HJU104000 PAGE 1
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`ALDERSON REPORTING COMPANY
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`HJU104000
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`MARKUP OF H.R. 1249, THE AMERICA INVENTS ACT
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`Thursday, April 14, 2011
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`House of Representatives
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`Committee on the Judiciary
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`Washington, D.C.
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` The committee met, pursuant to call, at 10:35 a.m., in
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`Room 2141, Rayburn Office Building, Hon. Lamar Smith
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`[chairman of the committee] presiding.
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` Present: Representatives Smith, Sensenbrenner, Coble,
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`Gallegly, Goodlatte, Lungren, Chabot, Issa, Pence, Forbes,
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`King, Franks, Gohmert, Jordan, Poe, Chaffetz, Griffin,
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`Marino, Gowdy, Ross, Adams, Quayle, Conyers, Berman, Nadler,
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`Scott, Watt, Lofgren, Jackson Lee, Waters, Cohen, Johnson,
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`Pierluisi, Quigley, Chu, Deutch, Sanchez, and Wasserman
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`Schultz.
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`Page 1 of 5
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`VIRNETX EXHIBIT 2003
`Black Swamp v. VirnetX
`Trial IPR2016-00167
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`ALDERSON REPORTING COMPANY
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`HJU104000
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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
`
`5
`
`House of Representatives
`
`6
`
`Committee on the Judiciary
`
`7
`
`Washington, D.C.
`
` The committee met, pursuant to call, at 10:35 a.m., in
`
`
`
`8
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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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`Scott, Watt, Lofgren, Jackson Lee, Waters, Cohen, Johnson,
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`Pierluisi, Quigley, Chu, Deutch, Sanchez, and Wasserman
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`Schultz.
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`Page 1 of 5
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`VIRNETX EXHIBIT 2003
`Black Swamp v. VirnetX
`Trial IPR2016-00167
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`HJU104000 PAGE 2
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` Staff present: Sean McLaughlin, Chief of Staff;
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`Allison Halatei, Deputy Chief of Staff/Parliamentarian;
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`Sarah Kish, Clerk; Perry Apelbaum, Minority Staff Director;
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`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
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`petition.
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`I think this is a fair approach for both the patent
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`owner and those accused of infringement. It preserves the
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`ability of inter partes while still preventing undue delay,
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`and while there is no deadline tied to litigation in the
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`status quo, proponents of strict deadlines really haven’t
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`given any real world examples that I am aware of of inter
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`partes challenges that have been unduly delayed or harm that
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`would occur therefor.
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`So if there are concerns, they are theoretical, and
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`regardless of the deadline, defendants have a significant
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`incentive to file their petitions for IPR as early as
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`possible. If the defendant waits too long to file, it could
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`lose at trial and be forced into paying damages for
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`infringement before the PTO makes a decision to invalidate
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`the patent.
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`So I think this amendment is a middle ground and
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`improves the bill, and I hope that the members will see fit
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`to approve it.
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`And I yield back.
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`Chairman Smith. Thank you, Ms. Lofgren.
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`Page 3 of 5
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`HJU104000 PAGE 72
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`I will recognize myself in opposition to the
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`amendment.
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`This amendment expands the inter partes review program
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`from 12 months after the filing of a civil action to 30 days
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`after the Markman hearing. This amendment could create an
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`open-ended process because there is actually no guarantee
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`that a Markman hearing will even take place. The inter
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`partes proceeding in H.R. 1249 has been carefully written to
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`balance the need to encourage its use while at same time
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`preventing the serial harassment of patent holders. This
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`bill represents a delicate balance, and making such a core
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`change to the deadline may turn the inter partes program
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`into a tool for litigation gamesmanship rather than a
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`meaningful and less expensive alternative to litigation.
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`For those reasons, I oppose the amendment.
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`Are there other members who wish to be heard on this
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`amendment?
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`[No response.]
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`Chairman Smith. If not, we will vote on it. All
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`those in -- the gentleman from California, Mr. Berman, is
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`recognized.
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`Mr. Berman. Mr. Chairman, the issue you raise -- I
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`Page 4 of 5
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`HJU104000 PAGE 73
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`rise to suggest an alternative to the amendment, although I
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`think the amendment is good.
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`If there is a Markman hearing, that is the logical
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`time to cut off the ability to stay a court case, 30 days
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`afterwards. So on the face of it, I think the amendment
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`makes sense. You raise legitimately what if there is no
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`Markman hearing. So what if the gentlelady’s amendment said
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`the Markman hearing or no later than 18 months so that if
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`there were no Markman hearing, the time set, they could not
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`go beyond the 18 months? Would that make it then more
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`attractive to you? It would deal with this issue of no
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`Markman hearing.
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`Remember, under existing law -- first of all, the stay
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`is never mandated. The court gets to decide whether or not
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`to have a stay. And your bill, I think, is a positive
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`improvement on the Senate language which was only 6 months,
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`but conceptually knowing what claims are going to be
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`litigated makes the most sense in terms of telling the
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`defendant they no longer can use inter partes reexam as an
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`effort to stall the litigation. They got to do it within 30
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`days of the Markman hearing or if they haven’t gotten the
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`Markman hearing or aren’t going to get a Markman hearing, no
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`Page 5 of 5
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