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March 10, 2009, Alert No. 1,911.
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Supreme Court Denies Cert in Patent Case Involving Online Business Methods, Prior Art and Obviousness

3/9. The Supreme Court denied certiorari in MuniAuction v. Thomson, a patent infringement case involving methods for conducting online auctions. See, Orders List [11 pages in PDF] at page 3.

This lets stand the July 14, 2008 opinion [20 pages in PDF] of the U.S. Court of Appeals (FedCir), which is also reported at 532 F.3d 1318.

MuniAuction, doing business as Grant Street Group, is the holder of U.S. Patent No. 6,161,099 titled "Process and apparatus for conducting auctions over electronic networks". It discloses a method for conducting web based auctions of municipal bonds. There already existed, at the time of the patent application, an electronic bond auction system.

Thomsen also provided online municipal bond auctions. MuniAuction filed a complaint in 2001 in the U.S. District Court (WDPenn) against Thomson Corporation and I-Deal LLC alleging infringement of its patent.

The District Court awarded final judgment of infringement to MuniAuction, awarded damages in the amount of $77 Million, and issued a permanent injunction. In so doing, it held that the asserted claims are not obvious.

Thomson appealed to the Court of Appeals. The Federal Circuit reversed, holding that the asserted claims are obvious in light of prior art.

MuniAuction petitioned the Supreme Court for writ of certiorari. And now, in the just issued Orders List, the Supreme Court has denied the petition.

35 U.S.C. 103 provides that one cannot obtain a patent on an invention that is "obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains".

The Court of Appeals' 2008 opinion followed and applied the Supreme Court's 2007 obviousness opinion [PDF] in KSR v. Teleflex, 550 U.S. 398.

On April 30, 2007, the Supreme Court issued its opinion rejecting the Federal Circuit's previous use of its teaching suggestion motivation (TSM) test for obviousness. See, story titled "Supreme Court Rules on Patent Obviousness in KSR v. Teleflex" in TLJ Daily E-Mail Alert No. 1,576, May 7, 2008.

In its 2008 opinion the Court of Appeals wrote that "The first issue we address with respect to obviousness is the scope and content of the prior art -- specifically whether the prior art exhibited every step of the methods claimed in" the patent in suit.

The Court of Appeals, after reviewing the trial evidence, concluded that substantial evidence does not support a finding that the submission of bids using the method disclose by the prior art lacked any element of the asserted claims, other than the use of a web browser.

Moreover, it wrote it was obvious to one of ordinary skill in the art to modify the prior art system to incorporate conventional web browser functionality. The Court of Appeals added, citing KSR v. Teleflex, that "A central principle in this inquiry is that ``a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."

And, since the web was prior art as of the time of MuniAuction's filing of its patent application, the modification of the prior art system "to incorporate web browser functionality represents a combination of two well known prior art elements to a person of ordinary skill in the art."

The Court of Appeals also cited as authority its 2007 opinion in Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157.

This case is Muniauction, Inc. v. Thomson Corporation and I-Deal LLC, Supreme Court of the U.S., Sup. Ct. No. 08-847, a petition for writ of certiorari to the U.S. Court of Appeals for the Federal Circuit, App. Ct. No. 2007-1485. The Court of Appeals heard an appeal from the U.S. District Court for the Western District of Pennsylvania, Judge Gary Lancaster presiding.

Copyright Office to Hold Hearings on DMCA Exemptions

3/9. The Copyright Office published a notice in the Federal Register announcing that it will hold hearings, as a part of its triennial DMCA rulemaking proceeding, on possible exemptions to the prohibition against circumvention of technological measures that control access to copyrighted works.

Digital Millennium Copyright Act (DMCA), which is codified at 17 U.S.C. 1201, et seq, provides, for example, at Subsection 1201(a)(1)(A) that "No person shall circumvent a technological measure that effectively controls access to a work protected under this title ...". The DMCA also requires the Copyright Office to conduct a rulemaking proceeding every three years to provide exemptions to the prohibitions of the DMCA.

See also, stories titled "Copyright Office Announces 4th Triennial Review of DMCA Exemptions" in TLJ Daily E-Mail Alert No. 1,839, October 7, 2008, and "Copyright Office Seeks Comments on Proposed DMCA Exemptions" in TLJ Daily E-Mail Alert No. 1,877, January 5, 2009.

The first hearing will be at Stanford law school in Palo Alto, California, on Friday, May 1, 2009. Three additional hearings will be held at the Copyright Office in Washington DC on Wednesday, May 6, 2009, Thursday, May 7, 2009, and Friday, May 8, 2009. Requests to testify are due by 5:00 PM EDT on Friday, April 3, 2009.

See, Federal Register, March 9, 2009, Vol. 74, No. 44, at Pages 10096-10097.

6th Circuit Addresses Substantial Similarity in Copyright Case

3/9. The U.S. Court of Appeals (6thCir) issued its opinion [13 pages in PDF] in Jones v. Blige, a music copyright case involving the issue of substantial similarity.

The plaintiffs are James White, a co-author and copyright holder of a song titled "Party Ain't Crunk", and Leonard Jones, who has a financial interest in the song arising under contract. They allege that a song titled "Family Affair", recorded by Mary Blige in 2001, infringed their earlier song.

They filed a complaint in U.S. District Court (EDMich) against Blige, Universal-MCA Music Publishing, Inc., Universal Music Group, Inc. and others alleging copyright infringement.

The District Court granted summary judgment to the defendants, on the basis that the two songs lacked substantial similarity.

The Court of Appeals affirmed in a opinion that addresses substantially similarity, access to the allegedly infringed work, and independent creation.

This case is Leonard Jones, et al. v. Mary Blige, et al., U.S. Court of Appeals for the 6th Circuit, App. Ct. Nos. 07-1051 and 07-1566, appeals from the U.S. District Court for the Eastern District of Michigan at Ann Arbor, D.C. No. 04-60184, Judge Marianne Battani presiding. Judge Cole wrote the opinon of the Court of Appeals, in which Judges Kennedy and Gilman joined.

More News

3/9. The U.S. Court of Appeals (10thCir) issued its opinion in Chastain v. AT&T, a putative class action ERISA case. The plaintiffs were employed by, and retired from, AT&T prior to its 1996 spin off of Lucent, which is now Alcatel Lucent. AT&T transferred them to a Lucent sponsored retirement benefits plan. Lucent eliminated certain benefits. The plaintiffs filed a complaint against AT&T in the U.S. District Court alleging violation of the Employment Retirement Income Security Act of 1974 (ERISA), which is codified at 29 U.S.C. 1101. The District Court held that the plaintiffs lack standing to sue AT&T. The Court of Appeals affirmed. This case is Dennis Chastain, et al. v. AT&T, U.S. Court of Appeals for the 10th Circuit, App. Ct. No. No. 07-6288, an appeal from the U.S. District Court for the District of Oklahoma, D.C. No. 5:04-CV-00281-F.

3/6. Joseph Nacchio filed a petition for writ of certiorari with the Supreme Court, and a motion [31 pages in PDF] to remain free on bail pending disposition by the Supreme Court with the U.S. Court of Appeals (10thCir). On February 25, 2009, a divided en banc panel of the Court of Appeals issued its opinion [106 pages in PDF] affirming his conviction by the U.S. District Court (DColo). See, story titled "En Banc Panel Affirms Nacchio Conviction" in TLJ Daily E-Mail Alert No. 1,906, February 27, 2009.

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In This Issue

This issue contains the following items:
  Supreme Court Denies Cert in Patent Case Involving Online Business Methods, Prior Art and Obviousness
  Copyright Office to Hold Hearings on DMCA Exemptions
  6th Circuit Addresses Substantial Similarity in Copyright Case

Washington Tech Calendar
New items are highlighted in red.
Tuesday, March 10

The House will meet at 10:30 AM for morning hour, and at 12:00 NOON for legislative business. The agenda includes several non-technology related items. See, Rep. Hoyer's schedule for week of March 9.

The Senate will meet at 10:00 AM. It will resume consideration of HR 1105 [LOC | WW], the "Omnibus Appropriations Act, 2009".

8:00 - 10:00 AM. The BroadbandCensus dot com [http colon slash slash broadbandcensus dot com] will host a breakfast event titled "Broadband Competition: Do We Have It, and How Do We Get More of It?" The speakers will include Kathleen Ham (T-Mobile USA), Brent Olson (AT&T), Emmett O'Keefe (Amazon), Art Brodsky (Public Knowledge), and Scott Wallsten (Technology Policy Institute). For more information, contact Drew Clark at drew at broadbandcensus dot com or 202-580-8196. Breakfast begins at 8:00 AM. The program begins at 8:40 AM. The price to attend these monthly events is $45. These events are open to the public. Location: Old Ebbitt Grill, 675 15th St., NW.

9:00 AM. The Bureau of Industry and Security's (BIS) Regulations and Procedures Technical Advisory Committee will meet. See, notice in the Federal Register, February 23, 2009, Vol. 74, No. 34, at Page 8053. Location: Room 4830, Hoover Building, 14th Street between Constitution and Pennsylvania Aves., NW.

10:00 AM. The House Judiciary Committee (HJC) will hold a hearing on HR 848 [LOC | WW], the "Performance Rights Act". See, notice. The HJC will webcast this hearing. See also, story titled "Performance Rights Act Reintroduced" in TLJ Daily E-Mail Alert No. 1,896, February 10, 2009. Location: Room 2141, Rayburn Building.

10:00 AM. The Senate Judiciary Committee (SJC) will hold a hearing titled "Patent Reform in the 111th Congress: Legislation and Recent Court Decisions". The witnesses will be Steven Appleton (Micron Technology), Philip Johnson (Johnson & Johnson), David Kappos (IBM), Taraneh Maghame (Tessera), Herbert Wamsley (Intellectual Property Owners Association), Mark Lemley (Stanford law school). See, notice. The SJC will webcast this event. Location: Room 226, Dirksen Building. There will be overflow seating Room 328 of the Russell Building.

10:00 - 11:30 AM. The Department of Commerce's (DOC) National Telecommunications and Information Administration (NTIA), the Department of Agriculture's (DOA) Office of Rural Development, and the Federal Communications Commission (FCC) will hold a public meeting regarding the broadband subsidy programs created by HR 1 [LOC | WW], the huge spending bill titled the "American Recovery and Reinvestment Act of 2009". It is now Public Law No. 111-5. See, story titled "Summary of Broadband Grants Provisions in Spending Bill" in TLJ Daily E-Mail Alert No. 1,899, February 13, 2009. See also, notice in the Federal Register, February 27, 2009, Vol. 74, No. 38, at Pages 8914-8915. The DOC stated in a release that "Press should enter the aquarium entrance on 14th Street and should RSVP by 4:00 p.m. Monday, March 9 to" either kcpullen at doc dot gov or kgriffis at doc dot gov, and that "Press check in" is at 9:15 AM. Location: auditorium, DOC, 1401 Constitution Ave., NW.

12:00 NOON - 3:00 PM. The Technology Policy Institute (TPI) will host an event titled "High-Skilled Immigration: Budgetary and Economic Effects". The lunch speaker will be Rep. Zoe Lofgren (D-CA). There will be a panel discussion with Stuart Anderson (National Foundation for American Policy), Robert Atkinson (Information Technology and Innovation Foundation), Arlene Holen (TPI), Vin O'Neill (IEEE-USA), and Thomas Lenard (TPI). Location: Holeman Lounge, National Press Club, 13th Floor, 529 14th St., NW.

2:00 PM. The House Homeland Security Committee (HHSC) will hold a hearing titled "Reviewing the Federal Cybersecurity Mission". The HHSC will webcast this hearing. Location: Room 211, Cannon Building.

TIME CHANGE. 2:30 PM. The Senate Judiciary Committee (SJC) will hold a hearing on the nominations of Lanny Breuer to be an Assistant Attorney General in charge of the Department of Justice's (DOJ) Criminal Division, Christine Varney to be Assistant Attorney General in charge of the DOJ's Antitrust Division, and Tony West to be Assistant Attorney General in charge of the DOJ's Civil Division. See, notice. The SJC will webcast this event. Sen. Herb Kohl (D-WI) will preside. Location: Room 226, Dirksen Building.

3:00 PM. The House Armed Services Committee (HASC) will hold a hearing on space and the People's Republic of China. Location: Room 2212, Rayburn Building.

Wednesday, March 11

The House will meet at 10:00 AM for legislative business. The agenda includes several non-technology related items. See, Rep. Hoyer's schedule for week of March 9.

Day one of a three day conference hosted by the International Association of Privacy Professionals titled "IAPP Privacy Summit 2009". Reporters' contact: Tammy Vigliotti at 207-351-1500 x106. See, conference web site. Location: Washington Marriott Wardman Park, 2660 Woodley Road, NW.

12:00 NOON. Deadline to submit written comments to the Office of the U.S. Trade Representative (OUSTR) in connection with its March 4, 2009, hearing regarding its plans to initiate negotiations on a Trans-Pacific Partnership free trade agreement with Singapore, Chile, New Zealand, Brunei Darussalam, Australia, Peru and Vietnam. See, notice in the Federal Register, January 26, 2009, Vol. 74, No. 15, at Pages 4480-4482.

1:00 - 5:00 PM. The National Institute of Standards and Technology's (NIST) Office of Law Enforcement Standards (OLES) will hold a meeting via the internet to bring Project 25 Compliance Assessment Program stakeholders together to discuss what the process will be to assess software based test tools for the Project 25 Compliance Assessment Program. The deadline to register is March 4, 2009. See, notice in the Federal Register, February 17, 2009, Vol. 74, No. 30, at Pages 7397-7398.

2:00 PM. The House Judiciary Committee's (HJC) Subcommittee on Commercial and Administrative Law will hold a hearing titled "Circuit City Unplugged: Why Did Chapter 11 Fail To Save 34,000 Jobs?". See, notice. The HJC will webcast this hearing. Location: Room 2141, Rayburn Building.

Thursday, March 12

The House will meet at 10:00 AM for legislative business. The agenda includes several non-technology related items. See, Rep. Hoyer's schedule for week of March 9.

10:00 AM. The Senate Judiciary Committee (SJC) may hold an executive business meeting. See, agenda. The SJC will webcast this event. Location: Room 226, Dirksen Building.

Day two of a three day conference hosted by the International Association of Privacy Professionals titled "IAPP Privacy Summit 2009". Reporters' contact: Tammy Vigliotti at 207-351-1500 x106. See, conference web site. Location: Washington Marriott Wardman Park, 2660 Woodley Road, NW.

Friday, March 13

Rep. Hoyer's schedule for week of March 9 states that no votes are expected in the House.

Day three of a three day conference hosted by the International Association of Privacy Professionals titled "IAPP Privacy Summit 2009". Reporters' contact: Tammy Vigliotti at 207-351-1500 x106. See, conference web site. Location: Washington Marriott Wardman Park, 2660 Woodley Road, NW.

Deadline to submit comments to the National Institute of Standards and Technology's (NIST) Computer Security Division regarding its Draft Special Publication 800-122 [58 pages in PDF] titled "Guide to Protecting the Confidentiality of Personally Identifiable Information (PII)".

Deadline to submit comments to the National Institute of Standards and Technology's (NIST) Computer Security Division regarding its Draft Interagency Report 7497 [42 pages in PDF] titled "Security Architecture Design Process for Health Information Exchanges (HIEs)".

Deadline to register for the National Institute of Standards and Technology's (NIST) Office of Law Enforcement Standards' (OLES) March 25, 2009, meeting to bring Project 25 Compliance Assessment Program stakeholders together to discuss what the process will be to assess software based test tools for the Project 25 Compliance Assessment Program. This meeting will occur via teleconference and at the National Telecommunications and Information Administration's (NTIA) Institute for Telecommunication Sciences (ITS) in Boulder, Colorado. See, notice in the Federal Register, February 17, 2009, Vol. 74, No. 30, at Pages 7397-7398.

Monday, March 16

9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in National Association of Broadcasters v. FCC, App. Ct. No. 08-1117. Judges Rogers, Garland and Brown will preside. See, FCC's brief [74 pages in PDF] states that the issues are "Whether the FCC's adoption of policies and rule changes to minimize unnecessary displacement of existing LPFM radio stations by new full-power FM stations or FM stations seeking license modifications is prohibited by the Radio Broadcasting Preservation Act", and "Whether these policies and rule changes are reasonable." Location: 333 Constitution Ave.

Day one of a two day conference hosted by the Federal Trade Commission (FTC), Asia-Pacific Economic Cooperation (APEC) forum and the Organisation for Economic Co-operation and Development (OECD) titled "Securing Personal Data in the Global Economy". See, FTC release and release, and agenda [PDF]. Location: FTC satellite building, 601 New Jersey Ave., NW.

Deadline to submit comments to the Office of the U.S. Trade Representative (OUSTR) regarding the OUSTR's complaint to the World Trade Organization (WTO) regarding certain measures offering grants, loans, and other incentives to enterprises in the People's Republic of China to implement an industrial policy of promoting the development of global Chinese brand names. See, notice in the February 17, 2009, Vol. 74, No. 30, at Pages 7494-7497.

Tuesday, March 17

1:00 - 2:30 PM. The Information Technology and Innovation Foundation (ITIF) will host a panel discussion titled "in silico: How IT is Changing Medical Research". The speakers will be Ken Buetow (National Cancer Institute's Center for Bioinformatics), Lynn Etheredge, and Nancy Johnson (Health IT Now Coalition). See, notice. Location: Room B-318, Rayburn Building.

Day two of a two day conference hosted by the Federal Trade Commission (FTC), Asia-Pacific Economic Cooperation (APEC) forum and the Organisation for Economic Co-operation and Development (OECD) titled "Securing Personal Data in the Global Economy". See, FTC release and release, and agenda [PDF]. Location: FTC satellite building, 601 New Jersey Ave., NW.