49–006 

109TH CONGRESS REPORT " ! HOUSE OF REPRESENTATIVES 2d Session 109–673 

PILOT PROGRAMS FOR PATENT JUDGES 

SEPTEMBER 21, 2006.—Committed to the Committee of the Whole House on the 

State of the Union and ordered to be printed 

Mr. SENSENBRENNER, from the Committee on the Judiciary, 

submitted the following 

R E P O R T 

[To accompany H.R. 5418] 

[Including cost estimate of the Congressional Budget Office] 

The Committee on the Judiciary, to whom was referred the bill 

(H.R. 5418) to establish a pilot program in certain United States 

district courts to encourage enhancement of expertise in patent 

cases among district judges, having considered the same, report favorably thereon with an amendment and recommend that the bill 

as amended do pass. 

The amendment is as follows: 

Strike all after the enacting clause and insert the following: 

SECTION 1. PILOT PROGRAM IN CERTAIN DISTRICT COURTS. 

(a) ESTABLISHMENT.— 

(1) IN GENERAL.—There is established a program, in each of the United States 

district courts designated under subsection (b), under which— 

(A) those district judges of that district court who request to hear cases 

under which one or more issues arising under any Act of Congress relating 

to patents or plant variety protection must be decided, are designated by 

the chief judge of the court to hear those cases; 

(B) cases described in subparagraph (A) are randomly assigned to the 

judges of the district court, regardless of whether the judges are designated 

under subparagraph (A); 

(C) a judge not designated under subparagraph (A) to whom a case is assigned under subparagraph (B) may decline to accept the case; and 

(D) a case declined under subparagraph (C) is randomly reassigned to one 

of those judges of the court designated under subparagraph (A). 

(2) SENIOR JUDGES.—Senior judges of a district court may be designated 

under paragraph (1)(A) if at least 1 judge of the court in regular active service 

is also so designated. 

(3) RIGHT TO TRANSFER CASES PRESERVED.—This section shall not be construed to limit the ability of a judge to request the reassignment of or otherwise 

transfer a case to which the judge is assigned under this section, in accordance 

with otherwise applicable rules of the court. 


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(b) DESIGNATION.—The Director of the Administrative Office of the United States 

Courts shall, not later than 6 months after the date of the enactment of this Act, 

designate not less than 5 United States district courts, in at least 3 different judicial 

circuits, in which the program established under subsection (a) will be carried out. 

The Director shall make such designation from among the 15 district courts in 

which the largest number of patent and plant variety protection cases were filed in 

the most recent calendar year that has ended, except that the Director may only 

designate a court in which—

(1) at least 10 district judges are authorized to be appointed by the President, 

whether under section 133(a) of title 28, United States Code, or on a temporary 

basis under other provisions of law; and 

(2) at least 3 judges of the court have made the request under subsection 

(a)(1)(A). 

(c) DURATION.—The program established under subsection (a) shall terminate 10 

years after the end of the 6-month period described in subsection (b). 

(d) APPLICABILITY.—The program established under subsection (a) shall apply in 

a district court designated under subsection (b) only to cases commenced on or after 

the date of such designation. 

(e) REPORTING TO CONGRESS.—

(1) IN GENERAL.—At the times specified in paragraph (2), the Director of the 

Administrative Office of the United States Courts, in consultation with the chief 

judge of each of the district courts designated under subsection (b) and the Director of the Federal Judicial Center, shall submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of 

the Senate a report on the pilot program established under subsection (a). The 

report shall include—

(A) an analysis of the extent to which the program has succeeded in developing expertise in patent and plant variety protection cases among the 

district judges of the district courts so designated; 

(B) an analysis of the extent to which the program has improved the efficiency of the courts involved by reason of such expertise; 

(C) with respect to patent cases handled by the judges designated pursuant to subsection (a)(1)(A) and judges not so designated, a comparison between the 2 groups of judges with respect to—

(i) the rate of reversal by the Court of Appeals for the Federal Circuit, of such cases on the issues of claim construction and substantive 

patent law; and 

(ii) the period of time elapsed from the date on which a case is filed 

to the date on which trial begins or summary judgment is entered; 

(D) a discussion of any evidence indicating that litigants select certain of 

the judicial districts designated under subsection (b) in an attempt to ensure a given outcome; and 

(E) an analysis of whether the pilot program should be extended to other 

district courts, or should be made permanent and apply to all district 

courts. 

(2) TIMETABLE FOR REPORTS.—The times referred to in paragraph (1) are—

(A) not later than the date that is 5 years and 3 months after the end 

of the 6-month period described in subsection (b); and 

(B) not later than 5 years after the date described in subparagraph (A). 

(3) PERIODIC REPORTING.—The Director of the Administrative Office of the 

United States Courts, in consultation with the chief judge of each of the district 

courts designated under subsection (b) and the Director of the Federal Judicial 

Center, shall keep the committees referred to in paragraph (1) informed, on a 

periodic basis while the pilot program is in effect, with respect to the matters 

referred to in subparagraphs (A) through (E) of paragraph (1). 

(f) AUTHORIZATION FOR TRAINING AND CLERKSHIPS.—In addition to any other 

funds made available to carry out this section, there is authorized to be appropriated not less than $5,000,000 in each fiscal year for—

(1) educational and professional development of those district judges designated under subsection (a)(1)(A) in matters relating to patents and plant variety protection; and 

(2) compensation of law clerks with expertise in technical matters arising in 

patent and plant variety protection cases, to be appointed by the courts designated under subsection (b) to assist those courts in such cases. 

Amounts made available pursuant to this subsection shall remain available until expended. 


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PURPOSE AND SUMMARY

The purpose of H.R. 5418, a bill to ‘‘establish a pilot program in 

certain United States district courts to encourage enhancement of 

expertise in patent cases among district judges’’ is to authorize the 

creation of a patent specialists’ pilot program at the U.S. district 

court level, which is intended to improve the adjudication of patent 

disputes. The bill’s sponsors intend for the periodic and final results of this ten year study to be used to identify and pursue additional improvements in the trial level adjudication of patent cases. 

The ultimate goal of H.R. 5418 is to make the resolution of patent 

issues at the trial level more efficient, predictable, and reliable. 

BACKGROUND AND NEED FOR LEGISLATION

‘‘One of the most significant problems facing the United 

States patent system is the spiraling cost and complexity 

associated with enforcement of patent rights.’’ (The Advisory Commission on Patent Law Reform, Report to the 

Secretary of Commerce 75 (1992)) 

As the above quote indicates, the problems associated with providing efficient, stable, and predictable adjudication of patent disputes present issues of long-standing concern. The complex and dynamic nature of patent law along with the increasing sophistication 

of technologies, which tend to underlie determinations of prior art 

and whether material is patentable, present unique challenges to 

those responsible for adjudicating these disputes. These are particularly acute at the trial court level where judges tend to be generalists and lay jurors tend to be unfamiliar with patent law concepts and untrained in the sophisticated technologies that frequently lie at the heart of litigation. 

Over the years, judges, patent professionals and patent owners 

have identified a number of judicial and litigation reforms without 

endorsing one proposal to the exclusion of others. Still, the vast 

majority of structural reforms have something in common: they 

share a widespread perception that patent litigation has become 

too expensive, too time-consuming, and too uncertain. 

The value of a United States patent 

The five rights traditionally associated with owing a patent are 

the right to make, use, sell, import, and offer to sell the patented 

invention. Most of the value of a patent is derived not from the conveyance of a positive right to make or use the invention; rather, it 

is derived from the ability to exercise the right to sue an infringer, 

to obtain damages for infringement, and to obtain injunctions 

against further infringement. These rights are frustrated and/or effectively denied when the judicial system is unable to efficiently 

process and correctly resolve patent cases. 

One measure of the value of patents is the increasing role that 

intellectual property, especially patents, plays in the valuation of 

American corporations. As recently as 1978, intangible assets, such 

as intellectual property, accounted for 20 percent of corporate assets with the vast majority of value (80 percent) attributed to tangible assets such as facilities and equipment. By 1997, the trend 

reversed: 73 percent of corporate assets were intangible and only 

27 percent were tangible. 


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An increased recognition that the majority of a company’s value 

resides in the ownership and management of intellectual property 

has raised the stakes for litigants and public officials. It is in the 

interests of consumers and competitors that invalid patents not be 

issued. To the extent a patent is invalid, it should not be given effect. It is in the interests of patent owners that they be allowed to 

benefit from the full value of their industry and creativity. 

Characteristics of the United States Patent Dispute Adjudicative 

System 

U.S. district courts are trial courts that possess general civil and 

criminal jurisdiction. Title 28 of the United States Code grants U.S. 

district courts exclusive, original jurisdiction of ‘‘any civil action 

arising under any Act of Congress relating to patents.’’ Within the United States, the adjudication of patent interpretation and enforcement disputes typically commences with the filing 

of a case in an appropriate U.S. district court. Patent cases constitute an insubstantial number of the total cases filed. Of that 

amount, the overwhelming majority of cases are typically settled or 

decided by motion with the rest, approximately 100 cases, going to 

trial in a given year. Due to their novelty and complexity, the cases 

that are tried tend to be resource-intensive and account for a disproportionate share of district court judges’ time and effort. As with 

other civil and criminal cases, the standard practice is to randomly 

assign patent cases to the various judges within a district. 

Given this background—the relative infrequency of patent litigation, early settlement of most suits, and random assignment of 

cases—district court judges generally receive little exposure to actual patent claim trials. One judge from the U.S. District Court in 

Chicago, historically one of the top five busiest district courts in 

terms of patent case filings, reported his personal patent case 

workload never exceeded five percent of his calendar. 

In the United States, the right of a patent litigant to demand a 

jury trial is well-established. Indeed, the 7th Amendment to the 

U.S. Constitution guarantees that right. Nevertheless, fewer than 

three percent of all U.S. patent cases are actually decided by jury. 

Congress established the Court of Appeals for the Federal Circuit 

(CAFC) in 1982, motivated, in large part, by the desire to restrict 

the practice of forum shopping in order to achieve a standardized 

patent practice across the nation. As a result, all appeals of patent 

cases litigated in federal district courts are now directed to the 

CAFC as opposed to the twelve circuit courts of appeals, as was the 

prior practice. While some commentators have taken issue with 

what they regard as a pro-patent holder inclination by the CAFC, 

there can be little doubt that the CAFC has succeeded in the objective of ameliorating many of the negative effects of forum shopping. 

The CAFC’s practice is to apply a de novo review standard in claim 

construction. 

Problems 

It has been noted the right of exclusivity, which is critical to protecting the economic benefit and inherent value of a patent, can be 

protected only ‘‘if patent owners have effective and inexpensive access to an efficient judicial system’’ to enforce their patent. There 

is substantial evidence that the adjudication of patent cases is neiVerDate Aug 31 2005 01:01 Sep 23, 2006 Jkt 049006 PO 00000 Frm 00004 Fmt 6659 Sfmt 6602 E:\HR\OC\HR673.XXX HR673

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1On May 18, 2006, Kimberly A. Moore was nominated by President George W. Bush to serve 

as a United States Circuit Judge for the Federal Circuit. On September 5, 2006, she was confirmed to the court. 2 ‘‘Aggressive Patent Litigants Pose Growing Threat To Big Business,’’ WSJ, A1, September 

14, 2005. 

ther effective nor inexpensive. The Honorable James F. Holderman 

of the District Court in Chicago has written of what he perceives 

to be ‘‘institutional ineptitude’’ in the manner that district courts 

enforce patent rights. 

According to Kimberly A. Moore,1 Associate Professor of Law at 

George Mason University, and the author of an article entitled, 

‘‘Are District Court Judges Equipped to Resolve Patent Cases?,’’ ‘‘district court judges improperly construe patent claim terms in 33 

percent of the cases appealed to the Federal Circuit.’’ This national 

reversal rate contrasts dramatically with the less than 10 percent 

overall reversal rate for all other types of cases, both civil and 

criminal, which are reviewed by the regional Courts of Appeals. 

Further, Professor Moore has reported that her ‘‘data show that 

errors in district court claim constructions require reversing or 

vacating judgments in 81 percent of these cases.’’ She goes on to 

suggest that the adjudication system would be improved if an expedited appeal of claim construction issues could be provided to the 

CAFC rather than requiring district judges to proceed with a 

lengthy and expensive patent litigation that is premised on a ‘‘frequently erroneous claim construction.’’ There is a growing perception that non-traditional small litigants 

(commonly derided as ‘‘patent trolls’’) have begun to use increasingly aggressive litigation tactics to assert tenuous but expensive 

patent claims. A September 14, 2005, article in the Wall Street 

Journal described a speculative environment that has resulted in 

some patent cases having their litigation expenses financed by outside investors. The report stated, ‘‘[l]ured by the potential returns, 

hedge funds and other institutional investors now are bankrolling 

businesses that buy up patent portfolios. More law firms, including 

some branching out from product-liability and malpractice work, 

are taking cases on a contingency basis.’’ 2

Support for H.R. 5418 

The Judicial Conference has expressed no formal position on the 

case assignment mechanism proposed in H.R. 5418. Nevertheless, 

the amendment in the nature of a substitute reported by the Committee contained changes intended to ensure the continued random 

assignment of cases among judges in participating districts and to 

prevent forum-shopping by litigants. A number of patent related 

trade associations, which include AIPLA, IPO, BSA, CEA, ACT, 

BIO, and PhRMA have expressed support for the enactment of 

H.R. 5418, as amended by the Committee. 

HEARINGS

On October 6, 2005, the Subcommittee on Courts, the Internet, 

and Intellectual Property conducted an oversight hearing entitled 

‘‘Improving Federal Court Adjudication of Patent Cases.’’ The subject of that hearing was a draft bill authored by Rep. Darrell Issa. 

Testimony was received from four witnesses who testified as individuals and not as representatives of an organization. The witVerDate Aug 31 2005 01:01 Sep 23, 2006 Jkt 049006 PO 00000 Frm 00005 Fmt 6659 Sfmt 6602 E:\HR\OC\HR673.XXX HR673

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nesses included a Federal district court judge, a professor of law, 

and two private attorneys, one who possessed extensive experience 

in patent litigation and a second that had unique institutional insight into the structural considerations impacted by various reform 

proposals. H.R. 5418 was subsequently introduced by Reps. Darrell 

Issa and Adam Schiff on May 18, 2006. 

COMMITTEE CONSIDERATION

On July 27, 2006, the Subcommittee on Courts, the Internet, and 

Intellectual Property met in open session and ordered favorably reported the bill, H.R. 5418, without amendment by voice vote, a 

quorum being present. On September 13, 2006, the Committee met 

in open session and ordered favorably reported the bill, H.R. 5418 

with an amendment by voice vote, a quorum being present. 

VOTE OF THE COMMITTEE

In compliance with clause 3(b) of rule XIII of the Rules of the 

House of Representatives, the Committee notes there were no recorded votes during the consideration of H.R. 5418. 

COMMITTEE OVERSIGHT FINDINGS

In compliance with clause 3(c)(I) of rule XIII of the Rules of the 

House of Representatives, the Committee reports that the findings 

and recommendations of the Committee, based on oversight activities under clause 2(b)(1) of rule X of the Rules of the House of Representatives, are incorporated in the descriptive portions of this report. 

NEW BUDGET AUTHORITY AND TAX EXPENDITURES

Clause 3(c)(2) of rule XIII of the Rules of the House of Representatives is inapplicable because this legislation does not provide new 

budgetary authority or increased tax expenditures. 

CONGRESSIONAL BUDGET OFFICE COST ESTIMATE

In compliance with clause 3(c)(3) of rule XIII of the Rules of the 

House of Representatives, the Committee sets forth, with respect to 

the bill, H.R. 5418, the following estimate and comparison prepared 

by the Director of the Congressional Budget Office under section 

402 of the Congressional Budget Act of 1974: 

SEPTEMBER 20, 2006. 

Hon. F. JAMES SENSENBRENNER Jr., 

Chairman, Committee on the Judiciary, 

House of Representatives, Washington, DC. 

DEAR MR. CHAIRMAN: The Congressional Budget Office has prepared the enclosed cost estimate for H.R. 5418, a bill to establish 

a pilot program in certain United States district courts to encourage enhancement of expertise in patent cases among district 

judges. 

If you wish further details on this estimate, we will be pleased 

to provide them. The CBO staff contact is Daniel Hoople. 

Sincerely, 

DONALD B. MARRON, 

Acting Director. 


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Enclosure. 

H.R. 5418—A bill to establish a pilot program in certain United 

States district courts to encourage enhancement of expertise in 

patent cases among district judges 

Summary: H.R. 5418 would authorize the appropriation of $5 

million per year to create a pilot program within the federal court 

system to increase the expertise of district judges presiding over 

patent and plant variety protection cases. CBO estimates that implementing H.R. 5418 would cost $23 million over the 2007–2011 

period, subject to appropriation of the necessary amounts. Enacting 

H.R. 5418 would have no effect on direct spending or revenues. 

H.R. 5418 contains no intergovernmental or private-sector mandates as defined in the Unfunded Mandates Reform Act (UMRA) 

and would impose no direct costs on state, local, or tribal governments. 

Estimated cost to the Federal Government: The estimated budgetary impact of the bill is shown in the following table. The cost 

of this legislation falls within budget function 750 (administration 

of justice). 

By fiscal year, in millions of dollars— 

2007 2008 2009 2010 2011 

CHANGES IN SPENDING SUBJECT TO APPROPRIATION 

Authorization Level .............................................................................. 5 5 5 5 5 

Estimated Outlays ............................................................................... 4 4 5 5 5 

Basis of estimate: Assuming that H.R. 5418 is enacted near the 

beginning of fiscal year 2007 and that the authorized amounts will 

be appropriated for each year, CBO estimates that implementing 

this bill would cost $4 million in 2007 and $23 million over the 

2007–2011 period. 

H.R. 5148 would authorize the appropriation of $5 million per 

year to educate judges who accept patent and plant variety protection cases. Appropriated amounts could also be used to hire additional staff with expertise in such matters. The bill would direct 

the Administrative Office of the U.S. Courts to establish a pilot 

program, in at least five U.S. district courts, that would allow 

judges to request cases involving alleged violations of patent or 

plant variety protection law. CBO estimates that this procedural 

change would have no significant effect on the federal budget. 

Intergovernmental and private-sector impact: H.R. 5418 contains 

no intergovernmental or private-sector mandates as defined in 

UMRA and would not affect the budgets of state, local, or tribal 

governments. 

Estimate prepared by: Federal Costs: Daniel Hoople. Impact on 

State, Local, and Tribal Governments: Melissa Merrell. Impact on 

the Private Sector: Paige Piper/Bach. 

Estimate approved by: Robert A. Sunshine, Assistant Director for 

Budget Analysis. 

PERFORMANCE GOALS AND OBJECTIVES

Pursuant to clause 3(c)(4) of rule XIII of the Rules of the House 

of Representatives, H.R. 5418 will require the Director of the Administrative Office of the Courts to select five district courts to parVerDate Aug 31 2005 01:01 Sep 23, 2006 Jkt 049006 PO 00000 Frm 00007 Fmt 6659 Sfmt 6602 E:\HR\OC\HR673.XXX HR673

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3P.L. No. 109–2. 

ticipate in a 10-year pilot program that is intended to provide enhanced expertise among designated judges in the trial-level adjudication of patent cases. 

CONSTITUTIONAL AUTHORITY STATEMENT

Pursuant to rule XI, clause 2(l)(4) of the Rules of the House of 

Representatives, the Committee finds the authority for this legislation in Article I, section 8 of the Constitution. 

SECTION-BY-SECTION ANALYSIS AND DISCUSSION

The Committee reported H.R. 5418, a bill ‘‘[t]o establish a pilot 

program in certain United States district courts to encourage enhancement of expertise in patent cases among district judges,’’ with 

an amendment in the nature of a substitute that included non-controversial agreed-upon changes. 

The following three paragraphs describe the bill as introduced 

and reported, without amendment, by the Subcommittee on Courts, 

the Internet, and Intellectual Property on July 27, 2006. 

The succeeding two paragraphs describe specific changes included in the substitute amendment reported favorably by the 

Committee on September 13, 2006. 

Sec. 1. Pilot Program In Certain District Courts. This section requires the Director of the Administrative Office of the Courts to 

designate not fewer than five U.S. district courts to participate in 

a 10-year pilot program that would permit district judges to request assignment of patent-related cases, permit the Chief Judge 

to designate requesting judges to hear such cases, allow ‘‘undesignated’’ judges to decline such cases, and require random assignment of such cases to either all of the judges of the district court 

or only the designated judges in certain instances. This section authorizes not less than $5,000,000 for each of the 

10 fiscal years to be expended for the educational and professional 

development of designated judges and to compensate law clerks 

who possess expertise in technical matters that arise in patent 

cases. The section also requires the Director of the Administrative 

Office of the Courts to compile information on the pilot program 

and to provide periodic reports to the Judiciary Committees of the 

House of Representatives and the Senate. 

To mitigate the concern that pilot districts might become attractive as magnets for forum-shopping litigants, the amendment in 

the nature of a substitute included changes to section 1(b) of the 

introduced version of this legislation. Specifically, section 1(b) was 

divided into two subsections: section 1(b)(1) conditions pilot district 

designation on a requirement the district be authorized ‘‘at least 10 

district judges . . . to be appointed by the President while section 

1(b)(2) requires ‘‘at least three judges of the court’’ to make the request to be designated as patent specialists pursuant to the bill. 

Additional refinements were made to the reporting requirements 

contained in the legislation as introduced. Specifically, section 1(e) 

of the amendment in the nature of a substitme adopted by the 

Committee added language that was included in the Class Action 

Fairness Act.3 This language requires the Director of the Administrative Office of the Courts to consult with the Director of the FedVerDate Aug 31 2005 01:01 Sep 23, 2006 Jkt 049006 PO 00000 Frm 00008 Fmt 6659 Sfmt 6602 E:\HR\OC\HR673.XXX HR673

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eral Judicial Center in addition to consulting with the chief judge 

of each participating district in preparing the required reports for 

Congress. The amendment also adds elements to the report, including comparisons of: (a) the rate of reversal by the Federal Circuit 

on issues of claim construction and substantive patent law among 

designated and non-designated judges; (b) the time to final disposition by trial or summary judgment among designated and non-designated judges; and (c) whether any evidence indicates that litigants have sought to ‘‘ensure a given outcome’’ by the use of forumshopping in the pilot districts. 

CHANGES IN EXISTING LAW BY THE BILL, AS REPORTED

In compliance with clause 3(e) of rule XIII of the Rules of the 

House of Representatives, the Committee notes H.R. 3509 makes 

no changes to existing law. 

MARKUP TRANSCRIPT

BUSINESS MEETING 

WEDNESDAY, SEPTEMBER 13, 2006 

HOUSE OF REPRESENTATIVES, 

COMMITTEE ON THE JUDICIARY, 

Washington, DC. 

The Committee met, pursuant to notice, at 10:10 a.m., in Room 

2141, Rayburn House Office Building, the Honorable F. James Sensenbrenner, Jr. (Chairman of the Committee) presiding. 

Chairman SENSENBRENNER. The Committee will be in order. And 

a working quorum, but not a reporting quorum, is present. 

Before starting up, let me say that it is not the intention of the 

Chair to call up the FISA bill today, but we will do three bills: the 

‘‘Firearms Corrections and Improvements Act,’’ the ‘‘Patent Expertise Among District Judges Act,’’ and the ‘‘Wright Amendment 

Modernization Act.’’

Since we do not have a reporting quorum present, the Chair now 

says the next item on the agenda is H.R. 5418, to establish a pilot 

program in certain United States District Courts to encourage enhancement of expertise in patent cases among District judges. 

The Chair recognizes the Chair of the Subcommittee on Courts, 

the Internet, and Intellectual Property, the gentleman from Texas, 

Mr. Smith, for a motion. 

Mr. SMITH. Mr. Chairman, the Subcommittee on Courts, the 

Internet, and Intellectual Property reports favorably the bill, H.R. 

5418, and moves its favorable recommendation to the full House. 

Chairman SENSENBRENNER. Without objection, H.R. 5418 will be 

considered as read and open for amendment at any point. 

[The bill, H.R. 5418, follows:] 


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Chairman SENSENBRENNER. And the Chair recognizes the gentleman from Texas, Mr. Smith, to strike the last word. 

Mr. SMITH. Thank you, Mr. Chairman. I do move to strike the 

last word. 

Chairman SENSENBRENNER. The gentleman is recognized for 5 

minutes. 

Mr. SMITH. Mr. Chairman, patent litigation is too expensive, too 

time consuming and too unpredictable. H.R. 5418 addresses these 

concerns by authorizing the establishment of a pilot program in 

certain U.S. District Courts to encourage the development of expertise in patent cases among District judges. On average, less than 

1 percent of all cases in U.S. District Courts are patent cases and 

District Court judges have a patent case to through trial only once 

every 7 years. 

Nevertheless, these cases account for nearly 10 percent of complex cases and demand a disproportionate share of attention and 

judicial resources. Not surprisingly, the rate of reversal at the Federal circuit remains uncomfortably high. The idea behind H.R. 5418 

is simple: Practice makes perfect, or at least better. 

Judges who are able to focus more attention on patent cases are 

more likely to render decisions that will not be reversed on appeal. 

This bill is a product of an extensive oversight hearing on proposals 

to improve patent litigation that was conducted by the Subcommittee last fall. Introduced by Representatives Issa and Schiff, 

the bill was unanimously reported by the Subcommittee on July 27. 

H.R. 5418 will require the director of the Administrative Office 

of the Courts to select five District Courts to participate in the 10- 

year program. It contains provisions designed to ensure the continued random assignment of cases among the specialized courts so as 

to prevent the pilot districts from becoming magnets for forumshopping litigants. 

The legislation also would provide the Committee and the courts 

with the opportunity to assess on a periodic basis: one, whether the 

program succeeds in developing greater expertise among participating District judges; two, the extent the program contributes to 

improving judicial efficiency in deciding these cases; and three, 

whether the program should be extended, expanded or made permanent. 

Mr. Chairman, I understand the sponsors have continued to 

work with the stakeholders on the bill and that Representative Issa 

plans to offer an amendment that contains agreed-upon changes. 

H.R. 5418 is a good bill and one that I believe deserves our support, Mr. Chairman. I want to thank Mr. Issa and Mr. Schiff again 

for introducing this legislation. 

Mr. Chairman, I yield back the balance of my time. 

Chairman SENSENBRENNER. The gentleman from California, Mr. 

Berman, is recognized for 5 minutes for an opening statement. 

Mr. BERMAN. Thank you, Mr. Chairman. I am sorry I didn’t get 

here to hear my Chairman’s opening statement. 

Chairman SENSENBRENNER. The Subcommittee Ranking Member 

is recognized. 

Mr. CONYERS. No, I yield to Mr. Berman of the Subcommittee. 

Chairman SENSENBRENNER. Then I will re-set the clock for your 

benefit, too. 

Mr. BERMAN. Thank you, Mr. Chairman. 


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Let me make it quick. I think this is a very interesting idea that 

Mr. Issa has come up with. He and Mr. Schiff have introduced and 

adapted the legislation to deal with some of our concerns about this 

becoming a way of forum-shopping in terms of amendments that 

they are going to propose. It is a pilot program to try and enhance 

the quality of judicial decision-making in complicated patent cases. 

My biggest reservation about the bill is that it is not part of comprehensive patent reform legislation. While I think this is a good 

idea or an interesting idea and it should be tried, I think the Committee’s primary responsibility should be, and still is, marking up 

a comprehensive patent reform legislation which deals with many 

of the problems that now exist in the patent system. 

With that, I will yield back. Thank you, Mr. Chairman. 

Chairman SENSENBRENNER. Without objection, all Members’

opening statements may be placed in the record at this point. 

Are there amendments? The gentleman from California, Mr. 

Issa? 

Mr. ISSA. Mr. Chairman, I have an amendment at the desk in 

the form of a substitute. 

Chairman SENSENBRENNER. The clerk will report the amendment 

in the nature of a substitute. 

The CLERK. ‘‘Amendment in the nature of a substitute to H.R. 

5418, offered by Mr. Issa of California and Mr. Schiff of California. 

Strike all after the enacting clause and insert the following’’——

[The amendment follows:] 


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Chairman SENSENBRENNER. Without objection, the amendment is 

considered as read. The gentleman from California, Mr. Issa, is recognized for 5 minutes. 

Mr. ISSA. Thank you, Mr. Chairman. 

I want to reiterate my thanks to the Chairman of the Subcommittee, Mr. Smith; certainly, the Ranking Member, Mr. Berman; and my partner in this piece of legislation, Mr. Schiff of California. 

This was an idea that came out of our hearings, came out of experience, came out of the problems we heard both from the industry and from District Court judges throughout the country, but it 

became a worthwhile piece of legislation through the cooperative 

effort on a bipartisan basis, and the input of District Court judges, 

of the American Intellectual Property Law Association, of the BIO 

organization, of the Business Software Alliance, of the California 

Health Care Institute, the Consumer Electronics Association, the 

Information Technology Industry Council, the Intellectual Property 

Owners Association, the Pharmaceutical Research and Manufacturers Association, the Software Information Research Association, 

and many, many others. 

So I am proud to say that this is something that got better as 

it went along. The substitutes today, the amendment in the form 

of a substitute today deals in two primary areas. One is that in 

order to ensure that this not end up being forum-shopped or that 

it not end up being in small districts, the change will require that 

in order to be a member of the patent pilot program, you must be 

a district that has at least 10 judges and at least three opting in. 

Thus, even if hypothetically all of the cases went to those three, 

you would have a 33 roughly percent, recognizing that there is no 

requirement in this legislation that bills or that litigation be sent 

to any of these judges. It would undoubtedly be a number lower 

than that, but high enough to begin to show us the effectiveness 

of this augmentation. 

Additionally, the study language was much further refined in 

order to work with the VAO on their challenges and also to reflect 

the Congress’s desire to have continued jurisdiction over this pilot 

as it goes along. 

With that, Mr. Chairman, seeing that there is no, as far as I 

know, no opposition to the bill, I would simply yield back, while encouraging all of you to vote for it and move it along to the Senate. 

Mr. Chairman, today the Senate will be dropping the companion 

bill of what we pass here today. 

I yield back. 

Chairman SENSENBRENNER. The Chair advises the gentleman 

from California, it is in violation of the rules to refer to actions in 

the other body, even when there are actions. 

[Laughter.] 

Mr. ISSA. Noted, Mr. Chairman. 

Chairman SENSENBRENNER. For what purpose does the gentleman from California, Mr. Schiff, seek recognition? 

Mr. SCHIFF. Mr. Chairman, briefly to strike the last word. 

Chairman SENSENBRENNER. The gentleman is recognized for 5 

minutes. 

Mr. SCHIFF. Thank you, Mr. Chairman. 


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I wanted to compliment my colleague, Mr. Issa, for his work and 

leadership on this bill. I was pleased to join him because I think 

this is a worthy proposal that is narrowly drafted and will provide 

us with valuable and important insight on the operation of patent 

litigation in the Federal system. 

The pilot program is designed to enhance expertise in patent 

cases among District judges, provide District Courts with resources 

and training to reduce the error rates in patent cases and help reduce the high cost and lost time associated with patent litigation. 

It has broad support and we consulted very closely with the Administrative Office of the Federal Courts, the representatives of the judiciary. The discussions led to a number of amendments that address concerns over the creation of a specialized court, the need to 

maintain generalist judges, random case assignment, and other 

issues. 

I do join my colleague, Mr. Berman, in acknowledging that this 

does not mitigate the need to have more comprehensive reform, 

which I know we all support, but I think this is a step in the right 

direction and I urge support for the substitute. 

I yield back the balance of my time. 

Chairman SENSENBRENNER. The question is on agreeing to the 

amendment in the nature of a substitute. 

Those in favor will say ‘‘aye.’’

Opposed, ‘‘no.’’

The ayes appear to have it. The ayes have it. The amendment 

in the nature of a substitute is agreed to. 

A reporting quorum is not present. We are one short of a reporting quorum. The Chair will instruct the staff on both sides of the 

aisle to get the dragnet out so that we can finish our work and be 

gone. 

[Intervening business.] 

Chairman SENSENBRENNER. The unfinished business is the motion to report favorably the bill H.R. 5418, to establish a pilot program in certain United States District Courts to encourage enhancement in expertise in patent cases among District judges. 

The amendment in the nature of a substitute offered by Mr. Issa 

had been adopted. A reporting quorum is present. The question occurs on the motion to report the bill, H.R. 5418, favorably as 

amended. 

All in favor say ‘‘aye.’’

Opposed, ‘‘no.’’

The ayes appear to have it. The ayes have it, and the motion to 

report favorably is agreed to. 

Without objection, the bill will be reported favorably to the 

House in the form of a single amendment in the nature of a substitute, incorporating the amendments adopted here today. 

Without objection, the staff is directed to make any technical and 

conforming changes, then all Members will be given 2 days as provided by the House rules in which to submit additional dissenting, 

supplemental or minority views. 

The purpose for this markup having been completed, without objection, the Committee stands adjourned. 


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[Whereupon, at 10:46 a.m., the Committee was adjourned.] 

Æ 


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