EPO appeal board don't have to consider grounds in the order in which the appellant raises them

Picked up this week in the PLC IPIT & Communications weekly e-mail last Friday was news of a European Patent Office (EPO) Board of Appeal decision in Case T 0911/06 - 3.5.02 Hybrid generator apparatus/DA PONTE, 11 November 2009. This was a ruling to the effect that the EPO is not required to consider grounds of appeal in the order in which they are placed by an appellant.

This was an appeal against the refusal to uphold a patent as granted. In its grounds of appeal the appellant first proposed amendments to the patent and then requested a decision on the correctness of the refusal of the Opposition Division to maintain the patent as granted. While grounds of appeal are generally addressed in the order in which they are made, this might lead to a situation in which a "higher-ranking" request would be dealt with without having considered the decision concerning the status of the patent which was the subject of the appeal in the first place. Such an outcome, said the Board of Appeal, was both illogical and inconsistent with the spirit of the appeal procedure; it could also have the effect of depriving other parties of their rights regarding the original decision.

Patent marking, bounty hunting?

Writing on the Intellectual Property Watch weblog, Foley & Lardner special counsel Phillip Articola ("Forest Group Decision Has Led To Great Rise In Patent Marking Lawsuits") discusses the US decision in Forest Group, Inc. v Bon Tool Company et al., ___ F.3d ___ (December 28, 2009), in which the Court of Appeals for the Federal Circuit (CAFC) made it more viable for entities to sue patent owners for products that have been improperly marked with the term “patent” or any word or number connoting that the products are patented (e.g., patent number), since those entities can obtain one-half of the statutory penalty payable for making such a false patent marking.

The legislative provision which facilitates this bounty-hunting is 35 U.S.C. § 292, which imposes a civil penalty for falsely marking a product as patented. As Mr Articola explains, under § 292(a), false marking occurs when one intentionally marks or affixes or uses in advertising in connection with any unpatented article, the word “patent” or any word or number importing the same. This section also considers false marking to be when one uses “patent pending” or “patent applied for,” for the purpose of deceiving the public, when in fact no patent application has been filed or if a patent application has been filed but is no longer pending. A $500 penal is incurred in respect of each offence and, under § 292(b), “Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States”. The author concludes:

"Based on the Forest Group decision, § 292 will not only lead to a rise in patent marking lawsuits, but it will also likely be the case that patent marking suits will be included more frequently as a counterclaim in patent infringement lawsuits brought by patent owners against accused infringers. Of course, if the S.515 bill [US patent reform] in its current state eventually becomes law, this will certainly affect the number of such lawsuits. ...".

SMEs and patent litigation: are we asking the right questions?

The April 2010 issue of Sweet & Maxwell's monthly European Intellectual Property Review (EIPR) leads with an Opinion by Dr Sivaramjani Thambisetty (right), who lectures in IP law at the London School of Economics. Entitled "SMEs and Patent Litigation: Policy-Based Evidence Making?", this piece suggests that, in a number of recent policy documents, there is little evidence for the claims made that access to justice is denied. Dr Thambisetty identifies five assumptions concerning patent litigation and (Small and Medium-Sized Enterprises) SMEs that permeate the current policy debate in England and Wales:

1. More litigation would mean better enforcement and therefore better use of the patent system;

2. SMEs would patent more only if there was better enforcement;

3. SME access to cheaper patent litigation is in the public interest;

4. We can and must emulate the German example;

5. A streamlined procedure would attract a greater number of cases from within and from outside the United Kingdom.

The questions must be asked: are these the right assumptions upon which we should be proceeding, and what evidence can we attach to them?

Some of the answers, and indeed a good number of further questions, can be expected following the anticipated publication of the Study into current social, economic & business issues for small & medium-sized firms in the enforcement of Intellectual Property Rights in the UK. This study, commissioned by the Strategic Advisory Board for Intellectual Property Policy (SABIP)
from the Intellectual Property Institute, in partnership with Oxford University and expert practitioners, has sought to explore current social, economic and business issues for small- and medium-sized firms in the enforcement of intellectual property rights in the UK. The project involved surveying SMEs and legal professionals. If nothing else, it should give the most current and accurate account of what SMEs and micro-businesses think, how they make their IP litigation decisions and what they think of the results.

Violence not condoned -- but is Hitman a hit?

PatLit's curiosity was stirred by an invitation to visit Patent Hitman, a website which purports to assist actual or threatened defendants in patent litigation suits. According to the rubric:

"Alleged Infringement:
If you are currently being sued or being threatened of being sued (cease and desist letters, patent trolls) for patent infringement anywhere in the world, contact me. Chances are I can remedy this by providing prior art (patents, non-patent literature) to invalidate or weaken the corresponding patent and its claims potentially through reexamination at the USPTO. Depending on the urgency of your request, prior art can be located within days.

Provide me the troublesome patent(s) causing the lawsuit (or threat thereof) and I provide you the prior art. New search technology now exists which gives me powers not found at the USPTO which is capable of searching databases examiners never access.

Competitive Strategy:
Relevant prior art can also be located to weaken or invalidate your competitor's broad patent(s) which are limiting your company's strategy. It's possible and it's legal. You've just got to find the right person to locate the prior art.

All correspondence is strictly confidential.

Software patents. Business method patents. Biotechnology and pharmaceutical patents. Medical device patents. Etc.

PATENT HITMAN DOES NOT CONDONE VIOLENCE".

Patent Hitman appears to be a US-directed operation but, prior art being what it is, his services would presumably be relevant in any jurisdiction. The sort of services described are those which are generally undertaken by professional representatives acting on behalf of a defendant, though there is nothing to say that Patent Hitman is professionally qualified. While "All correspondence is strictly confidential", can it be assumed that communications between the threatened party and this service -- which are to be initiated via an email address or telephone contact number -- will enjoy privileged status?

If any readers of this blog have any information concerning Patent Hitman, can they please share it here?

Grounds of challenge narrow for Comptrollers' Opinions

In a ruling last week by Mr P. Thorpe on behalf of the Comptroller of Patents in the UK, Lundberg & Son VVS-Produckter AE v ZGP Ltd BL O/080/10, the request of Lundberg that a review be made of a non-binding infringement opinion was refused (such opinions may be obtained from the Comptroller under the Patents Act 1977, s.74B; though non-binding, they are relatively cheap to obtain and can be quite useful). The opinion had concluded that there was no infringement of Lundberg's patent by ZGP's Ecocamel shower head.

According to Lundberg, the opinion wrongly interpreted the manner in which ZGP's product worked. However, Mr Thorpe concluded that under the Patents Rules 2007, r.98(5)(b), the only ground on which a non-infringement opinion could be reviewed was if the decision was based on an incorrect interpretation of the patent and, as Mr Justice Kitchin had established in DLP [2007] EWHC 2669 (Pat) [noted here by the IPKat], the review could only consider whether the examiner had made an error of principle or his opinion was clearly wrong. Lundberg's request did not meet these requirements and must be dismissed -- though the company still had the option of getting a second, genuinely binding opinion, by suing for infringement.

Tactics and defences in OSS patent disputes

"(Mis-)Use of Patents in Open Source Software and Open Standards: An Evaluation of Tactics and Defences under Intellectual Property and Competition Law" is the title of an unpublished paper, by Nikolaos Volanis and Nikolaos Prentoulis, which was prepared for the European Summer School and Conference in Competition & Regulation (CRESSE) last year in Crete. Both authors are lawyers in private practice. According to the abstract,

"This paper aims to discuss the misappropriation of patents in the context of Open Source Software (OSS) and Open Standards (OS), from a perspective of Intellectual Property and Competition law. Through the illustration of various examples in recent case law, we first contemplate on the potential threat that patent misuse may have in the OSS industry, as well as the various responses of the OSS community to this threat. Furthermore, we examine alternative legal defences against opportunistic patent enforcement. Our focus is not placed on the defences aiming against the validity of the patent, but instead, we reflect on the legal bases pursuant to which the opportunistic behaviour of the patentee may lead to the unenforceability of his patents, or be considered as an anti-competitive behaviour. In this context, we stress that the network dynamics in the software and IT-related markets should play an important role when evaluating the abuse of patent rights or of dominant behaviour. From a competition policy perspective, this tension between opportunistic rent-seeking and the industry’s drive towards royalty-free software and standards requires a careful balancing, so as to not undermine the legitimate right of the patent holder to benefit from his investment in R&D".

The authors write of the FUD ('fear, uncertainty, doubt') factor which hovers over the OSS marketplace. Certainly, while the total volume of OSS patent-driven infringement litigation -- even in the United States -- is relatively slim, the threat of litigation is ever-present. Those companies with the biggest portfolios are simultaneously those best placed to sue and most worth suing.

You can read the paper in full here.

Great conference -- but what about the menu?

On 16 and 17 April 16 and 2010 the Centre for International Intellectual Property Studies (CEIPI) is organizing a conference at the European Parliament in Strasbourg, writes CEPIPI's Director General Christophe Geiger. The subject is "Towards a European Patent Court" and the event takes place under the high patronage of Mrs Catherine Trautmann, member of the European Parliament and former Minister for Culture and Communications. Says Christophe:

"As you know, there is now a rather broad consensus in favour of the creation of a common jurisdiction to settle disputes related to European patents and forthcoming Community patents. Indeed, the relevance of patent protection closely depends on the effectiveness of the jurisdictional system in charge of its implementation. On this matter the present system could be improved [a gentle understatement!].

This project is part of a resolutely federative process. However, it is still a delicate question and several controversial issues remain. With this in mind, we have gathered a panel of specialists – academics, practitioners and senior officials – to share their expertise and contribute to the success of this ambitious project.

For this reason, we are particularly honoured to inform you about this event and the gala dinner organised on the evening of the first day of the conference, on Friday 16 April at 8:00pm at the hotel restaurant du Parc in Obernai" (right).

If you'd like to attend, the provisional programme of the conference and the registration form are available on the CEIPI website here. Regretfully PatLit must report that the menu for the gala dinner has yet to be published.

Mobile phone litigation: who's to blame?

If a picture is worth a thousand words, we are all indebted to Nick Bilton for this marvellous depiction, on the New York Times' Technology BITS section, of the diagrammatic depiction (above) of the state of play in terms of litigation over mobile phones (thanks fellow-blogger and legal scholar Nikos Prentoulis, for this lead). In his article Nick explains:

"At first glance, it looks as if we’re in the middle of a patent lawsuit Super Bowl party. Nearly every large mobile phone player — with the exception of Microsoft, Palm and, so far, Google — has recently been involved in some sort of patent litigation regarding mobile technologies.

The graphic above, showing a sampling of these lawsuits, can be almost dizzying to look at and decipher. Within the last year, for example, Apple was sued by the Taiwanese company Elan Microelectronics over alleged infringement of touch-screen patents. Nokia went on a lawsuit spree, suing Apple, Samsung, LG and a variety of other mobile handset companies. Kodak sued several companies over patents related to the companies’ digital-imaging technology. And on Wednesday, Apple sued HTC, the Taiwanese handset maker.

Although patent litigation is not new in the technology world, these suits, specifically around mobile, point to the drastically changing mobile landscape. Lawyers I spoke with explained that mobile technology was still in its infancy and these large computing companies were trying to stake their claim to the future of computing ...".

Somewhat surprisingly, given the identities of the businesses above, the author -- citing Eric Von Hippel, a professor of technological innovation at M.I.T.’s Sloan School of Management -- suggests that the culture sharing of patent technology, which is generally the preferred outcome in developing technologies, has not been able to mature on account of the activities of patent trolls.

A matter of Opinion ...

U.S. Patent Opinions and Evaluations is the title of a most impressive book by David L. Fox (senior counsel, Fulbright & Jaworski), published late last year by Oxford University Press. According to the web-blurb,

"this book provides expert, up-to-date, practical advice and guidance on the four principal issues of patent evaluations and opinions, including: (1) claim construction and claim scope; (2) infringement; (3) validity; and (4) enforceability.

The book teaches how to apply these four principles to the many uses of patent opinions, including:

Evaluating and Opining on Third-Party Patents for:

--- Willful Infringement Risk Analyses
--- Invalidity and Noninfringement Investigations and Opinions for Avoidance of
Willful Infringement
--- Sarbanes-Oxley Infringement Risk Analyses and Reporting
--- Clearance (Freedom to Operate) Investigations and Opinions for New Products and Process
--- Design-Around Investigations and Determinations
--- Pre-Purchase and Pre-License Investigations of Patent Scope, Validity, and Enforceability
--- Pre-Filing Investigations for Ex Parte Reexamination and Other Post-Grant Challenges

Evaluating and Opining on One's Own Patent Rights for:

--- Pre-Filing Infringement, Validity, and Enforceability Investigations for Rule 11 Compliance
--- Evaluation of Patent Portfolio Strength and Scope
--- Pre-Filing Investigations for Reexamination and Reissue Filings
--- Pre-Sale and Pre-Licensing

Investigations of Patent Scope, Validity, and Enforceability".

Unlike many US publications which, one accepts are written specifically for the large and vibrant domestic US market, this one is so accessible to the non-US reader that one wonders if it wasn't written with the non-dom market in mind. Its charms are not confined to the regular text either: helpful Appendices give sample outlines of non-infringement and invalidity opinions, whether alone or combined with one another. Other topics covered and which the non-US reader must take care to appreciate include that graveyard of many a good intention, the waiver of attorney-client privilege.

Bibliographic details: ISBN13: 9780195367270, ISBN10: 0195367278. xliv + 1026 pages. Price:$295. Web page here.