Cautionary Tale: CAFC Rules That Delay Resulting From Reexamination Can Trigger Litigation Laches

Defendants accused of patent infringement sometimes raise the equitable doctrines of laches and estoppel as affirmative defenses. Although the defenses often appear to be linked, they are actually quite separate. As the Supreme Court explained last term, laches arises from an unreasonable delay in commencing suit that resulted in prejudice to the defendant, while equitable estoppel requires some action by the patentee, combined with reasonable reliance on that action by the defendant. See Petrella v. Metro-Goldwyn-Mayer, Inc., ___ U.S. ___, 134 S. Ct. 1962 (2014)

This week, the U.S. Court of Appeals for the Federal Circuit applied laches to bar a patentee’s infringement suit. SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 2013-1564 (Fed. Cir. Sept. 17, 2014). The patentee, SCA Hygiene Products, owns a patent for adult incontinence products. On October 31, 2003, it notified First Quality Baby Products, LLC that First Quality appeared to be infringing the patent. SCA and First Quality exchanged letters for eight months. Then SCA requested ex parte reexamination of the patent based on a reference identified by First Quality. SCA did not notify First Quality of the reexamination proceedings. The U.S. Patent and Trademark Office issued a reexam certificate confirming the original claims and adding additional claims on March 27, 2007. SCA immediately began preparing to sue, but did not actually file suit until August 2, 2010 – six years and nine months after SCA’s first letter. During the pendency of the reexam, First Quality made substantial investments relating to the accused products, including purchasing a division from another diaper manufacturer and spending $10 million to expand production.

First Quality raised both laches and estoppel as defenses to SCA’s action. The Federal Circuit reviewed the elements of laches, as laid out in A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc):

Laches is an equitable defense to patent infringement that may arise only when an accused infringer proves by a preponderance of evidence that a patentee (1) unreasonably and inexcusably delayed filing an infringement suit (2) to the material prejudice of the accused infringer. If these prerequisite elements are present, a court must then balance “all pertinent facts and equities,” including “the length of delay, the seriousness of prejudice, the reasonableness of excuses, and the defendant’s conduct or culpability” before granting relief. . . Delays exceeding six years give rise to a presumption that the delay is unreasonable, inexcusable, and prejudicial. Under this presumption, the burden of evidentiary production shifts from the accused infringer to the patentee. Both of these presumptions disappear if the patentee can identify evidence sufficient for a reasonable jury to conclude either that the delay was excusable or not unreasonable, or that it was not materially prejudicial. If the patentee meets this burden of production, the accused infringer must prove both elements of laches by a preponderance of evidence.

SCA, Slip op. at 5-6 (citations omitted).  

Since SCA’s delay in filing suit was more than six years, the delay was presumed to be unreasonable, inexcusable, and prejudicial. SCA attempted to rebut the presumption by pointing out that three years of the delay was due to the reexam, which was a public proceeding. The Federal Circuit was not impressed. First, it rejected SCA’s argument that the time spent in reexam should not count toward the six year presumption trigger. Second, it ruled that SCA’s overall conduct , including its delay in filing suit after the reexam, could not rebut the presumption:

Under such circumstances, SCA was not required to provide notice of the reexamination to First Quality. But even though SCA’s delay may have been excusable when viewed in isolation, we must examine whether SCA’s delay, viewed as a whole, was excusable. The district court found that “SCA admitted that it has continuously tracked First Quality’s activity since 2003 and has an entire department dedicated solely to competitive intelligence.” SCA then continued to evaluate First Quality’s products during the reexamination period. SCA was also represented by U.S. patent counsel when it sent letters to First Quality in 2003 and 2004 and during the reexamination proceedings between 2004 and 2007. No evidence suggests that SCA was unable to find counsel or reinitiate contact with First Quality shortly after the reexamination ended. Moreover, “personal lack of familiarity with the patent system . . . does not excuse . . . failure to file suit.” Given the circumstances, SCA should have been prepared to reassert its rights against First Quality shortly after the ’646 patent emerged from reexamination. [Cites] But SCA remained silent for more than three years after the patent came out of reexamination. Accordingly, SCA has failed to raise a genuine issue of material fact regarding the reasonability of its delay. Viewing all of the facts in the light most favorable to SCA, no reasonable fact-finder could conclude that SCA’s delay, viewed as a whole, was reasonable. 

Slip op. at 11-12. Since First Quality was able to establish prejudice due to the delay, laches barred SCA’s claim. 

One fascinating aspect of the SCA decision is the Federal Circuit’s treatment of SCA’s argument that the entire laches defense, as well as the Aukerman case on which it rests, was severely undermined by the Supreme Court last term in Petrella, a copyright case. In Petrella, the Supreme Court ruled 9-0 that although laches sometimes is adopted as a “gap filling” doctrine when a federal statute omits any limitations period, it has a limited role when Congress provides a statutory limitation period. “[L]aches is a defense developed by courts of equity; its principal application was, and remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitation.” 134 S. Ct. at 1973. The Court noted that laches’s role is “gap-filling, not legislation-overriding,” and the Court has “never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.” Id. at 1774-75. This view of laches is squarely contrary to the Federal Circuit’s reasoning in Aukerman. Since SCA's claim was timely under the Patent Act's limitations provision, 35 U.S.C. § 286, laches would appear to be unavailable as a defense.

Nonetheless, the Federal Circuit in SCA considered itself bound by Aukerman, wounded though it may be:

But Petrella notably left Aukerman intact. See 134 S. Ct. at 1974 n.15 (“We have not had occasion to review the Federal Circuit’s position.”). Because Aukerman may only be overruled by the Supreme Court or an en banc panel of this court, Aukerman remains controlling precedent.

Slip op. at 8. 

The Federal Circuit reversed the district court’s ruling that SCA’s conduct also created an estoppel, since there was no affirmative act, or failure to act, that First Quality could reasonably have relied upon.  The full decision is available HERE.

UPC Roadmap updated

Anglo-German law firm Taylor Wessing has just published an updated version of its Roadmap for the UPC is published. According to the rubric on the firm's website:

The Preparatory Committee of the Unified Patent Court has published a September 2014 update on the progress of its work towards the opening of the court. The key milestones in the update are:

The Committee will continue to work on the basis that "the Court will not be ready before the end of 2015", although it acknowledges that this is "ambitious";

Following a hearing of user organisations in November 2014 and then further review, the Committee expects there to be agreement on the Rules of Procedure in May 2015;

A draft schedule of court fees – fixed fee, and calculation method for value based fees in matters above the defined ceiling of the fixed fee – is being considered by the Finance Group. A second draft is expected to be discussed at the beginning of 2015;

A revised draft of the rules on the litigation certificate for patent attorneys is expected in early 2015;

The procurement process for the electronic filing and case management system of the UPC is expected to take place in autumn 2014. Development and testing of this system is expected to be finalised by the last quarter of 2015;

Work on the number and qualifications of local staff is due to be finalised in March 2015;

A provisional list of legally and technically qualified judges has been approved by the Preparatory Committee. The first training programmes for those judges deemed to require training will begin in December 2014. The Committee aims to appoint a sufficient number of part-time and full-time judges before the entry into operation of the UPC and to create a reserve list of judges who could be appointed should the case law increase more than expected.

The six-page document, which you can read here, has a handy list of 13 tasks completed by the Regulatory Committee over the past 12 months. Some of these tasks are not particularly onerous or significant, but there is a certain pleasure in placing little ticks next to activities that have been dealt with.

Our good friend and occasional contributor both to this blog and to the IPKat, Paul England, is the person to contact if you want any further information.

Hijacked book-launch? Or two for one ...

This blogger attended a very pleasant event at London's Oxford and Cambridge Club yesterday afternoon, this being the launch of Angela Fox's new tome, Intellectual Property Enterprise Court: Practice and Procedure (already noted here on PatLit and soon to be reviewed on the IPKat).  To his delight he was able to exchange some amicable words not only with the excellent Angela herself but also with that court's Enterprise Judge, Richard Hacon, plus a brace of more senior judges who creditably support numerous IP events in their own spare time and make themselves generally visible, demonstrating the fact that they are not remote from society but an active component of it.

To his surprise, though, this blogger discovered that Angela's was not the only new book on the block, as it were.  On display, indeed on the same table as Angela's book, were copies of the second edition European Unitary Patent and Unified Patent Court, an agreeably short softback by Angela's fellow Jenkins partner Hugh Dunlop that apparently had rolled off the presses earlier in the day.  This text is the second edition, a year later than its predecessor, and it includes a brief commentary on the structure, the legislation and the draft 16th revision of the Rules of Procedure of the Unified Court.  You can get a bit more information from this book, plus an order form and, if further temptation were needed, a review of the 2013 edition, from the website of publishers CIPA here.

Oktoberfest and Patented Technology

While Munich is pleasantly anticipating the forthcoming Oktoberfest season, the EPO has produced really fancy movie on patented technology at the Oktoberfest.

Have a look! This blogger really appreciates the efforts of the EPO to create positive headlines (other than ones involving mutant tomatoes) in relation to patents.

Enablement to USE drugs vs. enablement to PRODUCE drugs

The decision T 1616/09 deals with an application including both claims directed to pharmaceutical compositions and claims directed to the medical use of such compositions. The application had been rejected based on lack of enabling disclosure. The arguments of the examining division were based on an alleged lack of evidence in the application showing that the technical problem as stated in the application - synergistic improvement of the effectiveness of antineoplastic agents - had indeed been solved, especially in view of all possible anti-neoplastic agents encompassed in the claims.

The decision contains interesting notes on the level of disclosure required for the different categories of claims. Here are the headnotes:

For the purposes of Article 83 EPC, the level of disclosure in the application which is required for claims directed to pharmaceutical compositions or kits is not the same as that which is required for medical-use claims. For claims directed to pharmaceutical compositions or kits it is in principle sufficient that the application provides information which allows the skilled person to produce the composition or kit, and that there are no substantiated doubts that it could indeed be used in therapy. For second-medical-use claims on the other hand it is required not only that the composition itself is disclosed in an enabling way but also that its suitability for the claimed treatment is plausibly disclosed in the application (Reasons 6).

In the case of a claim directed to a pharmaceutical composition comprising two classes of compounds which have both already been used in therapy in the prior art, there is a priori no reason to doubt that such a pharmaceutical composition can be produced; no specific functional effect has to be demonstrated (Reasons 6.1.1 and 6.1.2).

In the case of second-medical-use claims, if the claimed therapeutic effect was already known to the skilled person at the priority date, it is not necessary to demonstrate it in the application (Reasons 6.2.2).

Broad Claims with narrow support – Vorrichtung zur Schwingungserzeugung

The decision 4 Ni 16/11 of the 4th senate of the Bundespatentgericht (BPatG) is worthwhile noting because it approaches the jurisdiction of the BPatG with a jurisdiction of the Technical Boards of Appeal of the EPO.

The patent subject to the nullity action had claimed a direct power transmission of power created by reaction torques (reactive power) using servo motors in a very general way. The claim was much broader than the specific solution described in the documents as a whole, which described a hydraulic solution without overlapping drive.

The Court finds that the generalized solution of the claim is no longer represented by the disclosed way of solving the problem and that, as a consequence, the patent protection extended beyond the contribution of the invention to the prior art. As a consequence, the requirement of the enabling disclosure is not met (§ 21, paragraph 1, number 2 and § 22, paragraph 1 PatG).

BPatG notes that the balancing assessment (wertende Betrachtung) should account for the facts that the electronic solution - which was covered by the claim but not disclosed in an enabling way - does not only require an autonomous technical development starting from the prior art but further that this embodiment has considerable economic importance and that the patentee had explicitly noted the existence of such an embodiment engrafting the application and claimed this alternative embodiment in a dependent claim without, however, being able to disclose a way to reproduce the embodiment.

After “Okklusionsvorrichtung” and “Diglycidverbindung”, this is a further example of the case where the abstract mentioning of possible embodiments without detailed support is detrimental rather than helpful for the scope of protection.
The full text (in German) can be found here, the headnote here.

Posted by. M. Thesen

Do people know that patents exist? A judge opines

OOO Abbott & Another v Design & Display Ltd & Another [2014] EWHC 2924 (IPEC) is a 4 September 2014 ruling of Judge Hacon in the Intellectual Property Enterprise Court, England and Wales, on the subject of calculation of an account of profits after a patent has been held infringed.

This blog post focuses on just one small issue arising in this case: the availability of the remedies of damages and an account of profits against an ostensibly innocent infringer.

1. Section 62(1) of the Patents Act 1977 states:

"In proceedings for infringement of a patent damages shall not be awarded, and no order shall be made for an account of profits, against a defendant or defender who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed; and a person shall not be taken to have been so aware or to have had reasonable grounds for so supposing by reason only of the application to a product of the word "patent" or "patented", or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent accompanied the word or words in question."

So, to what extent is a person said to be unaware, and of having no reasonable grounds for supposing, that an infringed patent existed?  Judge Hacon had this to say:

1. ... I am not satisfied that Design & Display has established the necessary lack of knowledge or reasonable grounds for supposing that the Patent existed. In cross-examination Mr Lloyd [managing director of Design & Display] said that he had only heard of patents because he was a local historian and he did not know whether his colleagues knew what a patent was. While it is easy for those whose working lives are concerned with patents to over-assume how much the general public know about patents, I think most individuals, such as Mr Lloyd and presumably his colleagues, will have heard of the concept of patents and will have on board the basic notion that you can get one to protect your idea. It seems to me unlikely that an interest in local history is needed to know that much".

Duly noted!

NPEs in the US: who's doing the suing?

Which non-practising entities (NPEs) are filing patent infringement suits in the United States? We have found a great table depicting new NPE litigation over the past eight months thanks to Article One Partners, whose crowd-sourcing of devastating prior art to blast unpopular patents off the face of the Earth looks must seem particularly attractive if one of these businesses comes knocking at your door:

This information comes from PatentFreedom, whose chairman and founder is Daniel McCurdy, whose patent risk management company RPX Corporation acquired it earlier this year.

Disclosure without disruption? Finding the least bad option

Vringo Infrastructure Inc v ZTE (UK) Ltd is a Patents Court, England and Wales, ruling of Mr Justice Birss which is unlikely to reach BAILII since it's a fairly small procedural matter -- but it's still interesting enough to note here, this blogger having spotted it on the Lawtel subscription-only service.

In short, Vringo sued ZTE for patent infringement [on which see Annsley Merelle Ward's earlier Katposts here, and here on whether the trial of patent infringement issues should take place ahead of the trial of FRAND issues, or vice versa]. In the proceedings noted here, Vringo applied for disclosure in its infringement claim. Vringo produced a mobile handset, the standard for which stated that it supported a certain multimedia handover technology. If this were so, argued Vringo, that meant that ZTE's product had to infringed its patent, which covered that technology. ZTE had provided a product description which stated that the relevant infrastructure and handsets did not in fact have that function.

According to Vringo, although that function was initially switched off, it would be open to ZTE to switch it on later and make the multimedia handover function available. ZTE however denied that its product could be reconfigured so as to support the function. Vringo then sought clarity as to how that was the case when it had been stated as a feature in ZTE's standard, seeking an order for disclosure on that point in order to support its claim that ZTE was committing a "secondary infringement" by supplying means of infringement under the Patents Act 1977 section 60(2) which states:

" ... a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom".

The disclosure application was made approximately six weeks before the date of the trial of the matter. This trial looked like being a big one, since it also involved three other infringement claims, not to mention the predictable challenge by ZTE to the validity of the patent.

On Tuesday Birss J agreed to let Vringo obtain disclosure. In his view:

* It was plain that, if the court acceded to Vringo's application, it would not be possible to try the multimedia handover technology point at the listed trial date. While the court could determine that Vringo had not properly pleaded its case and simply dismiss the point, that gave rise to a possible grave injustice if Vringo was correct and if there had been a properly pleaded case.

* Another option was to adjourn the trial altogether, including the other matters.

* On balance, the least bad option was to permit Vringo to amend its pleadings and to ensure that there was proper disclosure by ZTE so as to deal with this issue. That meant that the multimedia handover point could not be dealt with at the listed trial -- but all the other matters could still be determined.

* There was no need to hear ZTE's section 60(2) defence at the same time as the validity challenge.

Birss J added that an advantage of his chosen course of action was that the multimedia handover point would be left to one side until the trial was resolved: three different patent infringement claims in one trial was already quite enough.

Brits go Bolar, with some helpful guidelines

"Changes to the patents research exceptions" is the title of a media release issued by the UK Intellectual Property Office which has some cheery news for researchers who lose sleep over the prospect of their laboratory work leading them into the uncomfortable position of being defendants in patent infringement proceedings.   The good news reads thus:

Guidance on changes to patent law made by the Legislative Reform (Patents) Order 2014 which will come into force on 1 October 2014.

The Legislative Reform (Patents) Order 2014 No.1997 was approved by Parliament in July 2014 and will come into force on 1 October 2014. The Order clarifies that activities relating to medicinal product assessments are within scope of the experimental use exception (also known as the research exception).

The changes will allow companies to use a patented product, when carrying out medicinal product assessments, either to provide information to the regulatory authorities or for health technology assessment.

The changes meet a government commitment to ensure the IP system supports the life sciences sector.

Changes to patent law

The Legislative Reform (Patents) Order introduces changes to the Patents Act which clarifies that medicinal product assessments are exempt from patent infringement by virtue of the existing research exception.

Supporting information

Further information can be found in our guide.on changes to patents legislation made by the Legislative Reform (Patents) Order 2014.

The guide contains, inter alia, the following information:

Is work done to obtain approval for a drug abroad covered by the change? 
Yes. If the purpose of the work is medicinal product assessment, as defined in the Order, it is within scope of the amendment.  

Which activities are covered by the new exception?
Although the exact scope of the new exception to infringement will be a decision for the Courts [this is an important caveat], the following activities are considered to be in its scope:
• Activities carried out to provide data on new medicines to UK or non-UK regulatory
authorities.
• Activities carried out to provide data on new medicines to UK or non-UK bodies carrying out health technology assessments.
• Post approval studies to comply with UK or non-UK regulatory requirements.
• Activities carried out to amend a UK or non-UK authorisation for a medicine.
• Activities done to obtain a UK or non-UK authorisation for a new indication of an existing drug.
• Any tests or studies required by UK or non-UK regulatory bodies.
• Activities carried out for the purposes of obtaining full authorisation in the EU of a generic drug or biosimilar i.e. where the abridged procedure exempted by section 60(5)(i) of the Patents Act (the "Bolar exception" is not used).
• Activities related to health technology assessment of a generic or biosimilar product.
• Activities carried out to provide data for obtaining regulatory approval outside of the EU for a generic or biosimilar product.  

Does the amendment cover commercial use of a patented drug in a product?
The new provisions do not extend to commercial activities, such as sale, commercial supply, or manufacture in preparation for sale or supply. A licence, or other agreement, will be required from the patent holder before a product can be sold or supplied commercially. 

Does the amendment cover the use of a patented medicine as a comparator?
Yes. The use of a patented medicine as a comparator in a medicinal product assessment, as defined in the Order, is covered by the amendment. 

Are combination products covered by the amendment?
Medicinal product assessments on a combination are within the scope of the new provision. This includes instances where a patented drug is part of the combination.  

Can I supply a patented drug to a person for use in a medicinal product assessment without a licence from the patent owner? 
Sections 60(2) and (6) of the Patents Act 1977 have not been amended. The consent of the patent owner would be needed to supply a patented drug to a person for use in a medicinal product assessment.

Specialised IP court for China: what will it mean for patent litigation?

"China establishes specialised intellectual property courts" is the title of the news flash from Rouse, which reached this blogger as an email today but can also be read in full online here. It states, in relevant part:

" ... Following key indications in the last 12 months of the central government’s intention to establish a specialised IP Court, the National People’s Congress Standing Committee issued the draft Decision on Establishing Intellectual Property Rights Courts in Beijing, Shanghai, and Guangzhou (the Decision).

The Decision establishes the IP Courts as of 31 August 2014 [in other words, they are already presumably up and running in one form or other]. The Decision provides some useful insight into the proposed jurisdiction, staffing, and supervision of the IP Courts, which are intended to further the efficiency and consistency of China’s IP enforcement regime.

Jurisdiction

The IP Court sits within the judicial hierarchy in a position equivalent to the local Intermediate People’s Court. It will be a court of first instance with respect to ‘technically complex’ civil matters relating to patents, technical trade secrets, plant varieties, and semiconductor layout designs.

The Decision indicates that this jurisdiction will become cross-territorial within three years. In addition, the IP Court will also have original jurisdiction over administrative appeals and invalidation actions stemming from decisions issued by SIPO [State Intellectual Property Office] and the CTMO [China Trade Mark Office].

The IP Court will also serve as a court of appeal for trade mark and copyright matters originating in the basic level court in its municipality or province. Foreign parties typically initiate civil matters in the Intermediate People’s Court or higher, so it is likely that the IP Court will serve as a court of first instance in most cases where a trade mark or copyright matter involves a foreign party. Decisions of the IP Court will be reviewed by at least one appellate court, the first of which is the high court of the province or municipality where the IP Court is located. The three IP Courts will not be the ultimate appellate courts for IP matters, so their role in harmonising IP jurisprudence will be limited.

Staffing

The Standing Committee of the local People’s Congress will have the power to appoint and dismiss key positions within the IP Courts, including the President, Deputy President, Chief Judge, Judicial Officer, and Judicial Committee.

Supervision

The IP Courts will have a number of interested stakeholders. They will be supervised by the Supreme People’s Court (the SPC), the local High People’s Court, and the procuratorate, although no particular procuratorate is specified. In particular, the SPC will regulate the workload of the IP Courts, including the type and number of cases heard. The Standing Committee of the local People’s Congress in its supervisory role will have significant influence on the functioning of the IP Courts. The IP Courts will also receive operational guidance and trial supervision from the Higher People’s Court of the district where the IP Court is located. ...".

It's clear that, at this early stage, a good deal of detail remains to be hammered out. It will be good to know whether the court will do little more than enable judges to gain greater expertise through hearing a more concentrated diet of patent cases or whether it will evolve IP-specific rules for dealing with evidence, witnesses and so on. PatLit welcomes this development and awaits further news with eager interest.

The Federal Circuit closely follows the Supreme Court's recent ruling in Alice

Last Wednesday, the Court of Appeals for the Federal Circuit published its judgment in the case of buySAFE Inc. v Google Inc., discussing and applying the Supreme Court's recent ruling in Alice Corp. v CLS Bank. As noted by David in a previous post, in Alice the Supreme Court Justices 'ruled that claims directed to computer-implemented methods and related systems are not eligible for patenting under 35 U.S.C. § 101 unless they contain a non-conventional "inventive concept," and that a generic reference to a general purpose computer, or even "purely functional and generic" hardware components, does not make an otherwise ineligible invention patentable'.

Cloudy skies ahead!

The present case concerned the alleged infringement, by Google, of claims 1, 14, 39 and 44 of the US Patent No. 7,644,019, owned by buySAFE, which discloses a method and system designed to provide a guaranty service for online commercial transactions. In particular, independent claim 1 recites a method in which a computer program, running on a computer of a safe transaction service provider, (i) receives a request for a transaction performance guaranty service with respect to an online commercial transaction, (ii) processes such request in order to provide the guaranty service, and (iii) provides, via a computer network, the service, binding a transaction performance guaranty to the online commercial transaction involving the party that requested it. Dependent claim 14 narrows the method to a guaranty in the form of either a surety bond, a specialized bank guaranty, a specialized insurance policy, or a safe transaction guaranty. The parties agreed that the analysis of claims 1 and 14 would control the analysis of the two other claims asserted by buySAFE.

At first instance, ruling on Google's motion for judgment on the pleadings as to invalidity, the District Court for the District of Delaware had held that the asserted claims were ineligible for patent protection under 35 U.S.C. § 101. Discussing the applicability of the machine-or-transformation test (under this test, as articulated in In re Bilski, following the so-called patent-eligibility trilogy, a process claim is eligible for patent protection if (i) it is tied to a particular machine or apparatus, or (ii) it transforms a particular article into a different state or thing), the court had found that, as acknowledged by buySAFE itself, the method could potentially be performed entirely in the human mind, if the transaction was not online, and was thus ineligible for patent protection, despite its taking place online and involving use of a computer (citing CyberSource v Retail Decisions). In this perspective, the judge had observed that 'the '019 patent describes a well-known, and widely-understood concept - a third party guarantee of a sales transaction - and then applies that concept using conventional computer technology and the Internet', concluding that '[m]erely using a computer to perform more efficiently what could otherwise be accomplished manually does not confer patent-eligibility' (especially as the patent claims were not directed to any specific way of using such computer). Evaluating the abstract nature of the claims, the court had found that they were not directed to any specific device or system, nor limited to a concrete application or to any specific industry. Consequently, it had granted Google's motion for judgment on the pleadings, holding the ineligibility of the asserted claims.

On appeal, the Federal Circuit upheld the judgment of the district court, engaging in an interesting review of the interpretative paths taken by the Supreme Court in the recent Alice ruling and in the previous Mayo Collaborative Servs. v Prometheus Labs Inc. judgment. The panel observed that the Supreme Court has always interpreted § 101 as containing an important implicit exception, namely the exclusion of laws of nature, natural phenomena and abstract ideas from patent protection. It then retraced the steps taken by the Supreme Court Justices in their analysis of the three types of excluded matter, describing both the underying concern and the framework designed to evaluate patent-eligibility. The former is 'that patent law [should] not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity' (Alice, quoting Mayo), regardless of the narrowness of the law of nature, natural phenomenon or abstract idea involved. The latter excludes the patentability of claims that directly read on the three excluded matters, as well as of any claim that 'read[s] on a human-made physical thing ("machine, manufacture, or composition of matter") or a human-controlled series of physical acts ("process") [...] if (a) it is "directed to" matter in one of the three excluded categories and (b) "the additional elements" do not supply an "inventive concept" in the physical realm of things and acts - a "new and useful application" of the ineligible matter in the physical realm - that ensures that the patent is on something "significantly more than" the ineligible matter itself'.

The panel also reviewed the Supreme Court's approach to the category of abstract ideas, particularly relevant in the context of the case. In particular, it looked at two fundamental questions, respectively concerning the matter identified by the Supreme Court as falling within the mentioned category, and the cases in which the invocation of a computer in a claim is sufficient to supply an "inventive concept" that attracts patent protection:

As to the first question: The relevant Supreme Court cases are those which find an abstract idea in certain arrangements involving contractual relations, which are intangible entities. Bilski v. Kappos, 561 U.S. 593 (2010), involved a method of entering into contracts to hedge risk in commodity prices, and Alice involved methods and systems for "exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk,". More narrowly, the Court in both cases relied on the fact that the contractual relations at issue constituted "a fundamental economic practice long prevalent in our system of commerce." In simultaneously rejecting a general business method exception to patent eligibility and finding the hedging claims invalid, moreover, Bilski makes clear that the recognition that the formation or manipulation of economic relations may involve an abstract idea does not amount to creation of a business-method exception. [...] If enough extra is included in a claim, it passes muster under section 101 even if it amounts to a "business method."

As to the second question: The Court in Alice made clear that a claim directed to an abstract idea does not move into section 101 eligibility territory by "merely requir[ing] generic computer implementation." In so holding, the Court in Alice relied on Mayo for the proposition that "[s]imply appending conventional steps, specified at a high level of generality," was not "enough" to supply an "inventive concept.". Neither "attempting to limit the use of [the idea] to a particular technological environment" nor a "wholly generic computer implementation" is sufficient.

The Federal Circuit noted that the Supreme Court had found the invocation of the use of a computer in Alice's method claims, and of other components used to 'perform the basic calculation, storage, and transmission' tasks in the system claims, to be insufficient to qualify as an "inventive concept", having a mere functional, unspecified or generic function.

Applying this teaching to the case in hand, the panel concluded that '[t]he claims are squarely about creating a contractual relationship - a "transaction performance guaranty" - that is beyond question of ancient lineage'; as held at first instance, the narrowing of the idea to particular types of relationship, or to a particular technological environment, does not affect patent (in)eligibility. Similarly, the court clarified that 'the invocation of computers adds no inventive concept', as their function remains generic and unspecified, just as in Alice.

British Columbia gives go-ahead to consumers' class action for patent abuse

Via Toronto law firm Fleck & Chumak LLP's IP Address newsletter comes news of Low v Pfizer Canada Inc., 2014 BCSC 1469, a Supreme Court of British Columbia ruling which certified a class action on behalf of those who purchased Pfizer's erectile dysfunction drug between 2006 and its subsequent invalidation by the Supreme Court of Canada in 2012. The class seeks to pursue a claim bases on the allegation that Pfizer obtained a patent wrongfully, used it to keep generic competition off the market, and thereby inflated prices. The ground of invalidation was that Pfizer failed to disclose the invention adequately. The Viagra sildenafil patent was litigated in many jurisdictions, and with a variety of outcomes. As the newsletter notes:

In deciding the preliminary question of whether the class action against Pfizer could proceed at all, the Court considered three legal theories put forward by lawyers representing the consumers: (1) unlawful interference with economic relations, (2) waiver of tort and (3) unjust enrichment. The court applied the "plain and obvious" test: whether it was plain and obvious each cause of auction could not succeed.

The Court concluded that the causes of action in intentional interference with economic relations and unjust enrichment could proceed. The Court held that if Pfizer obtained the patent fraudulently or via an abuse of the patent procedures, then the elements of the test for unjust enrichment - including an absence of a juristic reason for the enrichment - would be met. As well, the Court held that the consumers would have standing to pursue the interference tort on the theory that Pfizer inflicted actionable injury on the generic competition to the detriment of the consumers.

The Court's decision is ground-breaking as it was previously believed that the federal patent legislation and accompanying regulations made up a "complete code" with respect to patent rights and remedies. With this decision, the court has opened up the possibility of a new, direct remedy available to consumers against patent owners.

It should be stressed that the permission given to the class to bring the action does not give an indication of the likelihood that it will succeed when it gets to trial.  The "plain and obvious" test looks rather like the test of whether there exists a triable issue in British case law.  Given the frequency with which commercially successful patents are subsequently invalidated for one reason or another, patent owners may be watching for the outcome of this action with more than a little interest,

Do non-practicing entities behave like patent trolls?

Stop Bad Patents!
A campaign by The Internet Association

A new study by Lauren Cohen, Umit G. Gurun and Scott Duke Kominers, entitled 'Patent Trolls: Evidence from Targeted Firms', found that non-practicing entities (NPEs) generally behave opportunistically, resembling the typical behavior of patent trolls. After a careful evaluation of the companies targeted by NPEs in litigation, the circumstances that surround NPE litigation, and the impact of litigation on the targeted companies' innovative activity, the researchers concluded that non-practicing entities target companies on the basis of ex ante expected profitability, preferring 'suits with high probability of payoff against firms with deep pockets'.

The researchers first described 'a parsimonious model of an innovative economy in which NPEs endogenously arise as patent trolls', due to the combination of a number of factors (heterogeneity in innovation quality across the agents, commercialization costs, imperfections in the legal system of IP enforcement). In such model, an agent that seeks to maximize profits acts on the basis of a comparison between the expected profitability of litigation, on one side, and of commercialization, on the other. Low-type innovators, therefore, commonly choose to litigate; as their expected profits from litigation depend upon the likelihood of obtaining compensation from the alleged infringer, and the extent of such compensation, the model predicts that 'targeted firms should be those cash-rich enough to fund payoffs and those most likely to settle or lose the case for any reason (even if they have less cash)'. The model implicitly discloses the risk that some meaningful inventions may not be brought to the market, where the expected profitability of litigation is higher than that of commercialization, or, conversely, where the probability of being sued acts as a deterrent.

To validate its theoretical model, the study primarily examined data on NPE behavior from PatentFreedom (and firm-related data from several other databases). The researchers found that non-practicing entities, as expected, commonly target companies with high levels of cash balances, or which had a recent positive cash shock (steep increase in cash holdings, compared to the previous fiscal year). A one standard-deviation increase in these indicators correlates, respectively, with an 11% and a 2% increase in the likelihood of being sued by an NPE. Considering that the unconditional probability of being sued by NPEs is 2.18%, such findings indicate a five-fold increase of the risk of NPE litigation in the case of higher cash levels, and a two-fold increase in the case of positive cash shocks. Non-practicing entities also target conglomerate firms regardless of the source of the cash levels (e.g. even where the cash revenues are not derived from business segments related to the infringing patents): the study found that 'profitability in unrelated businesses is almost as predictive of NPE infringement lawsuits as is profitability in the segment related to the allegedly infringing patent'.

As predicted by the theoretical model, NPEs prefer targeting companies against which they have a higher ex ante likelihood of winning (or, conversely, that have a higher ex ante propensity to settling). Thus, litigation blossoms if the targeted company is already engaged in a number of other litigation events unrelated to intellectual property (a one standard-deviation increase corresponds to a 1.67% increase in the likelihood of NPE litigation), but is deterred by the presence of a large legal team (0.5% decrease). The validated model combines the potential proceeds with the probability of success to determine the expected profitability of NPE litigation. Thus, expected profitability positively correlates with high cash levels, small legal teams, and preexisting litigation events.

Evaluating the impact of NPE litigation, the researchers found that the companies that lost against non-practicing entities in court experienced a subsequent significant reduction in R&D expenditure and inventive activity (in terms of post-litigation patenting activity and citations to their marginal post-litigation patents), concluding that 'it really is the NPE litigation that causes this decrease in innovation' in the United States. The small amount of the damages awarded in NPE litigation that flows back to end-inventors (estimated at 5%) does not affect this conclusion, as it constitutes an insufficient incentive for innovators to carry out inventive activity under the threat of NPE litigation.

The scholars validated these findings by comparing them to results obtained from a poll of practicing entities, and concluded that they 'are not just reflections of general characteristics of IP litigation'. The study, however, could not take into consideration informal patent assertions by NPEs (usually in the form of demand letters), due to the lack of reliable data on the phenomenon. While the researchers note that 'it is widely believed that informal patent assertions has been in decline recently, and is projected to decline further', a comparison between informal and formal (in court) assertions (as well as between successful and unsuccessful formal assertions - although undeniably subject to the uncertain attribution of settlements to either category) would help further distinguish between the different patterns of behavior that emerge even within the supposedly homogeneous group of non-practicing entities.

Intellectual Property Enterprise Court: Practice and Procedure -- now you can follow the Fox

Hot off the press is Intellectual Property Enterprise Court: Practice and Procedure by Angela Fox, a partner in the London-based IP firm of Jenkins in which she practises as a solicitor advocate and trade mark attorney.

According to the publishers:

Intellectual Property Enterprise Court: Practice and Procedure 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.

* The only title available that focuses on the Intellectual Property Enterprise Court [true, and this is a bit of an innovation, seeing as there wasn't exactly a glut of books on the market on this court's predecessor, the Patents County Court (PCC)]

* Discusses essential topics including pre-action matters, starting proceedings, case management, applications, evidence, experiments and disclosure, trial, appeals, costs and small claims [I should hope so too!]

* 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 [welcome, given the uncertainty about navigating the PCC --  and navigating between the PCC and its senior forum the Patents Court, under the old regime]

* 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

Since my copy of the book has only just arrived, I've not had a chance to feast on it yet, but I look forward to doing so. The law is stated to be current to April 2014 and the book opens with some kind words from Mr Justice Birss and Judge Hacon -- the two members of the judiciary who between them have shaped the IPEC and made it what it is today, a thoroughly modern, effective and relatively affordable forum for resolving small IP disputes, as well as for resolving bigger disputes in a smaller way.

Bibliographic data: hardback, xlv + 545 pages. ISBN: 9780414028685. Price £165 or £175, depending on whether the book has been published or not when you order it.  Book's web page here.

A view of US trends: the 2014 PwC Patent Litigation Study

PwC's 2014 Patent Litigation Study has now been published online. You can read it in full here. The study's main thrust is summarised in its subtitle: "As case volume leaps, damages continue general decline".  The study, which is limited to US litigation, is only 30 pages long, and isn't too challenging to read.

The report is not a snapshot of contemporary conditions but rather a reflection of trends, since it analyses a database of 1,985 US District Court cases handed down since 1995 and recorded as having reached final decisions at summary judgment and trial, as recorded in two Westlaw databases -- US District Court Cases and Combined Jury Verdicts and Settlements -- as well as in corresponding Public Access to Court Electronic Records (PACER) system records. It thus bridges the coming into force of the America Invents Act, a series of major rulings from the US Supreme Court and the emergence of the non-practising entity (NPE) as both a business model and a force in patent litigation (NPEs have a 25% success rate in US patent litigation as against 35% for businesses that work their own patents, though this figure obviously doesn't take account of the "successes" achieved by NPEs in securing cash settlements without the need to go to court).

Thanks are due to Chris Torrero for providing the link.

Public investment in higher education research: the Australian government wants patents, not publications!

A few days ago, the Australian Minister of Industry, Hon. Ian Macfarlane, suggested (here) that public investment in higher education research should be linked to the number of patents granted to each University. The Minister said: ‘[w]e might think about realigning block grants to commercial outcomes, and awarding them to universities not on the basis of how many papers they’ve had published, but actually on how many patents they’ve had registered’. He declared that a similar change ‘is not rocket science’, and would simply align Australia’s approach to that of several other countries.

An interesting piece by Kim Carr (shadow minister for higher education, research, innovation and industry), published on the Guardian on 8 August, observed that ‘[s]cience research grants awarded on the basis of patents is patently wrong’. Carr noted that the objective of research is not commercialization, but the pursuit of new knowledge, free of any predetermined instrumentalism. Such curiosity-driven process, he added, does not align well with patent law: ‘excellent research doesn’t necessarily end in a patent, and where it does, genuinely useful patents can take years – often decades – to be realised’. The article also mentioned other issues, including those related to cost, attribution, and opportunity (e.g. companies in fast-evolving technological sectors may choose to rely on other industrial and commercial strategies to gain a temporary competitive advantage, in the brief period of time between invention and technological obsolescence). Carr concluded that, if the Australian government is interested in fostering the national economy and creating jobs, it should focus on ‘providing incentives for researchers and their partners who are trying to commercialise inventions’, expanding the R&D Tax Incentive scheme, and creating an environment where research and commercialization can easily interact.

Aside from the arguments analysed by Carr, the proposal of the Australian Minister raises several other tangential issues. First of all, it is readily apparent that criteria linked to the number of patents granted would not apply across the whole field of academic research, thus causing potential disparities in the allocation of public financing in different research sectors. Even restricting the applicability of the patenting criteria to scientific research susceptible of commercialization (and I suspect that it would be difficult to agree on an appropriate definition and limitation, considering how the density of patentable innovation changes, sometimes even dramatically, in different scientific areas), the grant of a patent would not attest to the overall significance and scientific quality of the underlying research (nor would allow its evaluation from a cost/benefit perspective). As the assessment of novelty and inventiveness for patents has a mere lower threshold, which excludes the tailoring of the reward to different levels of such constitutive elements, scientific research would be subject to the same system, and to its well-known traps. Thus, rather than incentivizing high quality research, the Australian proposal could potentially deter similar efforts, promoting low quality research, which would achieve the best prospect of attracting public spending with the lowest initial investment. The alternative would again force the government, upon implementation of the new system, to look into methods of creating a hierarchy of the commercializable research outcomes, perpetuating the issue that it intended to resolve.

Another significant issue concerns the temporal mechanics of the system. Paradoxically, in light of the considerable amount of time that elapses between the filing of a patent application and the granting of a patent, the proposed change would provide a time-delayed reward that could prevent any researcher whose work has not yet produced commercializable results (e.g. young scholars, theoretical scientists, etc.) from having access to the financial means necessary to carry out the kind of research that Macfarlane wishes to encourage. In other words, the allocation of financial resources would not be tailored to the research potential of a researcher, nor to the results of its most recent work. Long-term research projects would be similarly penalized, as would be collective research efforts, or ambitious research projects whose outcome may generate just a few patents, albeit of greater significance.

A third range of questions is raised by the unique structure and fabric of the scientific research carried out by publicly funded bodies, which cannot be reduced to a mono-dimensional, commercially or industrially-driven venture. While a private company necessarily evaluates its research objectives in terms of potential returns in a short to medium term (with the exception of larger companies which may risk significant investments in a long term perspective), one of the essential roles of Universities and other bodies financed by public spending is to engage in an all around research that first ventures into unexplored territories, pursuing theoretical hypothesis or abstract ideas, and later spreads into a number of more selective, concrete ramifications that finally lead to the attainment of practical, commercializable results. It is generally only the terminal path of this multidimensional research that leads to the filing of patent applications, as the prior steps do not usually provide researchers with all the elements needed to fulfill the statutory requirements for patenting. Discouraging the pursuit of long-term, exploratory, visionary research would probably reduce the need for public spending, but would also greatly contribute to the decline of scientific research and innovation. The trade off may not be worth it.

There are several other aspects that would deserve a more in-depth discussion (e.g. peer-review or patent examination, linking public investments to the number of patent applications filed, the role of patent lawyers in the process, the effects of rejection, etc.) - you are welcome to join the debate and share your point of view, ideas or comments!

Denmark tidies up its Brussels commitment following patent court referendum vote

Under the Agreement between the European Union and the Kingdom of Denmark on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters of 13 August, Denmark has told the European Commission that it is to implement Regulation 542/2014 amending Regulation 1215/2012 as regards the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice (the "Brussels I Update Regulation").

Denmark originally opted out of the EU's Brussels I regime for recognition and enforcement of judgments but, following Denmark's recent referendum vote in favour of ratifying the Unified Patent Court Agreement, implementation of the Brussels I Update has become necessary.

Fancy bit of case management training: here's a course to pursue doggedly ...

The Chartered Institute of Patent Attorneys (CIPA) has informed PatLit that it is going to be repeating its residential course on making use of your rights in the Intellectual Property Enterprise Court (IPEC), England and Wales.  As CIPA explains:

Some patent attorney litigators
have a real "can"-do attitude

The course centres on a patent infringement & validity case study from pleadings, via the case management conference [this is the bit which this blogger gets very excited about, since case management is the best way of bringing cases on quickly and in a highly focused manner -- but only if handled properly] and culminating in a mock trial.  All participants will get hands on experience in the necessary skills to litigate in the IPEC with feedback from experts in the field (including PALs [patent attorney litigators, that is], solicitors and patent barristers).  Our tutors will also cover the practice and procedure necessary to handle such litigation. Judge Hacon has agreed to give a guest speech. The course consists of two parts: a preliminary day at CIPA on 2 September 2014 followed by a residential three days at Missenden Abbey [this sounds a bit like a religious retreat ...] from Thursday 18 to Saturday 20 September 2014.  The course is expensive intensive but so is litigation. It is aimed at those both with and without previous experience and provides an invaluable opportunity to acquire or sharpen one’s skills.

 Further details are available from the CIPA website here.

The cost of the course is £1,300 + VAT for CIPA members, inclusive of accommodation at Missenden Abbey, together with meals. If you're interested you'd better be quick: bookings close on Tuesday 19 August. To save a place just email CPD@cipa.org.uk

What business thinks about Europe's patent regime -- and how you can help

Dr Luke McDonagh (Lecturer in Law, Cardiff University) has been doing some valuable research into attitudes which patent owners are starting to develop with regard to the European Union's forthcoming Unified Patent Court (UPC) and Unitary Patent (UP) systems. However, his topic of investigation is by no means exhausted -- and you can help him.  Luke explains as follows:

Exploring Perspectives 

Readers of this weblog may be aware that on 10 July the UK Intellectual Property Office published a report, researched and authored by me,  entitled 'Exploring Perspectives of the Unified Patent Court and Unitary Patent Within the Business and Legal Communities'. The report is accessible here and there's an audio recording of the launch event, kindly hosted by CIPA (the Chartered Institute of Patent Attorneys), here.

The report discusses the views of 28 interviewees -- consisting of representatives from patentee companies, solicitors and patent attorneys -- concerning a range of issues concerning the new UPC/UP system, including the procedural and cost rules for the new court, and the all-important fees issues for the UP.

One particularly interesting issue that came up in the conversations I had with interviewees concerns the all important opt-in/opt-out question. It was noted that while businesses are concerned about the risks of opting-in their entire portfolios -- with the possibility of revocation across all UPC member states a clear worry in their minds -- virtually all businesses are considering opting-in at least some patents in order to test the new system and to avail themselves of centralised enforcement. In this respect, some patentees are considering opting-out their most valuable patents (to avoid the central revocation possibility), while others are focused on identifying and opting-in their 'strongest' patents (to take advantage of centralised enforcement). Few, however, seem willing at this stage to opt-in everything. For this reason, it is likely that for the early part of the UPC's life there will be a two-tier patent system, with cases involving UPs and opted-in European patents (EPs) heard at the UPC, and cases involving opted-out EPs heard in the national courts in line with the current fragmented system. The following question, therefore, arises: how will patents be perceived within this two-tier system? 

From the interview data I collected, it's clear that a small number of interviewees fear that an opted-out patent will be perceived as weak, and thus open to attack by competitors via the national route. By contrast, will an opted-in patent be automatically perceived as being strong i.e. of high quality, and thus less vulnerable?

It is not possible at this stage to answer these questions; yet, the fact that these concerns exist aptly illustrates that the coming into force of the UPC is likely to have (unintended) consequences that are difficult for businesses to predict -- or plan for -- at this stage. If any readers of this weblog have any insights to add on this issue, feel free to post comments to this blog, or alternatively to email me at mcdonaghl@cf.ac.uk.

Do please help Luke if you can!

Mined Regions - T 2231/09

When EP practitioners speak about inescapable traps, they usually refer to situations where the patentee in an opposition is faced with the problem that features added in the examination procedure extend beyond the subject-matter of the documents as originally filed (Art 123(2) EPC) but cannot be removed without extending the scope of protection (Art 123(3) EPC).

Very few people speak about a far more frequent sort of inescapable trap: the clarity-disclosure trap (sometimes appearing as enablement-disclosure trap as well). This unpleasant trap is set when somebody objects that an expression in a claim is unclear and the trap snaps if the pitiful applicant has no disclosure in the documents as originally filed which could serve as a clarifying limitation.

The decision T 2231/09 is an example of such a trap. The application relates to an image processing algorithm wherein a certain parameter is derived from a subset of pixels in a region (whereas the prior art used all the pixels in the region). Four years of search and examination at the EPO did not reveal any problems with the word "region". The application was then refused on the grounds that the subject-matter of the claims lacked novelty or did not involve an inventive step over the prior art.

The patentee appealed the decision, waited further four years and was then summoned to oral proceedings before the Technical Board of Appeal. The board raised objections on the clarity of the expressions "region" and "subset of pixels" for the first time in the annex to the summons. As a clarifying definition of these expression was missing in the documents as filed, all the attempts of the patentee to overcome this clarity problem were doomed to fail.

Apparently, the claim was considered sufficiently clear in the US, in JP and in China, where the patent was granted.

I cannot help to feel uncomfortable about this course of procedure and about the fact that a potentially valuable intellectual property right was completely lost as a consequence of a minute (if any) imprecision of the draftsman many years ago. The discretionary decision of the Board of Appeals whether or not the ordinary language expression "region" is clear is final and cannot be reversed by a higher instance It is therefore clearly problematic if it is introduced ex officio in the ex parte appeal procedure.

The full text of the decision can be accessed here

Basic Litigation course: room for patent attorneys too

Back in May of this year the IPKat weblog included this piece on the availability of Basic Litigation courses for newly qualified patent attorneys, writes Chris Ryan (IP Consultant to the Nottingham Law School at Nottingham Trent University). Chris continues:

"I and others posted some comments at the time; I mentioned the equivalent course run by the Nottingham Law School at Nottingham Trent University for Trade Mark Attorneys.  The Law School now finds that there are places free on a trade mark attorney’s Basic Litigation course in September, which it is able to offer to patent attorneys.  The course has been accredited by IPReg and would run from Monday 15 September until Friday 19 September 2014.    Anyone wishing to take advantage of this opportunity  (or two courses dedicated to patent attorney students and scheduled to take place in January and June next year) should follow this link".

This blogger, though acutely conscious of the difference between patent attorneys and trade mark attorneys -- and between patent litigation and trade mark litigation -- is comforted by the fact that the two species of IP practitioner can share the same Basic Litigation course in cheerful peace and harmony ...

Dealing with mumbo-jumbo

"Inventor says HDB infringed patent for clothes-drying rack" is the title of an article in Singapore's Today Online, here, which tells the story so far with regard to a patent infringement action brought by Mr Yiap Hang Boon, a 54-year-old inventor, against the Housing and Development Board (HDB) for infringing his patent for a clothes-drying rack. The HDB denies infringement and is seeking to revoke the patent, which was granted ten years ago.

This extract from the Today Online feature caught this blogger's eye:

Mr Yiap, who is not represented by a lawyer, appeared to have difficulty conveying his points yesterday.

Justice Chan Seng Onn interjected during his opening statement, saying he could not understand the latter’s “mumbo jumbo”. The judge also sought visuals for a clearer idea of the alleged infringements.

The invention itself, illustrated above, is of quite a low-tech nature. It is regrettable that the patentee should find it difficult to convey his points, and that the judge should have difficulties understanding it. With a specialist intellectual property court and firm pre-trial case management, these difficulties can be reduced, if not actually eliminated. As it is, the judge -- with degrees in Engineering and Industrial Engineering -- is at least in theory better equipped to hear low-tech infringement cases of this nature than are many others.

One new patent, one new court, one event -- and two venues

Managing Intellectual Property magazine, which this blogger founded back in the 1990s and for which he still has a soft spot, is running a conference, titled the "European Patent Reform Forum", in two European venues this autumn. On 9 September the Forum comes to Munich, Germany, and on 11 September it shifts to Paris, France. The significance of both venues, as well as a few words about the programme, can be found on my earlier Katpost here, together with details of registration discounts for readers of that weblog.

Apart from a session on the new unitary patent, the programme focuses almost entirely on patent litigation and dispute resolution issues. The sessions that address these topics are as follows:

The Unified Patent Court explained in detail 

• How to best navigate the new divisions and structures
• A practical guide to making best use of the courts and mitigating costs
• Understanding procedures: From starting proceedings through to trial
• Strategising in advance 

Split Proceedings and the UPC

• Transitional Period: Proceedings in National Court and in UPC
• Complaints by Licensees, Counterclaims for Revocation against Proprietor
• Bifurcation: Debunking the myths - Evaluating the possible pros and cons
• Appeals against Bifurcation under the 16th draft of the Rules of Procedure
• What should be learnt from current German practice?
• How judges will handle bifurcation 

The European Court of Justice and the Unified Patent Court 

• How the Spanish challenge affected plans for the new system
• When will/ won’t the ECJ be able to review issues of law pertaining to patents? 

Swiss focus 

• The new Swiss patent court – how does it work?
• The Swiss patent court and the UPC
• Challenges and opportunities for companies doing business in Switzerland 

Alternative IP strategies parallel to the UPC 

• Avoiding the down-sides of court litigation before the UPC: Alternative dispute resolution
and arbitration proceedings
• Best practices and strategies to utilize third party observations and opposition proceedings
before the EPO
• Interdependency and future interplay between existing legal mechanisms and the UPCsystem 

Litigation planning and forum shopping in the European Unified Patent Court

• Game over? Litigation planning and strategy under the new UPC
• Risks and opportunities of forum shopping in Europe 

Inter-industry debate - International litigation considerations

• How different countries regard the UPC
• The future of national legislation
• The unanswered questions about the UPC

This blogger is unable to attend, though he'd very much like to do so -- and while some of his friends are on the programmes (the cast of speakers is a little different, reflecting the fact that the host cities are in different countries, they are not in a position to do any real-time speed-blogging. Accordingly, if any of our readers are likely to be there and would like to write up a note on one or more of the sessions, for publication on this weblog, can they please email me at jjip@btinternet.com and let me know.