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December 14, 2004, 9:00 AM ET, Alert No. 1,037.
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President Signs CREATE Act

12/10. President Bush signed S 2192, the "Cooperative Research and Technology Enhancement (CREATE) Act of 2004". See, White House release. It is now Public Law No. 108-453.

The Senate approved this bill on June 25, 2004. The House approved it on November 20, 2004, by unanimous consent. See, Congressional Record, November 20, 2004, at Page H10219.

Although, the House had previously passed an identical version of the bill, HR 2391, on March 10, 2004, by voice vote. See, story titled "House Passes CREATE Act" in TLJ Daily E-Mail Alert No. 854, March 11, 2004; and, story titled "House Approves CREATE Act Again" in TLJ Daily E-Mail Alert No. 1,025, November 25, 2004.

There may have been a dispute over which sponsors would be able to claim authorship. Rep. Orrin Hatch (R-UT), Sen. Patrick Leahy (D-VT) and others introduced the Senate bill. Rep. Lamar Smith (R-TX), Rep. Howard Berman (D-CA) and others introduced the House bill.

Rep. James Sensenbrenner (R-WI), the Chairman of the House Judiciary Committee, who is not a sponsor, described the bill in the House on November 20, 2004. He said that the bill "will help to spur the development of new technologies by making it easier for collaborative inventors who represent more than one organization to obtain the protection of the U.S. patent system for their inventions."

Rep. Sensenbrenner elaborated that "The bill achieves this goal by limiting the circumstances in which confidential information, which is voluntarily exchanged by individual research team members, may be asserted to bar the patenting of the team's new inventions."

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.

Rep. Sensenbrenner concluded that "By enacting S. 2192, Congress will help to foster improved communication among researchers, provide additional certainty and structure for those who engage in collaborative research, reduce patent litigation incentives, and facilitate innovation and investment."

Senate Approves Video Voyeurism Prevention Act

12/7. The Senate approved S 1301, the "Video Voyeurism Prevention Act", by unanimous consent on December 7, 2004. See, Congressional Record, December 7, 2004, at Page S11876.

The House approved the bill by a voice vote on September 21, 2004. See, story titled "House Approves Video Voyeurism Prevention Act" in TLJ Daily E-Mail Alert No. 981, September 22, 2004. The bill is now ready for the President's signature.

This bill amends Title 18, the Criminal Code, to provide that "Whoever, in the special maritime and territorial jurisdiction of the United States, has the intent to capture an image of a private area of an individual without their consent, and knowingly does so under circumstances in which the individual has a reasonable expectation of privacy, shall be fined under this title or imprisoned not more than one year, or both."

Sen. Patrick Leahy (D-VT), a cosponsor of the bill, stated in the Senate on December 7 that "In recent years, the explosion of microcamera technology has fed the growing phenomenon of video voyeurism. Hidden cameras have been discovered in bedrooms, bathrooms, public showers, changing rooms, locker rooms, and tanning salons, all aimed at filming unsuspecting victims in various states of undress. Often, the invasion of privacy is exacerbated when captured images are posted on the Internet for all the world to see."

Sen. Leahy added that "The bill before the Senate today covers the simultaneous Web casting of images or any other transmissions that may not be recorded so that defendants who use this means of violating people's privacy cannot escape punishment."

Oracle Finally to Acquire PeopleSoft

12/13. Oracle Corporation announced that "it has signed a definitive merger agreement to acquire PeopleSoft, Inc., for $26.50 per share (approximately $10.3 billion). The transaction has been approved by the boards of directors of both companies and should close by early January." (Parentheses in original.) See, Oracle release.

PeopleSoft, Inc. announced in a release that "Under terms of the agreement, Oracle will revise its tender offer by this Wednesday, December 15th, and it will remain open through December 28th, unless extended in accordance with the merger agreement. The Board recommends that PeopleSoft stockholders tender their shares into Oracle's offer. Following the completion of the tender offer, Oracle intends to complete a merger in which all remaining PeopleSoft shares will be acquired for $26.50 per share."

"Oracle and PeopleSoft will each stay all pending litigation and will dismiss such litigation permanently following the consummation of the offer." PeopleSoft added that "The offer is subject to at least a majority of the fully diluted outstanding shares being validly tendered into the offer and to a limited number of other customary conditions."

Oracle has long sought to acquire PeopleSoft. Initially, PeopleSoft and its former P/CEO, Craig Conway, opposed the acquisition.

The Department of Justice's (DOJ) Antitrust Division also opposed the acquisition. On February 26, 2004, the U.S. and several states filed a complaint in U.S. District Court (NDCal) against Oracle alleging that its proposed acquisition of PeopleSoft would lessen competition substantially in interstate trade and commerce in violation of Section 7 of the Clayton Act, which is codified at 15 U.S.C. § 18. The plaintiffs sought an injunction of the proposed acquisition. See, story titled "Antitrust Division Sues Oracle to Enjoin Its Proposed Acquisition of PeopleSoft" in TLJ Daily E-Mail Alert No. 846, March 1, 2004.

The government lost in the District Court, and did not appeal. See, story titled "DOJ Loses Oracle Case" in TLJ Daily E-Mail Alert No. 974, September 10, 2004.

People and Appointments

12/13. Sean O'Keefe, Administrator National Aeronautics and Space Administration (NASA), announced his resignation. See, NASA release.

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Washington Tech Calendar
New items are highlighted in red.
Tuesday, December 14

The Senate will next meet on January 4, 2005 at 12:00 NOON.

The Supreme Court will return from recess on Monday, January 10, 2005. See, Order List [9 pages in PDF] at page 9.

8:30 AM - 4:00 PM. The CTIA will host a one day seminar on the Federal Communications Commission's (FCC) Nationwide Programmatic Agreement [PDF] and the FCC/USET Tribal Best Practices Agreement. These pertain to the FCC's historic preservation review process. The price to attend is $200 for CTIA members and $300 for non-members. The deadline to register is December 10. See, notice. Location: CTIA, 1400 16th Street, NW.

TIME CHANGE. 10:00 AM - 1:30 PM. The American Enterprise Institute (AEI) will host a program titled "The Proper Direction for Telecommunications Reform Legislation". The speakers will include Harold Furchtgott-Roth (former FCC Commissioner), Robert Crandall (Brookings), Greg Sidak (AEI), Robert Hahn (AEI Brookings Joint Center) and John Mayo (Georgetown University's McDonough School of Business). Duane Ackerman, Chairman of BellSouth, will give the luncheon address, optimistically titled the "The Telecommunications Act of 2005". See, notice and registration page. Press contact: Veronique Rodman at 202 862-4871 or Location: AEI, 12th floor, 1150 17th St., NW.

12:00 NOON. The Americans for a Secure Internet (ASI) will host a luncheon and panel discussion titled "Why Santa Shops Online". The speakers will be Steve DelBianco (NetChoice), Wayne Crews (Competitive Enterprise Institute), Raynor Dahlquist (VeriSign), and Jonathan Zuck (Association for Competitive Technology). Register by December 13. See, registration page. For more information, contact Abigail Phillips at 202 331-2130 ext. 107. Location: Phoenix Park Hotel, 520 North Capitol St., NW.

6:00 - 8:15 PM. The DC Bar Association will host a continuing legal education (CLE) program titled "2004 Intellectual Property Law Year in Review Series: Part 2 -- Copyright, Trademark and Internet". The speakers will be Brian Banner (Banner & Witcoff), Beckwith Burr (Wilmer Cutler & Pickering), and and Terence Ross (Gibson Dunn & Crutcher). 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) regarding the high cost universal support mechanisms for rural carriers and the appropriate rural mechanism to succeed the five year plan adopted in the Rural Task Force Order. See, notice in the Federal Register, September 3, 2004, Vol. 69, No. 171, at Pages 53917 - 53923.

Wednesday, December 15

9:30 AM. The Federal Communications Commission (FCC) will hold a meeting. The event will be webcast. See, agenda [PDF]. Location: FCC, 445 12th Street, SW, Room TW-C05 (Commission Meeting Room).

Day one of a two day workshop hosted by the Federal Trade Commission (FTC) titled "Peer to Peer File-Sharing Technology: Consumer Protection and Competition Issues". November 15 is the deadline to submit comments and requests to participate. See, FTC release and notice [13 pages in PDF] to be published in the Federal Register. Location: FTC Satellite Building, 601 New Jersey Ave., NW.

12:00 PM. The Cato Institute will host an panel discussion titled "Reflections of a Free-Trade Democrat". The speakers will by Rep. Cal Dooley (D-CA), I.M. Destler (author of American Trade Politics), and Daniel Griswold (Cato). Lunch will be served after the program. See, notice and registration page. Location: Cato, 1000 Massachusetts Ave., NW.

2:00 - 4:00 PM. The WRC-07 Advisory Committee's Informal Working Group 3: IMT-2000 and 2.5 GHz Sharing Issues will meet. See, FCC notice [PDF]. Location: FCC, 445 12th Street, SW, Room 7-B516 (7th Floor South Conference Room).

3:30 - 4:30 PM. The New America Foundation (NAF) will host a panel discussion titled "How Will We Pay For The Digital Future of Public Broadcasting". The speakers will be Jim Barksdale (former CEO of Netscape), Reed Hundt (McKinsey and Co. and former FCC Chairman), Kathleen Cox (President of the Corporation for Public Broadcasting), Pat Mitchell (President of PBS), John Lawson (P/CEO of the Association of Public Television Stations), and Michael Calabrese (NAF). RSVP to Jennifer Buntman at or 202 986-4901. See, notice. Location: American Enterprise Institute (AEI), 12th Floor, 1150 17th Street, NW.

6:00 - 8:00 PM. The Federal Communications Bar Association (FCBA) will host a continuing legal education (CLE) seminar titled "New Frontiers in Digital Video: Recent Developments in Copyright Law and The FCC’s Role in Content Protection". The speakers will be Fritz Attaway (Motion Picture Association of America), Sarah Deutsch (Verizon Communications), Gigi Sohn (Public Knowledge) and James Burger (Dow Lohnes & Albertson), and Rick Chessen (FCC). To register, contact Ann Henson or Heidi Kurtz at 202-293-4000. Prices range from $50 to $125. Location: Dow Lohnes & Albertson, 8th Floor, 1200 New Hampshire Ave., NW.

Thursday, December 16

11:00 AM. The Federal Communications Bar Association's (FCBA) Legislation Committee will host an event. The speaker will be Gregg Rothschild (Democratic Counsel, House Commerce Committee). He will speak on legislative issues. RSVP to Helene Marshall at Location: Wiley Rein & Fielding, 1776 K St., NW.

12:00 NOON - 1:30 PM. The DC Bar Association's Intellectual Property Law Section and Legislative Committee will host a program titled "Update On Justice Department Enforcement Of Intellectual Property Laws". The speakers will be Daniel Bryant (Assistant Attorney General in charge of the DOJ's Office of Legal Policy, and Vice-Chair of the DOJ's Intellectual Property Task Force) and Barbara Berschler. See, notice. Prices vary from $15 to $30. For more information, call 202 626-3463. Location: D.C. Bar Conference Center, B-1 Level, 1250 H St., NW.

1:30 - 4:30 PM. The Executive Office of the President's (OEP) Office of Science and Technology Policy's (OSTP) National Science and Technology Council's (NSTC) Committee on Technology, Committee on Homeland and National Security's Infrastructure Subcommittee will hold a meeting that is closed to the public. For more information, contact John Hoyt at or 202 772-9959. Location: White House Conference Center (Truman Room).

Day two of a two day workshop hosted by the Federal Trade Commission (FTC) titled "Peer to Peer File-Sharing Technology: Consumer Protection and Competition Issues". See, FTC release and notice [13 pages in PDF] to be published in the Federal Register. Location: FTC Satellite Building, 601 New Jersey Ave., NW.

Friday, December 17

9:30 AM - 12:00 NOON. The U.S. China Policy Foundation will host an event titled "Prospects for U.S.-China Relations in Bush Administration". For more information, contact Chi Wang at 202 547-8615. Location: Murrow Room, National Press Club, 529 14th St. NW, 13th Floor.

12:00 NOON. Deadline to submit comments to the Office of the U.S. Trade Representative (USTR) regarding various trade related telecommunications issues. The USTR seeks comments on "Whether any WTO member is acting in a manner that is inconsistent with its commitments under the WTO Basic Telecommunications Agreement or with other WTO obligations", "Whether Canada or Mexico has failed to comply with their telecommunications commitments or obligations under NAFTA", "Whether Chile or Singapore or any other FTA partner with an Agreement that comes into force on or before January 1, 2005 has failed to comply with their telecommunications commitments or obligations under the respective FTAs", "Whether other countries have failed to comply with their commitments under additional telecommunications agreements", and "Whether there remain outstanding issues from previous Section 1377 reviews". See, notice in the Federal Register, Vol. 69, No. 226, Wednesday, November 24, 2004, at Page 68439.

Tuesday, December 21

12:00 NOON. The Federal Communications Bar Association's (FCBA) Executive Committee will meet. Location: Wiley Rein & Fielding, 1776 K St., NW.

Extended deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking and Declaratory Ruling (NPRM & DR) [100 pages in PDF] regarding imposing Communications Assistance for Law Enforcement Act (CALEA) obligations upon broadband internet access services and voice over internet protocol (VOIP). This NPRM is FCC 04-187 in ET Docket No. 04-295. The FCC adopted this NPRM at its August 4, 2004 meeting, and released it on August 9. See, story titled "Summary of the FCC's CALEA NPRM" in TLJ Daily E-Mail Alert No. 960, August 17, 2004. See, notice in the Federal Register, September 23, 2004, Vol. 69, No. 184, Pages 56976 - 56987. See also, notice of extension [PDF].