Federal Circuit Affirms in
Pause v. Tivo |
8/16. The U.S. Court of Appeals (FedCir) issued its
opinion [20 pages in
PDF] in Pause Technology v. Tivo, affirming the District Court's
summary judgment of non-infringement in favor of Tivo. This is a patent
infringement case involving digital video recorder (DVR) technology.
Pause Technology is the holder of
U.S. Reissue Patent No. 36,801, titled "Time delayed digital video system
using concurrent recording and playback". Tivo
makes digital video recorders for home entertainment systems.
On September 25, 2001, Pause filed a complaint in the
U.S. District Court (DMass) against
Tivo alleging patent infringement. See, Pause
release. Tivo
filed an answer and counterclaim in which it asserted the affirmative defenses
of invalidity and non-infringement. It also counterclaimed for a declaratory
judgment of invalidity and non-infringement.
The District Court entered summary judgment for Tivo on its claims that its
DVR products, versions 2.0 and above, do not infringe the patent in suit.
Pause appealed. It challenged to the District Court’s claim construction
rulings. The Court of Appeals affirmed.
This case is Pause Technology LLC v. Tivo, Inc., U.S. Court of Appeals for the
Federal Circuit, App. Ct. No. 04-1263,
an appeal from the U.S. District Court for the District of Massachusetts, D.C. No.
01-11657-PBS, Judge Patti Saris presiding. Judge Linn wrote the opinion of the
Court of Appeals, in which Judges Lourie and Newman joined.
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Federal Circuit Issues New Opinion in NTP v.
RIM |
8/2. The U.S. Court of Appeals (FedCir)
issued another opinion [75
pages in PDF] in NTP v. Research in Motion, a patent infringement case
involving RIM's BlackBerry series of mobile communications and computing devices.
This is one of the cases cited by some proponents of patent reform, in
support of the proposition that the Patent Act should be amended.
Research in Motion (RIM) makes Blackberrys.
NTP holds U.S. Patents Nos. 5,436,960, 5,625,670, 5,819,172, 6,067,451, and
6,317,592, which pertain to technology for integrating existing e-mail systems
with radio frequency (RF) wireless communication networks, to enable mobile
users to receive e-mail over a wireless network.
Specifically, these are U.S. Patent Nos.
5,436,960 titled "Electronic mail system with RF communications to mobile
processors and method of operation thereof",
5,625,670 titled "Electronic mail system with RF communications to mobile
processors",
5,819,172 titled "Electronic mail system with RF communications to mobile
radios",
6,067,451 titled "Electronic mail system with RF communications to mobile
processors", and
6,317,592 titled "Electronic mail system with RF communications to mobile
processors".
NTP filed a complaint in the U.S.
District Court (EDVa) against RIM in 2001 alleging infringement of its
patents. The District Court entered judgment of infringement for NTP, awarded
damages to NTP of $53,704,322.69, and enjoined RIM from further infringement.
See, August 5, 2003 Final Judgment.
RIM appealed. On December 14, 2004, the Court of Appeals issued its first
opinion [60 pages in
PDF] in this case. It affirmed in part, vacated in part, and remanded. RIM
petitioned for rehearing, or in the alternative, for en banc review. Now, the
same three judge panel of the Court of Appeals sets aside that 2004 opinion, and
issued a new opinion.
In the present opinion, the Court of Appeals alters the District
Court's construction of the claim term "originating processor", but affirmed
the remainder of the District Court's claim constructions. The Court of Appeals also
concluded that the District Court correctly denied RIM's motion for judgment as a matter
of law, and did not abuse its discretion in denying evidentiary motions. It also concluded
that the District Court was correct in sending the question of infringement of the system
and apparatus claims to the jury, but erred as a matter of law in entering judgment of
infringement of the method claims.
NTP successfully asserted 16 claims in the District Court. The 2004 opinion
reversed as to three of these claims. The present opinion reverses as to those
three, and an additional six, claims. The present opinion also vacates the
damages award and injunction, and remands.
Specifically, the Court of Appeals wrote that "we reverse the judgment of
infringement as to the asserted method claims, namely, claims 32 and 34 of the
’960 patent; claim 199 of the ’172 patent; and claims 309, 313, 317 of the ’451
patent. We affirm the judgment of infringement with respect to the system and
apparatus claims that do not contain an "originating processor" limitation,
namely, claims 28 and 248 of the ’451 patent, and claims 150, 278, 287, 653, and
654 of the ’592 patent. We vacate the judgment of infringement of the system
claims that contain the "originating processor" limitation, namely, claim 15 of
the ’960 patent; claim 8 of the ’670 patent; and claim 40 of the ’592 patent
(through its parent claim 25), and remand to the district court the questions of
whether and to what extent the jury verdict of infringement should be set aside,
based on the prejudicial effect, if any, of the district court’s erroneous claim
construction of the term ``originating processor.´´ We vacate the damage award
and the injunction and affirm the district court’s judgment in all other
respects." (Parentheses in original.)
Thus, the Court of Appeals affirmed in part, reversed in part, vacated in
part, and remanded to the District Court.
RIM issued a
release
on August 2, 2005, in which it offered its summary of the proceedings related to
this case. It wrote that "At trial in the District Court in 2002, NTP
successfully asserted 16 claims of 5 patents against RIM. Today's Federal
Circuit decision reversed the District Court’s ruling of infringement on 6 of
the 16 claims, and found that RIM does not infringe those 6 claims. Consistent
with its prior ruling, the Federal Circuit also vacated the District Court’s
finding of infringement of an additional 3 of the 16 patent claims because the
District Court erred in construing their scope, and remanded to the District
Court for further proceedings based on the new claim construction."
RIM continued that "Infringement of the remaining 7 claims of the NTP patents
was affirmed in today's ruling." However, its added that two of these claims
have been rejected by the U.S. Patent and
Trademark Office (USPTO) in its initial rulings in reexamination
proceedings, and that the other five claims remain the subject of an ongoing
Director initiated reexamination proceeding at the USPTO.
See also, story titled "USPTO Orders Reexamination of NTP Patents" in
TLJ Daily E-Mail
Alert No. 584, January 16, 2003. The patents to be reexamined are U.S.
Patent Nos.
5,625,670 titled "Electronic mail system with RF communications to mobile
processors",
5,631,946 titled "System for transferring information from a RF receiver to
a processor under control of a program stored by the processor and method of
operation thereof",
5,819,172 titled "Electronic mail system with RF communications to mobile
radios",
6,067,451 titled "Electronic mail system with RF communications to mobile
processors", and
6,317,592 titled "Electronic mail system with RF communications to mobile
processors".
RIM also stated that "Consistent with its prior ruling, the Federal Circuit
also vacated the damages award and injunction imposed by the District Court and
ordered further proceedings."
Finally, RIM stated that "On June 9, 2005, RIM announced that it had brought
a motion before the Federal Circuit seeking to stay the appeal and remand to the
District Court to enforce the parties’ March 2005 settlement of the litigation.
The Federal Circuit denied RIM’s motion to stay the appeal. The Federal Circuit
was not asked to and did not rule on the enforcement of the settlement. The
effect of today’s ruling is to leave the enforcement of the settlement to be
decided by the District Court. In addition, RIM may seek en banc review of
today’s ruling of the panel as to the affirmed patent claims and may also seek
review by the United States Supreme Court."
See, story titled "RIM to Pay $450 Million to Settle NTP's Blackberry Related
Patent Claims" in
TLJ Daily E-Mail Alert No. 1,099, March 21, 2005.
This case is NTP, Inc. v. Research in Motion, Ltd., U.S. Court of
Appeals for the Federal Circuit, App. Ct. No. 03-1615, an appeal from the U.S. District
Court for the Eastern District of Virginia , D.C. No. 3:01CV767, Judge James Spencer
presiding. Judge Linn wrote the opinion of the Court of Appeals, in which Judges Schall
and Michel joined.
RIM is represented by
Henry Bunsow and others of the law firm of
Howrey Simon Arnold & White. NTP is represented by
James Wallace and others
of the law firm of Wiley Rein & Fielding.
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More Court Opinions |
8/5. The U.S. Court of Appeals (DCCir)
issued its
opinion [PDF] in Crawford v. FCC. Charles Crawford petitioned for review
of the Federal Communications Commission's (FCC) dismissal
of two of his proposals to amend the FCC's Table of Allotments for FM radio channels. The
Court of Appeals denied the petition. This case is Charles Crawford v. FCC and USA,
U.S. Court of Appeals for the District of Columbia Circuit, App. Ct. No. 04-1031, a petition
for review of a final order of the FCC. Judge Garland wrote the opinion of the Court of
Appeals, in which Judges Tatel and Randolph joined.
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About Tech Law Journal |
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Copyright 1998 - 2005 David Carney, dba Tech Law Journal. All
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Bush Names McCallum Acting Deputy Attorney
General |
8/16. President Bush announced his intent to designate Robert McCallum
to be acting Deputy Attorney General (DAG) at the Department of Justice. See, White House
release.
The DAG is the number two
position at the DOJ. McCallum (at right) is currently the Associate Attorney General,
which position oversees many of the civil units of the DOJ, including six key divisions:
Civil,
Antitrust, Tax, Environment and Natural Resources, and Civil Rights. The Associate
Attorney General also oversees many other units, but not the Solicitor General, the Office
of Legal Counsel, or any of the crime related units. See,
DOJ Organizational Chart.
McCallum was previously the Assistant Attorney General in charge of the Civil
Division. Before that, he was a partner in the Atlanta office of the law firm of
Alston & Bird. He focused on civil
litigation, including appeals, commercial real estate litigation, insurance
class action litigation and medical malpractice defense.
The designation comes now because of the departure of James Comey.
President Bush nominated Timothy Flanagan to be the new DAG back in May, but
the Senate has not confirmed him.
Comey is a career prosecutor. McCallum is not. Hi's background and experience
is in several areas of civil law. Attorney General Alberto Gonzales is not a
career prosecutor either. Until he came to Washington DC to work in the Bush White House,
he had little experience related to federal criminal matters. In light of this, it may be
significant that the position of Assistant Attorney General in charge of the Criminal
Division is also vacant. President Bush has nominated Alice Fisher, but the Senate
has not confirmed her.
John Richter
is the acting head of the Criminal Division.
Richter (at
left) is a prosecutor, who has also worked in the Atlanta office of the law firm of
King & Spalding, on criminal law matters. This
continues the Bush administration's tradition of placing a disproportionate number of
attorneys from Georgia, and especially from the law firms of King & Spalding and
Alston & Bird, in key positions at the DOJ. See, story titled "Atlanta Lawyers
at DOJ" in TLJ Daily
E-Mail Alert No. 711, August 5, 2003.
Thus, an acting Assistant Attorney General, who has not been confirmed by the
Senate, is now the DOJ's senior person with expertise in criminal matters,
including intellectual property crimes, cyber crime, electronic and online
surveillance, FISA, and CALEA.
Richter's White House biography notes that he has experience in
"drafting and presenting applications for Court-authorized electronic
surveillance and physical searches in international terrorism-foreign
counterintelligence investigations".
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More People and Appointments |
8/16. President Bush announced his intent to nominate
Donald Winter to
be Secretary of the Navy. Unlike most political appointees, Winter has a background in
technology. He has three degrees in physics, and has worked on laser physics. He also
worked in the early 1980s for the Defense Advanced Research
Projects Agency (DARPA). He is currently Corporate Vice President and President of
Northrop Grumman Mission
Systems, in Reston, Virginia. Before that, he was P/CEO of TRW Systems. See, White House
release.
8/16.
President Bush announced his intent to nominate Michael Wynne to be Secretary
of the Air Force. He is currently Principal Deputy Under Secretary of Defense for
Acquisition, Technology and Logistics (ATL). He has also been the Under
Secretary of Defense for ATL, by recess appointment. The ATL office oversees,
among other things, the Defense Advanced Research
Projects Agency (DARPA), which is involved in numerous information
technology related projects. He is also a former employee of General Dynamics. See, White House
release and story titled "Bush Announces Appointments to Key DOD Post" in
TLJ Daily E-Mail
Alert No. 1,108, April 4, 2005.
8/11. Michael Powell, the previous Chairman of the
Federal Communications Commission (FCC), joined
Providence Equity Partners Inc.. It states in its
web site that it is a "private investment firm specializing in equity investments in
communications and media companies around the world". His predecessor,
William Kennard,
joined The Carlyle Group in
2001 as Managing Director in its Global Telecommunications and Media group. Also, on July
13, 2005, Colin Powell, the previous Secretary of State, was named strategic limited
partner at the venture capital firm of Kleiner Perkins
Caufield & Byers (KPCB). See, KPCB
release.
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Washington Tech Calendar
New items are highlighted in red. |
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Wednesday, August 17 |
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.
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.
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Thursday, August 18 |
6:00 - 8:15 PM. The DC Bar Association
will host a continuing legal education (CLE) seminar titled "Trade Secrets:
Case Law Update". The speaker will be Milton Babirak (Babirak Vangellow &
Carr). The price to attend ranges from $70-$125. For more information, call 202-626-3488.
See,
notice. Location: D.C. Bar Conference Center, 1250 H Street NW, B-1 Level.
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Friday, August 19 |
Deadline to submit comments in response to, and notices of intent to
participate in proceedings on, the Copyright
Office's (CO) settlement proposal for the adjustment of certain royalty rates for use
of the cable statutory license. See,
notice in the Federal Register, July 20, 2005, Vol. 70, No. 138, at Pages
41650 - 41652.
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Monday, August 22 |
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.
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Wednesday, August 24 |
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.
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