|Federal Circuit Addresses Priority Date of
Patents Originating from Foreign Applications
8/19. The U.S. Court of Appeals (FedCir) issued its
opinion [9 pages in PDF] in
Broadcast Innovation v. Charter Communications, a patent infringement case
involving the issue of determining the priority date, for the purposes of
35 U.S.C. § 102(b) and
35 U.S.C. § 120, of patents originating from foreign applications. The technology
involved in this case is a distributed database system with applicability to data
broadcasting and data casting communications media. The District Court held that the patent
in suit is invalid for having been anticipated by an earlier foreign application. The Court
of Appeals held that the District Court used the wrong date for priority, and
reversed. The case will now continue in the District Court.
IO Research Pty Ltd., an Australian company, is the owner of
U.S. Patent No. 6,076,094,
titled "Distributed database system and database received therefor".
Broadcast Innovation LLC is the exclusive licensee of this patent in the US.
IO had previously disclosed this technology in patent applications in Australia,
which were later consolidated into a single international application (PCT),
filed on November 26, 1993. This became a national stage application in the
United States on July 18, 1995, as No. 08/436,336.
Broadcast Innovation filed a complaint in U.S. District Court (DColo) against
Charter Communications and Comcast alleging infringement of this patent. IO
later joined the litigation. Comcast has settled with the plaintiffs.
The District Court granted summary judgment of invalidity to Charter on the
basis that its earliest priority date, July 18, 1995, falls more than one year
after its publication of the same technology.
The Court of Appeals reversed on the grounds that the District Court court
improperly determined the patents priority date. It held that the correct date is
November 26, 1993, the PCT filing date, notwithstanding the fact that the patent in suit,
'094, states that is was "filed Jul. 18, 1995", and "does not include a
specific reference to the PCT application on its cover or in its specification".
35 U.S.C. § 102(b) provides, in part, that "A person shall be
entitled to a patent unless ... (b) the invention was patented or
described in a printed publication in this or a foreign country or in public use
or on sale in this country, more than one year prior to the date of the
application for patent in the United States".
35 U.S.C. § 120, which is titled "Benefit of earlier filing date in the United
States", provides that "An application for patent for an invention disclosed in
the manner provided by the
first paragraph of section 112 of this title in an application previously filed in the
United States, or as provided by section 363 of this title, which is filed by an inventor
or inventors named in the previously filed application shall have the same effect, as to
such invention, as though filed on the date of the prior application, if filed before the
patenting or abandonment of or termination of proceedings on the first
application or on an application similarly entitled to the benefit of the filing
date of the first application and if it contains or is amended to contain a
specific reference to the earlier filed application. No application shall be
entitled to the benefit of an earlier filed application under this section
unless an amendment containing the specific reference to the earlier filed
application is submitted at such time during the pendency of the application as
required by the Director. The Director may consider the failure to submit such
an amendment within that time period as a waiver of any benefit under this
section. The Director may establish procedures, including the payment of a
surcharge, to accept an unintentionally delayed submission of an amendment under
this section." (Emphasis added.)
The Court of Appeals summarized the history. "The 336 application
eventually matured into U.S. Patent No. 5,737,595 (the 595 patent). Before
issuance of the 595 patent, the applicant filed a continuation application as
09/054,896 (the 896 application). The 896 application, in turn, matured into
U.S. Patent No. 5,999,934 (the 934 patent). Again before issuance of the 934
patent, the applicant filed a divisional application 09/316,164 (the 164
application). This divisional matured into the 094 patent which is at issue in
the present case."
The Court continued that "The 094 patent includes a specific reference to its
predecessors, the 934 patent and the 595 patent, but does not include a
specific reference to the PCT application on its cover or in its specification.
Thus, the issue before this court is purely a question of law namely, what is
the priority date of the 094 patent in the absence of a specific reference to
the PCT application?"
The Court of Appeals held that even though Section 120 uses the term "specific
reference to the earlier filed application", since the patent in suit, '094, refers
to the '595 and '934 patents, reference to the PCT application is not required, and the
patentee is entitled to the priority date of the filing of the PCT.
And since this date is not more than one year after disclosure, the patent is
not invalid under Section 102(b).
The Court of Appeals did not address the claim construction issue. It
remanded the case to the District Court for further proceedings.
This case is Broadcast Innovation LLC and IO Research Pty Ltd. v. Charter
Communications, Inc. and Comcast Corporation, U.S. Court of Appeals for the Federal
Circuit, App. Ct. No. 05-1008, an appeal from the U.S. District Court for the District
of Colorado, D.C. No. 03-WY-2223-AJ (BNB), Judge Alan Johnson presiding. Judge Rader wrote
the opinion of the Court of Appeals, in which Judges Dyk and Randolph joined.
|FCC Seeks Further Comments on USF
8/17. The Federal Communications Commission (FCC)
Public Notice [27 pages in PDF] that requests public comments regarding four
proposals (which are attached to the Public Notice) submitted to the FCC by members and
staff of the FCC's Federal-State Joint Board on Universal Service regarding universal
service subsidies for rural carriers. One of these proposals also proposes expanding the
services that are taxed to support universal service subsidies.
One of the proposals was written by Robert Nelson, a former
Commissioner of the Michigan Public
Service Commission. It is titled "Holistically Integrated Package", or HIP.
He wrote that "The time has come to consider the integration of the rural HCF,
the non-rural fund, the impact of intercarrier compensation and contribution
methodology holistically." (See, Public Notice, at page 18.)
He added that "The dramatic decrease in traditional long distance wireline
traffic and the increase in the use of VoIP and the deployment of IP networks
has changed the dynamics of USF so irrevocably that immediate attention to the
issue is required. Consideration of the expansion of contributions is necessary
to continue to provide the support contemplated in the rest of the HIP".
Deadline to submit initial comments is September 16, 2005. The
deadline to submit reply comments is October 3, 2005. This Public Notice is FCC
05J-1 in CC Docket No. 96-45.
|WTO Sets Deadline for US Compliance with
Internet Gambling Order
8/19. The World Trade Organization (WTO)
released an order
[31 pages in PDF] of the Arbitrator, Claus-Dieter Ehlermann, in the WTO proceeding
regarding whether various state and federal laws affecting internet gambling violate the
treaty obligations of the US. The order provides that the US must implement
the April 20, 2005 order by April 3, 2006.
On November 10, 2004, a Dispute Resolution Panel (DRP) of the WTO released
[287 pages in PDF] on Antigua and Barbuda's complaint against the US. It held
that various federal laws, including the Wire Act, and various state laws,
violate the General Agreement on Trade in Services (GATS). See, story titled "WTO
Panel Instructs Congress to Amend Wire Act to Legalize Internet Gambling" in
TLJ Daily E-Mail
Alert 1,016, November 11, 2004.
However, on April 7, 2005, the WTO's Appellate Body issued its
[146 pages in PDF] that reversed key parts of the DRP's findings. The report of
the Appellate Body "finds that the Wire Act, the Travel Act, and the Illegal
Gambling Business Act are ``measures ... necessary to protect public morals or
to maintain public order΄΄" and therefore do not violate treaty obligations. The
report of the Appellate Body also reversed the panel's findings regarding the
state gambling laws. However, it let stand some parts of the November 10, 2004
DRP report. See also,
titled "WTO Appellate Body Upholds U.S. Laws Affecting Internet Gambling" in TLJ
Daily E-Mail Alert No. 1,111, April 8, 2005.
On April 20, 2005, the DRP issued an order that adopted the Appellate Body's
report. The US and Antigua and Barbuda have not reached agreement regarding the
deadline for the US to implement those portions of the DRP's original report
that were not overturned on appeal. The just released order sets a deadline of
April 3, 2006.
|Washington Tech Calendar
New items are highlighted in red.
|Monday, August 22
The House will not meet on Monday, August 1 through Monday, September 5. See,
and Republican Whip Notice.
The Senate will not meet on Monday, August 1 through Monday, September 5. See,
The Supreme Court is between terms. The opening conference of its October 2005 Term will be
held on September 26, 2005.
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
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.
|Wednesday, August 24
2:00 - 4:00 PM. The Department of States'
Telecommunication Advisory Committee (ITAC) will meet to prepare for
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.
|Friday, August 26
Deadline to submit initial comments to the Interim Chief Copyright
Royalty Judge in response to the request for further comments regarding rules for the
delivery and format of records of use of sound recordings for statutory licenses under
17 U.S.C. § 112 and
17 U.S.C. §114. The Interim Chief Copyright Royalty Judge, on behalf of
the Copyright Royalty Board, issued the notice of proposed rulemaking (NPRM)
on April 27, 2005. The Board has received comments, which reflected sharp
divisions among the parties. It now poses further questions. See,
notice in the Federal Register, Vol. 70, No. 143, at Pages 43364 - 43368.
|Monday, August 29
Deadline to submit initial comments to the
Federal Communications Commission (FCC) in response to
Notice [PDF] requesting comments on Continental Airlines' Petition for a Declaratory
Ruling regarding the state Massachusetts' attempt to regulate Wi-Fi hotspots. Continental
has installed a Wi-Fi hotspot for internet access and telecommunications at its frequent
flyer lounge at Boston Logan Airport (Logan). An issue is whether the demands of the
Massachusetts Port Authority for removal of the antenna are prohibited under the FCC's Over
the Air Reception Devices (OTARD) rules. This public notice is DA 05-2213 in ET Docket No.
8/19. Microsoft and
Artemis Solutions Group (ASG) announced
that they "have reached a confidential settlement agreement resolving a trademark
infringement action filed by ASG regarding its registered trademark, BioCert".
They further stated that "As part of the settlement, ASG will retain its trademark
rights and will dismiss its action against Microsoft". See, Microsoft
release and ASG release.
8/18. The Bureau of Industry and Security
(BIS), which regulates exports, announced that it fined The McFarland Cascade
Pole and Lumber Company $454,000, and fined The Oeser Company $83,200, for
exporting lumber to Canada in violation of the BIS's
Regulations (EARs). See, BIS
Specifically, the two companies exported Western Red Cedar (Thuja Plicata), a
softwood of exceptional beauty and durability that is used for making furniture,
patio decks, and wall, ceiling and sauna paneling.
Section 754.4 of the
EARs pertains to Western Red Cedar. The authority for the EARs is the expired
Export Administration Act of 1979. The Act's primary purpose was to regulate
exports to protect national security. The BIS also regulates the export of
computers, software, encryption products, and other information technology
8/15. The Internet Corporation for Assigned
Names and Numbers (ICANN) released its
comments [PDF] on the July 18, 2005
report [24 pages in PDF]
of the Working Group on Internet Governance (WGIG).
This report, titled "Report of the Working Group on Internet Governance", states
the UN's ambitious case for acquiring power to regulate various aspects of
the operation and use of the internet. See also, story titled
"UN Seeks Vast
Authority to Regulate Operation and Use of the Internet" in TLJ Daily E-Mail
Alert No. 1,178, July 20, 2005.
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