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`ALDERSON REPORTING COMPANY
`HJU104000
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`MARKUP OF H.R. 1249, THE AMERICA INVENTS ACT
`Thursday, April 14, 2011
`House of Representatives
`Committee on the Judiciary
`Washington, D.C.
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` The committee met, pursuant to call, at 10:35 a.m., in
`Room 2141, Rayburn Office Building, Hon. Lamar Smith
`[chairman of the committee] presiding.
` Present: Representatives Smith, Sensenbrenner, Coble,
`Gallegly, Goodlatte, Lungren, Chabot, Issa, Pence, Forbes,
`King, Franks, Gohmert, Jordan, Poe, Chaffetz, Griffin,
`Marino, Gowdy, Ross, Adams, Quayle, Conyers, Berman, Nadler,
`Scott, Watt, Lofgren, Jackson Lee, Waters, Cohen, Johnson,
`Pierluisi, Quigley, Chu, Deutch, Sanchez, and Wasserman
`Schultz.
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`Page 1 of 5
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`VIRNETX EXHIBIT 2008
`Apple v. VirnetX
`Trial IPR2016-00062
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`HJU104000 PAGE 2
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` Staff present: Sean McLaughlin, Chief of Staff;
`Allison Halatei, Deputy Chief of Staff/Parliamentarian;
`Sarah Kish, Clerk; Perry Apelbaum, Minority Staff Director;
`and Chrystal Sheppard.
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`Page 2 of 5
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`HJU104000 PAGE 71
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`genuine issues in the case in order to prepare an effective
`petition.
`I think this is a fair approach for both the patent
`owner and those accused of infringement. It preserves the
`ability of inter partes while still preventing undue delay,
`and while there is no deadline tied to litigation in the
`status quo, proponents of strict deadlines really haven’t
`given any real world examples that I am aware of of inter
`partes challenges that have been unduly delayed or harm that
`would occur therefor.
`So if there are concerns, they are theoretical, and
`regardless of the deadline, defendants have a significant
`incentive to file their petitions for IPR as early as
`possible. If the defendant waits too long to file, it could
`lose at trial and be forced into paying damages for
`infringement before the PTO makes a decision to invalidate
`the patent.
`So I think this amendment is a middle ground and
`improves the bill, and I hope that the members will see fit
`to approve it.
`And I yield back.
`Chairman Smith. Thank you, Ms. Lofgren.
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`HJU104000 PAGE 72
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`I will recognize myself in opposition to the
`amendment.
`This amendment expands the inter partes review program
`from 12 months after the filing of a civil action to 30 days
`after the Markman hearing. This amendment could create an
`open-ended process because there is actually no guarantee
`that a Markman hearing will even take place. The inter
`partes proceeding in H.R. 1249 has been carefully written to
`balance the need to encourage its use while at same time
`preventing the serial harassment of patent holders. This
`bill represents a delicate balance, and making such a core
`change to the deadline may turn the inter partes program
`into a tool for litigation gamesmanship rather than a
`meaningful and less expensive alternative to litigation.
`For those reasons, I oppose the amendment.
`Are there other members who wish to be heard on this
`amendment?
`[No response.]
`Chairman Smith. If not, we will vote on it. All
`those in -- the gentleman from California, Mr. Berman, is
`recognized.
`Mr. Berman. Mr. Chairman, the issue you raise -- I
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`HJU104000 PAGE 73
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`rise to suggest an alternative to the amendment, although I
`think the amendment is good.
`If there is a Markman hearing, that is the logical
`time to cut off the ability to stay a court case, 30 days
`afterwards. So on the face of it, I think the amendment
`makes sense. You raise legitimately what if there is no
`Markman hearing. So what if the gentlelady’s amendment said
`the Markman hearing or no later than 18 months so that if
`there were no Markman hearing, the time set, they could not
`go beyond the 18 months? Would that make it then more
`attractive to you? It would deal with this issue of no
`Markman hearing.
`Remember, under existing law -- first of all, the stay
`is never mandated. The court gets to decide whether or not
`to have a stay. And your bill, I think, is a positive
`improvement on the Senate language which was only 6 months,
`but conceptually knowing what claims are going to be
`litigated makes the most sense in terms of telling the
`defendant they no longer can use inter partes reexam as an
`effort to stall the litigation. They got to do it within 30
`days of the Markman hearing or if they haven’t gotten the
`Markman hearing or aren’t going to get a Markman hearing, no
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`Page 5 of 5
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