7/12. The U.S. Court of Appeals (FedCir) issued its divided en banc opinion [PDF] in Phillips v. AWH Corporation, a case regarding claim construction in patent infringement actions. The patent in suit is not important. It is U.S. Patent No. 4,677,798, pertaining to steel shell panels that can be welded together to form vandalism resistant walls. This significance of this case, which attracted numerous amicus curiae briefs, lies in its review of claim construction procedure, and in particular, the use of extrinsic evidence, such as dictionaries. The majority adhered to its prior opinions. Judges Mayer wrote a scathing dissent which Judge Newman joined.

The majority opinion, written by Judge Bryson, reviews at length, and reaffirms, the Federal Circuit's prior opinions on claim construction, including Markman v. Westview Instruments, Inc., 52 F.3d 967 (1995 en banc), affirmed by the Supreme Court, at 517 U.S. 370 (1996); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (1996); and Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (2004).

With respect to extrinsic evidence, the Court wrote that "we have also authorized district courts to rely on extrinsic evidence", and that "dictionaries and treatises can be useful in claim construction", but that "We have viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms".

The Court identified several weaknesses of extrinsic evidence. First, it wrote that "extrinsic evidence by definition is not part of the patent and does not have the specification's virtue of being created at the time of patent prosecution for the purpose of explaining the patent's scope and meaning".

Second, "while claims are construed as they would be understood by a hypothetical person of skill in the art, extrinsic publications may not be written by or for skilled artisans and therefore may not reflect the understanding of a skilled artisan in the field of the patent".

Third, "extrinsic evidence consisting of expert reports and testimony is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence. The effect of that bias can be exacerbated if the expert is not one of skill in the relevant art or if the expert's opinion is offered in a form that is not subject to cross-examination".

Fourth, "there is a virtually unbounded universe of potential extrinsic evidence of some marginal relevance that could be brought to bear on any claim construction question".

Fifth, "undue reliance on extrinsic evidence poses the risk that it will be used to change the meaning of claims in derogation of the "indisputable public records consisting of the claims, the specification and the prosecution history," thereby undermining the public notice function of patents." (Citation omitted.)

The Court concluded that "extrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence. Nonetheless, because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence. In exercising that discretion, and in weighing all the evidence bearing on claim construction, the court should keep in mind the flaws inherent in each type of evidence and assess that evidence accordingly."

Judge Mayer and Newman used this case to attack the Federal Circuit's entire approach to claim construction. Mayer wrote in dissent that "Now more than ever I am convinced of the futility, indeed the absurdity, of this court's persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component."

"In our quest to elevate our importance, we have, however, disregarded our role as an appellate court; the resulting mayhem has seriously undermined the legitimacy of the process, if not the integrity of the institution." Mayer continued that "In the name of uniformity, Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), held that claim construction does not involve subsidiary or underlying questions of fact and that we are, therefore, unbridled by either the expertise or efforts of the district court. What we have wrought, instead, is the substitution of a black box, as it so pejoratively has been said of the jury, with the black hole of this court. Out of this void we emit ``legal´´ pronouncements by way of ``interpretive necromancy´´; these rulings resemble reality, if at all, only by chance."

"Regardless, and with a blind eye to the consequences, we continue to struggle under this irrational and reckless regime, trying every alternative -- dictionaries first, dictionaries second, never dictionaries, etc., etc., etc. Again today we vainly attempt to establish standards by which this court will interpret claims. But after proposing no fewer than seven questions, receiving more than thirty amici curiae briefs, and whipping the bar into a frenzy of expectation, we say nothing new, but merely restate what has become the practice over the last ten years -- that we will decide cases according to whatever mode or method results in the outcome we desire, or at least allows us a seemingly plausible way out of the case. I am not surprised by this. Indeed, there can be no workable standards by which this court will interpret claims so long as we are blind to the factual component of the task."

Mayer added that "While this court may persist in the delusion that claim construction is a purely legal determination, unaffected by underlying facts, it is plainly not the case. Claim construction is, or should be, made in context: a claim should be interpreted both from the perspective of one of ordinary skill in the art and in view of the state of the art at the time of invention. ... These questions, which are critical to the correct interpretation of a claim, are inherently factual. They are hotly contested by the parties, not by resort to case law as one would expect for legal issues, but based on testimony and documentary evidence."

The Court of Appeals received over thirty amicus briefs.

Mark Lemley, a professor at Stanford Law School, wrote a brief [26 pages in PDF] for Microsoft, IBM, Google and Micron. See also, brief [PDF] of the American Intellectual Property Law Association (AIPLA), and brief [PDF] of the Intellectual Property Owners Association (IPO). Also, Dennis Crouch has published copies of many of the party and amicus briefs in his web site, Patently-O.

This case is Edward Phillips v. AWH Corporation, et al., U.S. Court of Appeals for the Federal Circuit, App. Ct. No. 03-1269 and 03-1286, an appeal from the U.S. District Court for the District of Colorado.

7/12. The Senate Judiciary Committee's (SJC) Subcommittee on Intellectual Property held a hearing titled "Music Licensing Reform". The hearing focused on 17 U.S.C. § 115 and online music services. Sen. Patrick Leahy (D-VT) wrote in his opening statement that "It does appear that there are problems with the current licensing system."

Marybeth Peters, the Register of Copyrights, wrote in her prepared testimony that "The compulsory license governing the reproduction and distribution rights for nondramatic musical works has been in effect for 96 years, but it is now outdated and in need of holistic reform. Prior attempts to amend the present section 115 license in the Copyright Act and the Copyright Office’s corresponding regulations have proven insufficient with respect to the emergence of online music services. The digital environment has exposed fatal defects in the current music licensing structure caused in major part by the artificial division between the licensing of public performance rights and the licensing of reproduction and distribution rights."

Peters (at right) added that "Reform is necessary not only to promote the availability of a wide variety of music to the listening public, but also to assist in the music industry’s continuing fight against piracy."

Rob Glaser, the Ch/CEO of RealNetworks, testified on behalf of the Digital Media Association. He wrote in his prepared testimony that "By clarifying and simplifying the compulsory composition mechanical license and the statutory sound recording performance license, this Subcommittee and the Congress will provide RealNetworks and the entire online music industry with business and legal certainty and dramatically reduced complexity. Modernizing these statutes will significantly enhance our ability to offer exciting royalty-paying online music services that will win even more consumers away from pirate networks."

He argued that the Congress should "Replace the dysfunctional Section 115 compulsory mechanical song-by-song license with a simple, comprehensive statutory blanket license that can be administered digitally and triggered on one notice". He added that the Congress should provide that "the payment due when a composition is streamed is entirely in the form of performance royalties, and the payment due when a composition is distributed as a download is entirely in the form of mechanical royalties".

See also, prepared testimony of Rick Carnes (Songwriters Guild of America), prepared testimony of Glen Barros (Comcord Records), prepared testimony of Ish Cuebas (Trans World Entertainment), prepared testimony of David Israelite (P/CEO of the National Music Publishers’ Association), and prepared testimony of Del Bryant (P/CEO of BMI).

7/12. The U.S. Court of Appeals (3rdCir) issued its opinion [29 pages in PDF] in US v. Bell, in which the Court of Appeals affirmed the District Court's permanent injunction of a web site operator who published information about tax laws and the Internal Revenue Service (IRS). The Court of Appeals held that the First Amendment does not protect "unlawful tax advice". This case is US v. Thurston Bell, U.S. Court of Appeals for the 3rd Circuit, App. Ct. No. 04-1640, an appeal from the U.S. District Court for the Middle District of Pennsylvania, D.C. No. 01-cv-02159.

7/12. President Bush signed S 1282, at bill that amends the Communications Satellite Act of 1962. The White House press office stated in a release that this bill "eliminates certain limitations on officers, managers, and directors of successor entities to the International Telecommunications Satellite Organization (INTELSAT) and the International Mobile Satellite Organization (Inmarsat); repeals certain criteria for the privatization of INTELSAT and Inmarsat; and requires the United States to preserve the space segment capacity of the Global Maritime Distress and Safety System."

7/11. President Bush signed S 714, the "Junk Fax Prevention Act of 2005". See, White House release.

7/8. The U.S. Court of Appeals (FedCir) issued its opinion [27 pages in PDF] in SanDisk v. Memorex Products, a patent infringement case involving flash EEprom technology. SanDisk is the holder of U.S. Patent No. 5,602,987. SanDisk filed a complaint in U.S. District Court (NDCal) against Memorex and others alleging patent infringement. The District Court granted summary judgment of non-infringement. The Court of Appeals vacated and remanded. It concluded that the District Court "misread the claims at issue, and erred in finding a prosecution disclaimer in support of its reading". It also rejected the contention that judicial estoppel forecloses SanDisk's claim construction arguments on appeal. See also, SanDisk's release praising the decision of the Court of Appeals. This case is Sandisk Corporation v. Memorex Products, Inc., et al., U.S. Court of Appeals for the Federal Circuit, App. Ct. Nos. 04-1422 and 04-1610, appeals from the U.S. District Court for the Northern District of California, Judge Vaughn Walker presiding.

The House will meet at 10:00 AM for legislative business. See, Republican Whip Notice.

The Senate will meet at 9:30 AM. It will resume consideration of HR 2360, the Homeland Security Appropriations bill.

10:00 AM. The House Judiciary Committee will meet to mark up several bills, including HR 3199 [9 pages in PDF], the "USA PATRIOT and Intelligence Reform Reauthorization Act of 2005". See, notice. Press contact: Jeff Lungren or Terry Shawn at 202 225-2492. Location: Room 2141, Rayburn Building.

10:00 AM - 12:00 NOON. The House Intelligence Committee will hold a closed meeting to mark up HR 3199 [9 pages in PDF], the "USA PATRIOT and Intelligence Reform Reauthorization Act of 2005". Location: Room H405, Capitol Building.

11:30 AM. Joshua Bolten, Director of the Office of Management and Budget (OMB), will hold a briefing titled "FY 2005 Mid-Session Review: Revised estimates of the budget deficit, receipts, outlays, and budget authority for fiscal years 2005-2010". See, media advisory containing procedures for admittance. Location: Room 450, Eisenhower Executive Office Building.

Day two of a two day conference hosted by the National Institute of Standards and Technology's (NIST), Computer Security Division titled "Federal Computer Security Program Manager's Forum Annual Off-Site Meeting". See, notice. Location: Bethesda North Marriott Hotel and Conference Center, 5701 Marinelli Road, North Bethesda, MD.

6:00 - 8:30 PM. The Federal Communications Bar Association's (FCBA) Young Lawyers Committee will host an event titled "Happy Hour". For more information, contact Natalie Roisman at natalie dot roisman at fcc dot gov or 202 418-1655, or Jason Friedrich at jason dot friedrich at dbr dot com or 202-354-1340. Location: McCormick & Schmick's, 1652 K Street, NW.

The House will meet at 10:00 AM for legislative business. See, Republican Whip Notice.

8:30 AM - 5:00 PM. The National Institute of Standards and Technology's (NIST) Visiting Committee on Advanced Technology (VCAT) will hold a partially close meeting. The agenda includes presentations on science and technology priorities of the administration and research and development spending trends in the federal government. See, notice in the Federal Register, May 24, 2005, Vol. 70, No. 99, at Page 29721. Location: Employees Lounge, Administration Building, NIST, Gaithersburg, MD.

9:30 AM. The Senate Judiciary Committee (SJC) may hold an executive business meeting. The SJC frequently cancels meetings without notice. See, notice. Press contact: Blain Rethmeier (Specter) at 202 224-5225, David Carle (Leahy) at 202 224-4242 or Tracy Schmaler (Leahy) at 202 224-2154.Location: Room 226, Dirksen Building.

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

9:45 - 11:30 AM. The DC Bar Association will host a visit to and tour of the Copyright Office. The price to attend ranges from $15-$25. For more information, contact 202-626-3463. See, notice. Location: Copyright Office, Room 401, James Madison Memorial Building, First Street & Independence Avenue, SE.

10:00 AM - 4:15 PM. The Consumer Electronics Association (CEA) will host an event titled "IPTV Interface Discovery Group". See, notice. Location: Clarendon Ballroom, Arlington, VA.

10:00 AM - 12:00 NOON. The Department of State's (DOS) International Telecommunication Advisory Committee (ITAC) will meet to prepare for the Americas Regional Preparatory Meeting for the World Telecommunication Development Conference (WTDC-06) in Lima, Peru, from August 9-11, 2005. See, notice in the Federal Register, June 22, 2005, Vol. 70, No. 119, Page 36224. Location: DOS, Room 2533A.

12:30 PM. The Federal Communications Bar Association's (FCBA) Mass Media Practice Committee will host a brown bag lunch. The speaker will be Kris Monteith of the Federal Communications Commission's (FCC) Enforcement Bureau. For more information, Ann Bobeck at ABobeck at nab dot org. Location: National Association of Broadcasters (NAB), 1771 N Street, NW.

1:30 - 3:30 PM. The Federal Communications Commission's (FCC) WRC-07 Advisory Committee's Informal Working Group 2 (Satellite Services and HAPS) will meet. See, notice [PDF]. Location: Leventhal Senter & Lerman, 2000 K Street, NW, 7th Floor Conference Room.

TIME? The American Intellectual Property Law Association's (AIPLA) Board or Directors will meet. Location: Arlington, VA.

The House may meet at 9:00 AM for legislative business. See, Republican Whip Notice.

? 9:30 AM. The Senate Homeland Security and Governmental Affairs Committee's Subcommittee on Federal Financial Management, Government Information, and International Security will hold a hearing on the U.S. relationship with the World Trade Organization (WTO), and the WTO's effect on national sovereignty and economic security. Location: Room 562, Dirksen Building.

12:00 NOON - 2:00 PM. The Progress and Freedom Foundation (PFF) will host a panel discussion titled "Brand X v. FCC: What's Next?". The speakers will include Randolph May (PFF), Dave Baker (EarthLink VP for Law and Public Policy), and Kyle McSlarrow (P/CEO of the National Cable & Telecommunications Association). See, notice and registration page. Lunch will be served. Location: Room 1537, Longworth Building, Capitol Hill.

Deadline to submit comments to the Antitrust Modernization Commission (AMC) in response to the AMC's request for public comments on numerous issues. First, the AMC seeks comments on enforcement institutions, including dual federal merger enforcement, differential merger enforcement standards, the role of states in enforcing federal antitrust laws outside of the merger area, and the allocation of merger enforcement among states, private plaintiffs. Second, the AMC seeks comments on exclusionary conduct. Third, the AMC seeks comments on immunities, exemptions, and the state action doctrine. Fourth, the AMC seeks comments on merger enforcement, including federal antitrust merger enforcement policy generally, transparency in federal agency merger review, efficiencies in merger analysis, the Hart-Scott-Rodino pre-merger review process. Fifth, the AMC seeks comments on several new economy issues, including antitrust analysis of industries in which innovation, intellectual property, and technological change are central features, and on the reports on patent law by the National Academies and the Federal Trade Commission. Finally, the AMC seeks comments on the role of antitrust in regulated industries. See, notice in the Federal Register: May 19, 2005, Vol. 70, No. 96, at Pages 28902-28907.

Deadline to submit initial comments to the Federal Communications Commission (FCC) regarding a petition for a declaratory ruling that certain provisions of the California Consumer Legal Remedies Act (CLRA), as applied to interstate telephone calls, are not preempted by the Telephone Consumer Protection Act (TCPA). See, notice in the Federal Register, June 15, 2005, Vol. 70, No. 114, at Pages 34725 - 34726. This proceeding is CG Docket No. 02-278.

Deadline to submit requests to the Copyright Office to participate in its upcoming roundtables on orphan works (on July 26-27 in Washington DC, and in Berkeley, California on August 2). See, notice in the Federal Register, July 7, 2005, Vol. 70, No. 129, at Pages 39341 - 39343.

2:00 PM. The Senate Homeland Security and Governmental Affairs Committee will hold a hearing on several nominations, including those of Richard Skinner (to be Inspector General of the Department of Homeland Security) and Edmund Hawley (to be an Assistant Secretary of Homeland Security). See, notice. Location: Room 562, Dirksen Building.

2:00 - 5:15 PM. The DC Bar Association will host a continuing legal education (CLE) seminar titled "How to Conduct Business in the Current Chinese Legal Environment: Myths and Facts". The speakers will be Paul Manca (Hogan & Hartson) and others. The price to attend ranges from $70-$125. For more information, call 202-626-3488. See, notice. Location: D.C. Bar Conference Center, 1250 H Street NW, B-1 Level.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its public notice regarding refreshing the record on issues raised in the Further Notice of Proposed Rulemaking (FNPRM) related to carrier identification code (CIC) conservation and the definition of "entity" as found in section 1.3 of the CIC Assignment Guidelines. This public notice is DA 05-1154 in CC Docket No. 92-237; it was released on April 26, 2005. See, notice in the Federal Register, June 1, 2005, Vol. 70, No. 104, at Pages 31405 - 31406.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its Further Notice of Proposed Rulemaking (FNPRM) regarding the exchange of customer account information between local exchange carriers (LECs). This FNPRM is FCC 05-29 in CG Docket No. 02-386. See, notice in the Federal Register, June 1, 2005, Vol. 70, No. 104, at Pages 31406 - 31409.

9:00 AM - 5:30 PM. The Federal Communications Commission's (FCC) North American Numbering Council (NANC) will meet. See, notice and agenda [2 pages in PDF]. Location: FCC, 445 12th Street, SW, Room TW-C305.

TIME? The Advisory Committee to the Congressional Internet Caucus will host a panel discussion titled "Interpreting Grokster". Location:?

9:00 AM - 1:00 PM. The National Telecommunications and Information Administration (NTIA) will host a meeting titled "Pharmers and Spimmers, Hackers and Bluejackers: Combating Wireless Security Threats". See, NTIA notice and notice in the Federal Register, June 22, 2005, Vol. 70, No. 119, at Page 36126. Location: Department of Commerce, Auditorium, 1401 Constitution Ave., NW.

12:00 NOON - 2:00 PM. The DC Bar Association will host a panel discussion titled "Introduction To Trademark And Patent Law". The speakers will be Steven Warner (Fitzpatrick Cella Harper & Scinto) and Gary Krugman (Sughrue Mion). The price to attend ranges from $20-$30. For more information, call 202-626-3463. See, notice. Location: D.C. Bar Conference Center, 1250 H Street NW, B-1 Level.

4:00 - 5:00 PM. The Consumer Electronics Association (CEA) will host a webcast event titled "Recognizing Economic Benefit From the R&D Tax Credit Through Innovation, New Products and New Technology". See, notice. For more information, contact Deb Kassoff at 703 907-7655 or dkassoff at ce dot org.

The Federal Communications Commission (FCC) will hold Auction 60, the auction of five licenses in the Lower 700 MHz band C block (710-716/740-746 MHz). See, FCC's Public Notice [PDF] numbered DA 05-171, and FCC's Public Notice [63 pages in PDF] titled "Notice and Filing Requirements, Minimum Opening Bids, Upfront Payments and Other Auction Procedures" and numbered DA 05-737. See also, notice in the Federal Register, June 1, 2005, Vol. 70, No. 104, at Page 31469.

Extended deadline to submit reply comments to Federal Communications Commission (FCC) in response to its FNPRM in its proceeding titled "In the Matter of Developing a Unified Intercarrier Compensation Regime". See, order [2 pages in PDF] extending deadline from June 22 to July 20. See also, notice in the Federal Register, June 15, 2005, Vol. 70, No. 114, at Pages 34724 - 34725. See also, story titled "FCC Adopts FNPRM in Intercarrier Compensation Proceeding" in TLJ Daily E-Mail Alert No. 1,076, February 14, 2005. This proceeding is CC Docket No. 01-92.

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