Tech Law Journal Daily E-Mail Alert
November 6, 2001, 9:00 AM ET, Alert No. 302.
TLJ Home Page | Calendar | Back Issues
Legislators Introduce Bills to Address Infringement by States
11/1. Rep. Howard Coble (R-NC) and Rep. Howard Berman (D-CA) introduced HR 3204, the Intellectual Property Protection Restoration Act (IPPRA) of 2001. Sen. Patrick Leahy (D-VT) introduced S 1611, the companion bill in the Senate. Reps. Coble and Berman are the Chairman and ranking Democrat on the House Judiciary Committee's Courts, Internet and Intellectual Property Subcommittee. Sen. Leahy is the Chairman of the Senate Judiciary Committee. Sen. Leahy sought unsuccessfully to pass similar legislation in the last Congress, while Sen. Orrin Hatch (R-UT) was Chairman of the Senate Judiciary Committee.
The purpose of these bills is to prevent states from infringing patents, copyrights and trademarks. The bill would, among other things, prevent states from recovering damages for infringement of state owned intellectual property, unless they have first waived their Eleventh Amendment sovereign immunity from suits against them for their infringement of the intellectual property of others.
The problem addressed by these bills arose in 1996 when the Supreme Court of the U.S. ruled in Seminole Tribe of Florida v. Florida that the Congress lacks authority under Article I of the Constitution to abrogate the States' 11th Amendment immunity from suit in federal courts. See also, the 1999 opinions of the Supreme Court in Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank (invalidating the Patent and Plant Variety Protection Remedy Clarification Act) and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board (invalidating the Trademark Remedy Clarification Act).
The Eleventh Amendment states: "The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State."
Rep. Coble described the bills as a "balanced and minimal approach to solving the complex problem of preventing the individual States from infringing intellectual property with impunity." See, Congressional Record, November 1, 2001, at page E1986.
Rep. Berman stated that "These bills will rectify a serious inequity in intellectual property protection resulting from recent Supreme Court decisions. These recent decisions held that, under the Eleventh Amendment of the United States Constitution, states have sovereign immunity in state and federal courts against money damages suits for intellectual property infringements. The Supreme Court came to this conclusion despite unequivocal Congressional intent to abrogate state sovereign immunity through enactment of the Copyright Remedy Clarification Act (CRCA), Patent Remedy Act (PRA), and Trademark Remedy Clarification Act (TRCA) in 1992."
Rep. Berman continued: "While immune from suit for money damages when they infringe the intellectual property rights of others, states can still secure protection for their own patents, copyrights, and trademarks under federal law, and can sue infringers of their rights for money damages. I believe it is a serious inequity to allow a State to sue infringers of its intellectual property rights when the State itself can infringe the rights of others with impunity." See, Congressional Record, November 1, 2001, at pages E1993-4.
Sen. Leahy also summarized the bills. "The IPPRA has two essential components. First, it places States on an equal footing with private parties by eliminating any damages remedy for infringement of State owned intellectual property unless the State has waived its immunity in Federal suits for infringement of privately owned intellectual property. Second, it improves the limited remedies that are available to enforce a nonwaiving State's obligations under Federal law and the United States Constitution." See, Congressional Record, November 1, 2001, at pages S11364-5.
Fed Circuit Addresses Certificates of Correction in Patent Cases
11/1. The U.S. Court of Appeals (FedCir) issued its divided opinion in Superior Fireplace v. Majestic Products, an patent infringement case involving the granting of certificates of correction.
The District Court ruled on summary judgment that Superior Fireplace’s certificate of correction for U.S. Patent No. 5,678,534 is invalid and that the uncorrected version of this patent is not infringed. The Appeals Court affirmed, 2 to 1, this portion of the District Court judgment. However, it vacated and remanded the District Court's decision on an attorneys fees issue.
Judge Linn, writing for the majority, opined that because the correction of the alleged mistake under 35 U.S.C. § 255 broadened a claim and was not clearly evident from the specification, drawings, and prosecution history, the certificate of correction is invalid.
Judge Dyk wrote in his dissent that "I part company with the majority when it reads into the statute a requirement that the error be apparent from the prosecution history, a requirement which is equally lacking an 'express indication' in the statute. I accordingly dissent from the majority’s holding that the certificate of correction is invalid ..."
More News
11/5. The U.S. Court of Appeals for the District of Columbia Circuit heard oral argument in Teledesic v. FCC, No. 00-1466.
10/22. A grand jury of the U.S. District Court (DMD) returned a four count indictment against Misbah Khan alleging knowingly causing the transmission of a computer command which intentionally caused damage to  computers, intentionally accessing computers without authorization and obtaining information from that computer, knowingly and with intent to defraud possessing fifteen or more unauthorized access devices (credit card account numbers), and causing the use of unauthorized access devices to obtain things of value of more than $1,000. Khan, a resident of Karachi, Pakistan, hacked the computers of the American Israel Public Affairs Committee, a pro Israel public affairs group based in Washington DC. See, CCIPS release.
Judge Kotelly to Hold Status Conference in Microsoft Case
11/6. U.S. District Court Judge Colleen Kotelly will hold a status conference in USA v. Microsoft, the government's antitrust law suit against Microsoft. On Friday, November 2, the Department of Justice (DOJ) and Microsoft announced a settlement, and filed a Stipulation and Proposed Final Judgment.
Judge Kotelly's Scheduling Order [PDF] of November 2 provides that "at the November 6, 2001, status conference, the parties in Civil Action No. 98-1233 shall report the status of their settlement negotiations". District Court Case No. 98-1233 is the law suit filed by various states against Microsoft; it was consolidated with D.C. No. 98-1232, the law suit filed by the DOJ. The Order further provides that "if a settlement is not reached with regard to all of the parties in Civil Action No. 98-1233 by November 6, 2001, the non-settling parties shall be prepared to proceed with the litigation schedule set forth in the Court's Scheduling Order dated September 28, 2001".
Senators Seek Tax Credit for Home Computer Purchases
11/5. Sen. George Allen (R-VA) and Sen. Barbara Boxer (D-CA) are seeking to have a temporary version of S 488, the Education Opportunity Tax Credit Act, included in economic stimulus legislation. Sen. Allen and others introduced the bill on March 8, 2001.
This bill provides that for individuals "there shall be allowed as a credit ... an amount equal to the qualified elementary and secondary education expenses", the definition of which includes "computer technology or equipment expenses", including "Internet access and related services". The bill sets a maximum credit of $1,000 per student or $2,000 per household.
The two Senators wrote a letter to President Bush in which they stated that a short term version of the bill would stimulate the economy and help close the "digital divide". The wrote that "This proposal increases access to computers and the Internet in the home for households of all incomes, and consumers reap the tangible, and intangible, benefits of buying a major durable good -- something they would not otherwise do during these uncertain economic times." See, Allen release.
EPIC Wants Commerce Committee to Question Muris on Microsoft
11/5. The Electronic Privacy Information Center (EPIC) wrote a letter to members of the House Commerce Committee's Commerce, Trade, and Consumer Protection Subcommittee regarding its hearing scheduled for Wednesday, November 7. Federal Trade Commission (FTC) Chairman Timothy Muris will be the only witness at the hearing, which is titled "Challenges Facing the Federal Trade Commission". President Bush appointed Muris to head the FTC earlier this year. This hearing will be the first time that Muris will testify to the House Commerce Committee as Chairman of the FTC.
The EPIC wrote that "we urge committee members to ask Chairman Muris why his agency has not begun a public investigation into information collection practices of Microsoft through Passport and associated services." The letter was written by Marc Rotenberg and Chris Hoofnagle of EPIC and Jason Catlett of Junkbusters.
On July 26, 2001, EPIC and others filed a complaint [PDF] with the FTC requesting that it conduct an investigation of Microsoft, and enjoin a number of software features and services which it alleges violate § 5 of the Federal Trade Commission Act, 15 U.S.C. § 45. The EPIC and others submitted an updated complaint [PDF] to the FTC regarding Microsoft's Passport and other software and services on August 15. The FTC has not publicly announced that it has taken any action with respect to these complaints.
See also, speech by Timothy Muris titled "Protecting Consumers' Privacy: 2002 and Beyond", which he delivered on October 4, 2001 at a privacy conference in Cleveland, Ohio.
People and Appointments
11/5. Peter Bresnan was named Deputy Chief Litigation Counsel of the SEC's Division of Enforcement. He replaces Stephen Crimmins, who left the SEC in July. Bresnan joined the SEC in 1995. Before that, he worked in the New York office of the law firm of Davis Polk & Wardwell. Bresnan is currently litigating the SEC's first insider trading case alleging the passing of inside information over the Internet. See, SEC release.
10/29. The law firm of McDermott Will & Emery will open an office in Munich, Germany, on January 2, 2002. Ralf Eckert, Martin Kock, Jörg Kretschmer, Christian von Sydow and Ralf Weisser will launch this office. It will focus on corporate, M&A, taxation, media and telecommunications law. See, MWE release.
Fed Circuit Rules in J&M v. Harley Davidson
11/2. The U.S. Court of Appeals (FedCir) issued its opinion in J&M v. Harley Davidson, a patent infringement case involving microphones in motorcycle helmets. The plaintiffs are the applicants and licensee of U.S. Reissue Patent Number 34,525. Plaintiffs alleged infringement by Harley Davidson, and its supplier, Radio Sound. The District Court held that the patent in suit was not infringed, either literally, or under the doctrine of equivalents. The Appeals Court affirmed.
About Tech Law Journal
Tech Law Journal is a free access web site and e-mail alert that provides news, records, and analysis of legislation, litigation, and regulation affecting the computer and Internet industry. This e-mail service is offered free of charge to anyone who requests it. Just provide TLJ an e-mail address.

Number of subscribers: 2,244.

Contact: 202-364-8882; E-mail.
P.O. Box 4851, Washington DC, 20008.

Privacy Policy

Notices & Disclaimers

Copyright 1998 - 2001 David Carney, dba Tech Law Journal. All rights reserved.
Tuesday, Nov 6
The House will meet at 12:30 PM for morning hour and at 2:00 PM for legislative business. No recorded votes are expected before 6:00 PM. The House will consider a number of measures under suspension of the rules. The Senate will likely resume its consideration of HR 3061, the Labor HHS appropriations bill.
9:00 AM. Status conference in USA v. Microsoft before Judge Colleen Kotelly. See, Scheduling Order [PDF] of November 2. Location: Courtroom 11, U.S. Courthouse, Third St. and Constitution Ave., NW, Washington DC.
9:30 AM - 5:30 PM. Day two of a three day conference and exhibition hosted by the NIST and NISO titled "4th annual Electronic Book Conference". The price to attend is $400. See, registration page. Location: Ronald Reagan Building, 1300 Pennsylvania Ave., NW, Washington DC. See, Nov. 6 agenda.
12:30 PM. The FCBA's State and Local Practice Committee will host a brown bag luncheon on "OTARD" and status of BOMA v. FCC. The speakers will be Matthew Ames (Miller & Van Eaton), James Barker (Latham & Watkins), and Jeffrey Steinberg (FCC's Wireless Telecom. Bureau). RSVP to Mitsi Herrera. Location: Wiley Rein & Fielding, 1750 K Street, NW, Washington DC.
Wednesday, Nov 7
9:30 AM - 5:30 PM. Day three of a three day conference and exhibition hosted by the NIST and NISO titled "4th annual Electronic Book Conference". The price to attend is $400. See, registration page. Location: Ronald Reagan Building, 1300 Pennsylvania Ave., NW, Washington DC. See, Nov. 6 agenda.
10:00 AM. The House Commerce Committee's Subcommittee on Commerce, Trade and Consumer Protection will hold a hearing titled Challenges Facing the Federal Trade Commission. FTC Chairman Timothy Muris will be the only witness. Location: Room 2123, Rayburn Building.
10:00 AM. The Senate Judiciary Committee has scheduled a hearing on pending nominations. Panel I will be five nominees to be U.S. District Court Judges: Joe Heaton (Oklahoma), Clay Land (Georgia), Frederick Martone (Arizona), Danny Reeves (Kentucky), and Julie Robinson (Kansas). Panel II will be James Rogan, the nominee to be Director of the U.S. Patent and Trademark Office (USPTO). Sen. Dianne Feinstein (D-CA) will preside. Location: Room 226, Dirksen Building.
10:00 AM. The U.S. International Trade Commission (USITC) will begin a Section 337 evidentiary hearing regarding the importation of certain integrated circuits. The complainants are United Microelectronics Corp., UMC Group (USA), and United Foundry Service, Inc. The respondents are Silicon Integrated Systems Corp. and Silicon Integrated Systems Corp. This investigation pertains to U.S. Patents No. 5,559,352 and 6,117,345. See, Investigation No. 337-TA-450. Administrative Law Judge Sidney Harris will preside. Location: Courtroom A, ITC Building, 500 E Street SW, Washington DC.
12:15 PM. The FCBA Online Communications Committee will host a brown bag lunch titled "Broadband, When? -- the View from Earthlink". The speaker will be Dave Baker, VP of Law & Public Policy at Earthlink. RSVP to Scott Blake Harris at sharris@ Location: Lampert & O'Connor, 5th Floor, 1750 K Street, NW, Washington DC.
Thursday, Nov 8
9:30 AM. The Federal Communications Commission (FCC) will hold a meeting to consider five items: (1) a Report and Order concerning reexamination the Commercial Mobile Radio Services (CMRS) spectrum aggregation limits and the cellular cross interest rule (WT Docket No. 01-14); (2) a Notice of Proposed Rule Making (NPRM) concerning whether to undertake a comprehensive examination of its rules and policies of local radio ownership (MM Docket No. 00-244); (3) a Memorandum Opinion and Order on Reconsideration concerning its periodic review of the progress of the conversion to digital television (MM Docket No. 00-39); (4) a NPRM concerning the establishment of national performance measurements and standards for unbundled network elements and interconnection (CC Docket Nos. 98-56, 98-147, 98-147, 96-98, and 98-141); and a Report and Order concerning its policies, rules and requirements for Cable Landing Licenses (IB Docket No. 00-106). See, FCC notice. Location: Commission Meeting Room, FCC, 445 12th Street, SW, Room TWC305, Washington DC.
10:00 AM. The House Financial Services Committee's Oversight and Investigations Subcommittee and the House Ways and Means Committee's Social Security Subcommittee will hold a joint hearing titled Preventing Identity Theft by Terrorists and Criminals. Location: Room 2128, Rayburn Building.
12:15 PM. The Federal Communications Bar Association's (FCBA) Global Telecom Development Committee will host a brown bag luncheon titled Telco Privatization: the Role of International Financial Institutions. The speakers will be David Satola (World Bank Group) and Janet Hernandez (Coudert Bros.). RSVP to Kent Bressie. Location: Wilkinson Barker & Knauer, 2300 N Street, Suite 700, Washington DC.
Friday, Nov 9
8:30 AM - 1:30 PM. The American Enterprise Institute (AEI) and the Brookings Institute will jointly host a conference titled "Practical Steps to Spectrum Markets". The price to attend is $5 (waived for AEI supporters, government employees, and media). See, online registration page. See, agenda at right. Location: Wohlstetter Conference Center, Twelfth Floor, 1150 17th Street, NW, Washington DC.
 • 8:30 AM. Breakfast address by Sen. Ron Wyden (D-OR).
 • 9:00 AM. Panel I: "Enabling Bandwidth Markets". The speakers will be Thomas Hazlett (AEI), Gregory Rosston (Stanford), Michelle Farquhar (Hogan & Hartson), Evan Kwerel (FCC), and John Williams (FCC).
 • 10:45 AM. Panel II: "Unblocking Spectrum Allocation". The speakers will be Mike Chartier (Intel), Joe Mitola (Mitre), DeWayne Hendricks (Dandin Group), and Giancarlo Ibarguen (Francisco Marroquin Univ.).
 • 12:15 PM. Luncheon address by Nancy Victory (NTIA).
10:00 AM. The House Government Reform Committee's Government Efficiency, Financial Management, and Intergovernmental Relations Subcommittee will hold a hearing titled Have Federal Agencies Failed to Protect Their Computer Systems? Room 2154, Rayburn Building.