A Guide to the Legislative History of the
`America Invents Act: Part I of II
`
`Joe Matal*
`
`Introduction
`This Article is neither a philosophical meditation on patent law, nor an
`inquiry into how it ought to be changed. It is, instead, simply a description
`of the recently-enacted Leahy-Smith America Invents Act (“AIA”)1 and, in
`particular, a guide to legislative materials that may be useful to practitioners
`who are required to understand and construe the new law.
`The AIA was signed into law on September 16, 2011.2 It adopted the first-
`to-file system of determining a patent’s priority date, redefined what constitutes
`prior art against a patent, created several new post-issuance proceedings for
`patents and revised existing proceedings, and made many other important
`changes to the patent code.3 The AIA is the first comprehensive patent bill to
`be enacted since the Patent Act of 1952 (“1952 Act”),4 and it arguably makes
`the most substantial changes to the law since those imposed by the Patent
`Act of 1836 (“1836 Act”), which created the system of patent examination.5
`This Article grew out of efforts to monitor the Senate and House of Repre-
`sentatives (“House”) debates on the AIA while it was before Congress, several
`presentations given to trade associations after it was enacted, and requests from
`practitioners for information about legislative history relevant to particular
`
`* Joe Matal has served as a Judiciary Committee Counsel to Senator Jon Kyl since 2002,
`except for when he served as the Minority General Counsel of the Judiciary Committee
`from May 2009 to January 2011 while Senator Jeff Sessions was the ranking member of
`the committee.
`1 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011).
`2 See id.
`3 See id. secs. 3(a)(2), 6(d), 6(g), §§ 100(i)(1)(B), 301, 321, 125 Stat. at 285, 306, 312;
`see also 157 Cong. Rec. S951–52 (daily ed. Feb. 28, 2011) (statement of Sen. Hatch).
`4 See Press Release, The White House, President Obama Signs America Invents Act,
`Overhauling the Patent System to Stimulate Economic Growth, and Announces New Steps
`to Help Entrepreneurs Create Jobs (Sept. 16, 2011), available at http://www.whitehouse.
`gov/the-press-office/2011/09/16/president-obama-signs-america-invents-act-overhauling-
`patent-system-stim [hereinafter AIA White House Press Release].
`5 Stephen M. Hankins & D. Christopher Ohly, The America Invents Act: An Overview,
`The Recorder (Oct. 4, 2011), http://www.law.com/jsp/lawtechnologynews/PubArticleLTN.
`jsp?id=1202517720138&slreturn=1.
`
`Helsinn Healthcare Exhibit 2046
`Dr. Reddy's Laboratories, Ltd., et al. v. Helsinn Healthcare S.A.
`Trial PGR2016-00008
`
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`436 The Federal Circuit Bar Journal Vol. 21, No. 3
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`sections of the bill. In many cases, it would be difficult for a practitioner to
`find the legislative history that addressed a particular provision of the AIA.
`While all the material is publicly available,6 it is voluminous and is scattered
`across the Congressional Record and the committee reports of several Con-
`gresses—and, of course, it is not organized by topic.
`This is the first of what will be two Articles. This Article addresses the parts
`of the AIA that are relevant to an application before a patent has issued; the
`next will examine those parts of the AIA that are relevant only after a patent
`has been granted. This Article’s scope, thus, includes the AIA’s revisions to
`§§ 102 and 103 and its creation of derivation proceedings, the changes to
`the inventor’s oath, the authorization for a third party to submit prior art and
`explain its relevance to an application, the bans on tax-strategy and human-
`cloning patents, and several minor provisions and studies.
`This Article begins with an account of the six years of legislative activity
`leading up to enactment of the AIA. The remainder is organized by the sec-
`tions of the U.S. Code that were amended by the AIA, then by sections of
`the AIA that are uncodified. For each section, the Article identifies the loca-
`tion and provides a description of any relevant legislative materials. Because
`courts generally place committee reports at the apex of their hierarchy of
`legislative history,7 any discussion of a bill section that appears in the final
`
`6 All of the legislative materials cited in this Article are available on the Library of Con-
`gress’s THOMAS website. THOMAS, Libr. of Cong., http://thomas.loc.gov/home/thomas.
`php (last visited Jan. 27, 2012). Additionally, the United States Patent and Trademark Office
`(“USPTO”) has created a page on its website that includes links to most of the legislative
`materials that are relevant to the AIA. Leahy‑Smith America Invents Act Implementation,
`USPTO, http://www.uspto.gov/aia_implementation/index.jsp (last modified Jan. 26, 2012).
`Finally, the material on the USPTO website, past committee reports, and all of the hear-
`ings on patent reform that were held during the ten-year period leading up to enactment of
`the AIA are available on the website PatentReform.info. Leahy‑Smith America Invents Act:
`A Website for Supplying Information on the Act, PatentReform.info, http://patentreform.
`info/ (last visited Jan. 27, 2012) [hereinafter Act Information Website].
`7 See, e.g., Zuber v. Allen, 396 U.S. 168, 186 (1969) (“A committee report represents
`the considered and collective understanding of those Congressman involved in drafting and
`studying the proposed legislation.”); Bingham & Taylor Div., Va. Indus., Inc. v. United States,
`815 F.2d 1482, 1485 (Fed. Cir. 1987) (“Although not decisive, the intent of the legislature
`as revealed by a committee report is highly persuasive.”).
`Floor statements are not given the same weight as some other types of legislative his-
`tory, such as committee reports, because they generally represent only the view of the
`speaker and not necessarily that of the entire body. However, floor statements by the
`sponsors of the legislation are given considerably more weight than floor statements
`by other members . . . .
`Kenna v. U.S. Dist. Court for the C.D. Cal., 435 F.3d 1011, 1015 (9th Cir. 2006).
`
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`A Guide to the Legislative History of the America Invents Act
`
`437
`
`Committee Report8 is quoted or described, unless that passage simply repeats
`the statutory text.
`
`I. The Role of Legislative History
`In Piper v. Chris‑Craft Industries, Inc.,9 the Supreme Court noted that
`“[r]eliance on legislative history in divining the intent of Congress is . . . a
`step to be taken cautiously.”10 Congress’s “authoritative statement is the statu-
`tory text, not the legislative history.”11 And the Supreme Court has warned
`against relying on interpretations advanced in legislative statements that are
`not “anchored in the text of the statute.”12
`Courts have suggested that remarks made “by persons responsible for the
`preparation and drafting of a bill” should be weighed most heavily,13 but
`there often is no reliable or readily available way to determine who drafted
`which part of a bill—a particularly acute problem for a bill with as long a
`history and as many provisions as the AIA. And more fundamentally, “[t]he
`Constitution gives the force of law only to what is actually passed by both
`houses of Congress and signed by the President.”14 Even a committee report
`is controlled only by the chairman—there is no consent or vote required in
`order for a chairman to issue a report.
`On the other hand, legislative history, when cabined to its properly subor-
`dinate role, can serve a useful purpose. It can identify particular language that
`was borrowed from other laws or from administrative or judicial decisions—a
`connection that would sometimes be difficult to make were it not identified
`in the record. Many provisions of the AIA give the United States Patent and
`Trademark Office (“USPTO” or “Office”) new authority and were drafted
`in close consultation with the Office, and legislative statements disclose how
`
`8 Only one committee report, H.R. Rep. No. 112-98 (2011), was issued by a committee
`during the Congress in which the AIA was enacted. Three other reports were issued during
`earlier Congresses—one in 2009, and two in 2007. S. Rep. No. 111-18 (2009); H.R. Rep.
`No. 110-314 (2007); S. Rep. No. 110-259 (2007). House Report 112-98 is identified in this
`Article as the “2011” or “final” Committee Report. The other Reports are always identified
`by the year in which they were issued.
`9 430 U.S. 1 (1977).
`10 Id. at 26.
`11 Exxon Mobil Corp. v. Allapattah Servs., Inc., 545 U.S. 546, 568 (2005).
`12 Shannon v. United States, 512 U.S. 573, 583 (1994). “[C]ourts have no authority to
`enforce [a] principl[e] gleaned solely from legislative history that has no statutory reference
`point.” Id. at 584 (second and third alterations in original) (quoting Int’l Bd. of Elec. Work-
`ers, Local Union No. 474, AFL-CIO v. NLRB, 814 F.2d 697, 712 (1987)).
`13 See Ernst & Ernst v. Hochfelder, 425 U.S. 185, 204 n.24 (1976).
`14 Owner-Operator Indep. Drivers Ass’n v. Mayflower Transit, LLC, 615 F.3d 790, 792
`(7th Cir. 2010).
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`the Office anticipated that it would use that authority once it was enacted
`into law.15 Reports and speeches often explain various provisions and how
`they are designed to work—they do not add to or change the law, but simply
`elucidate what is already there.16 And in any event, courts frequently rely on
`the legislative record to interpret a statute.17 Litigants at least need to know
`what is in that record.
`Finally, the Leahy-Smith America Invents Act is a landmark bill, which
`makes fundamental changes to American patent law. Its creation and develop-
`ment, through a long and often difficult legislative process, was an important
`event and a great adventure—it is a story that is worth telling for its own sake.
`Thus, as the Supreme Court stated in Piper v. Chris‑Craft, “[w]ith th[ese]
`caveat[s], we turn to the legislative history of the” America Invents Act.18
`
`II. The Path to Enactment of the AIA
`A. The 109th Congress (2005–2006)
`The first version of what became the AIA was introduced on June 8, 2005
`by Representative Lamar Smith, then-Chairman of the House Judiciary
`Committee’s Intellectual Property Subcommittee.19 Many elements of the AIA
`trace their origins directly to Representative Smith’s original bill, including
`the following ideas and proposals that were ultimately enacted in the AIA:
`(1) moving the United States to the first-to-file system of determining a
`patent’s priority date, redefining what constitutes prior art, and authorizing
`derivation proceedings; (2) enacting a Chapter 32 that authorizes post-grant
`review of a patent by a panel of Administrative Patent Judges on any validity
`ground; (3) reforming the inventor’s oath requirement and expanding the
`rights of assignees to seek patents; (4) allowing third parties to submit prior
`art and explain its relevance with respect to an application; and (5) reforming
`the inequitable conduct doctrine and repealing the deceptive intent restric-
`tions in the patent code.20
`
`15 See, e.g., 157 Cong. Rec. E1198, E1206 (daily ed. June 24, 2011) (statements of Reps.
`Blumenauer and Van Hollen); 157 Cong. Rec. S957 (daily ed. Feb. 28, 2011) (statement
`of Sen. Bennet).
`16 See, e.g., 157 Cong. Rec. S951–52 (daily ed. Feb. 28, 2011) (statement of Sen. Hatch).
`17 Deluxe Corp. v. United States, 885 F.2d 848, 850 (Fed. Cir. 1989) (“[W]here the text
`itself does not clearly exclude alternate interpretations, we look first to the legislative history
`for illumination of the intent of Congress.”).
`18 430 U.S. 1, 26 (1977).
`19 Patent Reform Act of 2005, H.R. 2795, 109th Cong. Representative Lamar Smith is,
`of course, the “Smith” whose name appears in the full title of the AIA, the “Leahy-Smith
`America Invents Act.” See id.
`20 See id. secs. 3(a)–(b), 4(b)–(c), 5(a), 5(c), 9(f), 10.
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`Senators Orrin Hatch and Patrick Leahy introduced a similar bill in 2006.21
`Neither piece of legislation was marked up or reported during that Congress,
`but each committee held a series of hearings on the bills and the issues that
`they addressed.22
`
`B. The 110th Congress (2007–2008)
`The effort to enact comprehensive patent-reform legislation began in
`earnest early in the 110th Congress. On April 18, 2007, parallel bills were
`introduced in the Senate and House.23 However, because Republicans had
`lost control of both houses in November 2006, the lead sponsors of the bills
`became Senator Leahy, the new Chairman of the Senate Judiciary Commit-
`tee, and Representative Howard Berman, the new Chairman of the House
`Judiciary Committee’s Intellectual Property Subcommittee.24
`The Leahy and Berman bills were substantially identical.25 Their significant
`features were: (1) adoption of the first-to-file system and a new definition of
`“prior art”; (2) reform of the inventor’s oath requirement; (3) a requirement
`that reasonable-royalty damages be based on a patent’s “specific contribution
`over the prior art” and new substantive and procedural barriers to awards of
`enhanced damages; (4) enactment of a broad prior-user right; (5) creation
`of a post-grant review in which a patent’s validity could be challenged on
`any ground during either the year after its issuance, or later during its life
`if the patent was asserted against the petitioner or caused him “significant
`economic harm”; (6) authorization for third parties to submit patents and
`printed publications of potential relevance to an application and a concise
`description of the materials’ relevance; (7) restrictions on the venue where a
`civil action for infringement of a patent may be brought; (8) authorization
`for immediate interlocutory appeal of a district court’s construction of the
`
`21 Patent Reform Act of 2006, S. 3818, 109th Cong.; see also 152 Cong. Rec. S8829–32
`(daily ed. Aug. 3, 2006) (Sens. Hatch and Leahy’s remarks introducing this bill).
`22 From 2001 through the end of the 109th Congress, the House Judiciary Committee’s
`Intellectual Property Subcommittee held numerous hearings on patent reform and related
`issues. See H.R. Rep. No. 110-314, at 46–49 (2007). From 2005 through 2007, the Senate
`Judiciary Committee held six hearings on patent reform. See S. Rep. No. 110-259, at 36–38
`(2008). Subsequent hearings are noted at House Report 112-98, at 57 (2011), and Senate
`Report 111-18, at 27–30 (2009). All these hearings are available on the website PatentRe-
`form.info. See Act Information Website, supra note 6.
`23 Compare S. 1145, 110th Cong. (2007), with H.R. 1908, 110th Cong. (2007).
`24 See S. 1145; H.R. 1908.
`25 Senator Leahy noted this fact in his speech introducing Senate Bill 1145. See 153
`Cong. Rec. S4658 (daily ed. Apr. 18, 2007).
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`claims in a patent; and (9) authorization for the Director of the USPTO
`(“Director”) to promulgate regulations to carry out the patent laws.26
`The House Judiciary Committee voted to report its bill on July 18, 2007,
`and the Senate Judiciary Committee voted to report its bill the next day.27
`Both pieces of legislation, however, proved very controversial—primarily
`because of provisions that would have redefined the standard for awarding
`damages, and others that related to post-issuance review of patents, venue
`for infringement litigation, and interlocutory appeals of claim construction.28
`Senate Majority Leader Harry Reid suggested in early 2008 that he may bring
`a bill to the floor,29 but in April of that year he made clear that he would not.30
`On September 7, 2007, the House considered its bill and several amend-
`ments on the floor, with just one hour of debate allowed.31 The House floor
`speeches consisted of acknowledgments by the bill’s supporters that key issues
`had not yet been “fully dealt with,”32 admissions that it “ha[d] not enjoyed
`universal support,”33 and a series of promises to fix the problems in a House-
`Senate conference;34 denunciations by the bill’s opponents of the damages
`
`26 See S. 1145, secs. 2–5, 7–8, 13; H.R. 1908, secs. 3–6, 9–11. Two notable provisions of
`the 2006 Hatch-Leahy bill, Senate Bill 3818, were omitted from the 2007 Leahy-Hatch bill,
`Senate Bill 1145: (1) a requirement that the prevailing party in a patent-infringement suit be
`awarded its attorney’s fees and costs, unless “the position of the nonprevailing party . . . was
`substantially justified”; and (2) restrictions on the inequitable-conduct doctrine. See S. 3818,
`109th Cong. secs. 5(b)–(c) (2006). Senators Leahy and Hatch commented on these omis-
`sions when they introduced Senate Bill 1145 in the 110th Congress. See 153 Cong. Rec.
`S4685, S4691–92 (daily ed. Apr. 18, 2007).
`27 See 153 Cong. Rec. D1003 (daily ed. July 18, 2007); 153 Cong. Rec. D1012 (daily
`ed. July 19, 2007).
`28 See generally S. Rep. No. 110-259, at 64–77 (2008) (Minority Report).
`29 See 154 Cong. Rec. S17 (daily ed. Jan. 22, 2008); 154 Cong. Rec. S2707 (daily ed.
`Apr. 7, 2008).
`30 154 Cong. Rec. S2934 (daily ed. Apr. 10, 2008) (“[W]e are not going to do a pat-
`ent bill now. The chairman and ranking member could not work out what they wanted to
`bring to the floor.”).
`31 See generally 153 Cong. Rec. H10,270–307 (daily ed. Sept. 7, 2007). “There is only
`1 hour of debate. Those of us who are opposing this legislation haven’t even been given the
`right, which is traditional in this body, to control our own time.” See id. at H10,274 (state-
`ment of Rep. Rohrabacher).
`32 Id. at H10,272 (statement of Rep. Berman).
`33 Id. (statement of Rep. Coble).
`34 Id. at H10,282 (statement of Rep. Issa); id. at H10,283 (statement of Rep. Bono); id.
`at H10,284 (statement of Rep. Woolsey); id. at H10,294 (statement of Rep. Conyers); id.
`at H10,297 (statement of Rep. Berman); id. at H10,303 (statement of Rep. Pence).
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`language and the process by which the legislation was considered;35 and in-
`creasingly tense exchanges between the bill managers and opponents36—all
`indicia of a bill facing grave legislative difficulty. The bill passed the House
`by a vote of 220 to 175.37
`After this bruising battle, the House became inactive on patent-reform
`legislation for the next several years. It did not consider a bill again on the
`floor, or even in committee, until 2011.
`In the closing days of the 110th Congress, Senator Jon Kyl introduced
`an “alternative” patent-reform bill that omitted almost all the controversial
`provisions of the Leahy and Berman versions and proposed substantially
`revised post-grant review proceedings.38
`The House and Senate made several changes to the Leahy and Berman bills
`during the 110th Congress that proved to be of enduring importance. Both
`houses eliminated the provisions expanding the prior-user rights defense to
`all utility patents.39 The House bill eliminated the authorization of post-grant
`review of patents during their life, limiting challenges brought more than a
`year after issuance to those raising only anticipation and obviousness on the
`basis of patents and printed publications.40 Finally, the House bill was amended
`to provide that a patent could not be held invalid for failure to disclose the
`best mode of carrying out the invention.41
`
`35 Id. at H10,273–74 (statement of Rep. Rohrabacher) (“The opposition doesn’t even get
`the chance to argue our case adequately before this body or before the American people.”); id.
`at H10,276 (statement of Rep. Chabot); id. at H10,277 (statement of Rep. Manzullo) (“This
`is a disgrace.”); id. at H10,278 (statement of Rep. Gohmert); id. at H10,282 (statement of
`Rep. Hirono); id. at H10,283 (Rep. Johnson) (“I remain concerned about provisions that
`may dramatically restrict damages payable by infringers.”); id. at H10,294–95 (statement
`of Rep. Kaptur) (“We shouldn’t be drafting this in a manager’s amendment on the floor.”).
`36 See id. at H10,277 (statements of Reps. Manzullo and Conyers); id. at H10,280 (state-
`ments of Reps. Kaptur, Michaud, and Conyers); id. at H10,295–97; id. at H10,299 (statement
`of Rep. Conyers) (denouncing the bill’s opponents as “opposed to everything, anything”).
`37 Id. at H10,307.
`38 See Patent Reform Act of 2008, S. 3600, 110th Cong.; 154 Cong. Rec. S9982–93
`(daily ed. Sept. 27, 2008).
`39 See S. Rep. No. 110-259, at 16–17, 39 (2008) (noting elimination of prior-user rights
`expansion in 35 U.S.C. § 273 from Senate Bill 515 during committee markup); 153 Cong.
`Rec. at H10,294 (statement of Rep. Conyers) (noting elimination of prior-user rights expan-
`sion in 35 U.S.C. § 273 from House Bill 1908 on the House floor).
`40 See Patent Reform Act of 2007, H.R. 1908, 110th Cong., sec. 6, § 322. House Bill
`1908 was amended in committee to restrict post-grant review to the one-year period after a
`patent is issued. See id. (proposing to add § 322 to title 35 of the U.S. Code).
`41 See id. sec. 13.
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`C. The 111th Congress (2009–2010)
`Parallel bills were again introduced in the Senate and House early in 2009.42
`During the 111th Congress, however, the House did not report its bill from
`the committee. The Senate Judiciary Committee voted to report its bill on
`April 2, 2009, but it was not taken up on the floor.43
`Both bills as introduced replaced previously broad USPTO regulatory
`authority with a more limited authorization for the Office to adjust its fees
`by regulation.44 Additionally, during markup of the Senate bill, the commit-
`tee adopted a Leahy-Specter-Feinstein amendment that eliminated the most
`controversial provisions.45 The amendment replaced the bill’s changes to
`substantive damages standards with an approximate codification of summary
`judgment and judgment as a matter of law rules.46 It also limited the issues
`that could be raised in post-issuance proceedings more than a year after the
`grant of a patent to only patents and printed publications, eliminated limits
`on venue for civil actions, and restricted the availability of interlocutory ap-
`peals of claim construction.47
`Later that month, Senator Arlen Specter, the ranking Republican on the
`Senate Judiciary Committee, switched parties and became a Democrat.48 As a
`result, Senator Jeff Sessions became the ranking Republican on the Judiciary
`Committee.49 That June, David Kappos was nominated to be the Director of
`the USPTO. He was confirmed by the Senate in August.50
`During the 2009 committee markup, Senator Leahy had pledged to hold
`meetings to address concerns that USPTO staff had raised about the Of-
`fice’s ability to administer the post-issuance proceedings envisioned by the
`
`42 See Patent Reform Act of 2009, S. 515, 111th Cong.; Patent Reform Act of 2009,
`H.R. 1260, 111th Cong.
`43 See 155 Cong. Rec. S4309 (daily ed. Apr. 2, 2009).
`44 See S. 515 sec. 9; H.R. 1260 sec. 11.
`45 See S. Rep. No. 111-18, at 31 (2009).
`46 See id.
`47 See S. Rep. No. 111-18, at 16, 31, 35 (describing provisions of the Leahy-Specter-
`Feinstein amendment).
`48 See Specter’s Statement on His Decision to Switch Parties, N.Y. Times (Apr. 28, 2009),
`http://www.nytimes.com/2009/04/28/us/politics/28caucus.specter.html (noting Specter’s
`alignment with the Democratic party and his intention to run for re-election as a Demo-
`crat); Paul Kane, Specter Defection Leaves Committee in Flux at Crucial Time, Wash. Post
`(May 1, 2009), http://voices.washingtonpost.com/capitol-briefing/2009/05/specter_defec-
`tion_leaves_commi.html.
`49 Sessions Says He’s Looking for Judicial Restraint, Nat’l J., http://www.nationaljournal.
`com/njonline/sessions-says-he-s-looking-for-judicial-restraint-20090507 (last updated Jan.
`2, 2011).
`50 155 Cong. Rec. S9096–97 (daily ed. Aug. 7, 2009).
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`bill.51 The meetings were held at the USPTO later that year, and, as a result,
`those provisions were substantially revised.52 The principal changes included
`allowing the USPTO to operate inter partes reexaminations as adjudicative
`proceedings, elevating the threshold for instituting inter partes and post-grant
`proceedings, and adding various procedural protections for patent owners to
`both proceedings.53
`Other revisions were made throughout the Senate bill, eventually resulting
`in a Leahy-Sessions managers’ amendment presented in March 2010.54 The
`amendment made several important changes, including: (1) rewriting the
`provision governing the award of enhanced damages for willful infringement
`to more closely follow the Federal Circuit’s In re Seagate Technology, LLC55
`decision; (2) eliminating the remaining authorization for interlocutory appeals
`of claim construction; (3) adding a proposed § 257 of title 35, authorizing
`supplemental examination of patents; (4) adding a provision repealing the qui
`tam action for violations of the false-marking statute, 35 U.S.C. § 292; and
`(5) reintroducing language striking various deceptive-intent restrictions in title
`35, which proposal had previously appeared in § 5(c) of House Bill 2795.56
`Senators Leahy and Sessions were unable to secure floor time from the Senate
`leadership for consideration of the revised bill in 2010, and competing and
`irreconcilable objections from other Senators precluded reaching unanimous
`consent to consider it under a time agreement,57 effectively delaying action
`until the next Congress.
`
`51 157 Cong. Rec. S1040 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl).
`52 Id.
`53 See id. at S1041 (describing changes made to the legislation based on issues raised by
`the USPTO).
`54 S. 515, 111th Cong. (2009) (amendment in the nature of a substitute). There is no
`official public version of the 2010 managers’ amendment. The amendment was widely
`distributed, however, and was effectively made public on various patent weblogs. See Press
`Release, Senator Patrick Leahy, Leahy, Sessions, Hatch, Schumer, Kyl, Kaufman Unveil
`Details of Patent Reform Agreement (Mar. 4, 2010) available at http://leahy.senate.gov/
`press/press_releases/release/?id=8b0f5bb3-121b-484a-b0b7-092d7bdee1ac.
`55 497 F.3d 1360 (Fed. Cir. 2007).
`56 See Patent Reform Act of 2010, S. 515, 111th Cong., secs. 2(k), 10, 17(a)(3)(B), (2009)
`(amendment in the nature of a substitute) (outlining changes to supplemental examination,
`false-marking statute, and deceptive intent restrictions); see also Press Release, Sen. Patrick
`Leahy, supra note 54 (providing background information on managers’ amendment, includ-
`ing effect of willfulness on damages, elimination of interlocutory appeals authorization, and
`possibility of supplemental examinations).
`57 Compare S. Doc. No. 112-1, at 12, 20–21 (2011) (describing Senate Rule XIV’s re-
`quirement of unanimous consent to immediately consider legislation and Senate Rule XXII
`which outlines the procedure for regular order consideration of legislation and requires a
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`D. The 112th Congress (2011–2012)
`On January 25, 2011, Senator Leahy introduced Senate Bill 23, which was
`substantially identical to the 2010 managers’ amendment, except that it added
`a section banning patents on strategies for complying with the tax code.58
`Senator Leahy immediately listed the bill for the committee’s markup agenda,
`and it was reported on February 3, 2011.59 The committee made significant
`changes, including adding provisions affecting state court and Federal Circuit
`intellectual-property jurisdiction60 and eliminating the remaining provision
`concerning enhanced damages for willful infringement.61
`Near the end of the 111th Congress in 2010, sponsors had calculated
`that the Senate leadership would be more likely to bring the patent bill to
`the floor in the new Congress if it was reported by the Judiciary Committee
`quickly, before other committees had the chance to report measures that
`would compete with it for floor time.62 This bet appeared to pay off and, on
`February 28, 2011, the bill was brought to the floor.
`
`three-fifths affirmative vote to invoke cloture and end debate on legislation, thereby moving
`to a final vote), with H.R. Doc. No. 110-162, at 426, 461 (2009) (stating the Rules Com-
`mittee shall set rules related to the order of business in the House). Because of the procedural
`hurdles to Senate consideration of legislation, even if a bill is generally popular, the objection
`of a single Senator can usually stop the bill. See Christopher M. Davis et al., Proposals
`to Change the Operation of Cloture in the Senate 3 (Congressional Research Service,
`2010), available at http://www.fas.org/sgp/crs/misc/R41342.pdf.
`58 Patent Reform Act of 2011, S. 23, 112th Cong. sec. 14 (2011). Additionally, two
`minor sections of the managers’ amendment—which also appeared as sections 13 and 15
`of the 111th Congress’s Senate Bill 515, as introduced and reported—were enacted into
`law in 2010 and 2011, and thus were not included in Senate Bill 23. See Patent Cases Pilot
`Program, Pub. L. No. 111-349, § 1, 124 Stat. 3674, 3674 (2011); Telework Enhancement
`Act of 2010, Pub. L. No. 111-292, sec. 3, § 5711, 124 Stat. 3165, 3172 (2010) (to be codi-
`fied at 5 U.S.C. § 5711).
`59 See Press Release, Senator Patrick Leahy, Senate Judiciary Committee Unanimously Votes
`To Send Bipartisan Patent Reform Legislation To Full Senate (Feb. 3, 2011) available at http://
`leahy.senate.gov/press/press_releases/release/?id=aeaee535-493d-4d0b-ac81-69543234f2f0.
`60 See Leahy-Smith America Invents Act, Pub. L. No. 112-29, sec. 19, 125 Stat. 284,
`331–32 (2011) (to be codified at 28 U.S.C. §§ 1295(a)(1), 1338(a), 1454).
`61 Joseph R. Carnicella, Patent Reform Act of 2011 Presented to 112th Congress, PIT IP
`Tech Blog (Feb. 3, 2011), http://pitiptechblog.com/2011/02/.
`62 See Manus Cooney & Marla Grossman, Patent Reform: The Senate Makes Its Move, IP
`Watchdog, http://www.ipwatchdog.com/2011/03/07/patent-reform-the-senate-makes-
`its-move/id=15688/ (last updated Mar. 9, 2011); Press Release, Senator Patrick Leahy,
`Bipartisan Group Of Senators Urge Action On Patent Reform Legislation (Sept. 15, 2010),
`available at http://leahy.senate.gov/press/press_releases/release/?id=9c403942-6239-4e45-
`9cdb-1265e65ff6bc.
`
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`A Guide to the Legislative History of the America Invents Act
`
`445
`
`On March 1, 2011, the Senate adopted a floor managers’ amendment to the
`bill that made the following significant changes: (1) eliminating the remaining
`provisions that codified summary-judgment standards in damages cases and
`that codified a Federal Circuit decision concerning transfer of venue;63 and
`(2) adding section 18, authorizing post-issuance review of business-method
`patents, and a revolving fund giving the USPTO direct access to its user fees.64
`The floor managers’ amendment also renamed the bill, previously always
`identified as the “Patent Reform Act,” as the “America Invents Act.”65 Once
`the managers’ amendment was adopted, the bill no longer contained any
`provisions affecting the award of damages, venue in civil actions for infringe-
`ment, or interlocutory appeals of claim construction—three of the most
`controversial features of the 2007 versions. On March 8, 2011, after defeating
`an amendment to strike the bill’s first-to-file provisions,66 the Senate adopted
`Senate Bill 23 by a vote of ninety-five to five.67
`In November 2010, control of the House of Representatives had reverted
`to Republicans, and Representative Lamar Smith, who had introduced the
`first version of the AIA in 2005, became the Chairman of the House Judi-
`ciary Committee.68 On March 30, 2011, following passage of the Senate bill,
`Representative Smith introduced his own version of the AIA.69 Two weeks
`later, the House Judiciary Committee voted to report the Smith bill, and the
`full House passed it on June 23 by a vote of 304 to 117.70 The House bill’s
`significant departures from the Senate-passed bill included: (1) adding a
`limited prior-user right that applies to all utility patents (partially restoring a
`
`63 See In re TS Tech USA Corp., 551 F.3d 1315, 1321–22 (Fed. Cir. 2008).
`64 157 Cong. Rec. S1366–67 (daily ed. Mar. 8, 2011).
`65 The bill’s title was changed again in the House of Representatives to the “Leahy-Smith
`America Invents Act.” See § 1, 125 Stat. at 284. For simplicity’s sake, the bill is identified in
`this Article as the “America Invents Act,” or “AIA.” Even Senator Leahy tends to refer to the
`bill as the America Invents Act. See, e.g., 157 Cong. Rec. S5440 (daily ed. Sept.