4/18. The Supreme Court heard oral argument in Microsoft v. i4i, a patent case involving the standard of proof that must be met by a party seeking to a judgment of invalidity.

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

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.

Microsoft stated in a release that "The case revolves around the standard of proof that must be met by those who seek to challenge the validity of a patent in court. The law states that patents, which are generally issued by the Patent Office solely on the basis of supporting information submitted by the patent applicant, are to be presumed valid. Since the 1980s, however, the Federal Circuit Court of Appeals, which oversees patent appeals, has required a challenge to a patent's validity be proved by a heightened standard of ``clear and convincing evidence,´´ as opposed to the lower ``preponderance of evidence´´ standard routinely applied in civil lawsuits."

The relevant statute does not specify the standard. 35 U.S.C. § 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.)

Justice Stephen Breyer stated that "I'll assume that the language is open enough in the history so that we could make what would be a change, I think it would be a change. The reasons as I get from the brief for doing that are because there are two types of errors: It's a bad thing not to give protection to an invention that deserves it; and it is just as bad a thing to give protection to an invention that doesn't deserve it." See, transcript.

He asked, if there is the second type of error, instead of changing the standard, why not "go back to the Patent Office and ask for reconsideration".

Thomas Hungar (Gibson Dunn), Microsoft's counsel, responded that under current law, "re-exam is limited in scope. It can only consider certain types of prior art evidence and issues. It couldn't, for example -- it was not available for the issue that we're talking about here, the on-sale bar."

Justice Ginsburg stated that since the Federal Circuit has had "a monopoly on appeal in patent cases since 1984", and "has consistently taken this position, one would have expected that there would have been bills proposed to change it". So, she asked, "Were there any?" Hungar responded, "No".

Seth Waxman (Wilmer Hale), i4i's counsel, argued that the Congress has "actively acquiesced" in the clear and convincing evidence standard, which prompted Justice Antonin Scalia to joke about the meaning of "active acquiescence" and "passive activity".

Waxman responded, "So Congress has been very, very active in this field, and what I mean by active acquiescence is it has been very active in this field, it is well aware of the clear and convincing evidence standard, and it has done nothing whatsoever to change it, even make any effort to consider making such a sweeping change in long-standing doctrine."

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 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.

It wrote that "When the defendant in a patent infringement action asserts that the relevant patent is invalid, he must present clear and convincing evidence of invalidity in order to establish that defense. ... That heightened standard applies even if the defendant relies on evidence of invalidity that was not before the PTO. ... Evidence that was not before the examiner, however, may be given greater weight, making the defendant’s burden easier to satisfy. ... That approach -- which the Federal Circuit has long followed -- is consistent with congressional intent and with this Court’s precedents, and it best serves the administrative-deference and reliance interests implicated by challenges to a patent."

The OSG elaborated that "The clear-and-convincing-evidence standard best accommodates the interests implicated by validity challenges. A contention that a patent is invalid is in essence a collateral attack on the PTO’s prior administrative action, and it therefore implicates principles of deference to agency authority and expertise. Invalidity challenges also implicate the inventor’s reliance interests in a patent, which confers valuable property rights in return for the inventor’s public disclosure of his invention. Requiring that invalidity be demonstrated by clear and convincing evidence serves both of these interests by ensuring that the jury has a high degree of confidence before it overturns the PTO’s grant of a patent. Even when evidence suggesting invalidity was not before the PTO, and the administrative-expertise rationale therefore does not apply, the heightened burden of proof furthers the patent holder’s reliance interests, and it is consistent with congressional intent and with this Court’s precedents."

The Pharmaceutical Research and Manufacturers of America (also known as PhRMA) also filed an amicus curiae brief in support of i4i and the clear and convincing evidence standard.

In contrast, a group of 37 law, economics and business professors filed an amicus curiae brief in which they argued that the clear and convincing standard is "a mistake". They wrote that "Deference to previous decisions is appropriate when those previous decisions have a high likelihood of being accurate. But the initial process of patent review today is, unavoidably, often an inaccurate signal, one that doesn’t take account of all relevant information. Deference doesn’t make sense in that circumstance."

Similarly, the Computer and Communications Industry Association (CCIA) wrote in its amicus curiae brief that "Bestowing this enhanced presumption of validity upon granted patents is fundamentally at odds with the Patent Act. Many factors already favor the patent applicant: the statute’s presumption of entitlement, the examiner’s limited and undocumented expertise, the limited scope of the examination process, the mismatch between the examiner and the applicant, and the examiner’s incentives to grant the application. In light of these factors, the Federal Circuit’s extraordinary deference to a highly constrained agency process is without basis."

The CCIA added that "By making questionable patents hard to invalidate, the clear-and-convincing standard creates an artificial incentive to apply for patents. It induces more applications and more patents, especially weak, marginal, and invalid patents. This unmerited legal leverage dilutes and undermines the value of genuine inventions. It distorts market competition, discourages the challenging of invalid patents, and promotes opportunism."

See also, amicus curiae brief of Google, Verizon, Comcast, Dell, HP, the Consumer Electronics Association (CEA), and other companies and groups, which urges the Supreme Court to adopt the preponderance of the evidence standard.

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.

4/15. Apple, Inc. filed a complaint [373 pages in PDF, 10 MB] in the U.S. District Court (NDCal) against Samsung Electronics Co., Ltd., and U.S. subsidiaries, alleging patent infringement (35 U.S.C. § 271), trade dress infringement (15 U.S.C. § 1125(a) and 15 U.S.C. § 1114), trademark infringement (15 U.S.C. § 1114), and various California state statutory and common law claims.

Apple alleges that Samsung's Galaxy line of mobile phones and the Galaxy Tab computer tablet infringe patents, trade dress, and trademarks related to Apple's iPhone and iPad.

The complaint states that "Instead of pursuing independent product development, Samsung has chosen to slavishly copy Apple's innovative technology, distinctive user interfaces, and elegant and distinctive product and packaging design, in violation of Apple's valuable intellectual property rights."

It adds that "Samsung has made its Galaxy phones and computer tablet work and look like Apple's products through widespread patent and trade dress infringement. Samsung has even misappropriated Apple's distinctive product packaging."

Apple seeks compensatory damages, treble damages, and injunctive relief.

This case is Apple, Inc. v. Samsung Electronics Co., Ltd., et al., U.S. District Court for the Northern District of California, D.C. No. CV-11-1846-LB. Apple is represented in this action by the law firm of Morrison & Foerster.

4/11. Paul Ceglia filed an amended complaint [PDF] in the U.S. District Court (WDNY) against Mark Zuckerberg and Facebook, Inc.

The complaint alleges that back in 2003 Ceglia and Zuckerberg entered into an agreement that created a general partnership between Ceglia and Zuckerberg for the development and commercialization of "The Face Book".

Ceglia seeks a declaratory judgment against Zuckerberg that they entered into an agreement that "created a General Partnership under New York Partnership law, of which Ceglia was a 50% owner".

Ceglia also seeks a declaratory judgment against Zuckerberg and Facebook that Ceglia is "entitled to receive 50% of the total equity interest in Facebook, Inc. received by, and promised to Zuckerberg, including, but not limited to, stock, stock options and restricted stock units".

The seven count complaint also pleads breach of fiduciary duty against Zuckerberg, constructive fraud against Zuckerberg, actual fraud against Zuckerberg, breach of contract against Zuckerberg, and breach of the implied covenant of good faith and fair dealing against Zuckerberg.

4/15. Dan Hesse, CEO of Sprint Nextel, stated at an event in San Francisco at the Commonwealth Club of California that AT&T's acquisition of T-Mobile USA would stifle competition and innovation in the wireless industry.

Jim Cicconi, AT&T's Senior Executive Vice President-External and Legislative Affairs, responded in a release that Hesse's "comments today about AT&T's merger with T-Mobile are way off base. They're also totally at odds with his own past statements" about the competitiveness of the wireless industry.

Cicconi stated that "Given that Sprint is a major competitor to AT&T in the hyper competitive wireless market Mr. Hesse describes, no one should be surprised that they would oppose this merger. But it is self-serving for them to argue that the highly competitive wireless market they cited only months ago is now threatened by the very type of transaction they seemed prepared to defend previously."

4/19. AT&T hired former Rep. Billy Tauzin (R-LA) to lobby for approval of the AT&T T-Mobile USA transaction. Tauzin is a former Chairman of the House Commerce Committee (HCC), and its Subcommittee on Telecommunications.

4/14. President Obama nominated Robert Zimmer to be a member of the National Science Foundation's (NSF) National Science Board. See, White House news office release and release. He is a mathematician, and President of the University of Chicago.

4/15. The New America Foundation (NAF) hired Thomas Gideon and Seeta Gangadharan to work in its Open Technology Initiative (OTI). See, NAF release.

4/18. The National Institute of Standards and Technology's (NIST) Computer Security Division (CSD) released its draft SP 800-76-2 [61 pages in PDF] titled "Biometric Data Specification for Personal Identity Verification". Comments are due by June 6, 2011.

4/14. The Government Accountability Office (GAO) released a report [13 pages in PDF] titled "Employment Verification: Agencies Have Improved E-Verify, but Significant Challenges Remain".

Passover begins at sundown.

The House will be in recess the week of Monday, April 18 through Friday, April 22, and the week of Monday, April 25 through Friday, April 29. The House will return at 2:00 PM on Monday, May 2.

The Senate will be in recess the week of Monday, April 18 through Friday, April 22, and the week of Monday, April 25 through Friday, April 29. The Senate will return at 2:00 PM on Monday, May 2.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking (NPRM) [46 pages in PDF] regarding TV band rules and incentive auctions. The FCC adopted and released this item on November 30, 2010. It is FCC 10-196 in ET Docket No. 10-235. See, notice in the Federal Register, February 1, 2011, Vol. 76, No. 21, at Pages 5521-5537. See also, story titled "FCC Adopts NPRM on TV Band Rules" in TLJ Daily E-Mail Alert No. 2,168, December 4, 2010.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking (NPRM) [158 pages in PDF] regarding video description rules. This would reinstate and modify the video description rules adopted by the FCC in 2000, and subsequently vacated by the U.S. Court of Appeals, pursuant to S 3828 [LOC | WW], the "Twenty-First Century Communications and Video Accessibility Act of 2010" (CVAA), signed into law on October 8, 2010, and S 3304 [LOC | WW], at Title II, Section 202. The FCC adopted this item on March 2, 20111, and released the text on March 3, 2011. It is FCC 11-36 in MB Docket No. 11-43. See, notice in the Federal Register, March 18, 2011, Vol. 76, No. 53, at Pages 14856-14871.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking (NPRM) regarding implementation of S 30 [LOC | WW], the "Truth in Caller ID Act. This statute prohibits caller ID spoofing, but only if the purpose is to defraud or cause harm. See, stories titled "Obama Signs Truth in Caller ID Act" in TLJ Daily E-Mail Alert No. 2,187, December 23, 2010, and "House Passes Truth in Caller ID Act" in TLJ Daily E-Mail Alert No. 2,180, December 16, 2010. The FCC adopted and released this NPRM on March 9, 2011. It is FCC 11-41 in WC Docket No. 11-39. See, notice in the Federal Register, March 23, 2011, Vol. 76, No. 56, at Pages 16367-16375.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking (NPRM) regarding the payment of filing fees by winning bidders in auctions of construction permits in the broadcast services. The FCC adopted this NPRM on February 28, 2011, and released the text on March 3, 2011. It is FCC 11-21 in GEN Docket No. 86-285. See, notice in the Federal Register, April 1, 2011, Vol. 76, No. 63, at Pages 18137-18138.

Passover.

8:00 -10:00 AM. Broadband Census News LLC will host a panel discussion titled "Better Broadband Adoption: What Levers Will Improve Take Rates Nationwide?". Breakfast will be served. This event is open to the public. The price to attend is $47.12. See, notice and registration page. This event is also sponsored by the National Cable & Telecommunications Association (NCTA), Telecommunications Industry Association (TIA) and USTelecom. Location: Clyde's of Gallery Place, 707 7th St., NW.

11:00 AM - 12:00 NOON. The Federal Communications Commission's (FCC) Advisory Committee for the 2012 World Radiocommunication Conference will meet. See, notice in the Federal Register, March 29, 2011, Vol. 76, No. 60, at Pages 17417-17418. Location: FCC, Commission Meeting Room, 445 12th St., SW.

2:00 - 3:00 PM. The President's National Security Telecommunications Advisory Committee (PNSTAC) will meet by teleconference. See, notice in the Federal Register, March 29, 2011, Vol. 76, No. 60, at Page 17424.

The National Institute of Standards and Technology (NIST) will host an event titled "Information Technology Security Day". See, notice. Location: Gaithersburg, MD.

8:00 - 10:00 AM. Social Driver will host an event titled "I Can't Believe It's On Twitter: Getting ROI From Social Media". See, notice. Prices vary. Location: Zenger Room, National Press Club, 13th Floor, 529 14th St. NW.

12:00 NOON. The Federal Communications Bar Association (FCBA) will host a lunch. The speakers will be Robert McDowell (FCC Commissioner) and Jonathan Leibowitz (FTC Chairman). Prices vary. Lunch will be served. The deadline to register is 12:00 NOON on April 18, 2011. See, registration form. Location: Mayflower Renaissance Hotel, 1127 Connecticut Ave., NW.

2:00 - 3:00 PM. The Heritage Foundation (HF) will host a speech by Frank Lavin (Edelman Asia Pacific) titled "Consequential China: U.S.-China Relations in a Time of Transition". See, notice. The HF will webcast this event. Location: HF, 214 Massachusetts Ave., NE.

3:30 - 5:30 PM. The Federal Communications Bar Association's (FCBA) Young Lawyers Committee will host an event titled "Inside the FCC: A Roundtable Discussion for Young Lawyers about Meeting with FCC Staff and the Ex Parte Process". For more information, contact Brendan Carr at bcarr at wileyrein dot com or Mark Brennan at mark dot brennan at hoganlovells dot com. Location: FCC Commission Meeting Room, 445 12th St., SW.

6:00 - 8:15 PM. The Federal Communications Bar Association's (FCBA) FCC Enforcement Committee will host an event titled "FCC Enforcement Bureau Case Studies: The Past is Prologue". See, notice. CLE credits. Location: Wiley Rein, 1776 K St., NW.

9:00 - 10:00 AM. The Internet Security Alliance (ISA), Harris Corporation and Chertoff Group will host a panel discussion titled "Securing Our Nation’s Cyber Supply Chain". The speakers will include Larry Clinton (ISA), Dale Meyerrose (Harris Corp.), and Michael Chertoff. See, notice. Register by email at RSVP at harris dot com. Location: First Amendment Lounge, National Press Club, 13th Floor, 529 14th St. NW.

10:00 AM - 12:00 NOON. The Department of State's (DOS) International Telecommunication Advisory Committee (ITAC) will meet to prepare for ITU World Radiocommunication Conference (WRC), to be held on January 23 through February 17, 2012 in Geneva, Switzerland. See, notice in the Federal Register, April 1, 2011, Vol. 76, No. 63, at Page 18292. Location: 1200 Wilson Boulevard, Arlington, VA.

Deadline to submit comments to the U.S. Patent and Trademark Office (USPTO) in response to its notice in the Federal Register requesting information to assist it in preparing a "preliminary plan to review its existing significant regulations in response to the President Obama's Executive Order 13563 titled "Improving Regulation and Regulatory Review".The request for comments is at Federal Register, March 22, 2011, Vol. 76, No. 55, at Pages 15891-15892. The Executive Order is at Federal Register, January 21, 2011, Vol. 76, No. 14, at Pages 3821-3823.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking (NPRM) [139 pages in PDF] regarding changes to the two universal service tax and subsidy programs titled "Lifeline" and "Link Up". The FCC adopted this NPRM on March 3, 2011, and released the text on March 4, 2011. It is FCC 11-32 in WC Docket Nos. 11-42 and 03-109, and CC Docket No. 96-45. See, notice in the Federal Register, March 23, 2011, Vol. 76, No. 56, at Pages 16481-16519.

Good Friday.

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

Deadline to submit nominations to the Federal Communications Commission (FCC) for membership on its Communications Security, Reliability, and Interoperability Council (CSRIC). See, notice in the Federal Register, March 30, 2011, Vol. 76, No. 61, at Pages 17650-17652.

Easter.

The House will be in recess the week of Monday, April 25 through Friday, April 29.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to the joint petition filed by Cellular South Licenses, Inc. and United States Cellular Corporation requesting that the FCC reconsider its decision amending a rule established by the Interim Cap Order to reclaim high-cost universal service support surrendered by a competitive eligible telecommunications carrier (ETC) when it relinquishes ETC status in a particular state. See, DA 11-507 in WC Docket No. 05-337 and CC Docket No. 96-45, and notice in the Federal Register, March 30, 2011, Vol. 76, No. 61, at Pages 17652-17653.

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