1/21. The House Judiciary Committee amended and approved HR 2391, the "Cooperative Research and Technology Enhancement (CREATE) Act of 2003", which amends Section 103(c) of the Patent Act.

Rep. Lamar Smith (R-TX), the Chairman of the Courts, Internet and Intellectual Property Subcommittee, introduced HR 2361 on June 9, 2003. See, bill as introduced. The Subcommittee also held a hearing on the bill on June 10, 2003. See, story titled "Representatives Introduce Patent Bill to Encourage Collaborative Research" in TLJ Daily E-Mail Alert No. 680, June 13, 2003. The Subcommittee amended and approved the bill on July 22, 2003.

The full Committee approved an amendment in the nature of a substitute offered by Rep. Smith, and then the bill, as amended. The Committee's consideration of the bill was brief, and without controversy. The amendment and the bill as amended passed by unanimous voice vote. Rep. Smith explained and spoke in support of the bill.

Rep. Smith (at right) stated that the bill addresses the August 8, 1997 opinion of the U.S. Court of Appeals for the Federal Circuit in OddzOn Products, Inc. v. Just Toys, Inc., which ruled that derived prior art may serve as evidence of obviousness. It is also reported at 122 F.3d 1396.

Section 103(c) currently provides a safe harbor for inventions that are the product of collaboration involving co-inventors within a single company. The problem is that scientific research is increasingly being conducted jointly by multiple companies, universities, government labs, and/or other entities.

The holding in the OddsOn case threatens to discourage collaborative research, where the scientists involved are not employed by the same company or entity. Basically, the Court interpreted Section 103(c) to mean that prior art under Sections 102(f) or 102(g) could be used to determine the obviousness of an invention where there is no common ownership or assignment of the invention and information being shared among the collaborators, and the information exchanged is not publicly known. The bill amends Section 103 to provide that patentability is not precluded in the case of research conducted across entities pursuant to a joint research agreement.

Section 103(c), codified at 35 U.S.C. § 103, pertains to conditions for patentability, and non-obviousness. It currently provides that "Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person."

The bill, as approved by the Committee, provides that 35 U.S.C. § 103(c) is amended to read as follows:

"(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person."

(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(3) For purposes of paragraph (2), the term 'joint research agreement' means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention."

The bill adds that "The amendments made by this Act shall not affect any final decision of a court or the United States Patent and Trademark Office rendered before the date of the enactment of this Act, and shall not affect the right of any party in any action pending before the United States Patent and Trademark Office or a court on the date of the enactment of this Act to have that party's rights determined on the basis of the provisions of title 35, United States Code, in effect on the day before the date of enactment of this Act."

1/21. The Recording Industry Association of America (RIAA) has modified its strategy for litigating against people that it alleges are using peer to peer (P2P) file sharing systems to infringe the copyrights of its member music companies. This follows the Court of Appeals' ruling in RIAA v. Verizon. The RIAA previous used expeditious Section 512(h) subpoenas to obtain personally identifying information about infringers from ISPs, and then file lawsuits against the individuals so named. Now, the RIAA is using the more laborious process of filing "John Doe" lawsuits against unnamed infringers, and then obtaining subpoenas in those actions.

On December 19, 2003, the U.S. Court of Appeals (DCCir) issued its opinion [16 pages in PDF] in RIAA v. Verizon, reversing the District Court, and holding that a Section 512(h) subpoena may only be issued to an ISP that is engaged in storing on its servers material that is infringing or the subject of infringing activity. See, story titled "DC Circuit Reverses in RIAA v. Verizon" in TLJ Daily E-Mail Alert No. 804, December 22, 2003.

Previously, when the RIAA and others failed to obtain orders from courts enjoining producers of decentralized P2P programs, they adopted a strategy of pursuing individual infringers. One obstacle that the RIAA faces is obtaining the identities of the individuals it believes are infringers. The RIAA initially possesses only Internet Protocol (IP) numbers. However, internet service providers (ISPs) that provide internet access for the P2P infringers possess information that would associate subscriber information with IP numbers. That is, obtaining the ISP's information enables the RIAA, or its members, to file complaints alleging infringement against the individual infringers that names the individuals. It also enables the RIAA to contact the individuals before filing a complaint in court.

ISPs, including Verizon, have opposed the efforts of the RIAA to use Section 512(h) subpoenas before bringing lawsuits. The RIAA had obtained subpoenas from the Clerk of the Court of the U.S. District Court, pursuant to 17 U.S.C. § 512(h), and served them upon ISPs. However, this ended with the December 19 opinion in RIAA v. Verizon.

On January 21, 2004, the RIAA announced that it filed "John Doe" complaints against 532 individuals. The RIAA published a sample complaint [PDF] in its website.

Cary Sherman, President of the RIAA, stated in a release that "Our campaign against illegal file sharers is not missing a beat ... The message to illegal file sharers should be as clear as ever -- we can and will continue to bring lawsuits on a regular basis against those who illegally distribute copyrighted music."

The RIAA release adds that "Because of the nature of the ``John Doe´´ litigation process, the RIAA will no longer be able to pre-notify illegal file sharers and give them an opportunity to settle in advance of the formal filing of the lawsuit. Nonetheless, Sherman said the recording industry wants to go "the extra mile" to develop a variation of the program that has so far been successful. After learning the identity of an illegal file sharer through a ``John Doe´´ lawsuit, but prior to amending the complaint to reflect the infringer's name and address, the RIAA would offer the opportunity to settle the case before proceeding further with the litigation.

1/21. Sen. Patrick Leahy (D-VT), the ranking Democrat on the Senate Judiciary Committee, released a statement regarding provisions of the USA PATRIOT Act that are scheduled to sunset. He responded to comments made by President Bush in his January 20, 2003 State of the Union address.

This Act was passed by the 107th Congress as HR 3162 shortly after the terrorist attacks of September 11, 2001. It became Public Law 107-56 on October 26, 2001. The original PATRIOT Act provides that some of its provisions sunset, or cease to have effect, on December 31, 2005. Sen. Leahy has introduced a bill that would sunset more provisions of the Act.

Bush stated that "Inside the United States, where the war began, we must continue to give our homeland security and law enforcement personnel every tool they need to defend us. And one of those essential tools is the Patriot Act, which allows federal law enforcement to better share information, to track terrorists, to disrupt their cells, and to seize their assets. For years, we have used similar provisions to catch embezzlers and drug traffickers. If these methods are good for hunting criminals, they are even more important for hunting terrorists. Key provisions of the Patriot Act are set to expire next year. The terrorist threat will not expire on that schedule. Our law enforcement needs this vital legislation to protect our citizens. You need to renew the Patriot Act."

Sen. Leahy (at right) responded. "I welcome the President's call to revisit our homeland security laws, but rather than blindly reauthorize the sweeping legislation without a much-needed review, it is important to conduct a vigorous, bipartisan examination of the PATRIOT Act, focused on balancing the need to address the threat of terrorism and the need to protect our constitutional freedoms."

Sen. Leahy introduced introduced S 1695, the "PATRIOT Oversight Restoration Act" on October 1, 2003. This bill pertains to the sunsetting of various provisions of the USA PATRIOT Act. See, story titled "Sen. Leahy Introduces Bill to Expand List of Surveillance Provisions of PATRIOT Act to Be Sunsetted" in TLJ Daily E-Mail Alert 757, October 14, 2003.

This TLJ article also includes a table listing the electronic surveillance related provisions of the PATRIOT Act, and for each section, indicates whether the Act provides for sunsetting. This table also identifies, for each such section, whether the bill introduced by Sen. Leahy, and a separate bill introduced by Sen. Larry Craig (R-ID), would provide for sunsetting. See also, story titled "Senators Craig and Durbin Introduce Bill to Modify PATRIOT Act" in TLJ Daily E-Mail Alert No. 753, October 6, 2003.

Sen. Leahy added in his January 21, 2004 statement that "The very purpose of the sunset was to provide Congress the opportunity to revisit these new laws and learn from the experiences and public debate that was sure to follow PATRIOT’s passage. So far, the Administration has resisted full oversight of how it is using these laws. Oversight questions from the Senate Judiciary Committee have sometimes gone unanswered for not days or weeks or months, but more than a year."

He concluded that "I'm hopeful the President’s desire to revisit the PATRIOT Act represents a genuine interest in a full and open debate on these important privacy and security issues and not a political calculation in his re-election campaign."

1/21. The House Judiciary Committee did not consider all of the bills on the agenda for its mark up session of January 21. The Committee will continue its mark up session on Wednesday, January 28, 2003 at 10:00 AM. The agenda for this continuation meeting includes mark up of HR 2824, the "Internet Tobacco Sales Enforcement Act". The Committee amended and approved HR 3261, the "Database and Collections of Information Misappropriation Act" by a roll call vote of 16-7, after a lengthy debate, and consideration of numerous amendments. There will be a TLJ story on this bill in the next issue of the TLJ Daily E-Mail Alert.

1/21. The National Institute of Science and Technology's (NIST) Computer Security Division (CSD) released a draft publication [58 pages in PDF] numbered "DRAFT Special Publication 800-30, Rev A" and titled "Risk Management Guide for Information Technology Systems". This publication updates Special Publication 800-30 to reflect the results of the FISMA Implementation Project, to improve internal consistency within the document, and generally improve the document readability. The NIST requests public comments on this draft publication by March 20, 2004. Comments should be addressed to gary.stoneburner@nist.gov.

1/21. The National Institute of Science and Technology's (NIST) Computer Security Division (CSD) released a draft publication [33 pages in PDF] numbered "DRAFT Special Publication 800-27 Rev A" and titled "Engineering Principles for Information Technology Security (A Baseline for Achieving Security)". It was written by Gary Stoneburner, Clark Hayden, and Alexis Feringa. The NIST requests public comments by March 20, 2004. Comments should be addressed to gary.stoneburner@nist.gov.

8:30 AM - 6:00 PM. The Catholic University School of Law and the Federal Communications Commission (FCC) will host a one day conference titled "The Journey to Convergence". Advance registration is required. See, conference web site. Location: Columbus School of Law, The Catholic University of America, 3600 John McCormack Rd., NE. The highlights include the following:
 • 9:30 - 11:00 AM. Panel on spectrum. The moderator will be Paul Kolodzy.
 • 11:05 AM - 12:35 PM. Panel on digital content. The moderator will by Richard Wiley.
 • Luncheon.
 • 2:00 - 3:30 PM. Panel on broadband. The moderator will be John Nakahata.
 • 3:35 - 5:05 PM. Panel titled "Potholes in the Superhighway". The moderator will be Bryan Tramont.
 • 5:10 - 6:00 PM. Speech by FCC Commissioner Kathleen Abernathy titled "Overview of the Road to Convergence: New Realities Collide with Old Rules".

10:00 AM. The Senate Judiciary Committee will hold a hearing an pending judicial nominations, including Raymond Gruender (nominated to be a Judge of the U.S. Court of Appeals for the 8th Circuit), Ricardo Martinez (Western District of Washington), Gene Pratter (Eastern District of Pennsylvania), and Neil Vincent Wake (District of Arizona). See, notice. Location: Room 226, Dirksen Building.

1:15 PM. The Department of the Treasury, Office of Management and Budget (OMB) and Internal Revenue Service (IRS) will host a media event to promote and demonstrate the IRS's Free File initiative. This initiative enables some taxpayers to prepare and file tax returns online. The speakers will include John Snow (Secretary of the Treasury), Joshua Bolten (OMB Director), Mark Everson (IRS Commissioner), and Mike Cavanagh (Executive Director of the Free File Alliance). There are access restrictions. See, Treasury notice. The event will be webcast at www.ustreas.gov. Location: Room 4121, Treasury Department, 1500 Pennsylvania Ave., NW.

10:00 AM - 3:00 PM. The Federal Communications Commission's (FCC) Technological Advisory Council will meet. See, notice in the Federal Register, December 19, 2003, Vol. 68, No. 244, at Pages 70796 - 70797. Location: FCC, 445 12th St., SW, Room TW-C305.

10:00 AM. The U.S. District Court (DC) will hold a status conference in United States v. Microsoft, D.C. No. 98-1232 (CKK) and New York, et. al. v. Microsoft, D.C. No. 98-1232 (CKK), Judge Colleen Kotelly presiding. Location: Courtroom 11.

12:15 PM. The Federal Communications Bar Association's (FCBA) Young Lawyers Committee will host a brown bag lunch. The topic will be "Hot Communications Issues on the Hill". The speakers will be Neil Fried (Republican Counsel, House Commerce Committee), Gregg Rothschild (Democratic Counsel, House Commerce Committee), Lee Carosi (Republican Counsel, Senate Commerce Committee), and Paul Nagle (Attorney-Advisor, FCC Office of Legislative Affairs). For more information, contact Jason Friedrich at 202 354-1340 or jasonfriedrich@dbr.com or Pam Slipakoff at 202 418-7705 or pslipako@fcc.gov. Location: Drinker Biddle & Reath, 1500 K Street, 11th Floor.

Deadline to submit reply comments to the Office of the U.S. Trade Representative (USTR) regarding the operation and effectiveness of, and the implementation of and compliance with, the World Trade Organization (WTO) Basic Telecommunications Agreement, other WTO agreements affecting market opportunities for U.S. telecommunications products and services, the telecommunications provisions of the North American Free Trade Agreement (NAFTA), Chile FTA and Singapore FTA, and other telecommunications trade agreements. See, notice in the Federal Register, December 8, 2003, Vol. 68, No. 235, at Pages 68444 - 68445.

Extended deadline to submit comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking [35 pages in PDF] regarding unlicensed devices. See, notice in the Federal Register, December 10, 2003, Vol. 68, No. 237, at Pages 68823 - 68831. The FCC adopted this NPRM on September 10, 2003. See, FCC release [PDF]. The FCC released the NPRM [35 pages in PDF] on September 17, 2003. This NPRM is FCC 03-223 in ET Docket No. 03-201. See also, stories titled "FCC Announces NPRM Regarding Unlicensed Devices" in TLJ Daily E-Mail Alert No. 739, September 15, 2003, and "FCC Announces Deadlines for Comments on Unlicensed Devices NPRM" in TLJ Daily E-Mail Alert No. 800, December 16, 2003. See also, FCC order [PDF] extending the deadline from January 9 to January 23.

The Supreme Court will begin a recess. (It will return on February 23, 2004.)

12:00 NOON - 1:00 PM. The New America Foundation will host a brown bag lunch. The topic will be "Policy Watch: Making the Right Choices about the Future of Communications". The speaker will be David Dorman, Chairman and CEO of AT&T. RSVP to Jennifer Buntman at 202-986-4901 or buntman@newamerica.net. See, notice. Location: 1630 Connecticut Ave, NW, 7th Floor.

2:00 - 5:00 PM. The Federal Communications Commission's (FCC) Advisory Committee on Diversity for Communications in the Digital Age will hold its second meeting. See, FCC notice [PDF] and notice in the Federal Register, January 5, 2004, Vol. 69, No. 2, at Page 345. Location: Commission Meeting Room, Room TW-C305, 445 12th St. SW.

Deadline to submit reply comments to the Federal Communications Commission (FCC) regarding its notice of proposed rulemaking (NPRM) pertaining to promoting spectrum based services in rural areas. See, notice in the Federal Register summarizing this NPRM, and story titled "FCC Announces NPRM Regarding Regulations Affecting the Use of Spectrum in Rural Areas" in TLJ Daily E-Mail Alert No. 739, September 15, 2003. This NPRM is FCC 03-222 in WT Docket Nos. 02-381, 01-14, and 03-202. The FCC adopted this NPRM on September 10, 2003, and released it on October 6, 2003. See, Federal Register, November 12, 2003, Vol. 68, No. 218, at Pages 64050-64072.

EXTENDED TO FEBRUARY 7. Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking [35 pages in PDF] regarding unlicensed devices. See, notice in the Federal Register, December 10, 2003, Vol. 68, No. 237, at Pages 68823 - 68831. The FCC adopted this NPRM on September 10, 2003. See, FCC release [PDF]. The FCC released the NPRM [35 pages in PDF] on September 17, 2003. This NPRM is FCC 03-223 in ET Docket No. 03-201. See also, stories titled "FCC Announces NPRM Regarding Unlicensed Devices" in TLJ Daily E-Mail Alert No. 739, September 15, 2003, and "FCC Announces Deadlines for Comments on Unlicensed Devices NPRM" in TLJ Daily E-Mail Alert No. 800, December 16, 2003.

Deadline to submit comments to the U.S. Patent and Trademark Office (USPTO) in response to its notice of proposed rulemaking (NPRM) that proposes changes to the rules governing practice before the Board of Patent Appeals and Interferences to consolidate and simplify such rules and to reflect developments in case law, legislation, and administrative practice. See, notice in the Federal Register, November 26, 2003, Vol. 68, No. 228, at Pages 66647 - 66691.

New Hampshire Presidential Primary.

10:00 AM - 4:00 PM. The Federal Communications Commission (FCC) will host an event titled "Satellite Rural Forum". The agenda includes, among other topics, broadband access, information and mass media entertainment, telemedicine and distance learning. See, notice and agenda [5 pages in PDF]. Location: FCC, 455 12th Street, SW.

9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in USTA v. FCC, No. 00-1020. Judges Edwards, Randolph and Williams will preside. Location: 333 Constitution Ave., NW.

10:00 AM. The House Commerce Committee's Subcommittee on Telecommunications and the Internet will hold a hearing titled "Can you say that on TV?': An Examination of the FCC's Enforcement with Respect to Broadcast Indecency". The hearing will be webcast. See, notice. Location: Room 2123, Rayburn Building.

10:00 AM. The House Judiciary Committee will meet to mark up seven bills, including HR 2824, the "Internet Tobacco Sales Enforcement Act". Location: Room 2141, Rayburn Building.

12:15 PM. The Federal Communications Bar Association's (FCBA) Online Communications Practice Committee will host a brown bag lunch titled "Legislative and Regulatory Update on Internet and E-Commerce Privacy Issues". The speakers will be Chris Hoofnagel (EPIC) and Heidi Salow (Nextel). For more information, contact Vincent Paladini, Karlyn Stanley (CRB, 202 828-9835), or Amy Wolverton. Location: Cole Raywid & Braverman, 1919 Pennsylvania Ave., NW, Suite 200.

6:00 - 8:15 PM. The Federal Communications Bar Association (FCBA) Wireless Practice Committee will host a Continuing Legal Education (CLE) program titled "Implementing the FCC's Secondary Markets Order". The prices to attend range from $50 to $125. Location: Wiley Rein & Fielding, 1750 K Street, NW, 10th Floor.

Deadline to submit requests to participate in the U.S. Patent and Trademark Office (USPTO) public round table meeting on the effectiveness of inter partes reexamination proceedings, tentatively scheduled for February 17, 2004. See, notice in the Federal Register, December 30, 2003, Vol. 68, No. 249, at Pages 75217 - 75218.

11:00 AM. The Cato Institute will host a panel discussion titled "Antitrust in the High-Tech Marketplace: The Real Irrational Exuberance?". The speakers will be Lawrence Lindsey (Lindsey Group), Fred Smith (Competitive Enterprise Institute), Jonathan Zuck (Association for Competitive Technology), and Ed Black (Computer and Communications Industry Association). See, notice. The event will be webcast. Lunch will follow the program. Location: Cato, 1000 Massachusetts Avenue, NW.

2:00 - 4:00 PM. The State Department's International Telecommunication Advisory Committee --Radiocommunication Sector (ITAC-R) will hold a meeting to discuss "matters related to the preparations for ITU-R study group meetings taking place in 2004". See, notice in the Federal Register, January 15, 2004 Vol. 69, No. 10, at Page 2380. Location: The Boeing Company, Harry C. Stonecipher Conference Center, 1200 Wilson Boulevard, Arlington, VA.

TIME? Rosemary Coombe (York University) will give a lecture titled "The Globalization of Intellectual Property: Informational Capital and Its Cultures". This is a part of Georgetown University Law Center's (GULC) Colloquium on Intellectual Property & Technology Law Series. For more information, contact Julie Cohen at 202 662-9871. Location: GULC, 600 New Jersey Ave., NW.

6:00 - 8:15 PM. The Federal Communications Bar Association (FCBA) Wireless Practice Committee will host a Continuing Legal Education (CLE) program titled "Political Broadcasting Regulations". Bobby Baker (Assistant Chief of the FCC's Media Bureau's Policy Division), Jack Goodman (General Counsel of the National Association of Broadcasters), and Dawn Sciarrino. The prices to attend range from $50 to $125. Location: 8th Floor Conference Room, Dow Lohnes & Albertson, 1200 New Hampshire Ave., NW.

1/21. Ann Malester, Deputy Director of the Federal Trade Commission's (FTC) Bureau of Competition (BOC), is leaving the FTC and joining the Washington DC office of the law firm of Weil Gotshal & Manges (WGM) as a partner in its antitrust practice. She has worked at the FTC for 26 years. Steven Bernstein, another senior FTC/BOC attorney, will is also joining WGM. See, FTC release and WGM release.

1/21. Intel Corporation's Board of Directors has elected two new corporate vice presidents, Anand Chandrasekher and David Perlmutter. Chandrasekher is a co-general manager of Intel's Mobile Platforms Group. He oversees the design, development and marketing of Intel's solutions for the mobile computing segment. Perlmutter is also a co-general manager of the Mobile Platforms Group. He is jointly responsible for the design, development and marketing of Intel's solutions for the mobile computing segment. See, Intel release.