1/3. The U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register announcing two roundtables, to be held at Stanford University, and at New York University, regarding software patents.

This notice also announces a new USPTO program titled "Software Partnership". These two roundtables will be the first events of this new program.

The notice elaborates that this program "is a cooperative effort between the USPTO and the software community to explore ways to enhance the quality of software-related patents."

The first roundtable will be held on February 12, 2013, at Stanford University, in northern California. The second roundtable will be held on February 27, 2013, at New York University, in New York City.

The deadline to register is February 4. The deadline to submit written comments is March 15.

This notice contains no request for applications to make presentations at either of these workshops.

The notice seeks written answers to numerous questions. It seeks comments on numerous questions related to "how to more effectively ensure that the boundaries of a claim are clear so that the public can understand what subject matter is protected by the patent claim and the patent examiner can identify and apply the most pertinent prior art."

This notice also asks for suggestions for "topics related to enhancing the quality of software-related patents to be discussed at future Software Partnership events."

The USPTO also used this notice to announce that "In the near future, the USPTO will issue a Request for Comments on Preparation of Patent Applications. The purpose of this forthcoming Request for Comments is to seek public input on whether certain practices could or should be used during the preparation of an application to place the application in the best possible condition for examination and whether the use of these practices would assist the public in determining the scope of the claims as well as the meaning of the claim terms in the specification."

David Kappos, the outgoing head of the USPTO, gave a speech on software patents on December 20, 2012. See also, story titled "Kappos Defends Software Patents" in TLJ Daily E-Mail Alert No. 2,484, December 6, 2012.

12/28. The U.S. Court of Appeals (10thCir) issued its opinion [15 pages in PDF] in Kirch v. Embarq, a civil action regarding whether certain activities related to behavioral adverting violate the ECPA's prohibition of intercepts of electronic communications. The Court of Appeals affirmed the District Court's judgment for Embarq.

Embarq, a defendant below and appellee in the Court of Appeals, is an internet access service provider. NebuAd, which is not a party, was an online advertising company. Kathleen Kirch, a plaintiff below and appellant, is a customer of Embarq. (In 2009 CenturyTel acquired Embarq, and changed its name to CenturyLink.) Embarq prevailed, but on facts specific to this case.

Behavioral Advertising. The Court of Appeals wrote that from December 2007 through March 2008 Embarq authorized NebuAd "to conduct a technology test for directing online advertising to the users most likely to be interested in the ads". The Court of Appeals did not elaborate in detail on NebuAd. And, the opinion does not use the words "behavioral advertising". However, this case concerns the application of intercept law to the technology that underlies behavioral advertising.

Back in 2008, several Washington DC based groups argued that arrangements between ISPs and ad networks to mine customer data streams for behavioral advertising purposes could violate federal intercept laws. NebuAd's activities were the targets of their criticism. See for example, Public Knowledge (PK) and Free Press (FP) paper titled "NebuAd and Partner ISPs: Wiretapping, Forgery and Browser Hijacking" and story titled "Free Press and Public Knowledge Allege More ISP Bad Behavior" in TLJ Daily E-Mail Alert No. 1,782, June 18, 2008.

NebuAd also attracted Congressional attention. For example, Rep. Joe Barton (R-TX) and Rep. Ed Markey (D-MA) sent a letter on May 16, 2008, to Neil Smit, P/CEO of Charter Communications, requesting that "you do not move forward on Charter Communications' proposed venture with NebuAd until we have an opportunity to discuss with you issues raised by this proposed venture."

In part because of such criticism, NebuAd lost contracts with service providers, and went out of business. And, it is not a party to the present action. However, the plaintiffs argued that Embarq is liable as an aider and abettor of NebuAd's alleged illegal intercepts.

NebuAd Technology. The Court of Appeals described the actions that gave rise to this case. "The physical components of the system were an Ultra Transparent Appliance (UTA) and remote servers ... hosted by NebuAd. The system's purported purpose was to ``allow[] for placement of optimized advertisement on Trial customers' internet browser screens.´´ ... the UTA was installed in Embarq’s network in Gardner, Kansas, where the Kirches were customers of Embarq. Embarq’s Gardner users were connected to the UTA, which was connected to the rest of Embarq’s network. According to the Kirches, the Internet traffic that passed through the UTA was sent to the NebuAd servers in its system. NebuAd used the UTA to track what websites an Embarq user visited, and to deliver online advertising thought likely to interest users who visited those websites."

The Court of Appeals added that "Embarq asserts that the NebuAd System collected only information about customer requests for highly trafficked commercial websites, and obtained only three pieces of information about such requests: the requested Uniform Resource Locator (URL, known in common parlance as a web page's ``address´´), the ``referer URL´´ (the last URL visited before the request), and an advertising network cookie. Because cookies are typically encrypted, the NebuAd System did not extract any information from them. Users' computers were assigned identification numbers based on these cookies, and the information about past Internet usage was associated with a user's computer only through this number." (Parentheses in original. Footnote omitted.)

Proceedings Below. Kathleen Kirch filed a complaint in the U.S. District Court (DKan) in 2010 against Embarq and United Telephone Company of Eastern Kansas alleging illegal interception of electronic communications, unauthorized access to a protected computer system (18 U.S.C. § 1030), and violation of Kansas state laws regarding invasion of privacy and trespass to chattels.

The District Court dismissed all of the claims except the ECPA interception claim pursuant to stipulation of the parties. In addition, Kirch sought class action status to represent Embarq customers.

The District Court granted summary judgment to defendants on the ECPA claim on several grounds. It held that Embarq had not intercepted in violation of the ECPA because it did not acquire the content of communications, that Embarq could not be held liable for the conduct of NebuAd, and that Embarq's customers had consented.

The present appeal followed.

Statute. The Electronic Communications Privacy Act (ECPA), at 18 U.S.C. § 2511, prohibits interception of electronic communications. 18 U.S.C. § 2520 provides a private right of action. 18 U.S.C. § 2510 provides definitions.

Section 2511 provides that "any person who ... intentionally intercepts, endeavors to intercept, or procures any other person to intercept or endeavor to intercept, any wire, oral, or electronic communication ... shall be punished ..."

Section 2520 provides that subject to exceptions, "any person whose wire, oral or electronic communication is intercepted, disclosed, or intentionally used in violation of this chapter may in a civil action recover from the person or entity, other than the United States, which engaged in that violation such relief as may be appropriate".

Section 2511(2)(d) provides an exception for intercepts based upon consent. "It shall not be unlawful under this chapter for a person ... to intercept a wire, oral, or electronic communication where such person is a party to the communication or where one of the parties to the communication has given prior consent to such interception unless such communication is intercepted for the purpose of committing any criminal or tortious act in violation of the Constitution or laws of the United States or of any State". (Emphasis added.)

Section 2510's definition creates a service provider "ordinary course of its business" exception. First, Section 2510 defines "intercept" as "the aural or other acquisition of the contents of any wire, electronic, or oral communication through the use of any electronic, mechanical, or other device". Then, it provides that "electronic, mechanical, or other device" means "any device or apparatus which can be used to intercept a wire, oral, or electronic communication other than ... any telephone or telegraph instrument, equipment or facility, or any component thereof ... being used by a provider of wire or electronic communication service in the ordinary course of its business". (Emphasis added.)

Court of Appeals. The Court of Appeals affirmed.

Embarq argued on appeal that (1) there was no interception because it did not acquire the contents of any communications, and even if there was interception, then (2) it was by NebuAd and not Embarq, (3) customers had consented via its privacy policy, and (4) the ordinary course of business exception applies.

The Court of Appeals wrote that "Traffic on the Internet is electronic communication" within the meaning of the ECPA. The Court did not address whether non-party NebuAd had intercepted any electronic communications.

The Court of Appeals wrote that Section 2520 "includes no aiding-and-abetting language" and "the ECPA creates no aiding-and-abetting civil liability, Embarq is liable only if it itself intercepted those communications." Hence, "Embarq cannot be liable as an aider and abettor" for any violations of the ECPA by NebuAd.

The Court of Appeals also wrote that "the undisputed facts establish that NebuAd's use of the UTA gave Embarq access to no more of its users' electronic communications than it had in the ordinary course of its business as an ISP. Embarq is therefore protected from liability by the statutory exemption for activities conducted in the ordinary course of a service provider’s business. ... Embarq’s only access to data collected by the UTA was in the ordinary course of its business as an ISP."

However, the Court of Appeals did not determine whether there had been any unlawful interception by NebuAd. Nor did it rule on the consent via privacy policy argument.

Matthew Price and David Handzo (Jenner & Block) and Emmett Logan (Stinson Moheck) represented Embarq.

This case is Kathleen Kirch, et al.  v. Embarq Management Company and United Telephone Company of Eastern Kansas, U.S. Court of Appeals for the 10th Circuit, App. Ct. No. 11-3275, an appeal from the U.S. District Court for the District of Kansas, D.C. No. 2:10-CV-02047-JAR-GLR. Judge Hartz wrote the opinion of the Court of Appeals, in which Judges Murphy and Holmes joined.

1/3. President Obama re-nominated 33 persons for various U.S. Courts of Appeals (USCA), U.S. District Courts (USDC), and the U.S. Court of International Trade (USCIT). White House news office release.

President Obama stated that "I am re-nominating thirty-three highly qualified candidates for the federal bench, including many who could have and should have been confirmed before the Senate adjourned".

Actually, most of these 33 were only recently nominated, and had not yet run the ordinary course of Senate consideration in the 112th Congress. However, four USCA nominees, and two of the USDC nominees were approved by the Senate Judiciary Committee (SJC), and blocked by Republican filibuster. Another USCA nominee has long been opposed by Republicans.

Court of Appeals. President Obama re-nominated seven persons for the USCA. The seven are:

• Richard Taranto (Federal Circuit)
• William Kayatta (1st Circuit)
• Patty Schwartz (3rd Circuit)
• Robert Bacharach (10th Circuit)
• Caitlin Halligan (DCCir)
• Srikanth Srinivasan (DCCir)
• Jill Pryor (11thCir)

The filibustered nominees are Taranto, Bacharach, Kayatta and Shwartz. Halligan, Srinivasa and Pryor had not yet been approved by the SJC.

Halligan was not subject to a filibuster when the 112th Congress concluded this week. However, she was previously the subject of a filibuster. A motion to invoke cloture (to end the filibuster) failed, thus returning the nomination to the President. President Obama renominated her in September, just before the Senate recessed for elections. However, the SJC did not again approve her nomination. So, there was nothing for Republicans to filibuster in the just finished lame duck session.

See also, stories titled "Obama Again Nominates Halligan for DC Circuit" in TLJ Daily E-Mail Alert No. 2,454, September 22, 2012, "Obama Nominates Caitlin Halligan for DC Circuit" in TLJ Daily E-Mail Alert No. 2,138, October 4, 2010, and "Senate Judiciary Committee Approves Halligan" in TLJ Daily E-Mail Alert No. 2,203, March 11, 2011.

See also, Halligan's questionnaire responses.

There is also a special history here. She is being nominated for a seat that Democrats long kept open during the Bush administration. Bush had nominated Peter Keisler, the then Assistant Attorney General in charge of the Department of Justice's Civil Division. Moreover, there are precedents for this tit for tat strategy. For example, after Senate Republicans blocked one of President Clinton's nominees for the 6th Circuit back in the late 1990s, Senate Democrats blocked President Bush's nominee until 2008, when the Clinton nominee finally got her seat. See, story titled "President Bush and Senate Democrats Reach Compromise on 6th Circuit Nominees" in TLJ Daily E-Mail Alert No. 1,747, April 15, 2008.

Taranto is a nominee with extensive experience in technology related areas of law. As a nominee to the Federal Circuit, he could have a particular impact on the development of patent law and some other technology related areas of law. See, story titled "Richard Taranto and the Federal Circuit" in TLJ Daily E-Mail Alert No. 2,497, December 24, 2012.

Srinivasan was nominated on June 11, 2012, but has not yet had a hearing. He represented Hynix Semiconductor before the Federal Circuit in Hynix v. Rambus, 645 F.3d 1336 (2011). Notably, Rambus was represented by Taranto. See, his questionnaire responses.

While Pryor was nominated on February 16, 2012, the SJC has not yet held a hearing on her nomination. The SJC is controlled by Democrats. Republicans alone can not stop a nominee in the SJC.

District Court. Two of the re-nominated persons were subject to filibusters:

• William Orrick (NDCal)
• Brian Davis (MDFl)

Four more had been nominated, and approved by the SJC, but not until December:

• Katherine Failla (SDNY)
• Troy Nunley (EDCal)
• Sheri Chappell (MDFl)
• Pamela Ki Mai Chen (EDNY)

Another re-nominated person is Valerie Caproni, whom Obama first nominated for the U.S. District Court (SDNY) in November. The SJC has not yet held a hearing on her nomination. She too has a history in technology related areas of law, and especially those related to electronic surveillance. See, story titled "Obama Nominates Caproni for District Court" in TLJ Daily E-Mail Alert No. 2,474, November 19, 2012.

The other persons re-nominated for the USDC are as follows:

• Elissa Cadish (DNev)
• Shelly Dick (MDLa)
• Jennifer Dorsey (DNev)
• Kenneth Gonzales (DNM)
• Andrew Gordon (DNev)
• Ketanji Jackson (DC)
• Rosemary Márquez (DAriz)
• Michael McShane (DOre)
• Raymond Moore (DColo)
• Beverly O'Connell (CDCal)
• Nitza Alejandro (EDPenn)
• Luis Restrepo (EDPenn)
• Nelson Román (SDNY)
• Jeffrey Schmehl (EDPenn)
• William Thomas (SDFl)
• Judge Torres (SDNY)
• Derrick Watson (DHa)

US Court of International Trade. Finally, Obama re-nominated two persons for the US Court of International Trade: Mark Barnett and Claire Kelly.

The House will meet at 10:00 AM. See, House calendar for 113th Congress, 1st Session.

The Senate will meet at 11:30 AM.

Supreme Court conference day. See, Supreme Court calendar.

8:30 AM. The Department of Labor's (DOL) Bureau of Labor Statistics (BLS) is scheduled to release its December 2012 unemployment data.

EXTENDED TO FEBRUARY 4. 5:00 PM. Deadline to submit initial comments to the Copyright Office (CO) in response to its notice of inquiry (NOI) titled "Orphan Works and Mass Digitization". See, notice in the Federal Register, Vol. 77, No. 204, October 22, 2012, at Pages 64555-64561. See also, story titled "Copyright Office Issues Notice of Inquiry on Orphan Works" in TLJ Daily E-Mail Alert No. 2,468, November 2, 2012. See, extension notice in the Federal Register, Vol. 77, No. 231, November 30, 2012 at Page 71452.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its December 3, 2012 Public Notice (PN) that seeks comments on the FCC Media Bureau's November 14, 2012 report [121 pages in PDF] regarding regulation of media ownership. The December 3 PN is DA 12-1946. The November 14 report is DA 12-1667. See also, notice in the Federal Register, Vol. 77, No. 237, Monday, December 10, 2012, at Pages 73461-73462, and story titled "Sen. Sanders and Others Urge FCC to Continue Ancient Newspaper Broadcast Cross Ownership Rule" in TLJ Daily E-Mail Alert No. 2,484, December 6, 2012.

The House will not meet. It will next meet on January 14.

The Senate will not meet. It will next meet on January 21.

5:00 PM. Deadline to submit initial comments to the Copyright Office (CO) in response to its notice in the Federal Register regarding its proposed fee schedule for filing cable and satellite statements of account. See, FR, Vol. 77, No. 235, December 6, 2012, at Pages 72788-72791.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking (NPRM) [57 pages in PDF] regarding cable TV technical rules. The FCC adopted and released this item on August 3, 2012. It is FCC 12-86 in MB Docket No. 12-217. See, notice in the Federal Register Vol. 77, No. 195, October 9, 2012, at Pages 61351-61375. See also, TLJ story titled "FCC Adopts NPRM Regarding Cable TV Technical Rules" in TLJ Daily E-Mail Alert No. 2,421, August 5, 2012.

Deadline to submit comments to the Department of Commerce's (DOC) Bureau of Industry and Security (BIS) regarding its proposed rules changes pertaining to voluntary self disclosures (VSD) of violations of the Export Administration Regulations (EAR). See, notice in the Federal Register, Vol. 77, No. 216, November 7, 2012, at Pages 66777-66780.

EXTENDED FROM DECEMBER 26. Extended deadline to submit comments to the Federal Communications Commission (FCC) in response to its November 1 Public Notice (PN) seeking updated information and comment on review of hearing aid compatibility regulations. This PN is DA 12-1745 in WT Docket No. 10-254. See also, November 27 extension Public Notice (DA 12-1898) and extension notice in the Federal Register, Vol. 77, No. 234, December 5, 2012, at Pages 72294-72295.

Deadline to submit comments to the Department of Health and Human Services (DHHS) in response to its December 7, 2012 notice in the Federal Register (FR) regarding health information technology. This notice contains interim final changes to the final rule published in the DHHS's September 4, 2012 notice in the FR. See, FR, Vol. 77, No. 236, December 7, 2012, at Pages 72985-72991, and FR, Vol. 77, No. 171, September 4, 2012, at Pages 54163-54292.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its Public Notice (PN) regarding implementation of Phase II of the Mobility Fund, which pertains to universal service fund subsidies for mobile broadband. The FCC released this PN on November 27, 2012. It is DA 12-1853 in WC Docket No. 10-90 and WT Docket No. 10-208.  See, notice in the Federal Register, Vol. 77, No. 238, December 11, 2012, at Pages 73586-73589.

Deadline to submit comments to the Federal Trade Commission (FTC) regarding its proposed consent agreement with Epic Marketplace, Inc. (an online behavioral advertising company) and Epic Media Group, LLC (its parent company). The complaint alleged violation of Section 5 of the FTC Act in connection with Epic's misrepresentation of the web browsing information that it collected. See, notice in the Federal Register, Vol. 77, No. 238, December 11, 2012, at Pages 73655-73657. See also, story titled "FTC Brings Action Against Behavioral Advertising Company for History Sniffing" in TLJ Daily E-Mail Alert No. 2,489, December 12, 2012.

1:00 - 2:30 PM. The American Bar Association (ABA) will host a webcast and teleconferenced panel discussion titled "Trademark Search Strategies in Europe, Latin America, Canada, and the U.S.". The speakers will be Matthias Berger (Harmsen Utescher), Katrin Lewertoff (Arent Fox), John McKeown (Cassels Brock & Blackwell), Mariano Municoy (Moeller IP), and Naresh Kilaru (Finnegan Henderson). Prices vary. CLE credits. See, notice.

9:30 AM. The Securities and Exchange Commission (SEC) will hold a prehearing conference in the matter of Deloitte Touche Tohmatsu Certified Public Accountants Ltd. and BDO China Dahua CPA Co., Ltd., et al., Administrative Proceeding File Nos. 3-14872 and 3-15116. See, story titled "SEC to Hold Prehearing Conference in Cases Against PRC Accounting Firms" in TLJ Daily E-Mail Alert No. 2,500, December 31, 2012. Location: SEC, Hearing Room 2, 100 F St., NE.

12:15 - 1:45 PM. The DC Bar Association's Media Law Committee will hold a brown bag lunch meeting. Free. No CLE credits. Closed to reporters. See, notice. For more information, call 202-626-3463. Location: Washington Post, 1150 15th St., NW.

6:00 - 9:15 PM. The DC Bar Association will host a program titled "Introduction to Export Controls". The speakers will be Carol Kalinoski and Thomas Scott (Ladner & Associates). The price to attend ranges from $89 to $129. CLE credits. See, notice. For more information, call 202-626-3488. The DC Bar has a history of barring reporters from its events. Location: DC Bar Conference Center, 1101 K St., NW.

1:00 - 2:30 PM. The American Bar Association (ABA) will host a webcast and teleconferenced panel discussion titled "iPhone and iPad Apps for Lawyers". Prices vary. See, notice.

EXTENDED TO MARCH 10. Deadline to submit comments to the Department of Justice's (DOJ) Antitrust Division and the Federal Trade Commission (FTC) in connection with their joint workshop on December 10, 2012, titled "Patent Assertion Entity Activities". See, notice and agenda.

Supreme Court conference day. See, Supreme Court calendar.

8:30 AM - 12:00 NOON. The U.S. Patent and Trademark Office (USPTO) will host a roundtable to address the possibility of changing its rules of practice to require the disclosure of real party in interest information during patent prosecution and at certain times post-issuance. See, notice in the Federal Register, Vol. 77, No. 227, November 26, 2012, at Pages 70385-70389. See also, story titled "USPTO to Host Roundtable on Requiring Real Party in Interest Disclosures" in TLJ Daily E-Mail Alert No. 2,483, December 5, 2012. Location: USPTO, Madison Auditorium, Madison Building, 600 Dulany Street, Alexandria, VA.

10:30 AM - 3:30 PM. The Federal Communications Commission's (FCC) Emergency Access
Advisory Committee will meet. See, notice in the Federal Register, Vol. 78, No. 1, January 2, 2013, at Page 97. Location: FCC, Commission Meeting Room, 445 12th St.,  SW.

2:00 - 2:40 PM. The National Security Telecommunications Advisory Committee (NSTAC) will meet via conference call. This meeting is open to the public. See, notice in the Federal Register, Vol. 77, No. 244, December 19, 2012, at Page 75182.

1/3. Senate Republicans announced five new Republican members of the Senate Commerce Committee (SCC): Sen. Ted Cruz (R-TX), Sen. Tim Scott (R-SC), Sen. Dan Coats (R-IN), Sen. Deb Fischer (R-NE), and Sen. Ron Johnson (R-WI). Six of the Republican members of the SCC in 112th will not be members in the 113th Congress. Former Sen. Kay Hutchison (R-TX) retired. Former Sen. Olympia Snowe (R-ME) retired. Former Sen. Jim DeMint (R-SC) recently resigned from the Senate to lead the Heritage Foundation. Sen. Johnny Isakson (R-GA) and Sen. Pat Toomey (R-PA) obtained seats on the Senate Finance Committee (SFC). Sen. John Boozman (R-AR) also left the SCC.

1/3. Sen. Johnny Isakson (R-GA), Sen. Rob Portman (R-OH), and Sen. Pat Toomey (R-PA) were named to the Senate Finance Committee (SFC). See, SFC release. The SFC has jurisdiction over trade issues. Sen. Portman is a former U.S. Trade Representative (USTR).

1/3. Sen. Max Baucus (D-MT), Chairman of the Senate Finance Committee (SFC), named Bruce Hirsh Chief International Trade Counsel for the SFC. He will replace Amber Cottle, who was previously promoted to Staff Director for the SFC. See, SFC release.

1/3. The U.S. Court of Appeals (9thCir) issued its opinion [53 pages in PDF] in U.S. v. Chao Fan Xu, affirming the criminal convictions in this decade old case regarding banking in the People's Republic of China (PRC). This case is U.S. v. Chao Fan Xu, Ying Yi Yu, Guo Jun Xu, and Wan Fang Kuong, U.S. Court of Appeals for the 9th Circuit, App. Ct. Nos. 09-10189, 09-10193, 09-10201and 09-10202, appeals from the U.S. District Court for the District of Nevada. Judge Alfred Goodwin wrote the opinion of the Court of Appeals, in which Judges Stephen Reinhardt and Mary Murguia joined.

1/2. Rep. Fred Upton (R-MI), Chairman of the House Commerce Committee (HCC), released a report on the accomplishments of the HCC during the 112th Congress.

1/2. The U.S. Patent and Trademark Office (USPTO) and the European Patent Office (EPO) announced the launch of the Cooperative Patent Classification (CPC) system. The USPTO stated in a release that this is an effort "to develop a common, internationally compatible classification system for technical documents used in the patent granting process that incorporates the best classification practices from both offices. See also, EPO release.

1/2. The CTIA announced that it will host a single mobile industry trade show, beginning in 2014. It has been hosting both the CTIA Show and MobileCON. It will host the CTIA 2014 on September 9-11, 2014, at the Sands Expo Convention Center in Las Vegas, Nevada. See, CTIA release.

12/28. Hewlett Packard (HP) released another statement regarding HP's acquisition of Autonomy. HP wrote that "the U.S. Department of Justice advised HP that they have opened an investigation relating to Autonomy. HP is cooperating with the Department of Justice, the Securities and Exchange Commission and the UK’s Serious Fraud Office in this matter." See also, HP's Form 10-K filed with the Securities and Exchange Commission (SEC) on December 27, 2012.

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