| Supreme Court Rules on
Appellate Jurisdiction of Federal Circuit |
6/3. The Supreme
Court issued its opinion
[PDF] in Holmes
Group v. Vornado Air Circulation Systems, a
case regarding the appellate jurisdiction of the U.S. Court of Appeals for the
Federal Circuit. The Supreme Court held that when a
complaint does not allege a claim arising under federal patent
law, but the answer contains a counterclaim based upon federal
patent law, the Federal Circuit does not have appellate
jurisdiction.
Lower Court Proceedings. Holmes Group filed a complaint
in U.S. District Court (DKan) against Vornado Air Circulation Systems
seeking a declaratory judgment that its products did not
infringe Vornado's trade dress and an injunction restraining
Vornado from accusing it of trade dress infringement in
promotional materials. Vornado's answer asserted a compulsory
counterclaim alleging patent infringement.
The District Court granted Holmes the declaratory judgment and
injunction it sought. Vornado appealed to the Federal Circuit.
Holmes challenged the jurisdiction of the Federal Circuit.
However, the Federal Circuit rejected the argument, and
vacated and remanded. The Supreme Court granted certiorari on
the issue of jurisdiction.
Relevant Statutes. 47
U.S.C. § 1338 provides, in part, that "The district
courts shall have original jurisdiction of any civil action
arising under any Act of Congress relating to patents, plant
variety protection, copyrights and trademarks. Such
jurisdiction shall be exclusive of the courts of the states in
patent, plant variety protection and copyright cases."
47
U.S.C. § 1295(a), in turn, provides, in part, that
"The United States Court of Appeals for the Federal
Circuit shall have exclusive jurisdiction (1) of an appeal
from a final decision of a district court of the United States
... if the jurisdiction of that court was based, in whole or
in part, on section 1338 of this title ..."
Supreme Court. The Supreme Court reversed. It wrote
that " Section 1338(a) uses the same operative language
as 28 U. S. C. §1331, the statute conferring general federal
question jurisdiction, which gives the district courts
``original jurisdiction of all civil actions arising under
the Constitution, laws, or treaties of the United States. ...
The well- pleaded- complaint rule has long governed whether a
case ``arises under´´ federal law for purposes of §1331.´´
... As ``appropriately adapted to §1338(a),´´ the well-
pleaded- complaint rule provides that whether a case ``arises
under´´ patent law ``must be determined from what
necessarily appears in the plaintiff's statement of his own
claim in the bill or declaration. ... The plaintiff's well
pleaded complaint must ``establis[h] either that federal
patent law creates the cause of action or that the plaintiff's
right to relief necessarily depends on resolution of a
substantial question of federal patent law ...´´ ... Here,
it is undisputed that petitioner's well pleaded complaint did
not assert any claim arising under federal patent law. The
Federal Circuit therefore erred in asserting jurisdiction over
this appeal." (Citations omitted.)
The Supreme Court also rejected the argument that it should
give different meaning to "arising under" in
determining Federal Circuit jurisdiction because of Congress'
goal of promoting uniformity of patent law. The Court wrote
that "Our task here is not to determine what would
further Congress' goal of ensuring patent-law uniformity, but
to determine what the words of the statute must fairly be
understood to mean."
It added that "It would be an unprecedented feat of
interpretive necromancy to say that §1338(a)'s ``rising under´´
language means one thing (the wellpleaded- complaint rule) in
its own right, but something quite different (respondent's
complaint- or- counterclaim rule) when referred to by §1295(a)(1)."
(Justice Antonin Scalia wrote the opinion of the Court.)
The Court concluded that "Not all cases involving a
patent-law claim fall within the Federal Circuit's
jurisdiction. By limiting the Federal Circuit's jurisdiction
to cases in which district courts would have jurisdiction
under §1338, Congress referred to a well- established body of
law that requires courts to consider whether a patent-law
claim appears on the face of the plaintiff's well pleaded
complaint. Because petitioner's complaint did not include any
claim based on patent law, we vacate the judgment of the
Federal Circuit and remand the case with instructions to
transfer the case to the Court of Appeals for the Tenth
Circuit." |
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| Supreme Court Vacates and
Remands in Nine Cases Following Festo |
6/3. The Supreme
Court granted certiorari in nine cases, following its May
28 landmark opinion
[PDF] in Festo
v. Shoketsu Kinzoku Kogyo Kabushiki. In each
case the Supreme Court merely vacated and remanded to the U.S. Court of Appeals (FedCir).
Festo is a patent case regarding the doctrine of equivalents
and the rule of prosecution history estoppel. The unanimous
Supreme Court reversed the Court of Appeals and remanded. The
Court again affirmed the doctrine of equivalents, articulated
its purpose, held that the narrowing of a patent claim may
give rise to prosecution history estoppel (but that it does
not absolutely bar application of the doctrine of
equivalents), and listed circumstances under which it might or
might not operate as a bar.
In each of the nine orders granting certiorari, the Supreme
Court wrote this: "The petition for a writ of certiorari
is granted. The judgment is vacated and the case is remanded
to the United States Court of Appeals for the Federal Circuit
for further consideration in light of Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., 535 U.S. __ (2002)."
The nine cases are Pioneer Magnetics, Inc. v. Micro Linear
Corp., No. 00-1765, Instituform Technologies v. Cat
Contracting, No. 00-1946, Senior Technologies, Inc. v. R.F.
Technologies, Inc., No. 01-35, Creo Products, Inc. v.
Dainippon Screen, No. 01-269, Semitool, Inc. v. Novellus
Systems, Inc., No. 01-423, Lockheed Martin Corp. v. Space
Systems/Loral, Inc., No. 01-506, Accuscan, Inc. v. Xerox
Corp., No. 01-541, PTI Technologies, Inc. v. Pall Corp. Techn.,
Inc., No. 01-677, and Mycogen Plant Science v. Monsanto
Company, No. 01-740. See, Order
List [PDF]. |
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| More Supreme Court News |
6/3. The Supreme Court denied certiorari in Hagenbuch v.
Compaq, No. 01-1448, and Circuit City Stores v. Adams, No.
01-1460. See, Order
List [PDF] at page 6.
6/3. The Supreme Court announced that it will be on recess
until Monday, June 10. |
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| FCC Seeks Comments on Study
of Horizontal Concentration Among Cable Operators |
6/3. The Federal
Communications Commission (FCC) published a paper
[121 pages in PDF] titled "Horizontal Concentration in
the Cable Television Industry: An Experimental Analysis".
The paper examines the effects of changes in horizontal
concentration among cable operators on the flow of video
programming to consumers. It is based on an experimental
economics study in which experiment participants played the
roles of actual market participants.
The paper was written by Mark Bykowsky and William Sharkey of
the FCC's Office of Plans
and Policy, and Anthony Kwasnica of Pennsylvania
State University. The paper is also known as OPP Working Paper
Series 35.
In addition, the FCC's Media
Bureau announced that it is seeking public comment on the
study. Comments are due by July 18. Reply comments are due by
August 2. See, notice
[PDF]. |
|
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| House to Vote on NSF
Authorization Bill |
6/4. The House will likely debate and vote on HR 4664,
the Investing in America's Future Act, on Wednesday, June 5.
The bill is sponsored by Rep. Nick Smith
(R-MI) and others. The House
Science Committee amended and approved the bill on May 22.
HR 4664 would authorize the appropriation of $5.5 Billion for
FY 2003 for the National Science
Foundation (NSF). Included in the funding authorization is
$704 Million for networking and information technology
research, $238 Million for the Nanoscale Science and
Engineering Priority Area, and $60 Million for the
Mathematical Sciences Priority Area.
The bill authorizes an increase in funding for the NSF of 15%
in FY 2003, and similar increases in future years. If the
funding authorized by this bill were actually appropriated, it
would double the NSF's budget within five years.
See, HR 4664
[PDF], as reported by the Subcommittee on Research on May 9.
The full Committee approved one amendment
[PDF] on May 22 offered by Rep. Sherwood Boehlert
(R-NY). It authorizes the appropriation of $50 Million for the
Advanced Technological Education Program established under the
Scientific and Advanced Technology Act of 1992, and $30
Million for the Minority Serving Institutions Undergraduate
Program. |
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|
| USPTO Releases Strategic
Plan |
6/3. The U.S. Patent and
Trademark Office (USPTO) released a document titled The
21st Century Strategic Plan [18 pages in PDF]. USPTO
Director James
Rogan states in the introduction that this plan "is
our road map for transformation. It lays out exactly what we
will do over the next five years to reduce to 18 months the
total time it takes to receive a patent, to make both patent
and trademark processes almost paperless, and to work with
intellectual property offices around the world to create a
global framework for enforceable intellectual property
rights."
"The time has come to transform the USPTO from a one size
fits all government bureaucracy into a quality focused,
responsive, market driven intellectual property
institution," wrote Rogan.
The plan states that the USPTO will "Achieve an average
time to first action in patent applications that is more than
50 percent lower than the time projected in the 2003 Business
Plan ; i.e., 5.8 months in 2008 rather than 12.3 months."
It states that the USPTO will "Achieve and maintain 18
months patent pendency by 2008". The plan also states
that the USPTO will "Competitively source classification
and search functions, and concentrate Office expertise as much
as possible on the core government functions."
Electronic Processing of Applications. "As a first
priority, we have made electronic end to end processing of
both patents and trademarks the centerpiece of our business
model." The plan then promises to "Deliver an
operational system to process patent applications
electronically by October 1, 2004, including electronic image
capture of all incoming and outgoing paper documents" and
to "Develop an automated information system to support a
post grant patent review process."
Pendency. The plan states that it will "ensure a
steady 18-month average pendency time in Patents -- by far the
fastest in the world -- and a 12-month pendency time in
Trademarks. This will be accomplished through a radical
redesign of the entire patent search and examination system
based upon four examination tracks, greater reliance on
commercial service providers, and variable, incentive driven
fees."
Four Track Process. The plan states that the USPTO will
"Move from a ``one size fits all´´ patent examination
process to a four track examination process that leverages
search results of other organizations and permits applicants
to have freedom of choice in the timing of the processing of
their applications. This new process will eliminate
duplication of effort, encourage greater participation by the
applicant community and public, permitting lapse of
applications when examination is not requested, and improving
the quality of our patents and decreasing processing
time."
Rocket Docket. It also states that the USPTO will
"Offer patent applicants the market driven ``new rocket
docket´´ option of choosing an accelerated examination
procedure with priority processing and a pendency time of no
longer than 12 months."
Fee Schedule. To facilitate these changes, the USPTO
will "Seek legislation to restructure the USPTO fee
schedule by October 1, 2002, and thereby create incentives and
disincentives that contribute to achievement of USPTO goals,
for example, the filing fee will be reduced to incentivize
applicants to file, and a separate examination fee will be
established to permit applicants to choose the timing for
examination."
Post Grant Review. The plan states that the USPTO will
"Make patents more reliable by proposing amendments to
patent laws to improve a post grant review of
patents."
Congressional Action Needed. Implementation of the plan
will require changes at the USPTO, including the promulgation
of rules. However, it is also contingent upon Congressional
action. The plan states that "We will need enactment of
legislation by the Congress to adjust certain patent and
trademark fees by October 1, 2002. ... We will need enactment
of an appropriation for fiscal year 2003 that is consistent
with the level of the President’s 2003 budget."
Legislation would also be required to change the post grant
review process. |
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| SEC Brings and Settles
Improper Accounting Charges Against Microsoft |
6/3. The Securities and
Exchange Commission (SEC) instituted an administrative
proceeding against Microsoft alleging violation of federal
securities law in connection with its accounting practices
from 1995 through 1998.
The Order
instituting the proceeding alleges that "During
Microsoft's fiscal years ended June 30, 1995, June 30, 1996,
June 30, 1997 and June 30, 1998 (the ``relevant period´´),
Microsoft maintained undisclosed reserves, accruals,
allowances and liability accounts (collectively ``reserves´´
or ``reserve accounts´´) that (a) were not in conformity
with generally accepted accounting principles (``GAAP´´) to
a material extent, and/or (b) lacked properly documented
support and substantiation, as required by the federal
securities laws."
The Order also states that "Microsoft failed to maintain
internal controls that were adequate under the federal
securities laws. Specifically, during the relevant period,
Microsoft maintained between approximately $200 million and
$900 million in unsupported and undisclosed reserves, a
significant portion of which did not comply with GAAP, which
resulted in material inaccuracies in filings made by Microsoft
with the Commission."
Microsoft and the SEC simultaneously settled the matter.
Microsoft admitted no wrongdoing. The SEC imposed no fine or
other penalty. Microsoft also stated in a release
that "The agreement has no impact on Microsoft’s
reported financial results; no restatement of any reported
financial results is required and no penalty has been
assessed."
Stephen Cutler, Director of the SEC's Division of
Enforcement stated in a release
that "This case emphasizes that the Commission will act
against a public company that issues financial statements with
material inaccuracies, even in the absence of fraud
charges". |
|
|
| NTIA Seeks Comments on
Internet Filtering Technologies |
6/3. The National
Telecommunications and Information Administration (NTIA)
published in its web site a release
and a notice
[PDF] requesting comments on the effectiveness of Internet
blocking and filtering technologies. Comments are due by
August 27, 2002.
§ 1703 of the Children's
Internet Protection Act (CIPA) [PDF] directs the NTIA to
initiate a notice and comment proceeding to evaluate whether
currently available Internet blocking or filtering technology
protection measures and Internet safety policies adequately
address the needs of educational institutions. It also directs
NTIA to make recommendations to Congress on how to foster the
development of technology protection measures that meet these
needs.
The NTIA published a notice in the Federal Register last week
regarding this proceeding. See, Federal Register, May 29,
2002, Vol. 67, No. 103, at Pages 37396 - 37398.
On May 31, a three judge panel of the U.S.
District Court (EDPenn) issued its opinion
in American Library Association v. U.S., finding
unconstitutional library related provisions of the CIPA. The
Act requires, among other things, that schools and libraries
receiving e-rate subsidies certify that they are using a
"technology protection measure" that prevents
library users from accessing "visual depictions"
that are "obscene," "child pormography,"
and in the case of minors, "harmful to minors."
However, the CIPA, as it applies to schools, remains
unaffected by this opinion. Also, the Court did not find
unconstitutional Section 1703, requiring the NTIA to conduct
this evaluation. |
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| People and Appointments |
6/3. Jane Cobb was named Director for the Securities and Exchange Commission's
(SEC) Office of Legislative Affairs. She replaces Casey
Carter. Peter Kiernan was named Deputy Director. See, SEC release.
6/3. Robert Dellinger was named EVP and Chief Financial
Officer of Sprint. He
replaces Arthur Krause, who retired. See, release. |
|
|
| More News |
6/1. President Bush gave a graduation speech
at West Point. He stated that "The gravest danger to
freedom lies at the perilous crossroads of radicalism and
technology."
6/3. Microsoft published in its web site an essay
titled "Art & Commerce in the Digital Decade:
Protecting intellectual property will take cooperation and
innovation". It states that "At stake is the
continued growth of the digital economy. Copyright holders --
authors, musicians, filmmakers, software developers and others
-- will be able to take full advantage of the Internet as a
powerful distribution channel only if their creations are
appropriately protected." The essay argues that "a
government mandated standard could actually hinder anti-piracy
efforts by stifling technical innovation." It concludes
that "A more effective solution would be for
entertainment companies to invest in digital distribution. Few
companies have made much content available online, yet the
popularity of file sharing among music fans suggests that the
market is large. Making legitimate content available easily
and affordably would help to counter the illegal supply." |
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|
|
| Tuesday, June 4 |
The House will meet 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 Supreme Court is in recess until June 10.
POSTPONED TO JUNE 5. 10:00
AM. The House
Commerce Committee's Subcommittee on Telecommunications
and the Internet will hold a hearing titled "The FCC's
UWB Proceeding: An Examination of the Government's Spectrum
Management Process." Webcast. Press contact: Ken Johnson
or Jon Tripp at 202 225-5735. Location: Room 2123, Rayburn
Building.
CANCELLED. 10:00
AM. The Senate Health,
Education, Labor, and Pensions Committee will hold a
hearing on legislation to authorize funding for the National Science Foundation.
10:00 AM. The U.S.
Court of Appeals (FedCir) will hear oral argument in Insight
Development v. Hewlitt Packard, No. 01-1459, an appeal
from the U.S. District
Court (NDCal) in a patent infringement case involving web
imaging technology. Location: LaFayette Square, at 717 Madison
Place, NW.
2:00 - 4:00 PM. The FCC's Advisory
Committee for the 2003 World Radiocommunication Conference (WRC-03 Advisory Committee)
will meet. See, notice
and agenda [PDF]. Location: FCC, Commission Meeting Room,
Room TW-C305, 445 12th Street, SW.
4:00 PM. The House
Judiciary Committee's Subcommittee on Crime will hold a
hearing and a mark up session for HR 4598,
the Homeland Security Information Sharing Act, sponsored by Rep. Saxby Chambliss
(R-GA). Audio webcast. Location: Room 2141, Rayburn Building. |
|
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| Wednesday, June 5 |
The House will meet at 10:00 AM for legislative business.
The House will likely debate and vote on HR 4664,
the Investing in America's Future Act, a bill to authorize and
increase appropriations for the National Science Foundation.
8:30 AM - 5:00 PM. Day one of a three day public workshop
hosted by the FTC on proposed
amendments to the Telemarketing Sales Rule, including the
potential development and implementation of a national do not
call list. See, FTC release
and agenda.
Location: Marriott Wardman Park Hotel, 2600 Woodley Road, NW.
9:30 AM. The National School
Boards Foundation will host a breakfast (9:00 AM) and
media briefing on it release of a national survey titled
"Are We There Yet? Research and Guidelines on Schools Use
of the Internet". For more information, contact Renee
Hockaday at 703 838-6717 or rhockaday @nsba.org.
Location: Corporation for Public Broadcasting (CPB), 2nd
Floor, 401 9th St., NW.
10:00 AM. The House
Commerce Committee's Subcommittee on Telecommunications
and the Internet will hold a hearing titled "The FCC's
UWB Proceeding: An Examination of the Government's Spectrum
Management Process." Webcast. Press contact: Ken Johnson
or Jon Tripp at 202 225-5735. Location: Room 2123, Rayburn
Building.
12:15 PM. The FCBA's
Global Telecommunications Development Committee will host a
brown bag lunch. The topic will be "Caribbean Telecom --
Challenges in Bringing Competition to Monopoly Markets".
The speakers will be William Garrison (The Frank Hawkins Kenan
Institute of Private Enterprise), Judy Kilpatrick (NTIA), and
Joanna Lowry (Cable & Wireless). RSVP to Jonathan Cohen at
joncohen @wbklaw.com
or to LaVon Stevens at 202 628-9577. Location: Suite 700,
Wilkinson Barker Knauer, 2300 N St., NW (entrance at 24th and
N Streets).
2:00 PM. The House
Judiciary Committee's Subcommittee on Courts, the Internet
and Intellectual Property will hold a hearing titled
"DRM: The Consumer Benefits of Today's Digital Rights
Management Solutions." Audio webcast. Location: Room
2141, Rayburn Building.
EXTENDED TO JULY 17. Extended
deadline to submit reply comments to the FCC in response
to its notice of proposed rulemaking regarding its unbundling
analysis under § 251
of the Communications Act and the identification of specific
unbundling requirements for incumbent local exchange carriers.
See, May 29 order
[PDF] extending deadline from June 5 to July 17. See also, notice
in the Federal Register. This is CC Docket No. 01-338. |
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| Thursday, June 6 |
The House will meet at 10:00 AM for legislative business.
8:30 AM - 5:00 PM. Day two of a three day public workshop
hosted by the FTC on proposed
amendments to the Telemarketing Sales Rule, including the
potential development and implementation of a national do not
call list. See, FTC release
and agenda.
10:00 AM. The House
Judiciary Committee will meet to mark up several bills,
including HR 3215,
the Combatting Illegal Gambling Reform and Modernization Act
(Goodlatte Internet gambling bill), and HR 4623,
the Child Obscenity and Pormography Prevention Act of 2002.
Audio Webcast. Press contact: Jeff Lungren or Terry Shawn at
202 225-2492. Location: Room 2141, Rayburn Building.
? The Senate
Commerce Committee's Subcommittee on Communications will
hold a hearing titled Universal Service Fund. Press
contact: Andy Davis 224-6654. Location: Room 253, Russell
Building.
10:30 AM. The House
International Relations Committee's Subcommittee on
International Operations and Human Rights will hold a hearing
on titled "An Assessment of Cuba Broadcasting -- The
Voice of Freedom". Location: Room 2172, Rayburn Building.
8:00 AM - 5:00 PM. The Institute
for International Research (IIR) and ComCare will host a
conference titled e-SAFETY: Delivering Communications &
Information Technology Solutions for 21st Century Public
Safety. Sen. Conrad
Burns (R-MT) will give a keynote address at 8:30 AM. The
price to attend is $695. See, IIR notice.
Location: Ronald Reagan Building, 1300 Pennsylvania Ave., NW.
Deadline to submit comments to the SEC regarding
its proposed rule amending the Investment Advisers Act of 1940
to exempt certain investment advisers that provide advisory
services through the Internet from the prohibition on SEC
registration set out in § 203A of the Act. The
amendments would permit these advisers to register with the
SEC instead of with state securities authorities. See, notice
in the Federal Register. |
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| Friday, June 7 |
8:30 AM - 5:00 PM. Day three of a three day public workshop
hosted by the FTC on proposed
amendments to the Telemarketing Sales Rule (TSR), including
the potential development and implementation of a national do
not call list. See, FTC release
and agenda.
10:00 AM. The House
Government Reform Committee's Subcommittee on Technology
and Procurement Policy will hold a hearing titled
"Coordinated Information Sharing & Homeland Security
Technology" Location: Room 2154, Rayburn Building.
12:00 NOON - 1:30 PM. The Federalist
Society will host a debate on judicial nominations.
the participants will be Douglas Kmiec (Dean of the Columbus
School of Law) and Elliot Mincberg (General Counsel of People
for the American Way). For more information, call Joel Pardoe
at 202 822-8138. See, release.
Location: Holeman Lounge, National
Press Club, 529 14th St. NW, 13th Floor.
12:15 PM. The FCBA's
Wireless Telecommunications and International Practice
Committees will host a luncheon. The topic will be
International Wireless Developments. The price to attend is
$15. RSVP to wendy @fcba.org.
Location: 1750 K Street, NW. |
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| Sunday, June 9 |
| Day one of a three day conference hosted by George Mason
University titled "Networked Economy Summit". See, event web site.
Location: Hyatt Regency Reston, Reston, VA. |
|
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| Monday, June 10 |
The FCBA will
host a luncheon. The speaker will be Brian Roberts of Comcast. The price is $45
for FCBA members, $35 for government and student members, and
$55 for non-members. There will be a reception at 12:00 NOON.
The luncheon will begin at 12:30 PM. RSVP to Wendy Parish at wendy @fcba.org by June 5.
Location: Capital Hilton, 16th & K Streets.
Day one of a two day seminar titled "Managing Trade
Compliance In Today's Environment". The seminar is
offered by the U.S. Department of Commerce's Bureau of Industry and Security
(formerly BXA). The price to attend is $325. See, information
page. Location: Marriott at Metro Center, 775 12 Street
NW.
Day two of a three day conference hosted by George Mason
University titled "Networked Economy Summit". See, event web site.
Location: Hyatt Regency Reston, Reston, VA.
First of three deadlines to submit proposals to the NIST
for FY 2002 Advanced
Technology Program (ATP) funds. See, notice
in Federal Register. |
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