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November 24, 2004, 9:00 AM ET, Alert No. 1,025.
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House Approves Bill that Includes the Commercial Spectrum Enhancement Act

11/23. The House approved HR 5419, a composite bill that includes the "Commercial Spectrum Enhancement Act", the "ENHANCE Act", and the "Universal Service Antideficiency Temporary Suspension Act", on Saturday afternoon, November 20, 2004, by unanimous consent, without debate.

Rep. Fred Upton (R-MI), the Chairman of the House Commerce Committee's Subcommittee on Telecommunications and the Internet, introduced this bill earlier in the day. See, text of bill.

Title I of HR 5419 is titled the "Ensuring Needed Help Arrives Near Callers Employing 911 Act of 2004" or "ENHANCE 911 Act". Rep. Chip Pickering (R-MS), the Vice-Chairman of the House Commerce Committee, stated in the House that this bill will "improve, enhance, and promote the Nation's homeland security, public safety, and citizen activated emergency response capabilities through the use of enhanced 911 services". He added that it will "further upgrade Public Safety Answering Point capabilities and related functions in receiving E-911 calls" and "support in the construction and operation of a ubiquitous and reliable citizen activated system". See, Congressional Record, November 20, 2004, at Page H10219.

Title II of the bill is the "Commercial Spectrum Enhancement Act". Rep. Pickering stated that this bill will "amend the National Telecommunications and Information Administration Organization Act to facilitate the reallocation of spectrum from governmental to commercial users".

See also, HR 1320, also titled the "Commercial Spectrum Enhancement Act". The House passed its version of HR 1320 on June 11, 2003. See, story titled "House Passes Commercial Spectrum Enhancement Act" in TLJ Daily E-Mail Alert No. 679, June 12, 2003. The Senate Commerce Committee passed its version of HR 1320 on June 26, 2003. The Senate version included a provision exempting from auction spectrum for fixed terrestrial services in the 12.2-12.7 GHz band, also known as the NorthPoint amendment. (This amendment is not in HR 5419.) See, story titled "Senate Commerce Committee Approves Commercial Spectrum Enhancement Act" in TLJ Daily E-Mail Alert No. 689, June 27, 2003.

Rep. Fred UptonHR 1320, which is also sponsored by Rep. Upton (at right), changes the process for reallocating spectrum from federal users to commercial users, such as wireless broadband services. For example, the Department of Defense (DOD) currently uses spectrum in the 1710-1755 MHz band. The National Telecommunications and Information Administration (NTIA) and Federal Communications Commission (FCC) have identified this band for reallocation. The DOD will incur expenses to relocate to other spectrum bands. The bill creates a Spectrum Relocation Fund, funded by auction proceeds, to compensate federal agencies for the cost of relocating. The bill replaces the current role of the House and Senate Appropriations Committees.

Bruce Josten of the U.S. Chamber of Commerce praised the House action. He wrote in a release that "Opening up more spectrum is good for business and good for our economy ... Releasing these licenses will open the gates of investment into the ailing telecommunications market, create tens of thousands of jobs, and benefit American consumers."

Title III of the bill is the "Universal Service Antideficiency Temporary Suspension Act". Rep. Pickering stated that this bill will "provide that funds received as universal service contributions under section 254 of the Communications Act of 1934 and the universal service support programs established pursuant thereto are not subject to certain provisions of title 31, United States Code, commonly known as the Antideficiency Act".

Also on November 20, Rep. Ed Markey (D-MA) introduced HR 5420, which addresses the Antideficiency Act issue.

On November 23, the Leadership Council on Civil Rights (LCCR) issued a statement, and the American Library Association (ALA) issued a statement, urging the Senate to approve HR 5419 and HR 5420, on the grounds that they will exempt the schools and libraries e-rate subsidy program from the Antideficiency Act. The LCCR and ALA state that these bills will "get the funds flowing again".

Meanwhile, on November 23, the Federal Communications Commission (FCC) announced in a release [PDF] that its Universal Service Administrative Company (USAC), which administers the FCC's e-rate subsidy program, has "approved $24.2 million in new funding for projects and services", and sent 194 commitment letters on Monday, November 22, 2004 to schools and libraries receiving funding.

The FCC added that the "USAC had issued $764 million in commitment letters for funding year 2004 before new letters were suspended in August. Letters to be sent near the end of November will be for additional Funding Year 2004 commitments that have been approved for funding and for which cash is available. Additional Funding Year 2004 commitments will be issued in the future as money is available."

House Approves CREATE Act Again

11/20. The House approved S 2192, the CREATE Act, by unanimous consent on Saturday, November 20, 2004. The Senate previously approved the bill. It is ready for President Bush's signature.

This is the "Cooperative Research and Technology Enhancement (CREATE) Act of 2004", a bill to promote collaborative research.

The House approved its version of the bill, HR 2391, on March 10, 2004 by a voice vote. See, story titled "House Passes CREATE Act" in TLJ Daily E-Mail Alert No. 854, March 11, 2004. The Senate approved its version, S 2192, on June 25, 2004. The bills are substantially the same. The report language that accompanies the two bills differs. There may also have been some competition over bragging rights to authorship of the bill.

Also, the language of the CREATE Act is included in S 3021, the "Family Entertainment and Copyright Act of 2004", which the Senate approved on Saturday, November 20, 2004. See, story titled "Senate Approves Copyright Bill" in TLJ Daily E-Mail Alert No. 1,024, November 23, 2004.

The CREATE Act amends Section 103(c) of the Patent Act, which is codified at 35 U.S.C. § 103, to address the August 8, 1997 opinion of the U.S. Court of Appeals for the Federal Circuit in OddzOn Products, Inc. v. Just Toys, Inc., which ruled that derived prior art may serve as evidence of obviousness.

Section 103(c) currently provides a safe harbor for inventions that are the product of collaboration involving co-inventors within a single company. However, scientific research is increasingly being conducted jointly by multiple companies, universities, government labs, and/or other entities.

The holding in the OddsOn case threatens to discourage collaborative research, where the scientists involved are not employed by the same company or entity. Basically, the Court interpreted Section 103(c) to mean that prior art under Sections 102(f) or 102(g) could be used to determine the obviousness of an invention where there is no common ownership or assignment of the invention and information being shared among the collaborators, and the information exchanged is not publicly known. The bill amends Section 103 to provide that patentability is not precluded in the case of research conducted across entities pursuant to a joint research agreement.

Sen. Patrick Leahy (D-VT), is a cosponsor of S 2192, and the ranking Democrat on the Senate Judiciary Committee. He spoke in the Senate on November 20 to thank the House for passing S 2192, and to offer his explanation of the bill. See, Congressional Record, November 20, 2004, at Page S11775.

He said that "In 1980, Congress passed the Bayh-Dole Act, which encouraged private entities and not-for-profits such as universities to form collaborative partnerships that aid innovation. Prior to the enactment of this law, universities were issued fewer than 250 patents each year. Thanks to the Bayh-Dole Act, the number of patents universities have been issued in more recent years has surpassed 2,000--adding billions of dollars annually to the U.S. economy."

He continued that "The CREATE Act corrects a provision in the Bayh-Dole Act which, when read literally, runs counter to the intent of that legislation. In 1997, the United States Court of Appeals for the Federal Circuit ruled, in Oddzon Products, Inc. v. Just Toys, Inc., that non-public information may in certain cases be considered ``prior art´´ -- a standard which generally prevents an inventor from obtaining a patent. The Oddzon ruling was certainly sound law, but it was not sound public policy, and as a result some collaborative teams have been unable to receive patents for their work. As a consequence, there is a deterrent from forming this type of partnership, which has proved so beneficial to universities, the private sector, the American worker, and the U.S. economy."

He concluded that "Recognizing Congress' intended purpose in passing the Bayh-Dole Act, the Federal Circuit invited Congress to better conform the language of the act to the intent of the legislation. The CREATE Act does exactly that by ensuring that non-public information is not considered ``prior art'' when the information is used in a collaborative partnership under the Bayh-Dole Act. The bill that the House passed today also includes strict evidentiary burdens to ensure that the legislation is tailored narrowly so as only to achieve this goal that -- although narrow -- is vitally important."

House Approves Commercial Space Launch Bill

11/20. The House approved HR 5382, the "Commercial Space Launch Amendments Act of 2004", on Saturday, November 20, 2004, by a vote of 269-120. See, Roll Call No. 541. The vote was partisan. Republicans voted 206-2, while Democrats voted 63-117.

Rep. Dana Rohrabacher (R-CA), Rep. Sherwood Boehlert (R-NY), and Rep. Bart Gordon (D-TN) introduced this bill on November 18, 2004. It was referred to the House Science Committee. The Committee held no hearing or markup on this bill. However, this bill is similar to HR 3752, which the House approved back on March 4, 2004, by a vote of 402-1. See, Roll Call No. 39. See also, S 1260, which was approved by the Senate Commerce Committee on July 24, 2004.

HR 5382 amends the Commercial Space Launch Act, Public Law No. 98-575, which is codified at 49 U.S.C. § 70101, et seq.

The House Science Committee wrote in a release issued on November 20 that this bill "will help promote the emerging commercial human space flight industry by putting it on a more solid regulatory footing. It will also make it easier to launch new types of reusable suborbital rockets by allowing the Federal Aviation Administration (FAA) to issue experimental permits that can be granted more quickly and with fewer requirements than licenses."

The Committee elaborated that "Among the negotiated changes in the bill is increased authority for FAA to regulate launches with regard to the safety of passengers and crew. In both the original and current versions, FAA is given full jurisdiction to regulate launch vehicles and procedures to ensure the safety of non-participants (i.e.: third parties on the ground). H.R. 5382 goes further in safety regulation by allowing FAA to regulate launch vehicles and procedures that have been shown to be dangerous or potentially dangerous to passengers and crew.  The bill also ensures participants are fully aware of the inherent risks of human space travel by requiring launch companies to provide customers and crew with a disclaimer warning that the federal government has not certified the safety of the vehicle." (Parentheses in original.)

Appropriations Bill Includes SHVERA

11/20. The House and Senate both approved the conference report on HR 4818, the huge omnibus appropriations bill, on Saturday, November 20, 2004. It includes a revised version of the "Satellite Home Viewer Extension and Reauthorization Act of 2004", also known as the "W. J. (Billy) Tauzin Satellite Television Act of 2004"

The House previously approved an earlier version of the SHVERA as a stand alone bill, HR 4518, by voice vote on October 6, 2004.

As of publication of this issue, the conference report on HR 4818 was not yet published in the Congress's Thomas web site. However, it is in the House Rules Committee web site. See, web page with hyperlinks to the different divisions of the bill. The SHVERA is in Division J [PDF scan], titled "Other Matters". This copy is a PDF scan of 316 pages. It is a very long download. The SHVERA is at PDF pages 122-228 of the Rules Committee draft.

Rep. Joe BartonRep. Joe Barton (R-TX) (at right), the Chairman of the House Commerce Committee, stated in a release that "Passage of SHVERA will increase competition and consumer choice by both allowing satellite providers to continue to provide local and network broadcasts to viewers otherwise unable to receive local programming in their area, and to carry certain out-of-market signals in a comparable way to what cable operators are currently permitted to do. These provisions mean rural Americans will not be cut off from the world of information. From Washington to the distant expanses of Alaska, viewers will be able to have their fingers on the pulse of breaking news. Through the telecommunications medium, we truly have the ability to technologically narrow the expanse of our universe."

Sen. John McCain (R-AZ) stated in a release that "with passage of this bill, Americans who are unable to receive a network television station over-the-air, often those who live in rural areas, will continue to be able to enjoy network programming via satellite. Additionally, I am pleased that passage of this bill will, for the first time, ensure that these same Americans can enjoy digital High-Definition television programming via satellite, even if they are unable to receive the broadcast signal over-the-air."

Sen. McCain continued that "The idea is simple: a consumer who pays good money for an expensive high definition television set should not be denied the ability to enjoy exclusive network programming like the Super Bowl or the All-Star game in high definition merely because he lives in a rural area. This is the right result for rural Americans. I am also proud of this legislation because it will eliminate the discriminatory practice of splitting local broadcast stations, often foreign-language or religious broadcast stations, between two satellite dishes."

The TLJ Daily E-Mail Alert will not be published on Thursday, November 25, or Friday, November 26, 2004.
Washington Tech Calendar
New items are highlighted in red.
Wednesday, November 24

The House is scheduled to meet at 2:00 PM.

The Senate is scheduled to meet at 5:00 PM.

Thursday, November 25

Thanksgiving Day.

The Federal Communications Commission (FCC) and other federal offices will be closed. See, Office of Personnel Management's (OPM) list of federal holidays.

There will be no issue of the TLJ Daily E-Mail Alert.

Friday, November 26

There will be no issue of the TLJ Daily E-Mail Alert.

Monday, November 29

The Supreme Court will return from the recess that it began on Monday, November 25, 2004. See, Order List [14 pages in PDF] at page 14.

6:00 - 9:15 PM. The DC Bar Association will host a continuing legal education (CLE) program titled "How to Litigate an Intellectual Property Case Series, Part 3: How to Litigate a Patent Case". The speaker will be Patrick Coyne (Finnegan Henderson). See, notice. Prices vary from $70 to $115. For more information, call 202 626-3488. Location: D.C. Bar Conference Center, B-1 Level, 1250 H St., NW.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its notice of proposed rulemaking (NPRM) regarding the Emergency Alert System (EAS). The FCC adopted this NPRM at its August 4, 2004 meeting, and released it on August 12, 2004. This NPRM is FCC 04-189 in EB Docket No. 04-296. See, notice in the Federal Register, August 30, 2004, Vol. 69, No. 167, at Pages 52843 - 52847.

Tuesday, November 30

8:30 AM - 3:00 PM. The Department of Commerce's (DOC) National Institute of Standards and Technology's (NIST), Advanced Technology Program Advisory Committee will meet. Pre-registration is required. Contact Carolyn Peters by November 23 at or 301 975-5607. See, notice in the Federal Register, November 9, 2004, Vol. 69, No. 216, at Page 64907. Location: NIST, Administration Building, Lecture Room B, Gaithersburg, MD.

Extended deadline to submit comments to Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking (NPRM) [38 pages in PDF] regarding use by unlicensed devices of broadcast television spectrum where the spectrum is not in use by broadcasters. See, story titled "FCC Adopts NPRM Regarding Unlicensed Use of Broadcast TV Spectrum" in TLJ Daily E-Mail Alert No. 898, May 14, 2004, and story titled "FCC Releases NPRM Regarding Unlicensed Use of TV Spectrum" in TLJ Daily E-Mail Alert No. 905, May 26, 2004. This NPRM is FCC 04-113 in ET Docket Nos. 04-186 and No. 02-380. See, notice (setting original deadlines) in the Federal Register, June 18, 2004, Vol. 69, No. 117, at pages 34103-34112; and notice [PDF] of extended deadlines, and erratum [PDF].

Wednesday, December 1

9:00 AM. Federal Communications Commission (FCC) Commissioner Kathleen Abernathy will hold an event titled "briefing for members of the media". She will discuss her role in the ITU Global Symposium for Regulators (GSR) Conference, to be held in Geneva, Switzerland on December 8-10, 2004. RSVP to Marybeth McCarrick at 202 418-0654 or Location: FCC, Room 8B115, 445 12th Street, SW.

12:15 PM. The Federal Communications Bar Association's (FCBA) Mass Media Practice Committee will host a brown bag lunch. The title of the event is "Meet the Trade Press". No RSVP is required. Location: NAB, 1771 N St., NW.

Thursday, December 2

9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in Rainbow Push Coalition v. FCC, No. 01-1072. Judges Henderson, Rogers and Tatel will preside. Location: Prettyman Courthouse, 333 Constitution Ave., NW.

The Federal Communications Bar Association (FCBA) will host an event titled "18th Annual Chairman's Dinner". The reception will begin at 6:00 PM. The dinner begins at 7:30 PM. Location: Washington Hilton, 1919 Connecticut Ave., NW.

Day one of a two day event hosted by the Federal Communications Bar Association (FCBA) and the Practicing Law Institute (PLI) titled "22nd Annual Telecommunications Policy and Regulation Conference". The price to attend ranges from $1,165.50 to $1,295.00. See, registration form [PDF]. Location. Watergate Hotel, 2650 Virginia Ave., NW.

Friday, December 3

Day two of a two day event hosted by the Federal Communications Bar Association (FCBA) and the Practicing Law Institute (PLI) titled "22nd Annual Telecommunications Policy and Regulation Conference". The price to attend ranges from $1,165.50 to $1,295.00. See, registration form [PDF]. Location. Watergate Hotel, 2650 Virginia Ave., NW.

12:00 NOON - 2:00 PM. The Progress and Freedom Foundation (PFF) will host a panel discussion titled "The Myths and Realities of Universal Service: Revisiting the Justification for the Current Subsidies". The speakers will include Randolph May and Joseph Kraemer. See, notice and online registration page. Press contact: Patrick Ross at 202 289-8928 or Lunch will be served. Location: Room B369, Rayburn Building.

Monday, December 6

9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in James A. Kay v. FCC, No. 02-1175. This is a case pertaining to the finder's preference rule, 47 C.F.R. § 90.173(k)(2)(1992). See, FCC brief [pages in PDF]. Judges Edwards, Sentelle and Randolph will preside. Location: Prettyman Courthouse, 333 Constitution Ave., NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel A, will hear oral argument in Designing Health v. Erasmus (No. 03-1438), Northpoint Technology, Ltd v. MDS America, Inc. (No. 04-1249), and Taylor v. DaimlerChrysler (No. 04-1319). The Northpoint Technology case is an appeal from the U.S. District Court (SDFl) involving claims infringement of patents pertaining to use of DBS spectrum for terrestrial wireless services. See, FedCir calendar. Location: Courtroom 402, 717 Madison Place, NW.

10:00 AM. The U.S. Court of Appeals (FedCir), Panel B, will hear oral argument in ISCO International v. Concuctus, Inc. (No. 04-1007) and Bellehumeur v. Bonnett (No. 04-1258). See, FedCir calendar. Location: Courtroom 203, 717 Madison Place, NW.

Deadline to submit comments in response to the notice of proposed rulemaking by the Department of Defense (DOD), General Services Administration (GSA), and National Aeronautics and Space Administration (NASA) regarding telecommuting by federal contractors. See, notice in the Federal Register, October 5, 2004, Vol. 69, No.192, at Pages 59701 - 59702.

Greenspan Discusses Role of Intellectual Property in Trade

11/19. Federal Reserve Board (FRB) Chairman Alan Greenspan gave a speech in Frankfurt, Germany on financial policy and currencies. However, he also referenced the role of intellectual property in trade and globalization.

He said that "globalization of trade in goods, services, and assets continues to move forward at an impressive pace, despite some indications of increased resistance to that process and the evident difficulties in completing the Doha Round. The volume of trade relative to world gross domestic product has been rising for decades, largely because of decreasing transportation costs and lowered trade barriers. The increasing shift of world GDP toward items with greater conceptual content has further facilitated increased trade because ideas and services tend to move across borders with greater ease and speed than goods."

Greenspan tends not to use the phrase "intellectual property", preferring instead "conceptual products". See, Greenspan's April 4, 2003, speech titled "Market Economies and Rule of Law", and story titled "Greenspan Addresses Intellectual Property Laws" in TLJ Daily E-Mail Alert No. 638, April 7, 2003. See also, Greenspan's speech of February 27, 2004, and story "Greenspan Discusses Property Rights in Conceptual Products" in TLJ Daily E-Mail Alert No. 846, March 1, 2004.

People and Appointments

11/23. CompTel/ASCENT announced that Russell Frisby will step down as CEO in 2005, remaining until a successor is found. See, release.

More News

11/23. The Federal Communications Commission (FCC) released its Report and Order and Further Notice of Proposed Rulemaking (FNPRM) [54 pages in PDF] regarding the children's programming obligations of digital television broadcasters. The FCC announced, but did not release, this item at its meeting back on September 9, 2004. This item is FCC 04-221 in MM Docket 00-167. It states that comments are due by March 1, 2004, and that reply comments are due by April 1, 2004. See, story titled "FCC Adopts Report and Order Re Children's Programming Obligations of DTV Broadcasters" in TLJ Daily E-Mail Alert No. 975, September 13, 2004.

11/19. The U.S. Court of Appeals (FedCir) issued its opinion [11 pages in PDF] in Catalina Marketing International v., a patent case in which the Court of Appeals affirmed the District Court's claim construction and dismissal. Catalina Marketing International, Inc. owns U.S. Patent No. 4,674,041 titled "Method and Apparatus for Controlling the Distribution of Coupons.", Inc. operates a web site that uses inputted user demographic information to target coupon offers for various products to potential customers. Catalina filed a complaint in U.S. District Court (NDIll) against Coolsavings alleging patent infringement. The District Court dismissed the complaint following construction of the claim. Catalina appealed.

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