From the United States
The Hon. Judge Randall Rader, Circuit Judge, US Court of Appeals for the Federal Circuit (Washington D.C.)
Donald R. Dunner, Name Partner, Finnegan, Henderson, Farabow, Garrett & Dunner LLP (Washington D.C.)
Tom Sanchez, Vice President, Patent Operations, Research in Motion (Irving)From Europe
The Hon. Judge Rian Kalden, Vice-President & Head of IP Division, District Court of The Hague
Prof. Jan Brinkhof, Former Presiding Judge, IP Chamber of the Court of Appeal (The Hague);
Partner, Brinkhof (Amsterdam)
Richard Vary, Head of European Patent Litigation, Nokia (London)
Jochen Pagenberg, Co-Founder & Senior Partner, Bardehle Pagenberg Dost Altenberg Geissler (Munich)
Michael Silverleaf QC, Head of Chambers, 11 South Square (London)
Prof. Adriano Vanzetti, Founding Partner, Studio Vanzetti e Associati (Milan)
Dr. Thomas Reimann, Senior Founding Partner, ROKH-IP (Düsseldorf)
Miquel Montañá, Head of IP, Clifford Chance (Barcelona)
Simon Dack, Partner, De Brauw Blackstone Westbroek (Amsterdam)
Benoît Strowel, Head of IP - Europe, Howrey LLP (Brussels)
Pierre Véron, Founding Partner, Véron & Associés Avocats (Paris)
Gordon Harris, Head of IP, Wragge & Co (London)
Bert Oosting, Partner & Head of IP, Lovells (Amsterdam)
Michael Burdon, Partner & Head of Commercial Group, Olswang LLP (London), and member of the PatLit blog teamFrom Asia
Pravin Anand, Managing Partner, Anand & Anand (Delhi)
Dr. Benjamin Bai, Partner, Jones Day (Shanghai)
Eiichiro Kubota, Partner, Lovells Horitsu Jimusho Gaikokuho Kyodo Jigyo (Tokyo)
Chun Yang, Partner, Kim & Chang (Seoul)
Tony Chen, Partner, Jones Day (Shanghai)
Sunday, 31 May 2009
Thursday, 28 May 2009
"To reduce the current huge backlog of pending nullification appeal cases (Nichtigkeitsberufungen), the German Federal Supreme Court is set to be changed from an instance fully revising factual and legal points to an instance competent substantially only for legal points. ... in future there will be only a single instance where facts and evidence can be presented, the Federal Patents Court (Bundespatentgericht). The court system will simply be cut back by eliminating the option of presenting fresh facts and evidence during appeal in patent nullification cases;
Improvements concerning the legal basis for implementation of electronic workflows in throughout the German Patent and Trade Mark Office, the Federal Patents Court as well as the Federal Supreme Court;
Cancellation of a current provision ... according to which any person who has brought an infringement action may bring a further action against the defendant on account of the same or a similar act on the basis of another patent only if, through no fault of his own, he was not in a position to assert that patent also in the earlier suit.
Broadening of the Opposition procedure in German Trade Mark Law; also non-registered elder rights shall be eligible as a basis for a Notice of Opposition ...".
The purpose of this post is twofold.
The PatLit team is gratified to discover that, despite the fact that this blog has been in existence for less than four months, it has made the shortlist of favoured patent law weblogs. The list contains a number of litigation-oriented blogs of which we were unaware, such as R. David Donoghue's lively Chicago IP Litigation blog.
Tuesday, 26 May 2009
• Incidence (volume, value etc.) of alleged breaches of IPRs.Time is of the essence, since SABIP wants results within 16 weeks, subject to contract. It is expected that bids will be in by the end of June. The project will conclude with a final report and a seminar presentation of the main findings to the SABIP Enforcement Research Project Working Group. SABIP will use evidence generated by this project to formulate policy recommendations to government. Inevitably this research will focus on the cost of litigation which, in the case of patents, is increasingly a subject of debate. Thus the specification states, citing the literature review of 2009,
• Incidence (volume, value etc.) of challenges to the validity of IPRs.
• Estimated value of losses due to infringements of IPRs.
• Enforcement options available (including ADR, streamlined procedures) and their use (volume, value etc.).
• Reasons for taking/not taking the various courses of action available.
• Satisfaction with the outcomes.
• Subsequent actions as a consequence of the enforcement outcome.
• The volume of disputes resolved through non-litigious means.
• Enforcement-related costs in the UK.
• Social, economic and business implications of IP enforcement procedures.
• Alternative solutions to the settlement of disputes e.g. licensing.
"[T]he available data seems to confirm that patent litigation in the UK is more expensive than patent litigation on the continent by a significant degree. The data however is relatively scant, relates only to patents and is based mostly on estimates from a small number of practitioners. No work has been done to ascertain whether costs have changed over recent times with the introduction of the Streamlined Procedure by the Patents Court".PatLit wishes whoever gets the contract the very best of luck in delivering what looks like quite a lot in a fairly short time. We all await SABIP's recommendations to the government with eager anticipation. In the meantime, does anyone have a handy list of recent and ongoing reviews that touch upon patent/IP litigation in the United Kingdom? There seems to be a lot on offer right now.
Litigation before the Comptroller of Patents here
Jackson Review of the cost of civil litigation here
Proposals for unified patent litigation in Europe here
The Burdon Plan here
Comments on the Burdon Plan here
Patent World's homepage is here.
Monday, 25 May 2009
Having taken into account the views of attorneys, solicitors, counsel and others as to how the tribunal might be improved, the IPO has now produced a Tribunal Practice Notice which sets out the changes in practice which the office proposes to introduce. These changes are due to come into effect from 1 July 2009 and may be applied to existing proceedings at the hearing officer’s discretion.
In the meantime, comments on the Tribunal Practice Notice are welcome, so as they are received by 3 June 2009. Comments should be addressed to Barney Wright, Room 1.B82, The Intellectual Property Office, Concept House, Cardiff Road, Newport, NP10 8QQ or emailed to email@example.com.
Friday, 15 May 2009
In short, the court held that no claim of Leo's patent, for the monohydrate form of calcipotriol, was invalid, thus allowing Leo's infringement claim and dismissing the counterclaim for revocation. That conclusion will doubtless be closely scrutinised elsewhere for its substantive merit, but PatLit just wants to pick out this bit for now. At para 5 the judge says:
"The parties are in dispute over the Patent elsewhere. The Dutch court, the District Court at the Hague (Judges Kalden, Van Peursem and Van Walderveen), has rejected Sandoz' invalidity attack in a judgment dated 11th February 2009. During the trial I was told that a German court had held the patent invalid on the basis of an obviousness attack different to the one pursued before me. I have not been provided with a copy of the German judgment. So, at the moment, it is one-all. If there were a supra-national court of the kind currently proposed, able to decide on disputes about the validity of patents for the whole of Europe, conflicting results of this kind between courts of first instance could be avoided".Comments of this nature may not please the litigants, whose resources are spread out across several jurisdictions in a single market. They may however serve to keep up the pressure for a workable resolution to this problem and to strengthen the resolve of those who are already convinced on the merits, so that patent litigation in Europe should not be allowed to slide down the agenda merely because it will be difficult to achieve.
Tuesday, 12 May 2009
"Going to law has become so expensive that ordinary people or small companies who lose a case face financial ruin ...That is a general picture, which makes no specific reference to intellectual property litigation in general or patent litigation in particular. Lord Justice Jackson does however give some thought to this sector. In particular,
Lawyers on huge success fees and claims companies that receive a share of awards are blamed for a surge in the cost of making a claim through the courts.
... The first in-depth inquiry into the costs of civil justice in a decade presents a damning picture of a system plagued by soaring costs that are out of all proportion to the damages people recoup.
The report by Lord Justice Jackson, the Court of Appeal judge, ... calls on ministers to reconsider their policy of charging increasingly high fees to people bringing claims so as to make the civil courts pay for themselves. It says: “We have arguably reached the position in this jurisdiction where the level of costs is so high that facing a full adverse costs order is likely to be a disaster for most ordinary citizens.”
... The 650-page report highlights the huge “success” fees charged by lawyers under no win, no fee deals as one factor in fuelling the costs explosion.
... Lord Justice Jackson also challenges the government’s policy of making the courts self-financing. His report says that court fees now account for about 80 per cent of the £650 million a year cost of running the civil and family courts in England and Wales. Such fees have risen “substantially” above the rate of inflation, ...
... The report notes that as well as “massive costs” now run up in some cases, there has been an “explosion” of litigation over these costs, a “costs war”, adding a further layer of costs.
The report, on which comments are invited by July 31, floats a series of possible reforms, including: fixed costs for many more cases than now, a benchmark or tariff of costs; contingency fees or a “contingency legal aid fund” paid for through a slice of each winning claimaint’s damages; and an overhaul of no win, no fee cases involving capping the “success” fees charged by lawyers.
... The 200-year old “loser pays” principle is aimed at deterring unmeritorious claimaints. But it does not apply to all disputes, the report notes: for instance in tribunals each side bears its own costs. The judge rules out complete abolition of the rule as not “realistic” but suggests that it could be scrapped or partially scrapped in some areas. Winning claimaints should recover their costs; but winning defendants might not always recover all of theirs.
... In 2007, about 75,000 cases were brought in the High Court of which 10 per cent were contested and so gave rise to significant costs. In the county courts about 2.1 million cases were brought of which five per cent were contested.
... Graham Huntley, partner in Lovells and past President of the London Solicitors Litigation Association, said: "Helpfully, and correctly, in my view, the report accepts the principle that there is no 'one size fits all' approach to costs, and that in higher value and complex litigation the topic cannot sensibly be addressed without looking at the procedural code and practice out of which flows the costs."
Liam O’Connell, partner with CMS Cameron McKenna, predicted the report would lead to curbs on no-win, no-fee deals. The report had also put insurance which claimaints take out to protect against costs “in the firing line”.
* he sets out the common problems associated with patent litigation (high costs, complexity, uncertainty) identified by various sources, including the Gowers Review and the Department of Constitutional Affairs Consultation Paper of April 2007;As to cost-capping, Jackson LJ sets out in detail the various authorities on cost-capping and the views of practitioners: these range from the opinion that there should be universal cost-capping to the view that costs should never be capped. His own analysis is as follows:
* he discusses recent proposals by Mr Justice Arnold that (i) the Patents County Court (PCC) should be reconstituted as a low-cost forum, distinguished from the Patents Court by having an upper financial limit; (ii) the PCC's procedures should be based primarily on written arguments; (iii) disclosure, experiments, written evidence and cross examination should only be allowed upon application and where a cost-benefit test is satisfied; (iv) there should be a system of scale costs. According to Arnold J the prospect of a party paying the other side's costs if it loses is of greater concern to SMEs than the prospect of recovering only limited costs if they win, and he puts forward compelling evidence to support this.
* he notes that the Chartered Institute of Patent Attorneys has proposed a scheme along the same lines as Arnold J's proposals, but involving the creation of a special "small claims track" for patent litigation.
* he states that he sees considerable force in these proposals and that provisionally his preference is to follow such a course.
* he notes that the IP Court Users' Committee has set up a working group to draft proposals and recommendations in respect of the PCC and is proceeding down a similar route. He would therefore like to take its proposals and recommendations into account in his final report, calling for it to provide a fully worked-out scheme including the draft of any Bill that as necessary.
*cost-capping cannot be used in isolation to control costs;So what happens next? Phase 2 of the Costs Review is a consultation period which ends on 31 July 2009. Jackson LJ will then draft a final report by the end of the year, containing proposals for reform.
* it may be used in the context of a wider exercise of costs management where appropriate;
* otherwise, it should be reserved for exceptional circumstances.
Thanks to Mo Efeyini for doing all the digging for this post.
Monday, 11 May 2009
"With Document 9549/09, on May 08, 2009, the Czech EU Presidency has addressed the EU Permanent Representatives Committee COREPER (Part 1) concerning the preparation of the EU Competitiveness Council of May 28 - 29, 2009 with regard to the project titled Enhancing the patent system in Europe concerning:
* Proposal for a Regulation of the Council on the Community patent, and
* Draft Agreement creating a Unified Patent Litigation System.
At its meeting on December 01, 2008, the EU Competitiveness Council had taken note of a progress report prepared by the French Presidency (Document 16006/08) and instructed the Working Party to continue work on the patent litigation system and the Community patent with a view to finding solutions and reaching agreement in both areas as soon as possible. In line with this Council mandate, the Czech Presidency has convened six Working Party meetings so far, with about equal time having been devoted to the unified patent litigation system and the Community patent [this level of intensity suggests a high level of political commitment to achieving the desired ends].
As regards the Unified Patent Litigation System, the Working Party had discussed the economic aspects of a unified and integrated patent litigation system on the basis of an expert study performed by Professor Dietmar Harhoff on behalf of the Commission. His report highlighted the economic benefits of the unified patent litigation system ... The ... cost saving exceeds likely operating costs of the future unified patent litigation system by more than five times [This study, at 84 pages, is quite impressive: its calculations also make special provision for the pharma sector].
In its Opinion of November 20, 2008 (Document 15487/08), the Council Legal Service had recommended that the ECJ be consulted on the compatibility of the envisaged Agreement on the European Union Patent Judiciary with the EC Treaty,... unfortunately this Document has been published only heavily redacted with all of its substantial parts being taken out. ... [the level of transparency at EU can be improved. Where documents are not available in whole or part, interested parties are left to draw their own conclusions]
Further Document 9549/9 reports that, to the call at the December 2008 Council by a number of Member States for the Commission to propose negotiating directives on a future international agreement establishing a patent litigation system, the Commission has adopted, on March 20, 2009, a Recommendation to the EU Council to authorise the EU Commission to open negotiations for the adoption of an Agreement creating a Unified Patent Litigation System (Document 7927/09). ... it appears that the Commission has published the underlying Document SEC (2009) 330 final on their own website. The EU Commission recommends Negotiation Directives as follows:
* The Agreement shall be concluded by the European Community, its Member States and other Contracting States of the European Patent Convention [while this is obviously the ideal scenario, it is difficult to imagine that a failure to include non-EU EPC contracting states would be a bar to the establishment of the new order].
* The Commission shall ensure that the court structure established in the framework of the Unified Patent Litigation System will have jurisdiction both in relation to European and Community patents [this is presumably non-controversial].
* The Commission shall ensure that the provisions laid down in the draft Agreement and any legal instrument forming part of the draft Agreement comply with the acquis communautaire. This requirement shall be subject to express derogations from the acquis required for the purpose of the creation of a specialist patent court.
* The Commission shall ascertain that the Court of Justice of the European Communities would rule on preliminary questions asked by the court structure established in the framework of the Unified Patent Litigation System on the interpretation of EC law and on the validity and interpretation of acts of the institutions of the Community [while the rulings on these preliminary questions will assist the Commission, it is believed that it will be open to any interested party to challenge them in respect of the validity and interpretations of those acts].
* The Commission shall ensure that the rules of the draft Agreement are consistent with the creation of a Community patent [a wise precaution; again, presumably non-contentious].
In other words, the desired Unified Patent Litigation System is attempted to cover also EPC countries which are not Member States to the EU Treaties like e.g. Turkey.On a personal note, Axel adds
On April 02, 2009, the EU Commission has presented the above-cited Recommendation to the Working Party, where a large majority of delegations expressed their wish to proceed rapidly with a consultation of the ECJ on the compatibility of the draft Agreement with the EC Treaty. Accordingly, the Czech EU Presidency has drawn up a working document outlining possible issues to be covered in a request for an Opinion under Article 300(6) EC on the compatibility of the draft Agreement with the EC Treaty (Document 9076/09). This Document, which also is not available to the general public, was then discussed on May 08, 2009. According to Document 9549/09, there appears to be a broad consensus among delegations to defer a detailed examination and adoption of the Commission's recommendation until the ECJ has given an opinion on the draft Agreement".
"the EU machinery of institutions in Brussels is worried that there could be some sort of legal problem when creating a Unified Patent Litigation System but they won't tell us where the bug might actually sit. If no papers leak out we'll have to wait until the ECJ has finshed deliberations. I don't have any idea how long this might take".The perception of Council and the Commission that there is a need to get things right is commendable, but the relative lack of information concerning the legal foundations of the Unified System is a matter for concern. The interested stake-holders here are not truck drivers, farm labourers or power workers whose adverse reaction to an unpopular proposal might involve demonstrations and the risk of harm to essential services within the community: they are skilled and educated lawyers and patent practitioners, whose experience and understanding might help resolve or clarify the issues that are being kept hidden from them. The patent litigation community should not have to resort to weblogs such as IP:JUR to gain an understanding of subjects which are kept from us by those whom we pay and empower to work on our behalf.
Friday, 8 May 2009
The Litigation Manual does not constitute rocket science for the typical UK patent litigator, but it has five things to commend it:
* It is free;
* It is easily accessed;
* It is written in unusually clear terms, since its readers do not consist exclusively of practising patent litigators;
* It contains a number of reference to decisions of Hearing Officers which, though not binding as precedents, may contain useful content and which are not generally reported in the official law reports;
* It enables anyone who is involved in litigation against the IPO to know what is driving the other side.
Thursday, 7 May 2009
From the foregoing it certainly appears that Australia has become a more patent enforcement-friendly forum. The question remains as to how this will affect Australia's innovation/manufacturing ecology. In gross statistical terms, even the largest patent-owning businesses own only a minor proportion of the total number of patents that are valid at any given time, so even patent owners must set the benefits of better conditions for the enforcement of patents against the risks and consequences of being at the receiving end of a patent infringement action on patent-friendly terrain. Since the patent system is there for the business sector, it will be good to see how it responds to the "stronger, quicker and cheaper" regime encapsulated by the article's title.
"A convergence of different recent developments is promising to make life easier for patentees in Australian patent litigation.
Traditionally, Australia has been a jurisdiction in which high quality patent decisions have been handed down by our Federal Court. However, these have been at a high legal cost if compared to the relatively small market size for most technologies in Australia.
Recent case law at our highest court level (High Court) is now making it much harder for Australian patents to be invalidated.
Our Federal Court has also issued patent litigation guidelines which are aimed specifically at streamlining the traditional litigation process so they (i) focus on the actual issues between the parties in the proceedings, (ii) restrict the scope and timing of discovery, (iii) require that an alleged infringer’s non infringement and validity case be explained very early on, and (iv) recast the extent of the role of experts.
It is believed that these measures if used effectively by the patent list judges will deliver more timely and cost efficient justice. ...
[After reviewing issues such as sufficiency and novelty, the authors then address innovation patents:]
* Innovation patents are 8 year patents containing up to 5 claims (all can be independent claims). They undergo a brief formalities review before being granted (usually in about 4-8 weeks). The patentee cannot sue third parties unless the innovation patent has been certified (post-grant substantive examination). That process may be completed in 2-3 months.
Typically these patents are used for inventions of lower merit or are divided out of applications for standard patents to enable quick enforcement action.
The validity requirements for an innovation patent are the same as those for a standard patent except for the obviousness requirement. The invention claimed in an innovation patent needs to only contain an "innovative step", and not the higher threshold of an "inventive step" (ie a scintilla). Our Federal Court has recently considered the phrase "innovative step" and indicated, in part, that an innovative step is one which is ‘more than insubstantial’ or ‘of substance’ but less than an inventive step. So an innovation patent is a valuable offensive enforcement right.
New patent litigation rules
The Federal Court of Australia has recently published a practice note for new patent proceedings The procedures aim to have the key issues identified very early in the proceeding, generally improve the facilitation of the trial process (speed to trial) and to reduce costs.
The practical effects of the practice note include:
* At the initial hearing, the parties are required to explain the issues, including whether infringement is disputed and why. This will put pressure on alleged infringers as they will have less time to plan their case than the patentee.
* A party seeking revocation must include details of its invalidity case when counter claiming, such as the specific passages of any prior publication relied upon for novelty purposes, and to give an outline of what common general knowledge is relied on for obviousness. This will mean that alleged infringers will need to specify their invalidity case much earlier than currently is the case.
* The use of experts will be more regulated. Before any directions are made for the filing of evidence, the Court needs to be told if any expert evidence will be required (and why), whether a single expert is appropriate for all or any part of the evidence, whether the experts should prepare a joint report and/or be questioned concurrently at trial.
*There will be significant limitations on discovery. The parties need to agree the scope of any discovery and whether evidence should precede discovery. Failing agreement, the court will mediate the questions or make orders. The limitations on discovery will potentially lead to significant savings in the cost of litigation.
* Before trial commences, the parties are expected to reduce to writing:
---amended pleadings containing only the matters in dispute;
---the issues still in dispute with respect to each ground of claimed invalidity; and
---a statement of non-controversial matters, such as publication dates and priority dates.
If the practice note is used within the intended spirit expressed by the judges, it should lead to patent litigation which is quicker and less expensive. Of course, an obstructive litigant will still be able to slow the process but we expect the judge to play a much more active role in preventing this.
From the above discussion, it is clear that:
* the current legal tests for validity and infringement are such that an infringer will find it more difficult to invalidate an Australian patent absent some knock out material;
* innovation patents provide a further mechanism to obtain a quick enforceable patent having a lower validity threshold of invention permitting earlier enforcement options; and patent litigation in Australia should be cheaper and ƒquicker under the new Federal Court guidelines".
Tuesday, 5 May 2009
"It's huge. We're all for a competitive free market, but we've invested in developing this technology and taken time to patent it. We're going to protect those patents. The court has ordered them to give us (advertising and sales) information so we can seek damages".James Van Horn, Presstek's general counsel, enthuses in much the same vein:
"This judgment should serve as a warning that the purchase and use of VIM products violate patent rights and come with the risk of significant liability. Our objective is to end the unlawful sale and use of the infringing VIM products and to recover damages from the manufacturers, distributors and, in some cases, the end-users of these products".Presstek does not however expect any financial windfall as a result of its win in the German court. According to Mark Nowotarski, president of Markets, Patents & Alliances LLC in Stamford:
"In Europe, you do it to send a message. The damages you collect are equal to the legal fees".Presstek is presumably no stranger to legal fees, having already successfully litigated the same patent against VIM in New Hampshire and with proceedings for patent and trade mark infringement currently progressing before the International Trade Commission.
Monday, 4 May 2009
This book provides a comprehensive but concise analysis of all the relevant principles and case-law surrounding anti-suit injunctions. Particular emphasis is given to addressing the many practical problems that are likely to confront a practitioner applying for or resisting an anti-suit injunction in urgent circumstances. There are also chapters on related topics that frequently occur in anti-suit cases, such as the scope of exclusive jurisdiction clauses. The main focus of the book is English law, but it also contains chapters summarising the relevant law in other common law jurisdictions such as the USA, Canada and Australia. Recent significant developments in the law relating to anti-suit injunctions created by the decision of the ECJ in Turner v Grovit have left many questions open on the effects of this case in Europe. This book is the first major treatment of anti-suit injunctions and examines in detail those effects, and evaluates the case law as it has developed".What all of this doesn't say is that this book, published in OUP's Private International Law series, is of some interest to patent litigators, with both patents per se and the Italian torpedo getting a special mention in the book's index. The book itself spans the gulf that divides practice and scholarship, commencing with a diligently-researched history, analysing modern case law and providing a selection of precedents too. Published at the end of last year, it is still pretty current too.
Bibliographic details: lxxv + 483 pages, hardback. ISBN13: 9780199287321; ISBN10: 0199287325. Published by Oxford University Press. Price: £95 (US$210). Web page here