their
`threshold showing for instituting an
`this bill, and draws the obvious conclu-
`time to complete an application. These
`inter partes, or post-grant review. This
`sion:
`critics generally ignore the possibility
`had long been a top priority for the
`Regardless of the disinformation that is
`of filing a provisional application,
`Patent Office, both under the previous
`widespread, the currently proposed S. 23
`which requires only a written descrip-
`does, in fact, have a grace period. The grace
`administration and under the current
`tion of the invention and how to make
`period would be quite different than what we
`one. The Patent Office made clear that
`it. Once a provisional application is
`have now and would not extend to all third
`a higher threshold is necessary to weed
`filed, the inventor has a year to file a
`party activities, but many of the horror sto-
`out marginal challenges and preserve
`completed application. Currently, fil-
`ries say that if someone learns of your inven-
`the office’s own resources, and that a
`ing a provisional application costs $220
`tion from you and beats you to the Patent
`higher threshold would also force par-
`Office, they will get the patent. That is sim-
`for a large entity, and $110 for a small
`ties to front-load their cases, allowing
`ply flat wrong.
`entity.
`these proceedings to be resolved more
`Mr. Quinn is, of course, referring to
`One of Mr. Quinn’s earlier columns,
`quickly. The present bill imposes high-
`the bill’s proposed section 102(b). Under
`on November 7, 2009, effectively rebuts
`er thresholds, requiring a reasonable
`paragraph (1)(A) of that section, disclo-
`the notion that relying on invention
`likelihood of invalidity for inter partes
`sures made by the inventor, or some-
`dates offers inventors any substantial
`review, and more-likely-than-not inva-
`one who got the information from the
`advantage over simply filing a provi-
`lidity for post-grant review.
`inventor, less than 1 year before the
`sional application. As he notes:
`Senators Feingold and COBURN and I
`application is filed do not count as
`If you rely on first to invent and are oper-
`also recommended that the Patent Of-
`prior art. And under paragraph (1)(B),
`ating at all responsibly you are keeping an
`fice be allowed to operate inter partes
`during the 1-year period before the ap-
`invention notebook that will meet evi-
`reexamination as an adjudicative pro-
`plication is filed, if the inventor pub-
`dentiary burdens if and when it is neces-
`ceeding, where the burden of proof is
`sary to demonstrate conception prior to the
`licly discloses his invention, no subse-
`conception of the party who was first to
`on the challenger and the office simply
`quently disclosed prior art, regardless
`file. . . .
`decides whether the challenger has met
`of whether it is derived from the inven-
`[Y]our invention notebook or invention
`his burden. The present bill makes this
`tor, can count as prior art and invali-
`record will detail, describe, identify and date
`date the patent. This effectively cre-
`change, repealing requirements that
`conception so that others skilled in the art
`ates a ‘‘first to publish’’ rule that pro-
`inter
`partes
`be
`run
`on
`an
`will be able to look at the notebook/record
`tects those inventors who choose to
`examinational model and allowing the
`and understand what you did, what you
`disclose their invention. An inventor
`PTO to adopt an adjudicative model.
`knew, and come to the believe that you did
`The 2009 Minority Report also rec-
`in fact appreciate what you had. If you have
`who publishes his invention, or dis-
`this, you have provable conception. If you
`ommended that the bill restrict serial
`closes it at a trade show or academic
`have provable and identifiable conception,
`administrative challenges to patents
`conference, or otherwise makes it pub-
`you also have a disclosure that informs and
`and require coordination of these pro-
`licly available, has an absolute right to
`supports the invention. . . . [And] [i]f the
`ceedings with litigation. We also called
`priority if he files an application with-
`notebook provably demonstrates conception,
`for limiting use of ex parte reexamina-
`in one year of his disclosure. No appli-
`then it can be filed as a provisional patent
`tion to patent owners, noting that al-
`cation effectively filed after his disclo-
`application at least for the purpose of stak-
`lowing three different avenues for ad-
`sure, and no prior art disclosed after
`ing a claim to the conception that is detailed
`ministrative attack on patents invites
`with enough specificity to later support an
`his disclosure, can defeat his applica-
`argument in a first to invent regime.
`serial challenges. The present bill does
`tion for patent.
`These rules are highly protective of
`coordinate inter partes and post-grant
`In other words, the showing that an
`inventors, especially those who share
`review with litigation, barring use of
`inventor must make in a provisional
`their inventions with the interested
`these proceedings if the challenger
`application is effectively the same
`public but still file a patent applica-
`seeks a declaratory judgment that a
`showing that he would have to make to
`tion within a year. These rules are also
`patent is invalid, and setting a time
`prove his invention date under the
`clear, objective, and transparent. They
`limit for seeking inter partes review if
`first-to-invent system. A small inven-
`create unambiguous guidelines for in-
`the petitioner or related parties is sued
`tor operating under
`first-to-invent
`ventors. An inventor who wishes to
`for infringement of the patent. The
`rules already must keep independently-
`keep his invention secret must file an
`present bill does not, however, bar the
`validated notebooks that show when he
`application promptly, before another
`use of ex parte reexamination by third
`conceived of his invention. Under first-
`person discloses the invention to the
`parties. The Patent Office and others
`to-file rules, the only additional steps
`public. And an inventor can also share
`persuaded me that these proceedings
`that the same inventor must take are
`his invention with others. If his activi-
`operate reasonably well in most cases
`writing down the same things that his
`ties make the invention publicly avail-
`and are not an undue burden on patent
`notebooks are supposed to prove filing
`able, he must file an application within
`owners. The present bill does, however,
`that writing with the Patent Office,
`a year, but his disclosures also pre-
`impose limits on serial challenges that
`and paying a $110 fee.
`vents any subsequently disclosed prior
`Once the possibility of filing a provi-
`will also restrict the use of ex parte re-
`art from taking away his right to pat-
`sional application is considered, along
`examination. The bill’s enhanced ad-
`ent. The bill’s proposed section 102 also
`with this bill’s enhanced grace period,
`ministrative estoppel will effectively
`creates clear guidelines for those who
`it should be clear that the first-to-file
`bar a third party or related parties
`practice in a technology. To figure out
`system will not be at all onerous for
`from invoking ex parte reexamination
`if a patent is valid against prior art, all
`small inventors. And once one con-
`against a patent if that third party has
`that a manufacturer needs to do is look
`siders the bill’s clean, clear rules for
`already employed post-grant or inter
`at the patent’s filing date and figure
`prior art and priority dates, its elimi-
`partes review against that patent.
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`

`S1042
`March 1, 2011
`CONGRESSIONAL RECORD — SENATE
`ent reform on Monday, February 28, 2011, the
`Also, the bill allows the Patent Office
`an interested person who is skilled in
`first day back. Some are even anticipating
`the field could, through reasonable
`to reject any request for a proceeding,
`that the Senate will vote on patent reform
`diligence, find the subject matter and
`including a request for ex parte reex-
`bill S. 23 late in the day on Monday, Feb-
`understand the invention from it. Obvi-
`amination, if the same or substantially
`ruary 28, 2011. See ‘‘Crunch Time: Call Your
`ously, Congress would not create a
`the same prior art or arguments pre-
`Senators on Patent Reform.’’ That would
`grace period that is narrower in scope
`viously were presented to the Office
`seem exceptionally quick, particularly given
`than the relevant prior art. Thus for
`with respect to that patent.
`the rancorous issues and Amendments still
`example, under this bill, any activity
`Senators Feingold and COBURN and I
`to be presented, but nothing will surprise
`by the inventor that would constitute
`also recommended that the PTO be al-
`me.
`prior art under section 102(a)(1) would
`lowed to delay implementation of post-
`As we get closer to a vote in the Senate the
`also invoke the grace period under sec-
`grant review if the office lacks the re-
`rhetoric of those for and against patent re-
`tion 102(b)(1). As a result, the inventor
`sources to implement that new pro-
`form is heating up to a fever pitch. The big
`fight, once again, is over first to file, with
`would be protected against his own ac-
`ceeding. The present bill includes a
`battle lines drawn that run extremely deep.
`tivities so long as he files within a
`number of safeguards that are the
`Senator Diane Feinstein (D–CA) is expected
`year, and under the bill’s ‘‘first to pub-
`product of discussions with the PTO.
`to file an Amendment stripping the first to
`lish’’ provisions, he would also be pro-
`Among other things, the present bill
`file provisions, which could be supported by
`tected by any other person’s disclosure
`authorizes a ramp-up period, allowing
`Senate Majority Leader Harry Reid (D–NV).
`of the invention, regardless of whether
`the office to limit the number of pro-
`Before tackling the first to file issue I
`he could prove that the other person
`ceedings that can be implemented dur-
`would like to point out that regardless of
`derived the invention from him.
`ing the first 4 years after the new pro-
`whether first to file is supported or opposed,
`The present bill is the product of al-
`ceeding becomes effective.
`everyone, and I do mean everyone, unani-
`most a decade of hard work, including
`The 2009 Minority Report also rec-
`mously agrees that the USPTO should be al-
`three Judiciary Committee mark ups,
`ommended that treble damages be pre-
`lowed to keep the fees it collects to reinvest
`and the untold hours of work by Mr.
`in the agency and to do the work promised.
`served as a meaningful deterrent to
`An overwhelming majority also seem to sup-
`SMITH and other members of the House
`willful or calculated infringement of a
`port giving the USPTO fee setting authority.
`of Representatives that led to the in-
`patent. The present bill does so, elimi-
`Fee setting authority is present in S. 23 (see
`troduction of the Patent Reform Act of
`nating the restrictive three-buckets
`Section 9) and Senator Tom Coburn plans to
`2005, the foundation of today’s bill.
`approach and broad safe harbors that
`introduce an Amendment that would once
`This is a bill that will protect our her-
`appeared in the bill in 2009. The report
`and for all eliminate fee diversion and let
`itage of innovation while updating the
`also recommended that the bill remove
`the USPTO keep the fees it collects. So while
`patent system for the current century.
`subjective elements from patent law,
`there is argument about first to file, hope-
`It will fix problems with current ad-
`fully we won’t lose sight of the fact that
`such as the various deceptive-intent
`most everyone is on the same team relating
`ministrative proceedings, create new
`elements throughout the code and the
`to fixing the USPTO.
`means for improving patent quality,
`patent-forfeiture
`doctrines.
`The
`With respect to first to file, in practical ef-
`and will generally move us toward a
`present bill effectively makes both
`fect, we already have a first inventor to file
`patent system that is objective, trans-
`changes. In fact, the 2007 bill had al-
`system. For example, since the start of fiscal
`parent, clear, and fair to all parties. I
`ready been modified in mark up to
`year 2005 on October 1, 2004, there have been
`look forward to the Senate’s passage of
`eliminate the patent forfeiture doc-
`over 2.9 million patent applications filed and
`this bill and its enactment into law.
`trines, a point elucidated in that year’s
`only 502 Interferences decided. An Inter-
`I ask unanimous consent that Mr.
`committee report and confirmed by a
`ference Proceeding occurs when multiple in-
`Gene Quinn’s columns of February 27,
`review of the relevant caselaw.
`ventors file an application claiming the
`2011, and November 7, 2009, with correc-
`This last point should also help ad-
`same invention, and is the hallmark of a
`tions of a few typos and enhancements
`dress a question that Mr. Quinn raised
`first to invent system because it is possible
`in the United States to file a patent applica-
`of punctuation, be printed in the
`in his column on Sunday regarding pro-
`tion second and then be awarded the patent
`RECORD.
`posed section 102(b)’s use of the word
`if the second to file can demonstrate they
`There being no objection, the mate-
`‘‘disclosure,’’ and whether it covers
`were the first to invent. On top of the paltry
`rial was ordered to be printed in the
`public use or sale activities of the in-
`502 Interferences over nearly 7 years a grand
`RECORD, as follows:
`ventor. I would have thought that the
`total of 1 independent inventor managed to
`SENATE TO VOTE ON PATENT REFORM, FIRST
`meaning of the word would be clear: a
`demonstrate they were the first to invent,
`TO FILE FIGHT LOOMS
`disclosure is something that makes the
`and a grand total of 35 small entities were
`(By Gene Quinn, President & Founder of
`invention available to the public—the
`even involved in an Interference. A small en-
`IPWatchdog, Inc., Feb. 27, 2011)
`tity can be an independent inventor, univer-
`same test applied by section 102(a) to
`It appears as if the time has finally arrived
`sity, non-profit or a company with 500 or
`define the scope of relevant prior art.
`for an up or down vote on patent reform in
`fewer employees. Thus, we have a de facto
`And ‘‘available to the public’’ means
`the United States Senate. It has been widely
`first to file system and the ‘‘first to invent’’
`the same thing that ‘‘publicly acces-
`reported that the full Senate will take up
`system that supposedly favors independent
`sible’’ does in the context of a publica-
`patent reform upon returning from recess
`inventors is overwhelmingly dominated by
`tion. Subject matter makes an inven-
`this week, and it is now believed by many on
`large companies with over 500 employees.
`tion publicly accessible or available if
`the inside that the Senate will take up pat-
`See chart below.
`
`Filings ....................................................................................................................................................................................
`Allowances .............................................................................................................................................................................
`Interferences decided ............................................................................................................................................................
`Junior party winners ..............................................................................................................................................................
`Small entity winners .............................................................................................................................................................
`Independent Inventor winners ...............................................................................................................................................
`Small Entity losers ................................................................................................................................................................
`
`381797
`151077
`96
`18
`7
`0
`1
`
`417453
`162509
`107
`15
`2
`0
`2
`
`468330
`184376
`95
`21
`3
`1
`2
`
`496886
`182556
`74
`25
`6
`0
`2
`
`486499
`190122
`63
`14
`1
`0
`1
`
`509367
`233127
`50
`17
`5
`0
`2
`
`153997
`93390
`17
`3
`1
`0
`0
`
`2914329
`1197157
`502
`113
`25
`1
`10
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011*
`
`Total
`
`On top of this, the independent inventors
`and small entities, those typically viewed as
`benefiting from the current first to invent
`system, realistically could never benefit
`from such a system. To prevail as the first to
`invent and second to file you must prevail in
`an Interference proceeding, and according to
`2005 data from the AIPLA the average cost
`through an interference is over $600,000. So
`let’s not kid ourselves, the first to invent
`system cannot be used by independent inven-
`
`tors in any real, logical or intellectually
`honest way, as supported by the reality of
`the numbers above. So first to invent is
`largely a ‘‘feel good’’ approach to patents
`where the underdog at least has a chance, if
`they happen to have $600,000 in disposable in-
`come to invest on the crap-shoot that is an
`Interference proceeding.
`I will acknowledge, however, that one of
`the best arguments I have seen against first
`to file was prepared by Hank Nothhaft,
`
`President & CEO of Tessera and a frequent
`contributor to IPWatchdog.com. In his op-ed
`in The Hill Hank concludes by asking: ‘‘Why
`risk that by weakening the incentives for
`startups?’’ As I can point to the fact that we
`have a de facto first to file system already,
`Hank and others can say—so why the need
`for change? I readily acknowledge that the
`small ‘‘c’’ conservative thing to do, which I
`normally promote, would be to do nothing
`
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`3
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