8/16. The U.S. Court of Appeals (FedCir) issued its opinion [20 pages in PDF] in Pause Technology v. Tivo, affirming the District Court's summary judgment of non-infringement in favor of Tivo. This is a patent infringement case involving digital video recorder (DVR) technology.

Pause Technology is the holder of U.S. Reissue Patent No. 36,801, titled "Time delayed digital video system using concurrent recording and playback". Tivo makes digital video recorders for home entertainment systems.

On September 25, 2001, Pause filed a complaint in the U.S. District Court (DMass) against Tivo alleging patent infringement. See, Pause release. Tivo filed an answer and counterclaim in which it asserted the affirmative defenses of invalidity and non-infringement. It also counterclaimed for a declaratory judgment of invalidity and non-infringement.

The District Court entered summary judgment for Tivo on its claims that its DVR products, versions 2.0 and above, do not infringe the patent in suit.

Pause appealed. It challenged to the District Court’s claim construction rulings. The Court of Appeals affirmed.

This case is Pause Technology LLC v. Tivo, Inc., U.S. Court of Appeals for the Federal Circuit, App. Ct. No. 04-1263, an appeal from the U.S. District Court for the District of Massachusetts, D.C. No. 01-11657-PBS, Judge Patti Saris presiding. Judge Linn wrote the opinion of the Court of Appeals, in which Judges Lourie and Newman joined.

8/2. The U.S. Court of Appeals (FedCir) issued another opinion [75 pages in PDF] in NTP v. Research in Motion, a patent infringement case involving RIM's BlackBerry series of mobile communications and computing devices.

This is one of the cases cited by some proponents of patent reform, in support of the proposition that the Patent Act should be amended.

Research in Motion (RIM) makes Blackberrys. NTP holds U.S. Patents Nos. 5,436,960, 5,625,670, 5,819,172, 6,067,451, and 6,317,592, which pertain to technology for integrating existing e-mail systems with radio frequency (RF) wireless communication networks, to enable mobile users to receive e-mail over a wireless network.

Specifically, these are U.S. Patent Nos. 5,436,960 titled "Electronic mail system with RF communications to mobile processors and method of operation thereof", 5,625,670 titled "Electronic mail system with RF communications to mobile processors", 5,819,172 titled "Electronic mail system with RF communications to mobile radios", 6,067,451 titled "Electronic mail system with RF communications to mobile processors", and 6,317,592 titled "Electronic mail system with RF communications to mobile processors".

NTP filed a complaint in the U.S. District Court (EDVa) against RIM in 2001 alleging infringement of its patents. The District Court entered judgment of infringement for NTP, awarded damages to NTP of $53,704,322.69, and enjoined RIM from further infringement. See, August 5, 2003 Final Judgment.

RIM appealed. On December 14, 2004, the Court of Appeals issued its first opinion [60 pages in PDF] in this case. It affirmed in part, vacated in part, and remanded. RIM petitioned for rehearing, or in the alternative, for en banc review. Now, the same three judge panel of the Court of Appeals sets aside that 2004 opinion, and issued a new opinion.

In the present opinion, the Court of Appeals alters the District Court's construction of the claim term "originating processor", but affirmed the remainder of the District Court's claim constructions. The Court of Appeals also concluded that the District Court correctly denied RIM's motion for judgment as a matter of law, and did not abuse its discretion in denying evidentiary motions. It also concluded that the District Court was correct in sending the question of infringement of the system and apparatus claims to the jury, but erred as a matter of law in entering judgment of infringement of the method claims.

NTP successfully asserted 16 claims in the District Court. The 2004 opinion reversed as to three of these claims. The present opinion reverses as to those three, and an additional six, claims. The present opinion also vacates the damages award and injunction, and remands.

Specifically, the Court of Appeals wrote that "we reverse the judgment of infringement as to the asserted method claims, namely, claims 32 and 34 of the ’960 patent; claim 199 of the ’172 patent; and claims 309, 313, 317 of the ’451 patent. We affirm the judgment of infringement with respect to the system and apparatus claims that do not contain an "originating processor" limitation, namely, claims 28 and 248 of the ’451 patent, and claims 150, 278, 287, 653, and 654 of the ’592 patent. We vacate the judgment of infringement of the system claims that contain the "originating processor" limitation, namely, claim 15 of the ’960 patent; claim 8 of the ’670 patent; and claim 40 of the ’592 patent (through its parent claim 25), and remand to the district court the questions of whether and to what extent the jury verdict of infringement should be set aside, based on the prejudicial effect, if any, of the district court’s erroneous claim construction of the term ``originating processor.´´ We vacate the damage award and the injunction and affirm the district court’s judgment in all other respects." (Parentheses in original.)

Thus, the Court of Appeals affirmed in part, reversed in part, vacated in part, and remanded to the District Court.

RIM issued a release on August 2, 2005, in which it offered its summary of the proceedings related to this case. It wrote that "At trial in the District Court in 2002, NTP successfully asserted 16 claims of 5 patents against RIM. Today's Federal Circuit decision reversed the District Court’s ruling of infringement on 6 of the 16 claims, and found that RIM does not infringe those 6 claims. Consistent with its prior ruling, the Federal Circuit also vacated the District Court’s finding of infringement of an additional 3 of the 16 patent claims because the District Court erred in construing their scope, and remanded to the District Court for further proceedings based on the new claim construction."

RIM continued that "Infringement of the remaining 7 claims of the NTP patents was affirmed in today's ruling." However, its added that two of these claims have been rejected by the U.S. Patent and Trademark Office (USPTO) in its initial rulings in reexamination proceedings, and that the other five claims remain the subject of an ongoing Director initiated reexamination proceeding at the USPTO.

See also, story titled "USPTO Orders Reexamination of NTP Patents" in TLJ Daily E-Mail Alert No. 584, January 16, 2003. The patents to be reexamined are U.S. Patent Nos. 5,625,670 titled "Electronic mail system with RF communications to mobile processors", 5,631,946 titled "System for transferring information from a RF receiver to a processor under control of a program stored by the processor and method of operation thereof", 5,819,172 titled "Electronic mail system with RF communications to mobile radios", 6,067,451 titled "Electronic mail system with RF communications to mobile processors", and 6,317,592 titled "Electronic mail system with RF communications to mobile processors".

RIM also stated that "Consistent with its prior ruling, the Federal Circuit also vacated the damages award and injunction imposed by the District Court and ordered further proceedings."

Finally, RIM stated that "On June 9, 2005, RIM announced that it had brought a motion before the Federal Circuit seeking to stay the appeal and remand to the District Court to enforce the parties’ March 2005 settlement of the litigation. The Federal Circuit denied RIM’s motion to stay the appeal. The Federal Circuit was not asked to and did not rule on the enforcement of the settlement. The effect of today’s ruling is to leave the enforcement of the settlement to be decided by the District Court. In addition, RIM may seek en banc review of today’s ruling of the panel as to the affirmed patent claims and may also seek review by the United States Supreme Court."

See, story titled "RIM to Pay $450 Million to Settle NTP's Blackberry Related Patent Claims" in TLJ Daily E-Mail Alert No. 1,099, March 21, 2005.

This case is NTP, Inc. v. Research in Motion, Ltd., U.S. Court of Appeals for the Federal Circuit, App. Ct. No. 03-1615, an appeal from the U.S. District Court for the Eastern District of Virginia , D.C. No. 3:01CV767, Judge James Spencer presiding. Judge Linn wrote the opinion of the Court of Appeals, in which Judges Schall and Michel joined.

RIM is represented by Henry Bunsow and others of the law firm of Howrey Simon Arnold & White. NTP is represented by James Wallace and others of the law firm of Wiley Rein & Fielding.

8/5. The U.S. Court of Appeals (DCCir) issued its opinion [PDF] in Crawford v. FCC. Charles Crawford petitioned for review of the Federal Communications Commission's (FCC) dismissal of two of his proposals to amend the FCC's Table of Allotments for FM radio channels. The Court of Appeals denied the petition. This case is Charles Crawford v. FCC and USA, U.S. Court of Appeals for the District of Columbia Circuit, App. Ct. No. 04-1031, a petition for review of a final order of the FCC. Judge Garland wrote the opinion of the Court of Appeals, in which Judges Tatel and Randolph joined.

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8/16. President Bush announced his intent to designate Robert McCallum to be acting Deputy Attorney General (DAG) at the Department of Justice. See, White House release.

The DAG is the number two position at the DOJ. McCallum (at right) is currently the Associate Attorney General, which position oversees many of the civil units of the DOJ, including six key divisions: Civil, Antitrust, Tax, Environment and Natural Resources, and Civil Rights. The Associate Attorney General also oversees many other units, but not the Solicitor General, the Office of Legal Counsel, or any of the crime related units. See, DOJ Organizational Chart.

McCallum was previously the Assistant Attorney General in charge of the Civil Division. Before that, he was a partner in the Atlanta office of the law firm of Alston & Bird. He focused on civil litigation, including appeals, commercial real estate litigation, insurance class action litigation and medical malpractice defense.

The designation comes now because of the departure of James Comey. President Bush nominated Timothy Flanagan to be the new DAG back in May, but the Senate has not confirmed him.

Comey is a career prosecutor. McCallum is not. Hi's background and experience is in several areas of civil law. Attorney General Alberto Gonzales is not a career prosecutor either. Until he came to Washington DC to work in the Bush White House, he had little experience related to federal criminal matters. In light of this, it may be significant that the position of Assistant Attorney General in charge of the Criminal Division is also vacant. President Bush has nominated Alice Fisher, but the Senate has not confirmed her. John Richter is the acting head of the Criminal Division.

Richter (at left) is a prosecutor, who has also worked in the Atlanta office of the law firm of King & Spalding, on criminal law matters. This continues the Bush administration's tradition of placing a disproportionate number of attorneys from Georgia, and especially from the law firms of King & Spalding and Alston & Bird, in key positions at the DOJ. See, story titled "Atlanta Lawyers at DOJ" in TLJ Daily E-Mail Alert No. 711, August 5, 2003.

Thus, an acting Assistant Attorney General, who has not been confirmed by the Senate, is now the DOJ's senior person with expertise in criminal matters, including intellectual property crimes, cyber crime, electronic and online surveillance, FISA, and CALEA.

Richter's White House biography notes that he has experience in "drafting and presenting applications for Court-authorized electronic surveillance and physical searches in international terrorism-foreign counterintelligence investigations".

8/16. President Bush announced his intent to nominate Donald Winter to be Secretary of the Navy. Unlike most political appointees, Winter has a background in technology. He has three degrees in physics, and has worked on laser physics. He also worked in the early 1980s for the Defense Advanced Research Projects Agency (DARPA). He is currently Corporate Vice President and President of Northrop Grumman Mission Systems, in Reston, Virginia. Before that, he was P/CEO of TRW Systems. See, White House release.

8/16. President Bush announced his intent to nominate Michael Wynne to be Secretary of the Air Force. He is currently Principal Deputy Under Secretary of Defense for Acquisition, Technology and Logistics (ATL). He has also been the Under Secretary of Defense for ATL, by recess appointment. The ATL office oversees, among other things, the Defense Advanced Research Projects Agency (DARPA), which is involved in numerous information technology related projects. He is also a former employee of General Dynamics. See, White House release and story titled "Bush Announces Appointments to Key DOD Post" in TLJ Daily E-Mail Alert No. 1,108, April 4, 2005.

8/11. Michael Powell, the previous Chairman of the Federal Communications Commission (FCC), joined Providence Equity Partners Inc.. It states in its web site that it is a "private investment firm specializing in equity investments in communications and media companies around the world". His predecessor, William Kennard, joined The Carlyle Group in 2001 as Managing Director in its Global Telecommunications and Media group. Also, on July 13, 2005, Colin Powell, the previous Secretary of State, was named strategic limited partner at the venture capital firm of Kleiner Perkins Caufield & Byers (KPCB). See, KPCB release.

The House will not meet on Monday, August 1 through Monday, September 5. See, House calendar and Republican Whip Notice.

The Senate will not meet on Monday, August 1 through Monday, September 5. See, Senate calendar.

The Supreme Court is between terms. The opening conference of its October 2005 Term will be held on September 26, 2005.

2:00 - 4:00 PM. The Department of States' (DOS) International Telecommunication Advisory Committee (ITAC) will meet to prepare for ITU-T Study Group 3's Working Party on Charging and Accounting Principles. See, notice in the Federal Register, July 13, 2005, Vol. 70, No. 133, at Page 40414. Location: undisclosed. The DOS states that "Access to these meetings may be arranged by contacting Julian Minard at minardje at state dot gov.

6:00 - 8:15 PM. The DC Bar Association will host a continuing legal education (CLE) seminar titled "Trade Secrets: Case Law Update". The speaker will be Milton Babirak (Babirak Vangellow & Carr). 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 comments in response to, and notices of intent to participate in proceedings on, the Copyright Office's (CO) settlement proposal for the adjustment of certain royalty rates for use of the cable statutory license. See, notice in the Federal Register, July 20, 2005, Vol. 70, No. 138, at Pages 41650 - 41652.

Deadline to submit initial comments to the Copyright Office in response to its notice of proposed rulemaking (NPRM) regarding preregistration of unpublished works provision under the Artists' Rights and Theft Prevention Act (ART Act). See, notice in the Federal Register, July 22, 2005, Vol. 70, No. 140, at Pages 42286 - 42292. See also, story titled "Copyright Office Commences Rulemaking on Preregistration of Unpublished Works" in TLJ Daily E-Mail Alert No. 1,181, July 25, 2005.

Deadline to submit comments to the Internal Revenue Service (IRS) in response to its notice of proposed rulemaking (NPRM) regarding the filing of information returns by donees relating to qualified intellectual property contributions. See, notice in the Federal Register, May 23, 2005, Vol. 70, No. 98, at Pages 29460 - 29461.

Deadline to submit comments to the U.S. Patent and Trademark Office (USPTO) in response to its notice of proposed rulemaking (NPRM) regarding changes to the rules of practice to implement the provisions for refunding the search fee for applicants who file a written declaration of express abandonment before an examination has been made of the application. See, notice in the Federal Register, June 21, 2005, Vol. 70, No. 118, at Pages 35571 - 35573.

EXTENDED TO SEPTEMBER 1. Deadline to submit initial comments to the Copyright Office regarding its first report to the Congress required by the Satellite Home Viewer Extension and Reauthorization Act of 2004. See, original notice in the Federal Register, July 7, 2005, Vol. 70, No. 129, at Pages 39343 - 39345. See also, notice extending deadlines in the Federal Register, August 15, 2005, Vol. 70, No. 156, at Page 47857.

EXTENDED TO SEPTEMBER 21. Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to it notice of proposed rulemaking (NPRM) regarding low power FM rules. The FCC adopted its order and NPRM on March 16, 2005, and released it on March 17, 2005. It is FCC 05-75 in MM Docket No. 99-25. See, original notice in the Federal Register, July 7, 2005, Vol. 70, No. 129, at Pages 39217 - 39227. See also, FCC notice [PDF] extending the deadlines.

Time: undisclosed. The Department of Homeland Security's (DHS) Homeland Security Science and Technology Advisory Committee (HSSTAC) will hold a meeting that is closed to the public. See, notice in the Federal Register, August 9, 2005, Vol. 70, No. 152, at Pages 46182 - 46183. Location: undisclosed.

2:00 - 4:00 PM. The Department of States' (DOS) International Telecommunication Advisory Committee (ITAC) will meet to prepare for ITU-T Study Group 3's Working Party on Charging and Accounting Principles. See, notice in the Federal Register, July 13, 2005, Vol. 70, No. 133, at Page 40414. Location: undisclosed. The DOS states that "Access to these meetings may be arranged by contacting Julian Minard at minardje at state dot gov.

Time: undisclosed. The Department of Homeland Security's (DHS) Homeland Security Science and Technology Advisory Committee (HSSTAC) will hold a second meeting that is closed to the public. See, notice in the Federal Register, August 9, 2005, Vol. 70, No. 152, at Pages 46182 - 46183. Location: undisclosed.