|District Court Modifies 2000 Judgment to
Allow Cingular to Acquire Certain AT&T Wireless Licenses
10/13. The U.S. District Court (DC)
issued its Memorandum Opinion
and Order [6 pages in PDF] in USA v. SBC and BellSouth,
modifying the final judgment issued in 2000 that required Cingular Wireless to
divest certain spectrum licenses. This allows Cingular to acquire
certain spectrum licenses of AT&T Wireless.
This case arose following the formation of
a joint venture of SBC Communications and
Bellsouth Corporation. The U.S. filed a
complaint in the District Court alleging that this joint venture would result in
undue concentration of market share in markets for wireless telephone service in
the states of California, Indiana, and Louisiana. The parties consented to entry
of a judgment that required divestiture of certain spectrum licenses in those
states. The judgment also barred Cingular from reacquiring the licenses.
AT&T Wireless subsequently acquired some of the
In February of 2004, Cingular agreed to acquire
AT&T Wireless. In July it moved for a modification of the final judgment to
enable it to acquire these licenses.
The District Court, following a Tunney Act review,
concluded that allowing the modification of the final judgment is in the public
interest, and modified the final judgment. It found that the competitive
conditions for wireless mobile telephone services has changed in the relevant
markets. More competitors have entered.
See also, Modified Final Judgment
[26 pages in PDF] and Order
to Modify Final Judgment [6 pages in PDF].
This case is United States of America v. SBC Communications, Inc. and
BellSouth Corporation, D.C. No. 00-2073 (PLF), Judge Paul Friedman presiding.
|Berman and Boucher Introduce Bill to Provide
for Post Grants Reviews of Patents
10/8. Rep. Howard Berman (D-CA)
and Rep. Rick Boucher (D-VA) introduced
HR 5299, the
"Patent Quality Assistance Act of 2004", a bill to amend the Patent Act to
provide for post grant reviews.
The bill would add to Title 35 a new Chapter 32, titled "Post-Grant
Rep. Berman (at
right) stated that this bill "contains a number of provisions designed to
improve patent quality, deter abusive practices by unscrupulous patent holders,
and provide meaningful, low-cost alternatives to litigation for challenging the
He continued that "I am a
strong believer that the prospect of patent protection promotes innovation.
However, I also believe that the patent system is strongest, and incentives for
innovation greatest, when patents protect only truly deserving inventions. When
functioning properly, the patent system should encourage and enable inventors to
push the boundaries of knowledge and possibility. If the patent system allows
questionable patents to issue and does not provide adequate safeguards against
patent abuses, the system may stifle innovation and interfere with competitive
He added that "we introduce this bill at the
end of this Congress with the intent of framing the debate going into the 109th
Congress, and with every intention of passing legislation in the next two
This bill provides that "A person may request that the grant or reissue
of a patent be reconsidered by the Patent and Trademark Office by filing an
opposition seeking to invalidate 1 or more claims in the patent." This would be
a public proceeding, with the contents of the file open to public inspection.
However, the bill also provides that "if requested by the opposer, the identity
of a real party in interest shall be kept separate from the file ..." This
procedure would not be available "if the opposer relies upon factual evidence or
expert opinions ... or if the opposer exercises the right to appeal ..."
An opposition request must be made within nine months of the
grant (or issuance of a reissue patent), or six months after receiving notice
from the patent holder alleging infringement of the patent, unless the patent
holder otherwise consents in writing.
The bill further provides that the Director of the
U.S. Patent and Trademark Office (USPTO)
"may dismiss an opposition request that the Director determines lacks
substantial merit." However, such a "dismissal of an opposition request shall
not be admissible in any civil action related to the patent against which a
dismissed request was filed."
The bill provides that "The Director shall assign the opposition
proceeding to a panel of three administrative patent judges ... The panel shall
decide the questions of patentability raised in each opposition request for
which an opposition proceeding has been instituted. The decision shall be based
upon the prosecution record that was the basis for the grant of the patent and
the additional submissions by the parties to the opposition proceeding
authorized under this chapter."
The bill provides that the patent owner may file responses to
opposition requests, and may request amendment of any claims that are the
subject of an opposition request. It further provides for limited discovery,
hearings, briefs, and written decisions.
And, "The opposer in an opposition proceeding under this chapter
shall have the burden to prove the invalidity of a claim by a preponderance of
the evidence. The determination of invalidity shall be based upon the broadest
reasonable construction of the claim."
Appeals of final determinations of the panel in an opposition
proceeding would be made to the U.S. Court of Appeals for the Federal Circuit.
Then, "the determination with respect to an issue of invalidity
raised by an opposer shall bar that opposer from raising, in any subsequent
proceeding involving that opposer under this title, any issue of fact or law
actually decided and necessary to the determination of that issue." But, the
bill provides one exception. "If an opposer in an opposition proceeding
demonstrates ... that there is additional factual evidence that is material to
an issue of fact actually decided in the opposition proceeding, and necessary to
the final determination in the opposition proceeding, that could not reasonably
have been discovered or presented in the opposition proceeding by that opposer,
the opposer may raise, in that subsequent proceeding, that issue of fact and any
determined issue of law for which the issue of fact was necessary."
Rep. Berman is the ranking Democrat on the
House Judiciary Committee's
Courts, the Internet and Intellectual Property Subcommittee (CIIP). Rep. Boucher
is the second most senior Democrat on the CIIP Subcommittee. Both were first
elected at the same time. Rep. Berman has seniority because his name precedes
Rep. Boucher's in alphabetical ordering.
On June 24, 2004, the CIIP Subcommittee held a hearing titled "Patent Quality
Improvement: Post-Grant Opposition". See,
[6 pages in PDF] of James Toupin (General Counsel of the U.S. Patent and
prepared testimony [PDF] of Jeffrey Kushan (outside counsel for Genentech),
of Michael Kirk (Executive Director of the American Intellectual Property Law
prepared testimony [PDF] of Karl Sun (Google).
The Federal Trade Commission (FTC) recommended
in its October 2003 report titled "To Promote Innovation: The Proper Balance of
Competition and Patent Law and Policy" that the Congress create "an
administrative procedure for post-grant review and opposition that allows for
meaningful challenges to patent validity short of federal court litigation. To
be meaningful, the post-grant review should be allowed to address important
patentability issues. The review petitioner should be required to make a
suitable threshold showing." See,
Summary [18 pages in PDF] and
Report [2.28 MB in
PDF]. See, story titled "FTC Releases Report on Competition and Patent Law" in
TLJ Daily E-Mail
Alert No. 768, October 29, 2003.
The American Intellectual Property
Law Association (AIPLA) hosted a panel discussion on Friday, October 15, 2004,
as a part of its annual convention, that included a discussion of this proposal. There was
wide agreement that a post-grant opposition process is necessary. However, there
was disagreement over the details.
|FCC Releases Fiber to the
10/18. The Federal Communications Commission
(FCC) released the
text [28 pages in PDF] of its Order on Reconsideration that relieves incumbents
Section 251 unbundling requirements for fiber to the curb (FTTC) loops,
where fiber is extended within 500 feet of a customer's premises.
This Order states that "we conclude that the record here demonstrates that
the same unbundling relief as provided for FTTH loops in the Triennial Review
Order and MDU Reconsideration Order is warranted for FTTC loops
provided certain architectural requirements are met as discussed below.28 In
arriving at this conclusion, we are persuaded that making such a change in our
rules is necessary to ensure that regulatory disincentives for broadband
deployment are removed for carriers seeking to provide advanced services to mass
market customers using FTTC technology."
The order defines FTTC loops as "a fiber transmission facility connecting to
copper distribution plant that is not more than 500 feet from the customer’s
premise". The order further specifies that "the fiber transmission facility in a
FTTC loop must connect to copper distribution plant at a serving area interface
from which every other copper distribution subloop also is not more than 500
feet from the respective customer’s premise."
This order states that "when fiber is brought within 500 feet of a
subscriber's premise, carriers can provide broadband services comparable to that
provided by FTTH architecture, including data speeds of 10 megabits per second
(Mbps) in addition to high definition multi-channel video services."
The FCC order offers this rationale. "First, we conclude that requesting
carriers are not impaired in greenfield areas and face only limited impairment
without access to FTTC loops where FTTC loops replace pre-existing loops.
Second, as with FTTH loops, competitive LECs deploying FTTC loops have increased
revenue opportunities through the ability to offer voice, multi-channel video,
and high-speed data services." (Footnotes removed from quotations.)
The FCC adopted this item at its October 14, 2004 meeting. See, story titled
"FCC Rules ILECs Have No § 251 Unbundling Obligations for FTTC" in TLJ
Daily E-Mail Alert No. 997, October 15, 2004. This item is FCC 04-248 in CC Docket No.
01-338, CC Docket No. 96-98, and CC Docket No. 98-147.
|2nd Circuit Reverses Injunction In WorldCom
Multidistrict Securities Litigation
10/18. The U.S. Court of Appeals
(2ndCir) issued its
opinion [21 pages in PDF] in Retirement Systems of Alabama v. J.P.
Morgan Chase & Co., reversing the judgment of the
U.S. District Court (SDNY), which is
the venue for the multidistrict securities litigation arising from the collapse
of WorldCom, enjoining respondents from pursuing a related action in the Alabama
Circuit Court for Montgomery County.
The respondents are not plaintiffs in the action in the U.S. District
Court. The District Court concluded that a trial date of October 18, 2004 in the
Alabama action would disrupt the District Court trial date of January 10, 2005,
and that an injunction postponing the Alabama action was therefore "necessary in
aid of its jurisdiction."
The Court of Appeals reversed and remanded. It held that the District Court’s
injunction was barred by the Anti-Injunction Act,
U.S.C. § 2283, which
permits a federal court to enjoin a state court proceeding only where "expressly
authorized by Act of Congress, or where necessary in aid of its jurisdiction, or
to protect or effectuate its judgments."
This case is Retirement Systems of Alabama v. J.P. Morgan Chase & Co.,
App. Ct. No. 04-2275-cv. Judge Jose Cabranes wrote the opinion for the Court of
10/18. The Progress and Freedom Foundation
(PFF) released a
paper [7 pages in PDF] titled "Universal Service: Is It Still Relevant?".
It was written by Ray Gifford of the PFF.
10/14. The Office of the U.S. Trade
Representative (USTR) released a
document [69 pages in PDF] titled "Annual Reform Recommendations from the
Government of the United States to the Government of Japan under the U.S.-Japan Regulatory
Reform and Competition Policy Initiative". It includes recommendations regarding
regulation of telecommunications and information technology, intellectual
property protection, competition law and policy, and government transparency and
independent regulators. See also, USTR
|Washington Tech Calendar
New items are highlighted in red.
|Tuesday, October 19
The House is in recess until November 16, 2004. See,
Republican Whip Notice.
The Senate is in recess until November 16, 2004.
10:00 AM. The U.S. District Court
(DC) will hold a status conference in U.S. v. Microsoft, the
government antitrust case against Microsoft.. On October 8, 2004, Microsoft, the
Department of Justice (DOJ), and various state
plaintiffs filed a Joint
Status Report on Microsoft's Compliance with the Final Judgments. This case is
D.C. No. 98-1232 (CKK), Judge Colleen Kotelly presiding. Location: Courtroom
11, Prettyman Courthouse, 333 Constitution Ave., NW.
12:00 NOON. The Federal
Communications Bar Association's (FCBA) Executive Committee will meet. Location:
Wiley Rein & Fielding, 1776 K Street, NW.
4:00 - 5:00 PM. The
U.S. Chamber of Commerce will host an
event titled "Intellectual Property Roundtable featuring Attorney General John
Ashcroft". AG John
Ashcroft will discuss the Department of Justice's
(DOJ) report [96 pages
in PDF] titled "Report of the Department of Justice's Task Force on Intellectual
Property". See, story titled "DOJ IP Task Force Issues Recommendations"
in TLJ Daily E-Mail Alert No. 995, October 13, 2004. See,
notice. Prices vary. The event will be webcast by the U.S. Chamber. Location:
U.S. Chamber, 1615 H St., NW.
4:00 PM. The Federal
Communications Bar Association's (FCBA) Legislative Committee will host an event
titled "Afternoon Chat with Howard Waltzman". Waltzman is the Chief Counsel
to the House Commerce Committee's Subcommittee on Telecommunications and the Internet.
RSVP to firstname.lastname@example.org. Location:
Wiley Rein & Fielding,1776 K Street, NW.
|Wednesday, October 20
8:00 AM. The Federal Communications Bar
Association (FCBA) will host a breakfast. The speaker will be Dan Glickman,
the new head of the Motion Picture Association of
America (MPAA). Location: Capitol Hilton, 16th & K Streets, NW.
9:30 - 11:00 AM. The
Progressive Policy Institute (PPI) will host
a panel discussion titled "Privacy vs. Security: A False Choice?".
The speakers will be Paul Rosenzweig (Heritage
Foundation), David Sobel
(Electronic Privacy Information Center), and
Robert Atkinson (Director of the PPI's Technology and New Economy Project).
notice. Location: PPI, 600 Pennsylvania Ave., SE, Suite 400.
10:00 AM - 3:00 PM. The
Department of Justice (DOJ), the
Motion Picture Association of America (MPAA) and
the Recording Industry Association of America (RIAA),
CourTV, and other entities will host a forum for students on intellectual property
theft. Attorney General John
Ashcroft will speak at 11:00 AM. Deputy Attorney General
James Comey will also participate. The DOJ
notice states that "All event activities are open press". Location: Great Hall,
DOJ, 950 Pennsylvania Ave., NW.
10:00 AM. Jeffrey Carlisle, Chief of the Federal Communications
Commission's (FCC) Wireline Communications Bureau
(WCB), will hold an event titled "briefing for members of the media". RSVP
to Mark Wigfield at 202 418-0253. Location: FCC, 445 12th St., SW, Room TW A-402/A-442.
11:00 AM - 12:30 PM. The Cato Institute
will host a panel discussion titled "The Next Big Thing in Copyright? The
Induce Act and Contributory Liability". Location: Cato, 1000 Massachusetts
12:15 PM. The New America Foundation
(NAF) will host a brown bag lunch. The speaker will be Leo Hindery (Chairman of
HL Capital and Former CEO of TCI and AT&T Broadband). RSVP to Jennifer Buntman at
202 986-4901 or email@example.com.
Location: NAF, 1630 Connecticut Ave., NW, 7th Floor.
6:00 - 8:15 PM. The DC Bar Association's
Computer and Telecommunications Law Section will host a continuing legal education
(CLE) program titled "Ethics and the Internet". The speaker will
be J.T. Westermeier
(Piper Rudnick). See,
Prices vary from $80 to $115. For more information, call 202 626-3488. Location: D.C.
Bar Conference Center, B-1 Level, 1250 H St., NW.
|Thursday, October 21
9:30 AM. The U.S.
Court of Appeals (DCCir) will hear oral argument in In Re AT&T,
No. 03-1397. Judges Ginsburg, Sentelle and Randolph will preside. Location: Prettyman
Courthouse, 333 Constitution Ave., NW.
12:00 NOON. The Heritage Foundation
will host a panel discussion titled "Secure Flight: Screening for Terrorists
on Passenger Planes". The speakers will be Justin Oberman
(Transportation Security Administration), Lisa Dean
(TSA), and Paul Rosenzweig (Heritage). See,
notice. Location: 214
Massachusetts Ave., NE.
12:15 PM. The Federal Communications Bar
Association's (FCBA) Cable Practice Committee will host a brown bag lunch. Jeffrey
Carlisle, Chief of the Federal Communications Commission's (FCC)
Wireline Competition Bureau will speak on
"VOIP and Cable". RSVP to Frank Lloyd 202 434-7309 or
firstname.lastname@example.org. Location: 9th Floor,
Mintz Levin, 701 Pennsylvania Ave., NW.
4:00 PM. Michael Carrier (Rutgers University Law School) will present a
paper titled "Cabining Intellectual Property Through a Property
Paradigm" at an event hosted by the Dean Dinwoodey Center for Intellectual
Property Studies at the George Washington University
Law School (GWULS). For more information, contact Robert Brauneis at 202 994-6138
or email@example.com. The event is free and
open to the public. See,
Location: GWULS, Faculty Conference Center, Burns Building, 5th Floor, 716
20th Street, NW.
5:30 - 7:30 PM. The DC
Bar Association's Intellectual Property Law Section will host an event titled
"Intellectual Property Law Section Fall Reception". See,
Prices vary from $25 - $50. For more information, call 202 626-3463. Location: The
Club at Franklin Square, 1300 Eye Street, NW, Lobby Level.
6:00 - 8:00 PM. The Federal Communications
Bar Association (FCBA) will host the first part of a two part continuing
legal education (CLE) seminar on Homeland Security. Prices vary. See,
Location: FCC, Commission Meeting Room, 445 12th St., SW.
|Friday, October 22
12:15 PM. The Federal Communications
Bar Association's (FCBA) Young Lawyers Committee will host a brown bag lunch.
Harry Martin (President of
the FCBA) and Michele Farquhar (President-Elect of the FCBA) will speak on involvement
in the FCBA and building a career in communications law. For more information, contact
Jason Friedrich at firstname.lastname@example.org
or Pam Slipakoff at Pam.Slipakoff@fcc.gov.
Location: Drinker Biddle & Reath, 1500 K Street NW, Suite 1100.
12:30 - 2:00 PM. The Congressional Internet Caucus
Advisory Committee, the Federal Trade Commission (FTC),
and the National Cyber Security Alliance (NCSA) will host a panel discussion titled
"Computer Security: What Your Constituents Need to Know". The speakers
will be FTC Commissioner Orson Swindle, Susan Koehler (Microsoft), Martha Lockwood,
(NCSA), and Wendy Tazelaar (WellsFargo.com). Lunch will be served. Registration is required;
contact email@example.com or
202 638-4370. Location: Room HC-5, Capitol Building.
|Monday, October 25
Day one of a five day conference hosted by the Office of the Secretary of
Defense (OSD) Networks and Information Integration (NII) and the Joint Chiefs of Staff
titled "7th Annual DoD Spectrum Management Conference". See,
Radisson Hotel, Annapolis, Maryland.
|Tuesday, October 26
9:30 AM. The Department of Commerce's (DOC)
Bureau of Industry and Security's (BIS/BXA)
Sensors and Instrumentation
Technical Advisory Committee (SITAC) will hold a partially closed meeting. The
agenda includes discussion of Wassenaar Export Group proposals on
semiconductor lasers and cameras. See,
notice in the Federal Register, October 8, 2004, Vol. 69, No.195, at Page
60352. Location: Room 3884, DOC, 14th Street between Constitution and
Pennsylvania Aves., NW.
Day two of a five day conference hosted by the Office of the Secretary of
Defense (OSD) Networks and Information Integration (NII) and the Joint Chiefs of
Staff titled "7th Annual DoD Spectrum Management Conference". See,
Radisson Hotel, Annapolis, Maryland.
Deadline to submit reply comments to the Library of Congress in response
to its notice of proposed rulemaking (NPRM) regarding continuation, with a few
modifications, of the procedures adopted by the Copyright Office in 1995 that permit
copyright applicants to request reconsideration of decisions to refuse registration. See,
notice in the Federal Register, July 13, 2004, Vol. 69, No. 133, at Pages
|About Tech Law Journal
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