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 patent’s 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.

8/17. The Federal Communications Commission (FCC) released a 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.

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 its report [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 report [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, story 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.

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.

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.

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.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its Public 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. 05-247.

8/16. The National Institute of Standards and Technology (NIST) and the Information Technology Laboratory (ITL) announced that they are seeking someone to fill the position of Division Chief for the Computer Security Division (CSD). See, notice.

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 Export Administration Regulations (EARs). See, BIS release. 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 products.

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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