Tuesday, 15 July 2014

Precedent, the European Patent Office and a chance to discuss

"What is precedent and does the EPO have it?" is the title of a blogpost today by Darren Smyth on the IPKat weblog, here, with some input from fellow bloggers David Brophy and me. It raises questions relating to, among other things, the extent to which European Patent Office Board of Appeal and Enlarged Board of Appeal are governed, in theory and in reality, by the principle of being either bound or strongly influenced by their own decisions and those of other tribunals, as well as the extent to which national courts and patent-granting authorities are influenced or bound by them.

The IPKat's colleague Merpel concludes that:
" ... whether a decision is non-binding and non-influential, non-binding but influential, or binding, is a matter that has a substantial impact on players other than the relevant court or tribunal: it affects the decisions of parties whether to file, oppose, litigate and so on. It also affects the decisions of legislators as to whether a rule needs changing or not. If it is consistently applied with a consequence that is considered undesirable, legislative intervention is more likely than where bad decisions are distributed among good ones because the latter are not binding. Therefore, she points out, lack of consistent understanding and terminology between practitioners before the EPO is highly undesirable".
It would be good to hear from practitioners from outside the zone of Common Law countries as well as those who have grown up with the habit of precedent and who intuitively give advice on the assumption that it exists.

The place of patent drawings in IP litigation: a new article

"IP Litigation: What Place for Patent Drawings?" is the title of an article published online in the current (June 2014) issue of the WIPO Magazine. The author, Bernadette Marshall (NBG Drafting and Design, USA), opens by stating that
In today’s ever more complex technology landscape, the number of patent lawsuits is on the rise and patent litigation costs are skyrocketing. This is especially true in the United States where, in 2012, according to a recent study by PricewaterhouseCoopers over 5,000 patent lawsuits – an all-time record – were filed, each costing on average around US$2.8 million. Within this setting, companies should not underestimate the importance of using simple, clear and precise illustrations, not only to enhance their chances of obtaining a patent in the first place, but more importantly to defend their rights in the event of litigation.
You can read the article, which links to Bernadette's earlier WIPO Magazine article "Better Drawings Make a Better Patent", in full here.  Its principal relevance is to the United States, in respect of which the article refers to the US's design patents as well as the conventional sort, but the essential message is that, the more clearly an invention is described, the less room there is for uncertainty, ambiguity and mistake, and that an accurate depiction is likely to help achieve that end.

Monday, 14 July 2014

Secondary Legislation Implementing the Unified Patent Court: a consultation and workshops

The UK Intellectual Property Office (UKIPO) has organised a free webcast for this coming Wednesday 16 July at 4 pm for IP professionals on the following title "Consultation on Secondary Legislation Implementing the Unified Patent Court". 

You can get the details here. Follow-up workshops, run by the UKIPO, are being offered as follows:
  • London, 30 July at 2 pm, hosted by UKIPO
  • Edinburgh, 23 July at 2 pm, at the Law Society of Scotland
  • Newport, 28 July at 2 pm, again hosted by UKIPO
  • Manchester, 31 July at 2 pm, in the offices of Squire Patton Boggs LLP
Spaces are limited for the workshops, so please email UPCconsultation@ipo.gov.uk to reserve your place.

This blogger is conscious of the fact that, being based in the UK, he usually spots what is going on there but often misses parallel developments in other jurisdictions. He therefore wonders whether, and to what extent, the UPC's secondary legislation is under review in other UPC states. 

After Woolf comes Fox: a new book on patent litigation

I've just received the following information concerning a new title from publishers Sweet & Maxwell which is of obvious relevance to patent litigation in England and Wales. The author is Angela Fox, whose many qualifications and virtues are listed on her Jenkins web page here.  The book's subject matter is the functioning of an exciting experiment in civil litigation, very much in the spirit of the Woolf Reforms (here and here) of civil procedure rules.

According to the publishers:
"Intellectual Property Enterprise Court: Practice and Procedure is a unique standalone guide to practice and procedure before the Intellectual Property Enterprise Court, formerly the Patents County Court.

It provides a reference for all litigators and practitioners seeking to make the best use of the court’s unique streamlined procedures for the cost-effective resolution of intellectual property disputes involving UK or Community IP rights.

  • Discusses essential topics including pre-action matters, starting proceedings, case management, applications, evidence, experiments and disclosure, trial, appeals, costs and small claims 

  • Covers the jurisdiction of the Intellectual Property Enterprise Court, the types of proceedings it undertakes and representation before the court, offering practical guidance on navigating the system effectively 

  • Looks at the specialist rules of procedure introduced in 2010 and since that have broadened the Court’s appeal as a forum for resolving IP disputes in a streamlined and cost-effective way 

  • Also considers other dispute resolution mechanisms relevant to claims that may be brought before the IPEC, including domain names and company names, as well as ADR Includes example statements of case for a range of IP subject matter 

  • Draws on a range of sources to present a complete picture, including extracts from relevant source materials, court guides and the Civil Procedure Rules".
More information about this timely book can be obtained from its website here. It costs £165, so I'll wait till I can get hold of a review copy rather than rushing out to buy it myself. Meanwhile, if anyone has any perspectives or insights into it, can they please share them with us.

Thursday, 10 July 2014

Playing the game: amendments and double patenting

Koninklijke Philips Electronics NV v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat) is a decision of Mr Justice Birss, Patents Court for England and Wales, going back to 20 June of this year. It's a 452-paragraph judgment, produced pretty speedily by the judge following seven days of hearings just one month earlier.

In short, Philips sued Nintendo, alleging that the latter's Wii computer game console infringed three of its patents for computer implemented inventions. Nintendo counterclaimed for revocation and Philips then applied for conditional amendments to all three patents. The court had to decide on infringement and, inter alia, (i) whether the proposed amendments should be allowed or whether they would introduce added matter; (ii) whether one of the patents was obvious over the prior art, and (iii) whether the two other patents were valid as granted and whether there was an element of double patenting.

Birss J held that all three patents were invalid as granted but that the second and third, when amended, were both valid and infringed. He gave some helpful guidance with regard to double patenting that runs like this (at paragraphs 302 to 310):
  1. First, the idea at the heart of the double patenting objections is that ordinarily an applicant should not obtain two patents for the same thing filed at the same time. That is because an applicant ordinarily has no legitimate interest in doing this [if this is so, should it not then apply equally to other registered IP rights, for example trade marks, where the question of double protection is more complex on account of considerations such as genuine use?].
  1. Second, however "double patenting" is not a ground of revocation of a patent. It is not in s72 of the Act [Patents Act 1977, here] nor Art 138 EPC [European Patent Convention, here]. In the UK there are particular circumstances in which double patenting can lead to refusal (or revocation on the Comptroller's initiative). They are defined by statute (s18(5) and s73(2)).
  1. Third, the EPO does recognise a double patenting objection as a ground for refusing amendments to a divisional application. Two conditions have to be satisfied. The proposed amended divisional claim has to claim the same subject-matter as a parent and the applicant has to have no legitimate interesting in obtaining the divisional claim. Generally if the first condition is true the second is likely to follow but there can be cases, such as T 1423/07 in which a legitimate interest in obtaining the divisional claim can be shown to exist irrespective of the relationship between the scope and subject matter of the parent and divisional claims.
  1. Fourth, the EPO does recognise that if the independent claim of a divisional has the same scope as an independent claim in the parent then double patenting exists and an amendment which would give rise to that state of affairs will be refused. It is a test of substance and not merely form. It is not the settled jurisprudence of the EPO that double patenting exists merely because the scopes of the two claims overlap.
  1. Fifth, one needs to take care when comparing the different procedural circumstances in which this point can arise. The EPO only deals with one patent at a time and so an EPO case considering a divisional application will not contemplate making changes to the claims of the parent to overcome an objection. Although post-grant centralised amendments are now possible in the EPO, that is a fairly recent development. In the UK the point only arises in two very specific statutorily defined circumstances.
  1. Sixth, the judgment of the Court of Appeal in Marley's Roof Tile [1994] RPC 231 is directed to a point on statutory construction of s73(2) of the 1977 Act. Although both s73(2) and the objection applied by the EPO are referred to as "double patenting" and have the same underlying rationale, the Court of Appeal's judgment is not binding on the question arising in relation to the exercise of discretion under s75 of the Act.
  1. Seventh, a patentee may have a legitimate interest in obtaining a divisional patent with claims which are broader than but encompass the scope of a parent patent. During prosecution of the parent the examiner may object to a broad claim but indicate that a narrower claim would be accepted. The patentee may not agree but may recognise that to win the point will need many more months or even years of proceedings and possibly appeals. This is true in both the EPO and UKIPO. However in the meantime the patentee may want to obtain an early grant because a competitor has launched an infringing competitive product [This is where commercial considerations come into play ...]. The infringing product may be very close to the patentee's invention and within the narrow claim on offer. At an early stage in this new market for a new product the patentee's business may be particularly vulnerable and the loss caused by the infringement may well not be fully compensatable in damages under s69 of the 1977 Act (Art 67 EPC). Thus the patentee decides to take what is on offer and obtain grant of the parent patent with a narrow claim. Under s76 of the Act and Art 123(3) EPC post grant amendments are not permitted to widen the scope of monopoly so, in order not to give up scope to which the patentee is entitled, a divisional application is filed. If the divisional is granted with a broader scope than the parent then the patentee's stance has been entirely vindicated.
  1. In my judgment a patentee in the case I have described has a legitimate interest in obtaining the divisional in addition to the parent and it would be wrong to apply a double patenting objection based on overlapping scope such as in T307/07 or Marley's Roof Tile to prevent this. I also do not believe that a disclaimer or carve out amendment from the divisional to remove the scope of the parent claim should be required since such negative features can introduce uncertainty and make the claims hard to interpret.
  1. I find that as a matter of UK law a double patenting objection taken as a ground for refusing a post-grant amendment to a claim can be taken but should only be taken in the following circumstances:
(i) The two patents must have the same priority dates and be held by the same applicant (or its successor in title); 
(ii) The two claims must be for the same invention, that is to say they must be for the same subject matter and by this I mean they must have the same scope. The scope is considered as a matter of substance. Trivial differences in wording will not avoid the objection but if one claim covers embodiments which the other claim does not, then the objection does not arise. 
(iii) The two claims must be independent claims. This necessarily follows from the rejection of the point on overlapping scope. If two independent claims have different scope then there is no reason to object even if the patents contain dependent claims with the same scope. The point might arise later if an amendment is needed e.g. to deal with a validity attack but in the case the point can be taken then. 
(iv) If the objection arises in the Patents Court in which both patents are before the court then it can be cured by an amendment or amendments to either patent. 
(v) Even if the objection properly arises in the sense that two relevant claims have the same scope, if the patentee has a legitimate interest in maintaining both claims then the amendment should not be refused.
Do readers agree with this summary, or does it invite comment and qualification?

SDL wrongful threats case: counterfactual history reaps reward

Almost exactly a year ago, PatLit posted this item on SDL Hair Ltd v Next Row Ltd and others; Master Distributor Ltd v SDL Hair Ltd and others [2013] EWPCC 31, a Patents County Court, England and Wales, decision on, among other things, the making of unwarranted threats of to sue for patent infringement.

Now, in  which emanated last month from Mr Recorder Richard Meade QC. With so much going on, it got overlooked at the time -- but it's still worth noting. Now, in SDL Hair Ltd v Next Row Ltd & others [2014] EWHC 2084 (IPEC), an Intellectual Property Enterprise Court ruling of 3 July 2014, in a 98 paragraph judgment Judge Hacon addresses the question of quantum: how much damage was caused by the making of wrongful threats?  In this case, said the judge, the total loss was £40,500, a sum on which the defendant was required to pay a so-far-unspecified sum of interest.

The judge's decision incorporated his reconstruction of what might have been, had the wrongful threats not been made, by setting out what he termed a "counterfactual history" at paragraphs 54 to 72 of his judgment. While this counterfactual history is obviously highly fact-specific, the approach is one which might expect to see transferred to other situations in which ungrounded threats of patent infringement are made , thus guiding the innocent party's decision whether to sue for damages or not.

Tuesday, 8 July 2014

Summary judgments: when experts can be dispensed with

In Nampak Plastics Europe Ltd v Alpla UK Ltd [2014] EWHC 2196 (Pat), a 3 July 2014 Patents Court, England and Wales, decision of Mr Justice Birss, some useful light was cast on the availability of summary injunctive relief in low-tech patent litigation.

This action involved an application for summary judgment where Alpla was seeking a declaration that a redesigned bottle did not infringe Nampak's patent for a plastic milk bottle, after Nampak --a manufacturer of moulded plastic milk bottles -- had commenced infringement proceedings against it. Having produced its modified design, Alpla invoked the commercial need for certainty at an early stage and sought summary judgment on the declaration.

According to Birss J, while although summary judgment was unusual in patent cases because claim construction and infringement determination generally required expert evidence, where a patent owner seeks to resist summary judgment he must give specific details as to issues where expert evidence would be required, since general assertions would not suffice. In this case, this patent was sufficiently simple for there to be no call for expert evidence: its claims did not use terms of art.  Accordingly the court could proceed to construe the claims.  On the facts, those claims would not be infringed by the redesigned bottle, so summary judgment on the application for a declaration of non-infringement would be granted.

Appearance before a national office and subsequent determination of jurisdiction

Future New Developments Ltd v B & S Patente Und Marken GmbH [2014] EWHC 1874 (IPEC) is a 9 June 2014 decision of the England and Wales Intellectual Property Enterprise Court (Judge Hacon).

In brief, by Article 5 of Council Regulation 44/201 on the Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters 1968:
"A person domiciled in a Member State may, in another Member State, be sued: … (3) in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur".
Article 23(1) adds:
"If the parties, one or more of who is domiciled in a member state, have agreed that a court or the courts of a member state are to have jurisdiction to settle any disputes which have arisen or may arise in connection with a particular legal relationship, that court or those courts shall have jurisdiction. Such jurisdiction shall be exclusive unless the parties have agreed otherwise. Such an agreement conferring jurisdiction shall be either: (a) in writing or evidenced in writing; or (b) in a form which accords with practices which the parties have established between themselves..."
And, by Article 24:
"Apart from jurisdiction derived from other provisions of this regulation, a court of a member state before which a defendant enters an appearance shall have jurisdiction. This rule shall not apply where appearance was entered to contest jurisdiction, or where another court has exclusive jurisdiction by virtue of Article 22".
A German-domiciled company, B&S, was the registered proprietor of a European patent for energy-saving technology for use with fluorescent tubes. The application, filed in September 1999, was assigned to FND in October 2001. It appeared from a written declaration of March 2009 that FND had assigned the patent to B&S, this alleged assignment being registered by the United Kingdom Intellectual Property Office (UKIPO). Following a subsequent dispute before the UKIPO as to whether the patent had been assigned FND issued proceedings in the Intellectual Property Enterprise Court (IPEC), maintaining that the person who signed the declaration had no authority to do so.

At this point B&S challenged the jurisdiction of the courts of England and Wales on the basis that Article 22(4) of the Convention did not apply to a dispute about the ownership of registered intellectual property rights. Since it was domiciled in Germany, the dispute should be brought there. FND disagreed, arguing that Articles 5(3), 23(1)(b) and 24 of the Convention applied.

Judge Hacon ruled that the courts of England and Wales did indeed have jurisdiction.

* The words "matters relating to a tort, delict or quasi-delict" in Article 5(3) embraced all actions which sought to establish the liability of a defendant and which were not related to a contract. In this case FND was relying on the torts of misrepresentation or fraud.

* On the meaning of "liability" of a defendant, FND's claim was to the entitlement of the patent; it was not alleged, nor could it be alleged, that the patent was owned by B&S through any misrepresentation on the part of B&S itself.

* Article 23(1)(b) allowed for an agreement on jurisdiction to be validated even where there was an absence of writing to record the assent of the party to be bound, so long as there was evidence of a practice having been established between the parties.

* In this case the litigation was not based on any agreement between the litigating parties and it was likely that, before the UKIPO, B&S had expressly abandoned any challenge to the jurisdiction of the courts of England and Wales. That would have been a concession by B&S in the course of the proceedings, not an agreement between the parties by way of a course of conduct or, more exactly, an agreement in a form that accorded with practices which the parties had established between themselves. The submission that the court had jurisdiction by agreement under Article 23(1)(b) would therefore be dismissed.

* The Convention had however undoubtedly been engaged. On the evidence, the overall conduct of B&S before the UKIPO could only be interpreted as its willingness for the dispute with FND to be heard in England, initially by the UKIPO and subsequently by the Patents Court or IPEC. Because B&S had entered an appearance before a court of the UK within the meaning of Article 24 of the Convention, the IPEC had jurisdiction.

All of this leaves parties such as B&S in a difficult position when contemplating the issue of jurisdiction. They must measure their response to any legal claim not just from the point of view of what they say but how their actions are likely to be construed.

Friday, 27 June 2014

EPO not moved by "change of venue" plea

Have you ever wished that your oral proceedings before the European Patent Office were held somewhere more convenient? If so, take note of Case T 1142-1112 Polyethylene composition for injection molding with Improved stress crack/stiffness and impact resistance relationship/Borealis Technology Oy, a Technical Board of Appeal ruling of 8 April 2014 . According to the decision's Catchword:
The question of the venue of oral proceeding is a matter of organisational nature which belongs to the management of the Office pursuant to Art.10 (2) EPC.

When not acceding to a request for holding oral proceedings in Munich instead of The Hague, the Examining Division does not take a decision but only expresses the way the EPO is managed.

Consequently, that issue is not subject to appeal, nor can the Board refer a question on the venue of oral proceedings to the Enlarged Board of Appeal.
The applicant, Borealis, was based in Linz (in Austria, but a convenient train ride from Munich), and its attorney was based in Munich, which would have made Munich a more convenient place from its point of view. The EPO was literally not moved. At 2.3.1. the Board said:
"If the Examining Division may decide on the location of oral proceedings on a case by case basis, then it would be obliged to justify its decision to refuse a request for oral proceedings in Munich on the basis of the provisions of the EPC, of the Rules or of the Guidelines and in consideration of the reasons given by the applicant. The reasoning on this issue would thus be part of the contested decision which would therefore be subject to appeal".
This blogger thinks that Borealis and others can face a lot more travel in time to come, with the new unitary patent system and unified patent court ...

Tuesday, 24 June 2014

When it's too late to seek a stay ...

Kennametal Inc v Pramet Tools SRO and Associated Production Tools Ltd [2014] EWHC 1438 (Pat) was decided in the Patents Court, England and Wales, back at the beginning of April, but this blogger hasn't had time to deal with it earlier.

In short, Kennametal applied to stay an order revoking a patent pending the outcome of proceedings to amend it in the European Patent Office (EPO). The UK patent had been held invalid and Kennametal did not apply for permission to appeal that decision. However, Kennametal submitted that the court should follow the recent Court of Appeal decision in Samsung Electronics Co Ltd v Apple Retail UK Ltd [2014] EWCA Civ 250 [noted by the IPKat here], in which that court adjourned the hearing of an appeal against a UK judgment pending the conclusion of an amendment application that had been made to the European Patent Office (EPO). No, said Pramet: the reasoning in Apple did not apply, because in that case there had been concurrent proceedings in the UK and the EPO -- which was not the case here.

Henry Carr QC, sitting as Deputy judge, refused the application, finding that the situation in Apple was completely different. In this case, the UK revocation proceedings were dead and buries: there had been a final judgment and it was not the subject of an appeal. No attempt was made to seek these amendments in the course of those proceedings and it there was no justification for awaiting the uncertain outcome of the EPO proceedings before revoking the patent.

Monday, 23 June 2014

Priority and indirect infringement of second medical use claims: when the Sun shines in the Netherlands

Last month, at the International Trademark Association (INTA) Meeting in Hong Kong, this blogger had the pleasure of an encounter with Jaap J.E. Bremer and his colleague Marleen van den Horst (both of the Dutch firm of BarentsKrans N.V.). There, in that undoubtedly trade mark-friendly environment, we discussed a case that Jaap and Marleen were involved in before the Provisions Judge of the District Court, The Hague, regarding indirect infringement of a second medical use patent and the validity of priority claims (among other things). The decision in this action has since been handed down and Marleen and Jaap have kindly treated PatLit readers to the tale of its outcome. As Jaap explains:
"The case concerns Novartis’ patent EP 1 296 689 for a “Method of administering bisphosphonates”. It claims, inter alia, a dosage regime (2-10 mg once yearly) of the active substance zoledronic acid / zoledronate, administered intravenously for the treatment of osteoporosis. The Dutch litigation between Novartis and Sun Pharmaceuticals runs parallel to the case in England and Wales between Hospira & Generics UK (Mylan)/Novartis that was reported here on the IPKat weblog not too long ago. Marleen and I represented Sun.

Sun had obtained a marketing authorisation for generic zoledronate for the treatment of Paget’s disease and osteoporosis. The use of zoledronate for the treatment of Paget’s disease was not patent-protected. Sun had requested that the indication osteoporosis be removed ("carved out") from the Summary of Product Characteristics and patient leaflet of its product. In October 2013, Sun participated in a public tender by Dutch health insurance company VGZ, which it won. VGZ's tender conditions did not allow specification of the indication.

Novartis alleged that Sun's generic product (in)directly infringed EP 689. It started preliminary injunction proceedings against Sun, seeking an order (a) to stop it selling generic zoledronic acid to the extent that Sun knew or had reasonable grounds to suspect that its product would also be used to treat osteoporosis, and (b) to stop Sun participating in tenders, unless those tenders would allow designation of the product for Paget's disease only.

Sun disputed the allegations of (in)direct infringement and the orders requested by Novartis. In addition, Sun argued that EP 689 was invalid for lack of novelty over the Reid publication as Sun contested that Novartis was entitled to its priority claims. The PI judge of the District Court in The Hague held that the priority right was most likely invalid, since the priority document US 689 did not directly and unambiguously disclose the combination of intravenous use and the dosage range of "2 up to about 10 mg". The PI judge referred to the decision of the courts of England and Wales. The PI judge found that there was a serious, non-negligible chance that the patent would not survive invalidity proceedings on the merits (the validity test in Dutch preliminary injunction cases), rejected Novartis’ claims and ordered Novartis to pay Sun's costs The PI judge did not rule on the other grounds of invalidity, as presented by Sun, nor on the issue of (in)direct infringement".
Thanks to Marleen and Jaap, we also have an unofficial English translation of the Dutch decision of 12 May 2014. You can read it online here or download it here.