6/9. The Supreme Court issued its opinion [27 pages in PDF] in Microsoft v. i4i, holding that in patent cases 35 U.S.C. § 282 requires that the standard of proof for an invalidity defense is clear and convincing evidence.

The Supreme Court affirmed the judgment of the U.S. Court of Appeals (FedCir) which reissued its opinion [51 pages in PDF] on March 10, 2010, affirming the judgment of the District Court.

Microsoft and amicus curiae parties in support argued for a lower preponderance of the evidence standard. See, amicus curiae brief of Google, Verizon, Comcast, Dell, HP, the Consumer Electronics Association (CEA), and other companies and groups, and amicus curiae brief of the Computer and Communications Industry Association (CCIA).

i4i and supporting amici argued for affirming the Court of Appeals. The Department of Justice's (DOJ) Office of the Solicitor General (OSG) argued in its amicus curiae brief that the judgment of the Court of Appeals should be affirmed.

i4i Limited Partnership is a software consulting company. It filed a complaint in the U.S. District Court (EDTex) against Microsoft alleging that Microsoft's Word infringed its U.S. Patent No. 5,787,449. Microsoft unsuccessfully raised the defense of invalidity. It argued that the invention disclosed by the patent was already on public sale by i4i in a software product more than a year before the patent application was even filed. The District Court entered judgment of infringement, and awarded i4i damages of $200 Million.

The statute does not specify the standard. Section 282 provides in part that "A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim.... The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity". (Parentheses in original.)

The Supreme Court granted certiorari on November 29, 2011. See, story titled "Supreme Court Grants Cert in Microsoft v. i4i" in TLJ Daily E-Mail Alert No. 2,166, December 2, 2010.

The Supreme Court heard oral argument on April 18, 2011. See, story titled "Supreme Court Hears Oral Argument in Microsoft v. i4i" in TLJ Daily E-Mail Alert No. 2,222, April 18, 2011.

Justice Sotomayor wrote the opinion of the Court. She wrote that "by its express terms, §282 establishes a presumption of patent validity, and it provides that a challenger must over-come that presumption to prevail on an invalidity defense. But, while the statute explicitly specifies the burden of proof, it includes no express articulation of the standard of proof."

She continued that "by the time Congress enacted §282 and declared that a patent is ``presumed valid,´´ the presumption of patent validity had long been a fixture of the common law" and "the presumption encompassed not only an allocation of the burden of proof but also an imposition of a heightened standard of proof". Moreover, the "basic principles of statutory construction require us to assume that Congress meant to incorporate ``the cluster of ideas´´ attached to the common-law term it adopted".

She also wrote that "if the PTO did not have all material facts before it, its considered judgment may lose significant force. ... And, concomitantly, the challenger's burden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain. In this respect, although we have no occasion to endorse any particular formulation, we note that a jury instruction on the effect of new evidence can, and when requested, most often should be given. When warranted, the jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent. When it is disputed whether the evidence presented to the jury differs from that evaluated by the PTO, the jury may be instructed to consider that question. In either case, the jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence."

Also, while the parties and amici argued the policy merits of their positions, Sotomayor concluded that "We find ourselves in no position to judge the comparative force of these policy arguments." She added that changing the standard of proof lies in the hands of the Congress.

Neither S 23 [LOC | WW], the "America Invents Act", passed by the Senate on March 8, 2011, nor HR 1249 [LOC | WW], also titled the "America Invents Act", approved by the House Judiciary Committee (HJC) on April 14, 2011, address this standard. However, both bills address inter partes re-examination procedure, and create a new post grant review procedure at the U.S. Patent and Trademark Office (USPTO). The House may consider HR 1249 next week.

Justice Stephen Breyer wrote a concurring opinion joined by Justices Antonin Scalia and Sam Alito. Breyer wrote that "the evidentiary standard of proof applies to questions of fact and not to questions of law. ... Many claims of invalidity rest, however, not upon factual disputes, but upon how the law applies to facts as given. ... Where the ultimate question of patent validity turns on the correct answer to legal questions -- what these subsidiary legal standards mean or how they apply to the facts as given -- today's strict standard of proof has no application."

He added that "Courts can help to keep the application of today's ``clear and convincing´´ standard within its proper legal bounds by separating factual and legal aspects of an invalidity claim, say, by using instructions based on case-specific circumstances that help the jury make the distinction or by using interrogatories and special verdicts to make clear which specific factual findings underlie the jury's conclusions."

Justice Clarence Thomas wrote a separate concurring opinion.

Ed Black, head of the CCIA, stated in a release that "We are facing a firehose of low-quality patents that makes it impossible to know who owns what. It's getting worse. Any successful product, like smartphones, has become a target for patent attacks, whether by losers in the market or opportunists."

Black added that "it appears that we are in a race with China to see who can grant the most patents. That's easy if you don't have to worry about quality. The winners are patent attorneys, who must be dancing in the streets today. The losers are innovators who find the value of good patents diluted -- and a blizzard of low-quality patents blocking even routine attempts to innovate."

This case is Microsoft Corporation v. i4i Limited Partnership, et al., Supreme Court of the U.S., Sup. Ct. No. 10-290, a petition for writ of certiorari to the U.S. Court of Appeals for the Federal Circuit, App. Ct. No. 2009-1504. Judge Sharon Prost wrote the opinion of the Court of Appeals, in which Judges Schall and Moore joined. The Court of Appeals heard an appeal from the U.S. District Court for the Eastern District of Texas, D.C. No. 07-CV-113, Judge Leonard Davis presiding. See also, Supreme Court docket.

6/7. Federal Communications Commission (FCC) Chairman Julius Genachowski named Rick Kaplan to be Chief of the Wireless Telecommunications Bureau (WTB), effective June 20, 2011.

Kaplan is currently Genachowski's Chief Counsel and Senior Legal Advisor. He will replace Ruth Milkman, who will remain at the FCC with the job title Special Counsel to the Chairman for Innovation in Government. Milkman began her current stint at the FCC in August of 2009.

The FCC stated in a release that Milkman will "lead a team to develop proposals for procedural, regulatory and statutory changes to further innovation".

6/6. Federal Communications Commission (FCC) announced changes to its small line up of economists. FCC Chairman Julius Genachowski named Marius Schwartz Chief Economist in the FCC's Office of Strategic Planning & Policy Analysis (OSPPA).

Schwartz is a professor in the economics department at Georgetown University. He briefly worked in the Department of Justice's (DOJ)Antitrust Division, including as acting Deputy Assistant Attorney General for Economics, at the time of the Microsoft litigation.

He will replace Jonathan Baker. The FCC also announced in a release that Baker and Gregory Rosston will have the job titles "Senior Economists for Transactions", and will work on the FCC's AT&T T-Mobile USA antitrust merger review. Also, Baker will return to his position at the American University law school.

6/6. The Senate confirmed Donald Verrilli to be the Solicitor General at the Department of Justice (DOJ) by a vote of 72-16. See, Roll Call No. 85. All of the no votes were cast by Republicans.

Until recently, Verrilli was a partner in the law firm of Jenner & Block. He has represented major copyright based businesses in recent high profile cases. For example, his clients have included movie companies in MGM v. Grokster, Viacom and others in Viacom v. YouTube, and Perfect 10 in Perfect 10 v. Visa.

However, opposition to his nomination was based upon concerns that he has been too close to President Obama (as Deputy Counsel) to act independently, and that he is too soft on terrorism.

Sen. Charles Grassley (R-IA), the ranking Republican on the Senate Judiciary Committee (SJC) voted for confirmation, but expressed concerns. He stated that "My concern with this nomination is whether or not the nominee will demonstrate appropriate independence in the office. His testimony at his hearing raised doubts about his ability and commitment to uphold that principle. Mr. Verrilli seemed to buy into the notion that he was still the President’s lawyer. He gave lip service to the two traditional exceptions to the Solicitor General defending a statute -- first, if the statute violates separation of powers by infringing on the President’s constitutional authority; and second, if there is no reasonable argument that can be advanced in defense of the statute. Mr. Verrilli then appeared to create a third exception -- one that is not supported by practice or tradition. He stated he would defend a statute’s constitutionality “unless instructed by my superior not to do so."

The Senate debate is in the Congressional Record, June 7, 2011, at Pages S3485-3488.

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The House will meet at 10:30 AM in pro forma session.

The Senate will meet at 9:30 AM.

Supreme Court conference day (discussion of argued cases, and decision on cert petitions). Closed.

Day two of a two day event hosted by the US Telecom titled "Broadband Research Summit". See, notice. Prices vary. Location?

8:30 AM - 4:00 PM. Day two of a two day meeting of the Department of the Interior's (DOI) National Geospatial Advisory Committee (NGAC). See, NGAC notice and notice in the Federal Register, Vol. 76, No. 95, Tuesday, May 17, 2011, at Pages 28449-28450. Location: American Institute of Architects Building, 1735 New York Ave., NW.

10:00 AM. The Senate Judiciary Committee (SJC) will hold an executive business meeting. The agenda includes consideration of S 1103 [LOC | WW], a bill to extend the term of the FBI Director, and S 978 [LOC | WW], an untitled bill to amend 18 U.S.C. § 2319 and 17 U.S.C. § 506 to toughen penalties for criminal copyright infringement by streaming. The agenda also includes consideration of Steve Six (to be a Judge of the U.S. Court of Appeals for the 10th Circuit), Marina Marmolejo (USDC/SDTex), and Michael Green (USDC/WDNY). The SJC will webcast this event. See, notice. Location: Room 226, Dirksen Building.

10:30 AM. The Federal Communications Commission (FCC) may hold an event titled "open meeting". Location: FCC, Commission Meeting Room, 445 12th St., SW.

6:00 - 8:15 PM. The Federal Communications Bar Association (FCBA) will host an event titled "The Judicial Year in Review". CLE credits. See, notice. Prices vary. Location: Wiley Rein, 1776 K St., NW.

The House will not meet.

The Senate will not meet.

TIME? The Copyright Office (CO) will hold a public hearing in its inquiry in to possible mechanisms, methods, and recommendations for phasing out the statutory licensing requirements set forth in 17 U.S.C. § 111, § 119, and § 122. See, notice in the Federal Register, Vol. 76, No. 90, May 10, 2011, at Pages 27091-27092. See also, story titled "Copyright Office to Hold Hearing on Phasing Out Statutory Licensing Requirements" in TLJ Daily E-Mail Alert No. 2,238, May 11, 2011. Location: Copyright Hearing Room, Room LM-408, Madison Building, 101 Independence Ave., SE.

12:00 NOON. The Federal Communications Bar Association (FCBA) will host a lunch. The speaker will be Federal Communications Commission (FCC) Chairman Julius Genachowski. Prices vary. Location: Capitol Hilton, 1001 16th St., NW.

Extended deadline to submit initial comments to the Federal Communications Commission (FCC) in response to the December 3, 2010, petition for declaratory ruling (PDR) filed by the CTIA regarding the scope of the federal ban on state and local entry regulation, codified at 47 U.S.C. § 332(c)(3)(A), and the state of Connecticut's new regulatory regime for wireless service provides. See, CTIA's PDR part 1 and part 2, CTIA's request to extend comment deadlines, and FCC's extension notice in the Federal Register, April 18, 2011, Vol. 76, No. 74, at Pages 21742-21743. This proceeding is WT Docket No. 11-35.

Deadline to submit oppositions to petitions to deny AT&T's acquisition of T-Mobile USA to the Federal Communications Commission (FCC). See, FCC Public Notice (PN). It is DA 11-799 in WT Docket No. 11-65. See also, story titled "FCC Sets Comments Deadlines for AT&T T-Mobile USA Antitrust Merger Review" in TLJ Daily E-Mail Alert No. 2,229, April 29, 2011.

The Senate will meet at 2:00 PM.

1:00 - 3:00 PM. The House Oversight and Government Reform Committee will hold a hearing titled "Obstruction of Justice: Does the Justice Department Have to Respond to a Lawfully Issued and Valid Congressional Subpoena?". See, notice. Location: Room 2154, Rayburn Building.

7:00 PM. Deadline for Representatives to submit proposed amendments to HR 1249 [LOC | WW], the "America Invents Act" to the House Rules Committee (HRC). The HRC may adopt a rule for consideration of this bill, and the House may consider this bill, during the week of June 13. It is the patent reform bill. See, letter from Rep. David Dreier (R-CA).

The Lyndon B. Johnson School of Public Affairs and the Patient Privacy Rights Foundation will host a conference titled "Getting IT Right: Protecting Patient Privacy in a Wired World". See, conference web site. Location: Georgetown Law Center, 600 New Jersey Ave., NW.

Deadline to submit comments to the National Institute of Standards and Technology's (NIST) Computer Security Division (CSD) regarding its draft SP 800-146 [84 pages in PDF] titled "Cloud Computing Synopsis and Recommendations".

8:00 -10:00 AM. Broadband Census News LLC will host a panel discussion titled "A Performance Right for Broadcasting: Will Radio Begin to Pay?". Breakfast will be served. See, notice and registration page. This event is also sponsored by the National Cable & Telecommunications Association (NCTA) and the Public Knowledge (PK). Location: Clyde's of Gallery Place, 707 7th St., NW.

10:00 AM. The House Judiciary Committee's (HJC) Subcommittee on Crime, Terrorism and Homeland Security will hold a hearing titled "Foreign Corrupt Practices Act". See, notice. Location: Room 2141, Rayburn Building.

10:00 AM. The Senate Banking Committee (SBC) will hold hearing on several pending nominations, including Lius Aguilar and Daniel Gallagher to be members of the Securities and Exchange Commission (SEC). See, notice. Location: Room 538, Dirksen Building.

12:30 - 2:30 PM. The Tech Freedom will host a panel discussion titled "Search Engine Regulation: A Solution in Search of a Problem?". The speakers will be Declan McCollaugh (CNET), Frank Pasquale (Seton Hall law school), Geoffrey Manne (Lewis & Clark law school), James Grimmelman (New York Law School), and Eric Goldman (Santa Clara Law School). Lunch will be served. This event is free and open to the public. Location: Capitol Visitor Center, Room SVC-210/212.

2:00 - 4:00 PM. The House Science Committee's (HSC) Subcommittee on Investigations and Oversight will hold a hearing titled "Critical Materials Strategy". The witnesses will be John Holdren (Director of the EOP's Office of Science & Technology Policy), David Sandalow (Assistant Secretary for Policy and International Affairs), and Jeff Doebrich (U.S. Geological Survey). This hearing may address rare earth materials, which are used in certain IT devices and equipment. See, notice. The HSC will webcast this event. Location: Room 2318, Rayburn Building.

Day one of a two day event hosted by George Mason University (GMU) titled "The Tenth Workshop on Economics of Information Security". See, notice. Location: The Mason Inn Conference Center & Hotel, 4352 Mason Pond Drive, Fairfax, VA.

Day one of a three day event hosted by Association for Computing Machinery (ACM) titled "Computers, Freedom, and Privacy 2011". See, notice. Location: Georgetown Law Center, 600 New Jersey Ave., NW.

Day one of a two day event hosted by George Mason University (GMU) titled "The Tenth Workshop on Economics of Information Security". See, notice. Location: The Mason Inn Conference Center & Hotel, 4352 Mason Pond Drive, Fairfax, VA.

Day two of a three day event hosted by Association for Computing Machinery (ACM) titled "Computers, Freedom, and Privacy 2011". See, notice. Location: Georgetown Law Center, 600 New Jersey Ave., NW.

Supreme Court conference day (discussion of argued cases, and decision on cert petitions). Closed.

10:00 AM - 12:00 NOON. The House Science Committee (HSC) will hold a hearing titled "STEM Education". See, notice. The HSC will webcast this event. Location: Room 2318, Rayburn Building.

Day three of a three day event hosted by Association for Computing Machinery (ACM) titled "Computers, Freedom, and Privacy 2011". See, notice. Location: Georgetown Law Center, 600 New Jersey Ave., NW.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its Public Notice (PN) asking what its broadband internet access service (BIAS) transparency rule means. The FCC promulgated its BIAS transparency rule in its huge Report and Order (R&O) [194 pages in PDF] which contains rules for the regulation of BIAS service providers. The FCC released this PN on April 11, 2011. It is DA 11-661 in CG Docket No. 09-158. See, notice in the Federal Register, April 20, 2011, Vol. 76, No. 76, at Pages 22103-22104. See also, story titled "FCC Issues Public Notice Asking What Its BIAS Transparency Rule Means" in TLJ Daily E-Mail Alert No. 2,221, April 12, 2011.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its Further Notice of Proposed Rulemaking (FNPRM) regarding ex parte communications with the FCC. The FCC adopted this item on February 1, 2011, and released it on February 2, 2011. It is FCC 11-11 in GC Docket No. 10-43. See, notice in the Federal Register, May 2, 2011, Vol. 76, No. 84, at Pages 24434-24436.

Deadline to submit reply comments to the Federal Communications Commission (FCC) Further Notice of Proposed Rulemaking (FNPRM) regarding internet based telecommunications relay services (TRS). The FCC adopted this item on April 5, 2011, and released it on April 6, 2011. It is FCC 11-54 in CG Docket No. 10-51. See, notice in the Federal Register, May 2, 2011, Vol. 76, No. 84, at Pages 24437-24442.

No events listed.