|TLJ News from January 6-10, 2007|
Rep. Gordon Introduces Basic Research Authorization Bill
1/10. Rep. Bart Gordon (D-TN) introduced HR 363, the "Sowing the Seeds Through Science and Engineering Research Act", a bill that would authorize appropriations for basic research.
It was referred to the House Science and Technology Committee. Rep. Gordon (at right) is the Chairman.
It would authorize appropriations for the National Science Foundation (NSF), National Aeronautics and Space Administration (NASA), National Institute of Standards and Technology (NIST), and Department of Energy (DOE) for "support of basic research activities in the physical sciences, mathematics and computer sciences, and engineering". It would also authorize funding for the Department of Defense for "basic research".
For the NSF, the bill would authorize $2,114,100,000 for FY 2008, $2,325,510,000 for FY 2009, $2,558,060,000 for FY 2010, $2,813,870,000 for FY 2011, and $3,095,260,000 for FY 2012."
For the NIST, the bill would authorize $1,669,700,000 for FY 2008, $1,836,670,000 for FY 2009, $2,020,340,000 for FY 2010, $2,222,370,000 for FY 2011, and $2,444,610,000 for FY 2012
The bill also contains some provisions regarding the underlying research programs.
One provision states that "The President shall periodically present the Presidential Innovation Award, on the basis of recommendations received from the Director of the Office of Science and Technology Policy or on the basis of such other information as the President considers appropriate, to individuals who develop one or more unique scientific or engineering ideas in the national interest at the time the innovation occurs."
There is already a Medal of Technology, awarded by the President. See, story titled "Commentary: National Medal of Technology Program" in TLJ Daily E-Mail Alert No. 1,312, February 17, 2006.
This bill also provides that "In carrying out its research programs on science policy and on the science of learning, the National Science Foundation may support research on the process of innovation and the teaching of inventiveness."
House Science Committee Bill Would Authorize Funding to Train Math and Science Teachers
1/10. Rep. Bart Gordon (D-TN) and Rep. Ralph Hall (R-TX) introduced HR 362, a long untitled bill, the main purpose of which is to authorize appropriations for educating science, technology, engineering and mathematics (STEM) teachers.
It was referred to the House Science and Technology Committee. Rep. Gordon is the Chairman. Rep. Hall is the ranking Republican.
Title I of the bill, which is also titled the "10,000 Teachers, 10 Million Minds Science and Math Scholarship Act", would amend Section 10 of the National Science Foundation Authorization Act of 2002.
It states that its goal is to increase "the number of elementary and secondary mathematics and science teachers in the Nation's schools having both exemplary subject knowledge and pedagogical skills".
It would authorize the appropriation of $70,000,000 for fiscal year 2008, $101,000,000 for FY 2009, $133,000,000 for FY 2010, $164,000,000 for FY 2011, and $196,000,000 for FY 2012.
Title II of the bill would amend Section 9 of the National Science Foundation Authorization Act of 2002. It would authorize the appropriation of $44,000,000 for FY 2008, which amount would increase annually to $60,000,000 for FY 2012.
Cisco Sues Apple for Trademark Infringement
1/10. Cisco Systems filed a complaint in U.S. District Court (NDCal) against Apple alleging trademark infringement and other claims in connection with Apple's use of the term "iPhone" for its new product that combines a cell phone, music player and other functions. Cisco holds a U.S. trademark registration for iPhone for an internet telephony device.
See, U.S. Trademark Registration No. 2,293,011, for "IPHONE", for "computer hardware and software for providing integrated telephone communication with computerized global information networks". It lists Cisco as the current owner, March 20, 1996, as the filing date, and November 16, 1999, as the registration date.
This and other trademark information can be located with the U.S. Patent and Trademark Office's (USPTO) Trademark Electronic Search System (TESS).
On January 9, Steve Jobs, CEO of Apple, announced the new Apple product, and name, at the Macworld Conference & Expo.
Apple also stated in a release on January 9, 2007, that "Apple® today introduced iPhone, combining three products -- a revolutionary mobile phone, a widescreen iPod® with touch controls, and a breakthrough Internet communications device with desktop-class email, web browsing, searching and maps -- into one small and lightweight handheld device." Apple added that "iPhone plays the same videos purchased from the online iTunes® Store".
This release asserts no U.S. trademark for iPhone. Nor does a search of trademark registrations with the USPTO's TESS reveal a U.S. trademark registration by Apple for iPhone.
Cisco stated in a release that "Cisco obtained the iPhone trademark in 2000 after completing the acquisition of Infogear, which previously owned the mark and sold iPhone products for several years. Infogear's original filing for the trademark dates to March 20, 1996. Linksys, a division of Cisco, has been shipping a new family of iPhone products since early last year. On Dec. 18, Linksys expanded the iPhone® family with additional products."
See also, Linksys's iPhone web site.
Cisco's complaint states that "Apple's use of ``iPhone´´ in its product promotion and advertising at Macworld constitutes the use in commerce of a colorable imitation, copy and reproduction of Cisco's iPhone mark. Upon information and belief, the two marks will share an identical sight and sound and a strong similarity of meaning. Apple’s use of ``iPhone´´ for a cellular and internet phone device is deceptively and confusingly similar to Cisco’s long-standing trademark for an internet-based telephony device."
The complaint also states that "Apple first approached Cisco in 2001 about the possibility of acquiring or licensing the rights to iPhone. Apple has continued making such requests to Cisco through the present, including several times in 2006. Each time, Apple was told that Cisco was not interested in ceding the mark to Apple."
The complaint also alleges that Apple has recently engaged in a "surreptitious effort" to obtain rights to iPhone. It alleges that an Apple alter ego, Ocean Telecom Services LLC (OTS), filed an application in March of 2006 in Trinidad and Tobago (T&T). OTS then filed an intent to use application in the U.S. in September claiming a priority date based upon the T&T filing date. The complaint further states that Apple filed an application to register the trademark in Australia in September.
The complaint states that OTS's application "is being held up in the United States Patent and Trademark Office because Cisco already has a registration for the same mark".
Count I of the complaint alleges trademark infringement in violation of 15 U.S.C. § 1114.
Section 1114(a) provides as follows:
"(1) Any person who shall, without the consent of the
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive."
Count II alleges unfair competition in violation of 15 U.S.C. § 1125(a).
1125(a) provides as follows:
"(1) Any person who, on or in connection with any goods or services, or any container
for goods, uses in commerce any word, term, name, symbol, or device, or any combination
thereof, or any false designation of origin, false or misleading description of fact, or
false or misleading representation of fact, which --
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."
Count III alleges unfair competition in violation of California Business and Professions Code § 17200.
Count IV alleges false description or representation of such business or products in violation of 15 U.S.C. § 1125(a).
Count V alleges common law injury to business reputation.
Cisco seeks an injunction against Apple's use of the iPhone mark, or any colorable imitation. Cisco also seeks damages, costs and attorneys fees. Cisco also seeks an order compelling Apple to deliver for destruction all containers, labels, signs, prints, packages, wrappers, receptacles, advertising, and promotional material bearing the mark.
Cisco is represented by Michael Kahn of the law firm of Folger Levin & Kahn.
Apple did not immediately return a phone call from TLJ.
This case is Cisco Systems, Inc., Cisco Technology, Inc., and Cisco-Linksys LLC v. Apple, Inc., U.S. District Court for the Northern District of California, D.C. No. C 07 0198 MHP, Judge Marilyn Patel presiding.
FCC Releases Orders on Requests for Waivers of FCC's Set Top Box Rules
1/10. The Federal Communications Commission's (FCC) Media Bureau (MB) released several orders on requests for waivers for the FCC's rules regarding separable security in set top boxes.
The MB released a Memorandum Opinion and Order [8 pages in PDF] granting a request filed by Cablevision. This order states that "we temporarily grandfather Cablevision's SmartCard-based approach to separated security and issue a two-year waiver of Section 76.1204(a)(1) of the Commission's rules to allow Cablevision to use their separated security, SmartCard, solution until July 1, 2009." This order is DA 07-48 in CS Docket No. 97-80.
The MB released a Memorandum Opinion and Order [11 pages in PDF] conditionally granting a request filed by Bend Cable Communications, LLC, d/b/a, BendBroadband (Bend). This order is DA 07-47 in CS Docket No. 97-80.
The MB released a Memorandum Opinion and Order [16 pages in PDF] denying Comcast's waiver request, but granting Comcast leave to amend its request. This order is DA 07-49 in CS Docket No. 97-80.
The MB also released a Public Notice [5 pages in PDF] stating that cable operators that prefer not to employ a separable security option may use a downloadable conditional access solution to comply with FCC rules. It also states that Beyond Broadband Technology, LLC (BBT) has already developed such a solution. This item is DA 07-51.
Section 629 of the Telecommunications Act of 1996, which is codified at 47 U.S.C. § 549(a), provides, in part, that the FCC "shall ... adopt regulations to assure the commercial availability, to consumers of multichannel video programming and other services offered over multichannel video programming systems, of converter boxes, interactive communications equipment, and other equipment used by consumers to access multichannel video programming and other services offered over multichannel video programming systems, from manufacturers, retailers, and other vendors not affiliated with any multichannel video programming distributor."
FCC Chairman Kevin Martin released a statement in which he summarized the history of this issue. He wrote that pursuant to the statute, Congress wrote rules two years later that "required cable operators to separate their security functions (putting them into a CableCARD, which can be used in televisions and set-top boxes made by other manufacturers). By separating out security functions in a format used by cable operators and electronics makers alike, the Commission hoped a viable market for truly cable ready televisions and set-top boxes could flourish. Back then, Congress and the Commission envisioned consumers being able to walk into their local retail store and buy televisions and set-top boxes from any manufacturer that would work on any cable system." (Parentheses in original.)
The FCC's rules are codified at 47 C.F.R. § 76.1204(a)(1).
Martin continued that the FCC "originally gave cable operators seven years, followed by two further extensions, to achieve this separable security and common reliance. During this period, the cable operators twice challenged the Commission's rules in court. And, twice the court upheld them. And yet, almost ten years later, cable operators have never fully implemented the Commission's set-top box requirement. In fact, faced with a deadline of July 1, 2007, many cable operators have requested a third extension. This inaction has served to hinder innovation, deter competition and harm consumers."
Moreover, wrote Martin, "electronics manufacturers are beginning to seize the opportunity to roll out new products."
Martin continued that the MB's orders "implement the statutory requirements to facilitate a competitive market for set-top boxes in a reasonable manner. The Bureau denies Comcast's broad waiver request but provides for several ways it could amend its request. It grants Cablevision's request by grandfathering the implementation of its own separated security solution for two years. The Bureau also grants BendBroadband's request conditioned on its commitment to go all digital by December 2008 -- a significant benefit to consumers. Finally, the Bureau reiterates that a downloadable security solution would comply with our rules now, and notes that at least one company has already developed such a solution."
Gary Shapiro, head of the Consumer Electronics Association (CEA), stated in a release that "The FCC has taken a strong stand for consumers and we applaud Chairman Martin for his dedication to the public interest. Competitive device manufacturers are eager to offer exciting new content devices to cable customers, and the FCC has assured consumers that innovation will not be stifled. By taking this action, the FCC ensures that consumers will finally realize the benefits of a competitive market for products that can connect to cable systems."
Brian Dietz, spokesman for the National Cable and Telecommunications Association (NCTA) wrote in a statement released just prior to the FCC's announcement that "The denial of cable's waiver requests would mean that, starting in July, consumers would be paying a new $600 million tax, costing cable customers another 2-3 dollars per month. It is incomprehensible that the FCC would deny these waiver requests at a time when Congress and the Administration have made the digital transition a national priority and are trying to manage the costs to consumers. We urge the Chairman and the Commission to move in another direction on this issue and grant cable's requests to relieve consumers of this potential burden."
Also, Randy May, head of the Free State Foundation, wrote in a release that "this is a case for common sense regulatory relief, with the cost of imposing the integration ban in July far exceeding any consumer benefits".
FCC Releases Agenda for January 17 Event
1/10. The Federal Communications Commission (FCC) released an agenda [PDF] for its event on Wednesday, January 17, 2007, titled "Open Meeting". The agenda states that the FCC will adopt nothing. Rather, there will be four panel presentations regarding the activities and operations of the FCC.
The first panel will include the Managing Director and the Chief of the FCC's Consumer & Governmental Affairs Bureau (CAGB).
The second panel will include the Chiefs of the FCC's Enforcement Bureau (EB) and Public Safety and Homeland Security Bureau (PSHSB).
The third panel will include the Chiefs of the Wireless Telecommunications Bureau (WTB), Office of Engineering and Technology (OET), and the International Bureau (IB).
The fourth panel will include the Chiefs of the Media Bureau (MB) and Wireline Competition Bureau (WCB).
The event is scheduled to begin at 9:30 AM on Wednesday, January 17, 2007, in the FCC's Commission Meeting Room, Room TW-C305, 445 12th Street, SW. The event will be webcast by the FCC. The FCC does not always follow its published agenda. The FCC sometimes adds items to the agenda without providing the "one week" notice required 5 U.S.C. § 552b. The FCC does not always start its events at the scheduled time, or at all.
Republicans Name House Commerce Committee Ranking Members
1/10. Rep. Joe Barton (R-TX) announced the Republican members of the House Commerce Committee (HCC) and its Subcommittees, and the ranking Republicans. Rep. Barton will be the ranking Republican on the full Committee, and a member of its Subcommittees.
Rep. Fred Upton (R-MI) will be the ranking Republican on the Subcommittee on Telecommunications and the Internet. He was the Chairman of this Subcommittee until the Republicans lost their majority in the House. Rep. Cliff Stearns (R-FL) will be the ranking Republican on the Subcommittee on Commerce, Trade and Consumer Protection. He was previously the Chairman. Rep. Ed Whitfield (R-KY) will be the ranking Republican on the Subcommittee on Oversight and Investigations. He was previously the Chairman.
These three Subcommittees handle almost all of the technology and communications related issues within the jurisdiction of the HCC.
Rep. Denny Hastert (R-IL) will be ranking Republican on the Subcommittee on Energy and Air Quality. He was previously the Speaker of the House. Rep. Nathan Deal (R-GA) will be the ranking Republican on the Subcommittee on Health. Rep. John Shimkus (R-IL) will be the ranking Republican on the Subcommittee on the Environment and Hazardous Materials.
Rep. Ralph Hall (R-TX) will not be the ranking Republican on any Subcommittee. Several Republican members of the HCC will be on leave of absence from the HCC. These are Rep Roy Blunt (R-MO), who is the Republican whip, Rep. Tom Davis (R-VA), Rep. Paul Gilmor (R-OH), Rep. Darrell Issa (R-CA), and Rep. Marsha Blackburn (R-TN).
The Republican members of the Subcommittee on Telecommunications and the Internet will be Rep. Hastert, Rep. Upton, Rep. Stearns, Rep. Nathan Deal (R-GA), Rep. Barbara Cubin (R-WY), Rep. John Shimkus (R-IL), Rep. Heather Wilson (R-NM), Rep. Chip Pickering (R-MS), Rep. Vito Fossella (R-NY), Rep. George Radanovich (R-CA), Rep. Mary Bono (R-CA), Rep. Greg Walden (R-OR), Rep. Lee Terry (R-NE), and Rep. Mike Ferguson (R-NJ).
The Republican members of the Subcommittee on Commerce, Trade and Consumer Protection will be Rep. Hall, Rep. Hastert, Rep. Stearns, Rep. Whitfield, Rep. Pickering, Rep. George Radanovich (R-CA), Rep. Joe Pitts (R-PA), Rep. Bono, Rep. Terry, Rep. Mike Rogers (R-MI), Rep. Sue Myrick (R-NC), and Rep. Michael Burgess (R-TX).
The Republican members of the Subcommittee on Oversight and Investigations will be Rep. Whitfield, Rep. Charlie Norwood (R-GA), Rep. Walden, Rep. Mike Ferguson (R-NJ), Rep. Tim Murphy (R-PA), and Rep. Burgess.
More People and Appointments
1/10. Adam Isles was named Deputy Chief of Staff at the Department of Homeland Security (DHS). See, DHS release.
1/10. Bill Koetzle was named deputy Republican staff director for policy for the House Commerce Committee. He previously worked on the staff of former House Speaker Denny Hastert (R-IL).
1/10. President Bush nominated Howard Weizmann to be Deputy Director of the Office of Personnel Management. See, White House release.
Supreme Court Rules on Case or Controversy Requirement in Patent Litigation
1/9. The Supreme Court issued its opinion [30 pages in PDF] in MedImmune v. Genentech, a case regarding when a patent can be challenged by a licensee in a declaratory judgment action.
Introduction. The Supreme Court held that the Article III case or controversy requirement, and the Declaratory Judgment Act, which is codified at 28 U.S.C. § 2201, do not require a patent licensee to terminate, or be in breach of, its license agreement before it can seek a declaratory judgment that the underlying patent is invalid, unenforceable, or not infringed.
The District Court dismissed the complaint of a licensee for lack of jurisdiction on the grounds that there was no case or controversy. The Court of Appeals affirmed the District Court. The Supreme Court reversed the Court of Appeals.
Under this ruling, a patent licensee who is paying royalties can file declaratory judgment action challenging the validity and/or enforceability of a the patent.
The case does not involve information technology. It involves pharmaceutical patents. However, this ruling will affect licensing and litigation practices, in other sectors, including the tech sector.
This ruling will make it easier for licensees to challenge patents, by eliminating one procedural obstacle, and by reducing the risks associated with such challenges. That is, someone who practices an invention, but does not license it, or fails to pay royalties, is vulnerable to a suit for injunctive relief, and treble damages, while a licensee in good standing is not.
This ruling might lead some patent owners to license at higher royalty rates than they would have absent this ruling. It might also lead some patent owners to license their inventions for lump sum advance payments, rather than periodic royalties.
This ruling may also lead some patent owners to attempt to contract around this ruling. This opinion only addresses the threshold question of jurisdiction. It does not address application of equitable principles to declaratory judgment actions over which the courts have jurisdiction.
Factual Backgound. Genentech is a defendant in the District Court, and respondent in the Supreme Court. It states in its web site that it is a "biotechnology company that discovers, develops, manufactures and commercializes biotherapeutics for significant unmet medical needs". City of Hope, another defendant, states in its web site that it is "biomedical research, treatment and educational institution dedicated to the prevention and cure of cancer and other life-threatening illnesses".
Genentech and City of Hope own U.S. Patent No. 4,816,567 titled "Recombinant immunoglobin preparations", and U.S. Patent No. 6,331,415 titled "Methods of producing immunoglobulins, vectors and transformed host cells for use therein", a continuation of the first patent.
MedImmune is the plaintiff in the District Court, and petitioner in the Supreme Court. It is a licensee of Genentech and City of Hope of these patents. It continues to pay royalties. It is not under threat of suit from Genentech or City of Hope.
Celltech R&D, Ltd., which has since been acquired by UCB, recently settled a long patent interference proceeding with Genetech and City of Hope involving these patents.
MedImmune then determined to challenge the validity and enforceability of the two patents.
The Supreme Court noted that "The factual and legal dimensions of the dispute are well defined and, but for petitioner's continuing to make royalty payments, nothing about the dispute would render it unfit for judicial resolution."
Proceedings Below. MedImmune filed a complaint in U.S. District Court (CDCal) against Genentech, City of Hope, and Celltech seeking a declaratory judgment that the patents are invalid and unenforceable as a result of the settlement of the patent interference. MedImmune also alleged violation of antitrust and unfair competition laws.
The District Court dismissed the complaint on the basis that there is no case or controversy.
The U.S. Court of Appeals (FedCir) issued its opinion [24 pages in PDF] on October 18, 2005, affirming the District Court. Judge Pauline Newman wrote the opinion of the Court of Appeals, in which Judge Haldane Robert Mayer joined.
Judge Raymond Clevenger wrote a partial dissent. He concurred that the complaint must be dismissed for lack of jurisdiction. However, he dissented from the court's refusal to transfer the remainder of the case to the U.S. Court of Appeals (9thCir), pursuant to 28 U.S.C. § 1631, for a determination as to whether the District Court properly granted summary judgment regarding MedImmune's antitrust and unfair competition claims.
Supreme Court Opinion. This was an 8 to 1 case, with Justice Antonin Scalia writing the opinion of the Court. Justice Clarence Thomas wrote a dissenting opinion.
The Court wrote that "Our analysis must begin with the recognition that, where threatened action by government is concerned, we do not require a plaintiff to expose himself to liability before bringing suit to challenge the basis for the threat -- for example, the constitutionality of a law threatened to be enforced. The plaintiff’s own action (or inaction) in failing to violate the law eliminates the imminent threat of prosecution, but nonetheless does not eliminate Article III jurisdiction."
The Court added that while there are fewer Supreme Court cases in "situations in which the plaintiff’s self-avoidance of imminent injury is coerced by threatened enforcement action of a private party rather than the government", the lower courts "have long accepted jurisdiction in such cases".
The Court also rejected Genentech's argument that "the parties in effect settled this dispute when they entered into the 1997 license agreement. When a licensee enters such an agreement, they contend, it essentially purchases an insurance policy, immunizing it from suits for infringement so long as it continues to pay royalties and does not challenge the covered patents." The Court wrote that "Promising to pay royalties on patents that have not been held invalid does not amount to a promise not to seek a holding of their invalidity."
The Court reviewed applicable precedent, and then concluded that in this patent case, the "petitioner was not required, insofar as Article III is concerned, to break or terminate its 1997 license agreement before seeking a declaratory judgment in federal court that the underlying patent is invalid, unenforceable, or not infringed."
The Court also wrote that "it would be imprudent for us to decide whether the District Court should, or must, decline to issue the requested declaratory relief. We leave the equitable, prudential, and policy arguments in favor of such a discretionary dismissal for the lower courts’ consideration on remand. Similarly available for consideration on remand are any merits-based arguments for denial of declaratory relief."
Justice Thomas wrote in dissent that "We have consistently held that parties do not have standing to obtain rulings on matters that remain hypothetical or conjectural. We have also held that the declaratory judgment procedure cannot be used to obtain advanced rulings on matters that would be addressed in a future case of actual controversy. MedImmune has sought a declaratory judgment for precisely that purpose, and I would therefore affirm the Court of Appeals’ holding that there is no Article III jurisdiction over MedImmune's claim."
Comments. Ed Black, head of the Computer and Communications Industry Association (CCIA), praised the Supreme Court's opinion in a release. He wrote that "Yet again, the Supreme Court has thrown out a ruling that perpetuates dysfunctions in the patent system. ... This marks yet another occasion where the Court has clamped down on the Federal Circuit's wayward jurisprudence."
The CCIA release adds that this "ruling clears the way for timely challenges to junk patents that impede innovation".
The American Intellectual Property Law Association (AIPLA) submitted an amicus brief [20 pages in PDF] urging affirmance of the Court of Appeals. It wrote that "Allowing patent licensees to bring risk-free challenges to patent validity would increase litigation, encourage questionable licensing tactics, and disrupt the settled expectations of patent licensors."
It also wrote that if MedImmune prevails, as it did, then "licensors may attempt to rebalance their negotiating power by including the questionable licensing terms", and that "A new period of uncertainty in which the enforceability of these different terms is tested would be costly. Moreover, these terms are designed to discourage the very validity challenges that the Court is being asked to endorse. The uncertainty and brinksmanship in licensing practice that would accompany petitioner’s rule are undesirable and should be avoided."
Joshua Rosenkranz of the New York office of the law firm of Heller Ehrman submitted an amicus brief on behalf of Qualcomm and Interdigital Communications Corporation, in support of the respondents (Genentech).
He wrote in his brief that "a licensee who sues, but retains the protection of the license, escapes all the burdens and hard choices. Such a licensee enjoys a fixed royalty and immunity from injunctive relief, while still pursuing its challenge to the very premise of the license -- that the licensor has a valid patent."
He argued that "That is not fair, especially to licensors who negotiated licenses in the past based upon the premise -- which has been clear law in the Federal Circuit for some time -- that the licensee cannot retain the benefits of a license and sue at the same time."
He also argued that to allow suits such as MedImmune's would be against the public interest. He wrote that "If patent owners cannot be assured of patent peace when licensing their inventions, they will be less inclined to license, and at a minimum will insist on higher royalty rates. Moreover, allowing suits of this sort to proceed will only encourage more litigation, for licensees will have every incentive to sue, on any patent theory, so long as the expected benefits exceed the cost of litigation."
TLJ spoke with Rosenkranz after the ruling. He said that while this case arose in the pharmaceutical sector, this opinion "transcends industries", and answers a "crucial question to any one who licenses inventions ... without regard to the particular nature of the invention".
He added the this opinion "will have an enormous effect on licensing behavior".
He also stated that this opinion answers one question -- whether the courts have jurisdiction to hear the declaratory judgment action by the licensee. But, it does not address a second question -- how the courts should apply principles of equity in these actions.
For example, if patent holder were to contract around this ruling in the license agreement, would the licensee be able to maintain an action for a declaratory judgment of invalidity?
Case Information. This case is MedImmune, Inc. v. Genentech, Inc., et al., Sup. Ct. No. 05-608, a petition for writ of certiorari to the U.S. Court of Appeals for the Federal Circuit, App. Ct. Nos. 04-1300 and 04-1384. The Court of Appeals heard an appeal from the U.S. District Court for the Central District of California, Judge Mariana Pfaelzer presiding.
MedImmune is represented by John Kester of the Washington DC office of the law firm of Williams & Connolly and by Harvey Kurzweil of the New York City office of the law firm of Dewey Ballantine. Genentech is represented by Maureen Mahoney and Daniel Wall of the law firm of Latham & Watkins.
See also, Supreme Court docket.
Dodd Ehlers Bill Would Set Voluntary Math and Science K-12 Education Standards
1/9. Sen. Chris Dodd (D-CT) and Rep. Jeff Bingaman (D-NM) introduced S 224, the "Standards to Provide Educational Achievement for Kids Act", or "SPEAK Act". This bill pertains to "voluntary core American education content standards in mathematics and science". Also on January 9, Rep. Vernon Ehlers (R-MI) and Rep. Ruben Hinojosa (D-TX) introduced HR 325, the companion bill in the House.
Sen. Dodd (at left) stated in a release that "Math and science skills are essential to establish and maintain academic competitiveness on the global landscape. American students should have the same opportunities to learn and achieve success whether they study in large schools or small, or live in Connecticut or California."
Rep. Ehlers stated in this release that "we need to improve our nation's math and science education. High-quality math and science education at the K-12 levels is extremely important to ensure that our future workforce is ready to compete in the global economy. We are sacrificing our future if we are not investing in today's children
The House bill was referred to the House Committee on Education and Labor. The Senate bill was referred to the Senate Committee on Health, Education, Labor, and Pensions.
Bush Names Fred Fielding Counsel to the President
1/9. President Bush named Fred Fielding to be Counsel to the President. He replaces Harriet Miers. See, statement by President Bush.
Fielding is one of the name partners of Wiley Rein & Fielding (WRF), a large Washington DC based law firm, that focuses, among other things, on communications and technology related areas of law. Federal Communications Commission (FCC) Chairman Kevin Martin and many current and past FCC officials previously worked at WRF. Richard Wiley, who is another name partner of WRF, was FCC General Counsel, Commissioner, and Chairman during the administrations of former Presidents Nixon and Ford.
Fielding was also Counsel to the President from 1981 through 1986 during the administration of former President Reagan. He also worked in the office of the Counsel to the President during the administration of former President Nixon.
He has experience in advising Presidents in their relations with hostile Democratic Congressional majorities. His WRF biography lists one of his practice areas as "Crisis Management".
Democrats Name House Commerce Committee Chairman
1/9. Rep. John Dingell (D-MI), the once and new Chairman of the House Commerce Committee (HCC), announced new Chairmen of the HCC's Subcommittees.
Rep. Ed Markey (D-MA) will be the Chairman of the Subcommittee on Telecommunications and the Internet. He was previously the ranking Democrat on this Subcommittee.
Rep. Bobby Rush (D-IL) (at right) will be the Chairman of the Subcommittee on Commerce, Trade, and Consumer Protection. Rep. Jan Schakowski (D-IL) was previously the ranking Democrat of this Subcommittee. This Subcommittee will likely mark up legislation in 110th Congress pertaining to data privacy and pretexting practices.
Rep. Bart Stupak (D-MI) will be the Chairman of the Subcommittee on Oversight and Investigations.
Rep. Al Wynn (D-MD) will be the Chairman of the Subcommittee on Environment and Hazardous Materials. Rep. Rick Boucher (D-VA) will be the Chairman of the Subcommittee on Energy and Air Quality. Rep. Frank Pallone (D-NJ) will be the Chairman of the Subcommittee on Health.
Bush Announces Court of Appeals Nominees
1/9. The White House press office issued several releases that name numerous appointments to the U.S. Courts of Appeals, U.S. District Courts, and executive branch departments.
Senate Democrats have blocked Senate consideration of numerous Court of Appeals nominees throughout the Bush administration. President Bush has often renominated persons blocked by Democrats.
The current lists include several Court of Appeals renominations (Keisler, Livingston, Hardiman, and Smith), and one new nomination (Southwick). These lists omit several previous nominees (Boyle, Haynes, Wallace and Myers).
See also, story titled "Bush Renominates Five for Courts of Appeals" in TLJ Daily E-Mail Alert No. 1,442, August 31, 2006; story titled "Bush to Renominate 20 for Federal Judgeships" in TLJ Daily E-Mail Alert No. 1,044, January 27, 2004.
On January 9 President Bush again nominated Peter Keisler (at right) to be a Judge of the U.S. Court of Appeals for the District of Columbia. He is currently the Assistant Attorney General in charge of the Civil Division. President Bush first nominated Keisler last year. See, White House release.
President Bush again nominated Debra Ann Livingston to be a Judge of the U.S. Court of Appeals for the Second Circuit. See, White House release.
President Bush again nominated Judge Thomas Hardiman [PDF] to be Judge of the U.S. Court of Appeals for the 3rd Circuit. See, White House release. President Bush first nominated him last year. He is currently a U.S. District Court Judge for the Western District of Pennsylvania.
President Bush's long list of judicial nominees does not include either Terrence Boyle or William Haynes to be Judges of the U.S. Court of Appeals for the 4th Circuit. However, this list includes no nominees for these vacancies.
President Bush's long list of judicial nominees does not include any nominees for vacancies on the U.S. Court of Appeals for the 6th Circuit.
President Bush nominated Judge Leslie Southwick to be a Judge of the U.S. Court of Appeals for the 5th Circuit. See, White House release. This is a new nomination for this vacancy, rather than a repeat nomination of someone who was blocked by Senate Democrats in the previous Congress. However, President Bush did nominate Southwick last year for the U.S. District Court for the Southern District of Mississippi. The Senate did not act on his nomination. He is currently a state appeals court judge in Mississippi. Also, President Bush's long list of judicial nominees does not include Michael Wallace, a previous but unconfirmed selection of President Bush for the 5th Circuit.
President Bush again nominated Randy Smith, of Idaho, to be a Judge of the U.S. Court of Appeals for the 9th Circuit. See, White House release. Some Senators and others argue that this seat should be filled by someone from California. However, President Bush's long list of judicial nominees does not include William Myers.
Bush Announces District Court Nominations
1/9. President Bush announced the nomination of numerous persons for various U.S. District Courts. All but one of these are renominations of persons previously nominated, but not confirmed or rejected, by the Senate during the 109th Congress.
Some of these persons were not nominated in the 109th Congress until late 2006. Some are consensus nominees with bipartisan support in the Senate. They are, in alphabetical order, as follows:
Bush again nominated John Bailey to be a Judge of the U.S. District Court for the Northern District of West Virginia. See, White House release.
Bush again nominated Valerie Baker to be a Judge of the U.S. District Court for the Central District of California. See, White House release.
Bush nominated Joseph Van Bokkelen to be Judge of the U.S. District Court for the Northern District of Indiana. See, White House release. This is a new nomination.
Bush again nominated Vanessa Bryant to be a Judge of the U.S. District Court for the District of Connecticut. See, White House release.
Bush again nominated Mary Donohue to be a Judge of the U.S. District Court for the Northern District of New York. See, White House release.
1/9. President Bush again nominated Thomas Farr to be a Judge of the U.S. District Court for the Eastern District of North Carolina. See, White House release. Although, Bush did not nominate him in the 109th Congress until December of 2006.
Bush again nominated Nora Fischer to be a Judge of the U.S. District Court for the Western District of Pennsylvania. See, White House release.
Bush again nominated Gregory Frizzell to be a Judge of the U.S. District Court for the Northern District of Oklahoma. See, White House release.
Bush again nominated Philip Gutierrez to be a Judge of the U.S. District Court for the Central District of California. See, White House release. He is currently a California state judge.
Bush again nominated Marcia Howard to be a Judge of the U.S. District Court for the Middle District of Florida. See, White House release.
Bush again nominated John Jarvey to be a Judge of the U.S. District Court for the Southern District of Iowa. See, White House release.
Bush again nominated Frederick Kapala to be a Judge of the U.S. District Court for the Northern District of Illinois. See, White House release.
Bush again nominated Sara Lioi to be a Judge of the U.S. District Court for the Northern District of Ohio. See, White House release.
Bush again nominated Roslynn Mauskopf to be a Judge of the U.S. District Court for the Eastern District of New York. See, White House release.
Bush again nominated Liam O'Grady to be a Judge of the U.S. District Court for the Eastern District of Virginia. See, White House release.
Bush again nominated Lawrence O'Neill to be a Judge of the U.S. District Court for the Eastern District of California. See, White House release.
Bush again nominated William Osteen to be a Judge of the U.S. District Court for the Middle District of North Carolina. See, White House release.
Bush again nominated Halil Ozerden to be a Judge of the U.S. District Court for the Southern District of Mississippi. See, White House release.
Bush again nominated Martin Reidinger to be a Judge of the U.S. District Court for the Western District of North Carolina. See, White House release.
Bush again nominated James Rogan (at right) to be a Judge of the U.S. District Court for the Central District of California. See, White House release. Rogan is a former member of House of Representatives, the House Commerce Committee, the House Judiciary Committee, and the Subcommittee on Courts and Intellectual Property. Rep. Adam Schiff (D-CA) defeated him in the 2000 election. Rogan then served as head of the U.S. Patent and Trademark Office (USPTO).
Bush again nominated Thomas Schroede to be a Judge of the U.S. District Court for the Middle District of North Carolina. See, White House release.
Bush again nominated Benjamin Settle to be a Judge of the U.S. District Court for the Western District of Washington. See, White House release.
Bush again nominated Lisa Wood to be a Judge of the U.S. District Court for the Southern District of Georgia. See, White House release.
Bush again nominated Otis Wright to be a Judge of the U.S. District Court for the Central District of California. See, White House release.
Bush again nominated George Wu to be a Judge of the U.S. District Court for the Central District of California. See, White House release.
1/9. President Bush announced his intent to designate Richard Hertling to be Acting Assistant Attorney General (Legislative Affairs). See White House release. He works in the Department of Justice's (DOJ) Office of Legal Policy (OLP). He previously worked for Sen. Arlen Specter (R-PA) in various positions related to the Senate Judiciary Committee (SJC). Sen. Specter is the ranking Republican on the SJC, which has jurisdiction over judicial appointments. The DOJ's OLP is involved in the judicial selection process, among other things. Also, Hertling worked on judicial confirmations when he worked for Sen. Specter. TLJ asked Sen. Specter about this nomination after the SJC's hearing on data mining on January 10. He praised Hertling, and added, "I trained him". Sen. Specter and Hertling will likely be the main advocates in the Senate for President Bush's judicial nominees in the 110th Congress.
1/9. President Bush again nominated Steven Bradbury to be Assistant Attorney General (AAG) in charge of the Department of Justice's (DOJ) Office of Legal Counsel (OLC). See, White House release. He has long been the acting AAG. Bush also nominated Bradbury for this position in January of 2006, and in 2005. Senate Democrats have blocked consideration of his nomination. OLC AAG nominees are often controversial in any administration. However, Bradbury's prospects for confirmation are also affected by his role in providing legal advice to Attorney General Alberto Gonzales and President Bush regarding the National Security Agency's (NSA) extrajudicial electronic surveillance of communications where one party is inside the U.S. and one party is outside. See also, stories titled "Bush Nominates Bradbury for OLC" in TLJ Daily E-Mail Alert No. 1,297, January 26, 2006, and "Bush Responds to USA Today Story Regarding NSA Database of Phone Calls" in TLJ Daily E-Mail Alert No. 1,369, May 12, 2006.
1/9. President Bush again nominated William Mercer to be Associate Attorney General. He is currently the acting AAG. He replace Robert McCallum. See, White House release.
Trade Related Appointments
1/9. President Bush again nominated Boyden Gray to be Representative of the USA to the European Union. See, White House release.
1/9. President Bush again nominated Dean Pinkert to be a Member of the U.S. States International Trade Commission (USITC) for a term expiring on December 16, 2015. See, White House release. He is a Senior Attorney at the Department of Commerce (DOC). Previously, he was Trade and Judiciary Counsel for Sen. Robert Byrd (D-WV). Before that, he worked for the law firm of King & Spalding.
1/9. President Bush again nominated Irving Williamson to be a Member of the U.S. States International Trade Commission (USITC) for a term expiring on June 16, 2014. See, White House release. He was previously Deputy General Counsel in the Office of the U.S. Trade Representative (USTR).
More People and Appointments
1/9. Steven Berry was named executive vice president for government and consumer affairs at the Direct Marketing Association. He was previously President of Steven K. Berry, LLC, and a consultant to The Livingston Group.
1/9. President Bush nominated Robert Lenhard to be a Member of the Federal Election Commission (FEC) for a term expiring April 30, 2011. See, White House release.
1/9. President Bush nominated David Mason to be a Member of the Federal Election Commission (FEC) for a term expiring April 30, 2009. See, White House release.
1/9. President Bush nominated Hans von Spakovsky to be a Member of the Federal Election Commission (FEC) for a term expiring April 30, 2011. See, White House release.
1/9. President Bush nominated Steven Walther to be a Member of the Federal Election Commission (FEC) for a term expiring April 30, 2009. See, White House release.
1/9. President Bush again nominated Julie Myers to be an Assistant Secretary of Homeland Security. See, White House release.
1/9. President Bush again nominated John Rizzo to be General Counsel of the Central Intelligence Agency (CIA). See, White House release.
1/9.The House approved HR 1 by a vote of 229-128. See, Roll Call No. 15. All of the votes against the bill were cast by Republicans. See also, story titled "9/11 Commission Bill Includes Privacy and Civil Liberties Provisions" in TLJ Daily E-Mail Alert No. 1,515, January 8, 2007. The bill also addresses interoperable emergency communications grants. The Senate has taken no action on this bill.
Supreme Court Denies Certiorari in Echostar v. Fox
1/8. The Supreme Court denied certiorari in Echostar v. Fox, a case regarding the compulsory statutory license for satellite carriers to broadcast secondary transmissions of certain network programming to unserved households. See, Order List [35 pages in PDF] at page 4.
This case involves the statutory license that was enacted in the Satellite Home Viewer Act of 1988, which is Public Law No. 106-113, and is now codified in 17 U.S.C. § 119.
This license allows "satellite carriers", such as Echostar, to transmit copyrighted distant network programing to "unserved households", but not to served households.
Section 119 provides, in part, that "unserved household" means, "with respect to a particular television network, means a household that -- (A) cannot receive, through the use of a conventional, stationary, outdoor rooftop receiving antenna, an over-the-air signal of a primary network station affiliated with that network of Grade B intensity as defined by the Federal Communications Commission under section 73.683(a) of title 47 of the Code of Federal Regulations, as in effect on January 1, 1999; ..."
Fox Broadcasting, and other broadcasters, long ago sued Echostar alleging that it provided service, under this statutory license, to served households. The broadcasters have prevailed. The present denial of certiorari lets stand the May 23, 2006, opinion [44 pages in PDF] of the U.S. Court of Appeals (11thCir), which affirmed in part the judgment of the District Court, and remanded for entry of a nationwide injunction against Echostar.
Fox is represented by Catherine Stetson of the Washington DC office of the law firm of Hogan & Hartson. Echostar is represented by Thomas Goldstein of the Washington DC office of the law firm of Akin Gump. Goldstein is also the author of the SCOTUSBlog.
This case is Echostar Communications Corp. v. Fox Broadcasting Co., et al., Sup. Ct. No. 06-545, a petition for writ of certiorari to the U.S. Court of Appeals for the 11th Circuit, App. Ct. No. 03-13671-DD. The Court of Appeals heard an appeal from the U.S. District Court for the Southern District of Florida.
See also, Supreme Court docket.
8th Circuit Upholds IUB Order Regarding Rural Wireless Service
1/8. The U.S. Court of Appeals (8thCir) issued its opinion [10 pages in PDF] in Rural Iowa Independent Telephone Association v. Iowa Utilities Board, affirming the judgment of the District Court. which upheld an order of the Iowa Utilities Board (IUB) regarding rural wireless service.
The Court of Appeals wrote that the "IUB determined the rural carriers could not charge Qwest Corporation long-distance access charges when Qwest bundled inbound intraMTA wireless traffic with long-distance traffic before delivering it to the rural carriers. The IUB further determined the rural carriers could not force their customers to use Qwest as an interexchange carrier (IXC) (commonly understood as a long-distance carrier) for outbound intraMTA wireless calls." (Parentheses in original.)
This case is Rural Iowa Independent Telephone Association v. Iowa Utilitites Board, et al., U.S. Court of Appeals for the 8th Circuit, App. Ct. No. 05-3579, an appeal from the U.S. District Court for the Southern District of Iowa.
IIPA Wants USTR to Put Canada on Priority Watch List for Failure to Protect IPR
1/8. The International Intellectual Property Alliance (IIPA) sent a letter [2 pages in PDF] to the Office of the U.S. Trade Representative (OUSTR) requesting that it elevate Canada from the Watch List to the Priority Watch List as a result of its failure to revise its copyright statute and enforcement.
The IIPA wrote that "At a time when every other developed country and major U.S. trading partner has made significant progress toward modernizing copyright legislation to respond to the challenges of an ever changing technological universe, Canada’s failure to do so is particularly striking, and should elicit a commensurate reaction from the U.S. government."
It added that the "IIPA highlights the fact that the WIPO Internet Treaties were concluded over a decade ago and were designed to respond to what were then new technologies. The global community adopted certain critical features in the Treaties, such as clarifying the right of making available, and protecting technological measures used by right holders, in order to drive legitimate electronic trade in creative works. Canada’s unconscionable delay in adopting the instruments for preserving copyright protection in the digital age, in spite of its longstanding commitment to do so, simply cannot be countenanced."
The IIPA wrote letter to the OUSTR on September 29, 2006, regarding Canada. That letter contained more detail about Canada's failure to protect IPR, but withheld making a recommendation. It cited the failure of customs and law enforcement agencies in Canada to address the flow of pirated media into Canada from Asia, camcording of movies in theaters in Canada, or counterfeiting of movies released on DVD. The IIPA complained about the lack of resources and training for IPR enforcement in Canada, insufficient penalties for violators, and unwillingness to investigate and prosecute.
The IIPA wrote then that "as technology constantly advances, the ``retailers´´ now use ordinary computer equipment to become mass manufacturers, producing literally hundreds of thousands of pirated DVDs, CDs, software and video games."
1/8. Federal Communications Commission (FCC) Chairman Kevin Martin announced his intent to name Monica Desai to be Chief of the Federal Communications Commission's (FCC) Media Bureau. She is currently the Chief of the FCC's Consumer and Government Affairs Bureau (CGAB). She has also worked in several other FCC Bureaus, and as an interim legal advisor to Martin. Before joining the FCC in 1999, she worked for the law firm of law firm of Sonnenschein Nath & Rosenthal. She will replace Donna Gregg. See, FCC release.
1/8. Federal Communications Commission (FCC) Chairman Kevin Martin announced his intent to name Donna Gregg to be Richard Russell's Senior Policy Advisor for the 2007 World Radiocommunication Conference (WRC-07). See, FCC release. President Bush announced his intent to appoint Russell Ambassador to the WRC-07 on January 4, 2007. See, OSTP release. Gregg is currently Chief of the FCC's Media Bureau.
1/8. Federal Communications Commission (FCC) Chairman Kevin Martin announced his intent to name Helen Domenici to be Chief of the Federal Communications Commission's (FCC) International Bureau (IB). She previously worked in the Executive Office of the President's (EOP) Office of Science and Technology Policy (OSTP) as Assistant Director for Telecommunications and Information Technology. She worked in the FCC's IB before going to the OSTP. John Giusti is currently the acting Bureau Chief. See, FCC release.
More People and Appointments
1/8. Doug Brent was named Chief Operating Officer of the Internet Corporation for Assigned Names and Numbers (ICANN). He was previously CEO of Packet Design Inc. See, ICANN release.
1/8. The Supreme Court denied certiorari in Blue Cross Blue Shield v. Abbott Laboratories. The Supreme Court wrote that "The motion of Bluecross Blueshield of Massachusetts, et al. for leave to file a brief as amici curiae is granted. The motion of Law Professors Myriam Gilles and Guy Charles for leave to file a brief as amici curiae is granted. The petition for a writ of certiorari is denied." See, Order List [35 pages in PDF] at page 26, and Supreme Court docket. This lets stand the May 3, 2006, unpublished opinion [3 pages in PDF] of the U.S. Court of Appeals (11thCir). See also, story titled "11th Circuit Applies Antitrust Analysis to Agreements Regarding Patents" in TLJ Daily E-Mail Alert No. 740, September 16, 2003. This case is Blue Cross Blue Shield of Florida, Inc., et al. v. Abbott Laboratories, et al., Sup. Ct. No. 06-475, a petition for writ of certiorari to the U.S. Court of Appeals for the 11th Circuit, App. Ct. No. 05-14054. The Court of Appeals heard an appeal from an appeal from the U.S. District Court for the Southern District of Florida, D.C. No. 99-01317-MD-PAS.
1/8. The Office of the U.S. Trade Representative (OUSTR) announced that it has elevated Chile from its Watch List to its Priority Watch List as a result of its out of cycle Special 301 Review. Section 182 of the Trade Act of 1974 requires the USTR to identify countries that deny adequate and effective protection of intellectual property rights or deny fair and equitable market access to U.S. persons who rely on intellectual property protection. The OUSTR stated in a release that "Chile remains unwilling to address the concerns of patent holders, who report that Chile has authorized the marketing of patent-infringing pharmaceutical products and has failed to provide an appropriate and effective mechanism through which patent holders may seek to prevent marketing in such cases". The OUSTR also stated that there are "increased rates of pirated sound recordings, software and films, as well as an expansion of internet-based piracy". It added that "Chile is overdue in enacting legislation to implement certain intellectual property-related obligations reflected in the U.S.-Chile Free Trade Agreement (FTA)."
1/8. The National Telecommunications and Information Administration (NTIA) released a presolicitation notice regarding its Digital-to-Analog Converter Box Coupon Program.
1/8. The Progress and Freedom Foundation (PFF) released a short paper titled "Power Gridlock". It discusses the "insatiable energy needs of technology firms and creating adequate power supplies for the new economy". The authors are Raymond Gifford and Adam Peters.
Go to News from January, 1-5, 2007.