| Legislators Introduce Bills
to Address Infringement by States |
11/1. Rep. Howard
Coble (R-NC) and Rep.
Howard Berman (D-CA) introduced HR 3204, the Intellectual
Property Protection Restoration Act (IPPRA) of 2001. Sen. Patrick Leahy (D-VT)
introduced S 1611, the companion bill in the Senate. Reps.
Coble and Berman are the Chairman and ranking Democrat on the House Judiciary
Committee's Courts, Internet and Intellectual Property
Subcommittee. Sen. Leahy is the Chairman of the Senate Judiciary
Committee. Sen. Leahy sought unsuccessfully to pass
similar legislation in the last Congress, while Sen. Orrin Hatch (R-UT)
was Chairman of the Senate Judiciary Committee.
The purpose of these bills is to prevent states from
infringing patents, copyrights and trademarks. The bill would,
among other things, prevent states from recovering damages for
infringement of state owned intellectual property, unless they
have first waived their Eleventh Amendment sovereign immunity
from suits against them for their infringement of the
intellectual property of others.
The problem addressed by these bills arose in 1996 when the
Supreme Court of the U.S. ruled in Seminole
Tribe of Florida v. Florida that the Congress lacks
authority under Article I of the Constitution to abrogate the
States' 11th Amendment immunity from suit in federal courts.
See also, the 1999 opinions of the Supreme Court in Florida
Prepaid Postsecondary Education Expense Board v. College
Savings Bank (invalidating the Patent and Plant Variety
Protection Remedy Clarification Act) and College
Savings Bank v. Florida Prepaid Postsecondary Education
Expense Board (invalidating the Trademark Remedy
Clarification Act).
The Eleventh Amendment states: "The Judicial power of the
United States shall not be construed to extend to any suit in
law or equity, commenced or prosecuted against one of the
United States by Citizens of another State, or by Citizens or
Subjects of any Foreign State."
Rep. Coble described the bills as a "balanced and minimal
approach to solving the complex problem of preventing the
individual States from infringing intellectual property with
impunity." See, Congressional Record, November 1, 2001,
at page E1986.
Rep. Berman stated that "These bills will rectify a
serious inequity in intellectual property protection resulting
from recent Supreme Court decisions. These recent decisions
held that, under the Eleventh Amendment of the United States
Constitution, states have sovereign immunity in state and
federal courts against money damages suits for intellectual
property infringements. The Supreme Court came to this
conclusion despite unequivocal Congressional intent to
abrogate state sovereign immunity through enactment of the
Copyright Remedy Clarification Act (CRCA), Patent Remedy Act
(PRA), and Trademark Remedy Clarification Act (TRCA) in
1992."
Rep. Berman continued: "While immune from suit for money
damages when they infringe the intellectual property rights of
others, states can still secure protection for their own
patents, copyrights, and trademarks under federal law, and can
sue infringers of their rights for money damages. I believe it
is a serious inequity to allow a State to sue infringers of
its intellectual property rights when the State itself can
infringe the rights of others with impunity." See,
Congressional Record, November 1, 2001, at pages E1993-4.
Sen. Leahy also summarized the bills. "The IPPRA has two
essential components. First, it places States on an equal
footing with private parties by eliminating any damages remedy
for infringement of State owned intellectual property unless
the State has waived its immunity in Federal suits for
infringement of privately owned intellectual property. Second,
it improves the limited remedies that are available to enforce
a nonwaiving State's obligations under Federal law and the
United States Constitution." See, Congressional Record,
November 1, 2001, at pages S11364-5. |
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| Fed Circuit Addresses
Certificates of Correction in Patent Cases |
11/1. The U.S.
Court of Appeals (FedCir) issued its divided opinion in Superior
Fireplace v. Majestic Products, an patent
infringement case involving the granting of certificates of
correction.
The District Court ruled on summary judgment that Superior
Fireplace’s certificate of correction for U.S.
Patent No. 5,678,534 is invalid and that the uncorrected
version of this patent is not infringed. The Appeals Court
affirmed, 2 to 1, this portion of the District Court judgment.
However, it vacated and remanded the District Court's decision
on an attorneys fees issue.
Judge Linn, writing for the majority, opined that because the
correction of the alleged mistake under 35 U.S.C.
§ 255 broadened a claim and was not clearly evident from
the specification, drawings, and prosecution history, the
certificate of correction is invalid.
Judge Dyk wrote in his dissent that "I part company with
the majority when it reads into the statute a requirement that
the error be apparent from the prosecution history, a
requirement which is equally lacking an 'express indication'
in the statute. I accordingly dissent from the majority’s
holding that the certificate of correction is invalid
..." |
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| More News |
11/5. The U.S. Court of Appeals for the
District of Columbia Circuit heard oral argument in Teledesic
v. FCC, No. 00-1466.
10/22. A grand jury of the U.S. District Court (DMD)
returned a four count indictment against Misbah Khan alleging
knowingly causing the transmission of a computer command which
intentionally caused damage to computers, intentionally
accessing computers without authorization and obtaining
information from that computer, knowingly and with intent to
defraud possessing fifteen or more unauthorized access devices
(credit card account numbers), and causing the use of
unauthorized access devices to obtain things of value of more
than $1,000. Khan, a resident of Karachi, Pakistan, hacked the
computers of the American
Israel Public Affairs Committee, a pro Israel public
affairs group based in Washington DC. See, CCIPS
release. |
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| Judge Kotelly to Hold
Status Conference in Microsoft Case |
11/6. U.S. District Court Judge Colleen Kotelly will hold a
status conference in USA v. Microsoft, the government's
antitrust law suit against Microsoft. On Friday, November 2,
the Department of Justice
(DOJ) and Microsoft
announced a settlement, and filed a Stipulation
and Proposed Final Judgment.
Judge Kotelly's Scheduling
Order [PDF] of November 2 provides that "at the
November 6, 2001, status conference, the parties in Civil
Action No. 98-1233 shall report the status of their settlement
negotiations". District Court Case No. 98-1233 is the law
suit filed by various states against Microsoft; it was
consolidated with D.C. No. 98-1232, the law suit filed by the
DOJ. The Order further provides that "if a settlement is
not reached with regard to all of the parties in Civil Action
No. 98-1233 by November 6, 2001, the non-settling parties
shall be prepared to proceed with the litigation schedule set
forth in the Court's Scheduling
Order dated September 28, 2001". |
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| Senators Seek Tax Credit
for Home Computer Purchases |
11/5. Sen. George Allen
(R-VA) and Sen. Barbara
Boxer (D-CA) are seeking to have a temporary version of S 488,
the Education Opportunity Tax Credit Act, included in economic
stimulus legislation. Sen. Allen and others introduced the
bill on March 8, 2001.
This bill provides that for individuals "there shall be
allowed as a credit ... an amount equal to the qualified
elementary and secondary education expenses", the
definition of which includes "computer technology or
equipment expenses", including "Internet access and
related services". The bill sets a maximum credit of
$1,000 per student or $2,000 per household.
The two Senators wrote a letter to President Bush in which
they stated that a short term version of the bill would
stimulate the economy and help close the "digital
divide". The wrote that "This proposal increases
access to computers and the Internet in the home for
households of all incomes, and consumers reap the tangible,
and intangible, benefits of buying a major durable good --
something they would not otherwise do during these uncertain
economic times." See, Allen
release. |
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| EPIC Wants Commerce
Committee to Question Muris on Microsoft |
11/5. The Electronic Privacy
Information Center (EPIC) wrote a letter
to members of the House
Commerce Committee's Commerce, Trade, and Consumer
Protection Subcommittee regarding its hearing scheduled for
Wednesday, November 7. Federal
Trade Commission (FTC) Chairman Timothy Muris
will be the only witness at the hearing, which is titled
"Challenges Facing the Federal Trade Commission".
President Bush appointed Muris to head the FTC earlier this
year. This hearing will be the first time that Muris will
testify to the House Commerce Committee as Chairman of the
FTC.
The EPIC wrote that "we urge committee members to ask
Chairman Muris why his agency has not begun a public
investigation into information collection practices of
Microsoft through Passport and associated services." The
letter was written by Marc Rotenberg and Chris Hoofnagle of
EPIC and Jason Catlett of Junkbusters.
On July 26, 2001, EPIC and others filed a complaint
[PDF] with the FTC requesting that it conduct an investigation
of Microsoft, and enjoin a number of software features and
services which it alleges violate § 5 of the Federal
Trade Commission Act, 15 U.S.C.
§ 45. The EPIC and others submitted an updated
complaint [PDF] to the FTC regarding Microsoft's Passport
and other software and services on August 15. The FTC has not
publicly announced that it has taken any action with respect
to these complaints.
See also, speech
by Timothy Muris titled "Protecting Consumers' Privacy:
2002 and Beyond", which he delivered on October 4, 2001
at a privacy conference in Cleveland, Ohio. |
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| People and Appointments |
11/5. Peter Bresnan was named Deputy Chief Litigation
Counsel of the SEC's Division
of Enforcement. He replaces Stephen Crimmins, who left the SEC
in July. Bresnan joined the SEC in 1995. Before that, he
worked in the New York office of the law firm of Davis Polk & Wardwell.
Bresnan is currently litigating the SEC's first insider
trading case alleging the passing of inside information over
the Internet. See, SEC release.
10/29. The law firm of McDermott
Will & Emery will open an office in Munich, Germany,
on January 2, 2002. Ralf Eckert, Martin Kock, Jörg Kretschmer,
Christian von Sydow and Ralf Weisser will launch this office.
It will focus on corporate, M&A, taxation, media and
telecommunications law. See, MWE release. |
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| Fed Circuit Rules in
J&M v. Harley Davidson |
| 11/2. The U.S.
Court of Appeals (FedCir) issued its opinion in J&M
v. Harley Davidson, a patent infringement
case involving microphones in motorcycle helmets. The
plaintiffs are the applicants and licensee of U.S.
Reissue Patent Number 34,525. Plaintiffs alleged
infringement by Harley Davidson, and its supplier, Radio
Sound. The District Court held that the patent in suit was not
infringed, either literally, or under the doctrine of
equivalents. The Appeals Court affirmed. |
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| About Tech Law Journal |
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Privacy
Policy
Notices
& Disclaimers
Copyright 1998 - 2001 David Carney, dba Tech Law Journal. All
rights reserved. |
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| Tuesday, Nov 6 |
The House will meet at 12:30 PM for morning hour and at 2:00
PM for legislative business. No recorded votes are expected
before 6:00 PM. The House will consider a number of measures
under suspension of the rules. The Senate will likely resume
its consideration of HR 3061, the Labor HHS appropriations
bill.
9:00 AM. Status conference in USA v. Microsoft before Judge
Colleen Kotelly. See, Scheduling
Order [PDF] of November 2. Location: Courtroom 11, U.S.
Courthouse, Third St. and Constitution Ave., NW, Washington
DC.
9:30 AM - 5:30 PM. Day two of a three day conference and
exhibition hosted by the NIST
and NISO titled "4th
annual Electronic Book Conference". The price to attend
is $400. See, registration
page. Location: Ronald Reagan Building, 1300 Pennsylvania
Ave., NW, Washington DC. See, Nov.
6 agenda.
12:30 PM. The FCBA's
State and Local Practice Committee will host a brown bag
luncheon on "OTARD" and status of BOMA v. FCC. The
speakers will be Matthew Ames (Miller & Van Eaton),
James Barker (Latham &
Watkins), and Jeffrey Steinberg (FCC's Wireless Telecom. Bureau).
RSVP to Mitsi
Herrera. Location: Wiley
Rein & Fielding, 1750 K Street, NW, Washington DC. |
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| Wednesday, Nov 7 |
9:30 AM - 5:30 PM. Day three of a three day conference and
exhibition hosted by the NIST
and NISO titled "4th
annual Electronic Book Conference". The price to attend
is $400. See, registration
page. Location: Ronald Reagan Building, 1300 Pennsylvania
Ave., NW, Washington DC. See, Nov.
6 agenda.
10:00 AM. The House
Commerce Committee's Subcommittee on Commerce, Trade and
Consumer Protection will hold a hearing titled Challenges
Facing the Federal Trade Commission. FTC Chairman Timothy
Muris will be the only witness. Location: Room 2123,
Rayburn Building.
10:00 AM. The Senate
Judiciary Committee has scheduled a hearing on pending
nominations. Panel I will be five nominees to be U.S. District
Court Judges: Joe Heaton (Oklahoma), Clay Land (Georgia),
Frederick Martone (Arizona), Danny Reeves (Kentucky), and
Julie Robinson (Kansas). Panel II will be James Rogan, the nominee
to be Director of the U.S.
Patent and Trademark Office (USPTO). Sen. Dianne Feinstein
(D-CA) will preside. Location: Room 226, Dirksen Building.
10:00 AM. The U.S.
International Trade Commission (USITC) will begin a Section 337 evidentiary
hearing regarding the importation of certain integrated
circuits. The complainants are United Microelectronics Corp.,
UMC Group (USA), and United Foundry Service, Inc. The
respondents are Silicon Integrated Systems Corp. and Silicon
Integrated Systems Corp. This investigation pertains to U.S.
Patents No. 5,559,352 and 6,117,345. See, Investigation
No. 337-TA-450. Administrative Law Judge Sidney Harris
will preside. Location: Courtroom A, ITC Building, 500 E
Street SW, Washington DC.
12:15 PM. The FCBA
Online Communications Committee will host a brown bag lunch
titled "Broadband, When? -- the View from Earthlink".
The speaker will be Dave Baker, VP of Law & Public Policy
at Earthlink. RSVP to Scott
Blake Harris at sharris@
harriswiltshire.com. Location: Lampert & O'Connor, 5th
Floor, 1750 K Street, NW, Washington DC. |
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| Thursday, Nov 8 |
9:30 AM. The Federal
Communications Commission (FCC) will hold a meeting to
consider five items: (1) a Report and Order concerning
reexamination the Commercial Mobile Radio Services (CMRS)
spectrum aggregation limits and the cellular cross interest
rule (WT Docket No. 01-14); (2) a Notice of Proposed Rule
Making (NPRM) concerning whether to undertake a comprehensive
examination of its rules and policies of local radio ownership
(MM Docket No. 00-244); (3) a Memorandum Opinion and Order on
Reconsideration concerning its periodic review of the progress
of the conversion to digital television (MM Docket No. 00-39);
(4) a NPRM concerning the establishment of national
performance measurements and standards for unbundled network
elements and interconnection (CC Docket Nos. 98-56, 98-147,
98-147, 96-98, and 98-141); and a Report and Order concerning
its policies, rules and requirements for Cable Landing
Licenses (IB Docket No. 00-106). See, FCC
notice. Location: Commission Meeting Room, FCC, 445 12th
Street, SW, Room TWC305, Washington DC.
10:00 AM. The House Financial
Services Committee's Oversight and Investigations
Subcommittee and the House
Ways and Means Committee's Social Security Subcommittee
will hold a joint hearing titled Preventing Identity Theft
by Terrorists and Criminals. Location: Room 2128, Rayburn
Building.
12:15 PM. The Federal
Communications Bar Association's (FCBA) Global Telecom
Development Committee will host a brown bag luncheon titled Telco
Privatization: the Role of International Financial
Institutions. The speakers will be David Satola (World
Bank Group) and Janet Hernandez (Coudert Bros.). RSVP to Kent Bressie.
Location: Wilkinson Barker
& Knauer, 2300 N Street, Suite 700, Washington DC. |
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| Friday, Nov 9 |
8:30 AM - 1:30 PM. The American
Enterprise Institute (AEI) and the Brookings Institute will
jointly host a conference titled "Practical Steps to
Spectrum Markets". The price to attend is $5 (waived for
AEI supporters, government employees, and media). See, online registration
page. See, agenda at right. Location: Wohlstetter
Conference Center, Twelfth Floor, 1150 17th Street, NW,
Washington DC.
• 8:30 AM. Breakfast address by Sen. Ron Wyden (D-OR).
• 9:00 AM. Panel I: "Enabling Bandwidth
Markets". The speakers will be Thomas Hazlett (AEI),
Gregory Rosston (Stanford), Michelle Farquhar (Hogan &
Hartson), Evan Kwerel (FCC), and John Williams (FCC).
• 10:45 AM. Panel II: "Unblocking Spectrum
Allocation". The speakers will be Mike Chartier (Intel),
Joe Mitola (Mitre), DeWayne Hendricks (Dandin Group), and
Giancarlo Ibarguen (Francisco Marroquin Univ.).
• 12:15 PM. Luncheon address by Nancy Victory (NTIA).
10:00 AM. The House Government Reform Committee's Government
Efficiency, Financial Management, and Intergovernmental
Relations Subcommittee will hold a hearing titled Have
Federal Agencies Failed to Protect Their Computer Systems?
Room 2154, Rayburn Building. |
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