Judgments Regulation tidied up: 44/2001 is now 1215/2012

Council Regulation 44/2001 of 22 December 2000 on jurisdiction and the recog­nition and enforcement of judgments in civil and commercial matters has now been recast: prepare to welcome Regulation 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, the full text of which was published on the website of the Official Journal of the European Union last week.

To refresh your memories, while the Regulation unsurprisingly deals with many other areas than IP, there are some IP-specific bits that should not be ignored.  Recital 25 in the Preamble reads:

(25) The notion of provisional, including protective, measures should include, for example, protective orders aimed at obtaining information or preserving evidence as referred to in Articles 6 and 7 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights. It should not include measures which are not of a protective nature, such as measures ordering the hearing of a witness. This should be without prejudice to the application of Council Regulation (EC) No 1206/2001 of 28 May 2001 on cooperation between the courts of the Member States in the taking of evidence in civil or commercial matters.

So far as the substantive provisions of the Regulation are concerned, patents get a special mention in Article 24:

Exclusive jurisdiction 

Article 24 

Another piece of EU
law gets cleaned up 

The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: 

(1) in proceedings which have as their object rights in rem in immovable property or tenancies of immovable property, the courts of the Member State in which the property is situated. 

However, in proceedings which have as their object tenancies of immovable property concluded for temporary private use for a maximum period of six consecutive months, the courts of the Member State in which the defendant is domiciled shall also have jurisdiction, provided that the tenant is a natural person and that the landlord and the tenant are domiciled in the same Member State; 

(2) in proceedings which have as their object the validity of the constitution, the nullity or the dissolution of companies or other legal persons or associations of natural or legal persons, or the validity of the decisions of their organs, the courts of the Member State in which the company, legal person or association has its seat. In order to determine that seat, the court shall apply its rules of private international law; 

(3) in proceedings which have as their object the validity of entries in public registers, the courts of the Member State in which the register is kept; 

(4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place. 

Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State; 

(5) in proceedings concerned with the enforcement of judg­ments, the courts of the Member State in which the judgment has been or is to be enforced.

If the experience of patent litigators is anything like that of their trade mark brethren, the old, un-recast version of the Regulation will continue to be cited for years.

Daniel Alexander's review of the year for AIPPI

PatLit thanks Freshfields Bruckhaus Deringer trainee Mari Brennan for preparing the note, below, on Daniel Alexander QC's review of the year's patent law developments in England and Wales.  This review, hosted in the London office of Hogan Lovells, was organised by the UK cell of AIPPI.

AIPPI meeting, 18 December: Patent law developments in 2012 -- a brief overview

Tuesday evening saw Daniel Alexander QC present a round-up of 2012’s important developments in patent case-law to an audience of over 100 professional IP enthusiasts, aided (in Mr Alexander’s words) by an “unbelievably long and boring” handout.

1.      Substantive law developments 

Construction: Schenck Rotec GmbH v Universal Balancing Limited [2012] EWHC 1920 (Pat) saw HHJ Birss  adopt a contextual approach in the construction of “suitable for”, emphasising that interpretation in the context of a use claim will be different from interpretation in a method claim. the difference between “for” and “suitable for”.  This approach was commended by Mr Alexander, who commented that judges should not unduly disregard the context in which a patent operates and forget what the patent is about.  

Common general knowledge: BOS GmbH & Co KG v Cobra UK Automative Products Division Ltd [2012] EWPCC 38 and HTC Europe Co Ltd v Apple Inc [2012] EWHC 1789 (Pat) highlighted that a skilled person’s knowledge of a product’s existence is to be distinguished from a skilled person’s knowledge of the internal workings of the product.  The question is one of fact.  For example, if a product’s workings can be easily found out by a skilled person looking at a piece of prior art, then it may be considered to be common general knowledge. 

Examples of obviousness reversals: Apimed Medical Honey Ltd v Brightwake Ltd [2012] EWCA Civ demonstrates that decisions of obviousness may be reversed,  although appeals are not easy. 

Obvious to try/expectation of success: Mr Alexander suggested watching this space for future developments.  There is currently tension in judicial thinking.  

On one hand, there was general further elaboration of what level of expectation of success is required to render something “obvious to try”.  For example, in Regeneron Pharmaceuticals Inc v Genetech Inc [2012] EWHC 657 (Pat) it was explained that this means a “fair expectation of success”.  However, Lewison LJ in Medimmune Ltd v Novartis Pharmaceuticals UK Ltd & Ors [2012] EWCA Civ 1234 retreated from the “obvious to try” approach altogether, seemingly rejecting the doctrines and sub-doctrines that have developed around the statutory question.  He asserted that “too much elaboration” had been given to the simple statutory question of whether an invention was obvious as at the priority date.  

Lack of technical contribution: A sub-body of jurisprudence is developing out of Agrevo.  It is open to review as to whether this is appropriate.  The concept is extremely complicated as regards burden of proof etc. as demonstrated by Generics v Yeda Research and Development Co Ltd [2012] EWHC 1848 (Pat).  Mr Alexander recommended watching this space for further development… 

Excluded subject-matter: This is also an area that Mr Alexander considers ripe for further consideration.  The Court of Appeal in Symbian said that you have to identify the technical contribution made and decide if the contribution lies solely in excluded subject matter.  But what is the baseline for determining the contribution?  Floyd J’s opinion in HTC Europe Co Ltd v Apple Inc is that the question of determining the contribution should be same as the principles involved in determining the difference between prior art and the inventive concept for the purposes of obviousness, but the baseline remains unclear. 

Added matter: Liversidge v Owen Mumford [2012] EWPCC 33 emphasised the importance of not stretching disclosure away from its original context.  Third parties are entitled to legal security; they should be able to rely on the disclosure as presented on the face of things, and not worry about it any further than its original context. 

2. Supplementary Protection Certificates 

Meaning of Article 3(a) “protected by the patent”: There is confusion over whether a product is “specified in the patent” as per the principle laid down by the CJEU in Medeva.  The confusion was highlighted in Novartis Pharmaceuticals UK Ltd v Medimmune Ltd & Amor [2012] EWHC 181, Medeva BV v Comptroller General of Patent [2012] EWCA Civ 523 and Lilly & Company v Human Genome Sciences Inc [2012] EWHC 2290. 

The CJEU’s stance is that a principle has been laid down, and that it is not the Court’s place to micro-manage the application of the principle.  Mr Alexander commented that this approach will lead to differences in application in each of the Member State national courts, causing confusion contrary to the principle of harmonisation.  

Meaning of Article 3(c) – multiple applications based on the same patent: 2012 saw a divergence in opinion between the British and Dutch Patent Offices.  The UK IPO’s interpretion of the CJEU in Medeva is that SPCs can be granted in respect of multiple applications based on the same patent, where the SPCs relate to different products.  The Dutch approach prohibits the grant of more than one SPC per patent regardless of the number of products claimed in the basic patent.  A referral was therefore made in Actavis Group v Sanofi Pharma Bristol-Meyers Squibb SNC [2012] EWHC 2454 (Pat). 

2.      Procedural developments and Remedies 

Negative declarations: In Lilly & Company v Human genome Sciences Inc [2012] EWHC 2290, Lilly sought a declaration that once a market authorisation has been granted, a third party cannot obtain an SPC at all.  This was denied, but there is an inconsistent approach towards negative declarations, demonstrated for example, by Arnold J’s approach favouring negative declarations in Actavis v Eli Lilly.  The area is therefore ripe for CJEU consideration. 

Costs and costs capping: Syngenta Ltd & Ors v Chemsource Ltd [2012] EWHC 1507 (Pat) represented the first ever cost capping decision in the context of patent claims.  However, the Court was cautious, highlighting that in the wrong hands, such orders can be used to work injustice.  For example a party benefitting from a costs order may act so that the other party incurs large irrevocable costs and will be induced to settle on more attractive terms. 

Costs where the winner runs many losing points: The Court gave no order as to costs in MMI Research Ltd v Cellxion Ltd & Ors [2012] EWCA Civ 139, reasoning that a strict costs regime should make a party concentrate on his best arguments. 

Publicity of judgments:  Mr Alexander approved of HHR Birss QC’s judgment in BOS GmbH & Co KG v Cobra UK Automative Products Division [2012] EWPCC 44, in which he highlighted that the Court’s discretion as to whether to grant a remedy such as a declaration will be considered on the facts in every case, including the fact that both sides have the ability to publicise a judgment. 

3.       The Patents County Court 

Search and seizure and freezing orders: Suh & Anor v Ryu [2012] EWPCC 20 reiterated that Recorders cannot make such orders.

Patents Court judges: updated list for England and Wales

Anyone litigating patents in England and Wales may want to take a quick look at the recently-revised list of Patents Court judges below, culled from the Patents Court Guide. The list, updated earlier this month, now includes Mr Justice Roth.

In full, the roll-call runs like this:

Mann J (Clerk: Susan Woolley - tel 020 7947 7964; Susan.Woolley@hmcts.gsi.gov.uk)

Warren J (Clerk: Elizabeth Collum - tel 020 7947 7260; Elizabeth.Collum2@hmcts.gsi.gov.uk)

Morgan J (Clerk: Heather Watson - tel 020 7947 6419; Heather.Watson@hmcts.gsi.gov.uk)

Norris J (Clerk Emma Patrick - tel 020 7073 1728; Emma.Patrick@hmcts.gsi.gov.uk)

Floyd J [Judge in charge of the Patents Court] (Clerk: Alison Hall - tel 020 7073 1740; Alison.Hall@hmcts.gsi.gov.uk)

Arnold J (Clerk: Alison Lee - tel 020 7073 1789; Alison.Lee2@hmcts.gsi.gov.uk)

Roth J (Clerk: Chris Ellis - tel 020 7947 6589; Chris.Ellis@hmcts.gsi.gov.uk)

Vos J (Clerk: Robin Cliffe - tel 020 7947 7606; Robin.Cliffe@hmcts.gsi.gov.uk)

Some of the judges listed above are genuine members of the IP community, having practised at the patent bar and possessing something of a science background.  Some of the others have come to IP relatively late in life and, however good their judgments may be, have remained regrettably aloof from the wonderful world of IP.  This blogger hopes that eventually their reticence will evaporate.

California Court Denies Apple’s Request For Injunction Against Samsung Sales of Infringing Devices: Is The Standard Impossibly High?

On December 17, the U.S. District Court for the Northern District of California ruled on Apple’s motion for a permanent injunction blocking Samsung from selling 26 devices found by a jury to infringe Apple’s design and utility patents and to dilute Apple’s trade dress. Applying the Federal Circuit’s directive in a prior appeal at the preliminary injunction stage, see Apple, Inc.v. Samsung Electronics Co., 695 F.3d 1370 (Fed. Cir. 2012)("Apple II"), District Judge Lucy H. Koh denied the motion. A few key points in the ruling, which is available here:

First, although Apple established that Samsung smartphone sales had impacted Apple’s market share, Apple failed to establish a specific causal nexus between that competitive injury and the specific claims Samsung has been found to infringe. In the earlier appellate decision, the Federal Circuit stated that in order the establish irreparable harm, one of the equitable factors to be considered in awarding permanent injunctive relief under eBay Inc. v. MerchExchange, LLC, “a patentee must establish both of the following requirements: 1) that absent an injunction, it will suffer irreparable harm, and 2) that a sufficiently strong causal nexus relates the alleged harm to the alleged infringement.” 695 F.3d at 1374. Judge Koh ruled that Apple failed to meet the second requirement, because: 

But even if design was clearly a driving factor [in customer demand for Apple smartphone products], it would not establish the required nexus. The design of the phones includes elements of all three design patents, as well as a whole host of unprotectable, unpatented features. Apple makes no attempt to prove that any more specific element of the iPhone’s design, let alone one covered by one of Apple’s design patents, actually drives consumer demand. The Federal Circuit made clear in Apple II that customer demand for a general feature of the type covered by a patent was not sufficient; Apple must instead show that consumers buy the infringing product specifically because it is equipped with the  patented feature. 695 F.3d at 1376.

 Instead, Apple argues that its patents “cover the iPhone’s most prominent design elements,” Reply at 3, and therefore, if design drives demand, so do the patents. Even if the Court accepted as true Apple’s contention that the patents cover the most central design features, it would not establish that any specific patented design is an important driver of consumer demand.

Order, at 8-9. The court also ruled that Apple failed to establish that Samsung’s infringement of its utility patents caused an irreparable competitive injury.

Second, the court noted that Apple had previously licensed design patents, utility patents, and trade dress that collectively formed the iPhone “user experience,” and that practice weighed against granting injunctive relief. Thus, it concluded, “Apple does appear willing, at times, to use its patents, including several of the patents at issue here, and even its trade dress, as tools in forging relationships and generating income. Further, Apple has agreed to licenses with companies with whom it competes, including Samsung.” Order, at 17.

Third, the court noted that the standard for an injunction after eBay may be a very difficult one for a patentee to meet when a patent covers only isolated components of a complex product:

The phones at issue in this case contain a broad range of features, only a small fraction of which are covered by Apple’s patents. Though Apple does have some interest in retaining certain features as exclusive to Apple, it does not follow that entire products must be forever banned from the market because they incorporate, among their myriad features, a few narrow protected functions. Especially given the lack of causal nexus, the fact that none of the patented features is core to the functionality of the accused products makes an injunction particularly inappropriate here.

 Order, at 22.

Essentially, Judge Koh’s reasoning requires a patentee to present specific evidence establishing that a particular patented feature is the determining factor in customer purchasing decisions. Given the incredible complexity of features and functionality in many modern products, and the spectrum of different customer preferences and values affecting the purchasing process, what sort of evidence could ever meet the court’s causal nexus requirement? 

Equality of Arms

In the case 4 Ni 43/10 (EP) "Bearbeitungsmaschine", the fourth senate of the Bundespatentgericht has rejected a new document as being late filed by applying the new rules for the German nullity procedure briefly discussed here.

While this alone may be already considered interesting for poeple used to the traditionally generous attitude of the Bundespatentgericht with regard to late filing, the even more intersting part of the decision is the senate's argument why the excuse presented by the plaintiff was not sufficient.

Our caselaw on novelty and inventiveness is based on the hypothesis that the person skilled in the art is aware of or is at least able to easily find every piece of prior art in his technical field. Some of us may have had doubts whether this assumption reflects the actual knowledge of a real-life engineer but a defence based on the argument that the inventor was unfortunately not aware of the most relevant piece of prior art is clearly doomed to failure in most jurisdictions.

In the case at issue, the plaitiff had argued that the document submitted lately was found only by chance and only very late despite of having taken all due care. The Bundespatentgericht rejected this excuse by referring to the principle of equality of arms ("Waffengleichheit"). It would be unfair to support an attack on the above hypothesis that the skilled person would have found the document easily while at the same time using problems to find the document to support the plaintiff's case.

The full text decision can be found here and the headnote here.

Cough and Stuffy Nose in Karlsruhe

Traditional analysis tools - not fancy enough for patent folks?

Given that November in Karlsruhe is very much alike November in the rest of Europe, our readers might find it not very surprising that the Xth senate of the BGH was very much interested in cough syrup the last days.

Cough syrup smells like eucalyptus and citrus fruits ever since this blogger can remember. It is therefore more surprising by far that the EPO has granted a patent in 2004 with a claim 1 reading: “A pharmaceutical composition for administration in the form of hard or soft gelatine capsule comprising eucalyptus oil and orange oil.”

Gelomyrtol, a product that smells like eucalyptus and orange oil, was available in the form of capsules long before the filing date of the application. Was its composition available to the public?

Well, a simple-minded ordinary man would say if it smells like eucalyptus and orange oil then it contains eucalyptus oil and orange oil. What else?

The official pharmaceutical description (“Rote Liste”) mentions that Gelomyrtol is a plant extract containing inter alia substances called d-Limonen (which makes up 90% of orange oil), a-Pinen and 1,8-Cineol (the main ingredients of eucalyptus oil).

In the nullity proceedings, the patentee argued that despite of the suspicious scent and the revealing chemically pure ingredients, the mix of essential oils could have been synthesized otherwise than by mixing eucalyptus oil and orange oil such that the composition was not directly and unambiguously derivable for the skilled person (in particular by a skilled person with a stuffy nose, I would like to add).

The senate did not follow this argument – but did not rely on their noses either. Actually the judges did not even mention the fragrance but found that the indications in the pharmaceutical description were sufficient for the skilled person to establish a manageable number of hypotheses on the potential composition, one of which could then be confirmed with the available analysis tools. These tools, again, did not include the nose but rather gas chromatography and mass spectroscopy.

The full decision (XZR 120/11 of October 23, 2012 “Gelomyrtol”) in German language can be accessed here.

Suing the crowd-source funder

Yesterday evening the IPKat picked up a story from Maxine Horn (Creative Barcodes) and Crowdsourcing.org on the patent infringement suit brought by 3D Systems against not just its three-dimensional printing rival Form Labs but also against crowd-source financier Kickstarter. The thrust of Maxine's case is that, since Kickstarter is effectively neutral to the alleged infringing acts committed by Form Labs -- it plays no part in the running of that company and derives no income from its infringing or non-infringing trade -- it should not be vulnerable to patent infringement litigation.

The IPKat is hosting a side bar poll on its home page which expires next Wednesday, asking whether ventures such as Kickstarter should be completely, partly or not at all exposed to the risks and expense of patent infringement litigation. If PatLit readers would like to participate, or just add a comment concerning their own thoughts or experiences, they should feel free to do so.

New Matter in 2nd Instance Nullity Proceedings - BGH "Fahrzeugwechselstromgenerator"

In an attempt to modernize the nullity procedure at the Bundespatentgericht, the German Patent Act has been reformed with effect as of October 2009. New features include the issuance of a preliminary opinion of the Bundespatentgericht (§ 81(1) PatG) identifying the points considered by the senate to be of particular relevance for the trial as well as improved possibilities of the BGH acting as the 2^nd instance to reject new matter as late-filed (§ 117 PatG).

The decision “Fahrzeugwechselstromgenerator” (decicion of August 28, 2012, X ZR 99/11) was, according to this blogger’s knowledge, the first one to interpret these new rules.

In the case at issue, a supplementary expert opinion was submitted in the 2^nd instance. The supplementary expert opinion sought to clarify and concretize issues addressed in an earlier expert opinion of the same (privately appointed) expert submitted in the 1^st instance at the Bundespatentgericht. The BGH found that clarifications, explanations and concretizations of matter discussed in the 1^st instance are not considered as new matter.

Further, the plaintiff had brought forward a new novelty/inventiveness attack which was, however, based on documents which had already been in the 1^st instance procedure. The arguments were considered new matter.

According to the now applicable German Code of Civil Procedure (ZPO), new matter may be admitted in the 2^nd instance inter alia if the failure to bring the matter forward in the 1^st instance is not the result of a negligence of the submitting party.

In the case at issue, the Bundespatentgericht had expressed its preliminary opinion that the main attack against the validity brought forward in the 1^st instance was convincing and finally decided to basically follow the plaintiff’s request. The BGH found that, given that the main attack was successful in the 1^st instance, there had been no requirement for the plaintiff to submit auxiliary lines of argument. As a consequence, the failure to submit the new arguments in the 1^st instance was not negligent and the new matter was allowable.

The BGH and the Bundespatentgericht clearly want to avoid excessively voluminous files resulting from parties submitting each and every possible argument even on the most remote aspects of the case. However, the allowability of the new argument could have been more problematic if e.g. the senate of the Bundespatengericht had changed its mind during the oral proceedings.

The lesson to learn is that a party might keep some trump cards up the sleeve when it is on the winning road. It is, however, better to play out everything you have if the preliminary opinion of the Bundespatentgericht is not favorable four your party at the latest.

Actavis: England and Wales High Court Goes Cross-Border

Leading European patent litigator Richard Ebbink (Brinkhof) has penned the following comment on last week's Patent Court decision of Mr Justice Arnold in Actavis Group HF v Eli Lilly & Co [2012] EWHC 3316 (Pat):

Actavis: England and Wales High Court Goes Cross-Border 

Last year the United Kingdom's Supreme Court in a copyright case held that there was no doubt that the modern trend was in favour of the enforcement of foreign IP rights and that there are no issues of policy which militate against it --  nor is there any objection in principle. This could be different, the Supreme Court considered, where issues of validity are engaged (see Lucasfilm v Ainsworth, 27 July 2011, paras 108 and 109). Last week in Actavis v Lilly the High Court of England & Wales in a patent case held that it had jurisdiction to decide on a declaration of non-infringement not only regarding the GB part, but also regarding the French, the German, the Italian, and the Spanish part of the European patent at issue.

In Actavis v Lilly there were no issues of invalidity engaged because the plaintiff, Actavis, didn’t raise them and the defendant Eli Lilly didn’t either (they were the patentees, after all). Therefore Article 22(4) of the Brussels Regulation on Jurisdiction, which provides that validity is the exclusive domain of the country of registration, did not come into play. Lilly accepted this.

English service practice; English doctrine

The decision is not really concerned with cross-border issues under the Brussels Regulation on Jurisdiction (BR). It rather turned on issues of service and jurisdiction under English law. That was because Eli Lilly was a US domiciled entity which had not committed a tort in England, so that the Articles 2 and 5 BR could not be used as a basis for jurisdiction. Further to Article 4 BR the question then became whether the English court had jurisdiction against Lilly under English national procedural law. To establish this, the decision goes at length into all kinds of particularities of English procedural practice and law.

The first conclusion – based on correspondence between solicitors - was that Lilly had consented to being served in the UK and that, even if that would not have been the case, Lilly had been validly served in the UK because its European patent department constituted a place of business in the UK, proper for service. The second conclusion – based on the common law doctrine of forum non conveniens – was that the English court had jurisdiction over Eli Lilly for the cross-border non-infringement claims. This is where the Lucasfilm decision was leading.

Race to the Courthouse

Both conclusions were equally important because there had been a race to the courthouse:  having been put on notice by Actavis’ solicitors of its London cross-border non-infringement desires by letter of 12 July 2012, Eli Lilly instructed its German lawyers to file an infringement suit against Actavis in Düsseldorf. As it happened, the English team won the race: the English court was seised of the non-infringement matter on 27 July, the German court of the infringement matter on 31 July.

Since the London court also held that it had jurisdiction regarding the German non-infringement claim, under Article 27 BR the Düsseldorf court would have to suspend its proceedings until the decision of the English court on jurisdiction has become final.

The applicable laws

The 27 November decision contains some considerations on the applicable law and procedure. Further to EU Regulation 864/2007 (Rome II) the court will apply the relevant foreign laws to the cross-border parts of the claim. That is not a problematic prospect since Article 69 EPC (scope of protection) must be uniformly applied in every European country. As to any procedural and remedial questions the London court will apply English law as the lex fori. Both these positions (substantive law and procedural law) were common ground between the parties, as the decision records at the outset.

Artcile 69, Article 22(4), and Solvay v Honeywell

The decision spends a few words on the argument – ran by Lilly in the course of their forum non conveniens defence – that, even though validity was not challenged, under French law validity was relevant nevertheless because in France the prior art has to be taken into account when determining scope of protection, so that Article 22(4) – forcing the English court to stay the cross-border non-infringement proceedings -- would come in via the scope door.

The Patents Court (Mr Justice Arnold) was not impressed by this argument. One, the evidence cited for ‘the French approach’ to Article 69 was “less than compelling”, and two, the validity factor does not make any real difference for determining that the foreign court is the more appropriate court (as part of the forum non conveniens argument). For this conclusion the decision “by analogy” relies on the CJEU decision in Case C-616/10 (Solvay v Honeywell).

Solvay deals with a foreign invalidity defence raised in the course of proceedings for an interlocutory cross-border injunction. In case provisional jurisdiction is based on Article 31, the CJEU in Solvay held that the infringement court would not have to stay the cross-border part of the case. It is difficult to see an analogy with the Lilly situation (which, after all, was a case on the merits to which Article 31 was wholly irrelevant). Perhaps it was just that the English court felt more at ease to dismiss the Lilly ‘invalidity via the backdoor’ argument because Solvay did open some of the cross-border doors which GAT/LuK (Case C-4/03) had closed.

Conclusion

For a Continental observer it is difficult to judge the merits of the Lilly decision as to English proper service and forum non conveniens considerations. As to its cross-border consequences the decision should not be surprising, however. It is in line with the conclusion which under the Brussels Regulation has been confirmed to be the law several times: If there is jurisdiction based on domicile, the extent of this jurisdiction is worldwide and cannot be restricted on forum non conveniens grounds. See, for example, CJEU Cases C-69/93 (Shevill v Presse Alliance, 1995) and C-281/02 (Owusu, 2005).

Thanks so much, Richard, for your thoughts and analysis, which are very much appreciated.

Readers may also want to take a look at this note by the AdvoKat on the IPKat weblog here.

Supreme Court To Decide Patentability of Human Genes

On November 30, 2012, the U.S. Supreme Court granted certiorari in Assn for Molecular Pathology v. Myriad Genetics, Inc., No. 12-398.  In that case, the plaintiffs challenge the eligibility of Myriad’s patents covering isolated human gene sequences corresponding to the BRCA1 and BRCA2 genes, which when mutated are associated with a high risk of developing breast and ovarian cancer, and diagnostic processes using the genes. The U.S. Court of Appeals for the Federal Circuit ruled in August that Myriad’s patent claims covering isolated genes were patent-eligible under Mayo Collaborative Services v. Prometheus, Inc., 566 U.S. ___, 132 S.Ct. 1289 (2012). See Assn. for Molecular Pathology v. U.S. Patent and Trademark Office, 689 F.3d 1303 (Fed. Cir. Aug. 16, 2012).

The Court's grant of certiorari is limited to a single question presented in the plaintiffs’ petition:

“1. Are human genes patentable?” 

Affected Customers Have Standing To Assert Walker Process Antitrust Claims Against Patentee

Under U.S. law, a defendant accused of patent infringement may assert an affirmative counterclaim for antitrust injuries when a plaintiff-patentee asserts a patent knowingly procured by fraudulent conduct in a lawsuit commenced in order to create or preserve a market monopoly. Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965). In a recent case, the U.S. Court of Appeals for the Federal Circuit ruled that a customer allegedly injured by increased market prices, but not an accused infringer, also has standing to bring such a Walker Process claim. Ritz Camera & Image, LLC v. SanDisk Corp., Case No. 2012-1183 (Fed. Cir. Nov. 20, 2012). The decision may provide an alternative avenue for those seeking to challenge defective patents.

Ritz Camera is a purchaser of NAND flash memory devices. SanDisk controls approximately three-fourths of NAND market. Ritz filed a putative class action lawsuit on behalf of itself and other NAND users, alleging that SanDisk maintained its market control by procuring two critical patents, U.S. Patent Nos. 5,172,338 and 5,991,517, through fraud before the USPTO and then asserting the patents against competing flash memory manufacturers. As a result, Ritz contends, SanDisk has been able to maintain its prices at inflated levels.

SanDisk moved to dismiss the action on the grounds that Ritz and other NAND consumers lacked standing to bring the Walker Process-style claim, because SanDisk had not threatened to sue them for infringing the ‘338 or ‘517 patents. For example, Ritz likely would lack standing to maintain a declaratory judgment action alleging unenforceability of the SanDisk patents under the Declaratory Judgment Act, 28 U.S.C. § 2201. See Medimmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007).

The Federal Circuit held that the Supreme Court’s Walker Process decision did not restrict antitrust claims under the Sherman Act to accused patent infringers. In addition, the court noted that the jurisdictional limits on patent litigants do not normally apply to actions under the antitrust laws. Ritz Camera’s Walker Process claim was not an “end-run” around the standing requirements for declaratory judgment actions, because plaintiffs in Walker Process claims are seeking redress for antitrust injuries and do not directly seek to invalidate the affected patents. Finally, the CAFC was not persuaded by SanDisk’s argument that Ritz Camera’s claim would open the floodgates for future patent challenges:

[W]alker Process claims “deal only with a special class of patents, i.e., those procured by intentional fraud,” and “cannot well be thought to impinge upon the policy of the patent laws to encourage inventions and their disclosure,” 382 U.S. at 180 (Harlan, J., concurring). Particularly in light of the demanding proof requirements of a Walker Process claim, we are not persuaded by SanDisk’s “flood of litigation” argument.

Ritz Camera, at 10.  The decision is available HERE.

Rights of audience in England and Wales: when will the new rules come into force?

Patent attorney David Harris (Barker Brettell LLP, Birmingham, England) notes that the Legal Standards Board has approved the draft changes made by the Intellectual Property Regulation Board (IPReg) to the rules concerning the rights of audience which patent attorneys and trade mark attorneys have before various courts (see the top entry listed here).  He comments:

"As such, most attorneys on either register will have rights of audience for all IP matters in the Patents County Court, rather than patent attorneys only having rights for patents and designs (but not copyright), and trade mark attorneys not having any rights by default, as at present. We also get a handful of mildly interesting ancillary rights". 

But what we all want to know is whether when these new rules might be brought into force. If any reader of this weblog has a clue, will he or she please post the answer below.

Designation of patent litigation in England and Wales: new practice

From the IP Court Users' Committee (England and Wales) comes the following announcement (it seem a bit alien to readers from outside the jurisdiction, but PatLit is pleased to have the opportunity to promulgate anything the IPCUC asks):

Designation of Claim Forms in the Patents Court from 1 January 2013. 

 With effect from January 2013, all Patents claims will be given a new designation HP.   So instead of e.g. the current HC 12 C01111 for Chancery claims, the claim number will be HP 13 C01111. 

 This will apply to all claims in the Patents Court (and so will include SPCs and sweep in a few registered designs etc). Those who issue proceedings in the Patents Court from 1 January are asked to make it clear to the counter staff on issue that it is a Patents Claim and therefore requires the new HP designation or, if issuing by post, then to emphasise the point in a covering note.  

In general the staff are very good about this and there should not be a problem as, of course, the claim will be headed Patents Court as at present, but it can only help if the point is drawn to the attention of the counter staff at the time of issue. Under s. 96 of the Patents Act 1977, CPR Part 63 and Practice Direction 63 High Court claims relating to patents and certain other Intellectual Property rights are commenced in the Patents Court and the claim form is required to be marked “Chancery Division Patents Court’” If and when the draft agreement on a Unified Patent Court (UPC) becomes effective, it will be necessary to establish how many patent cases are started in the UK in successive years. 

 This change will enable the relevant claims for the purposes of UPC counting to be extracted electronically. This will make the collection of accurate data about the number of “patent cases” significantly easier than at present, although it is expected that it will still be necessary (given that in some European jurisdictions cases may be counted on a different basis) to review the HP cases to establish 

·          how many patents were in issue, 

·          whether there is a revocation counterclaim or anything else that might be characterised as a “patent action” in other parts of Europe, 

·          whether other patents are added into the claim later, and 

·          whether any application for interim relief was made. 

  Philip Westmacott
Secretary IPCUCNovember 2012

Continuing an action after the patent content is resolved

Ningbo Wentai Sports Equipment Co Ltd v Wang [2012] EWPCC 51, decided in the Patents County Court, England and Wales (Judge Birss QC) on 9 November, was a relatively small affair. The court was dealing with an application to revoke a patent for a folding golf cart; the ground of revocation was lack of novelty on account of prior art which, the patentee argued, counterclaiming for damages, was made public virtue of the claimant's contractual and equitable breach of confidence. This was a low-key contest over a low-tech product and the submissions were all made on paper. At an earlier stage the patent was held invalid but the counterclaim for damages for breach of confidence remained to be dealt with.

Could the Patents County Court continue to hear the action now that the patent bit of it had been resolved given that, if the action had consisted of nothing other than the counterclaim in the first place, it would have been an action before the Chancery Division of the High Court?  Yes, said Judge Birss QC: the action had been properly started there and the counterclaim clearly arose from the same subject-matter as the patent revocation action.

"To settle -- or not to settle?" An ethical poser

With apologies to readers of this weblog who also read the IPKat and who therefore already know about this, PatLit would like to draw the attention of readers to this short, sharp poll which Annsley Merelle Ward has posted on that weblog this morning. It asks a very pertinent ethical/practical question which patent litigators and their clients may already have faced.

Please take the time to participate: unless your conscience pulls you simultaneously in opposite directions, it should not take you long to answer.

Enterprising Italians shake up patent litigation

The Italian Supreme Court: we hope that it will
not be troubled by too many patent appeals ...

PatLit learns with interest that the new Italian business enterprise courts will be handling litigation of patent and trade mark matters. Legislative Decree 1/2012 on deregulation now provides for the transformation of the existing 12 courts which specialise in industrial property matters: instead, there will now be no fewer than 21 courts, which will maintain a broader focus on business matters.

Recent experience of specialist IP courts has been positive: improved efficiency has been brought about in the management of IP lawsuits, even though over the years the workload did not spread evenly across those courts: some, like Milan, Rome and Turin, have been processing thousands of lawsuits while others rarely receive any IP cases at all.  Legislative Decree 1/2012 therefore seeks to deliver a more balanced workload.

The new Courts will therefore hear cases on:

* matters pertaining to industrial property;  

* antitrust matters;  

* matters pertaining to contracts of EU relevance; 

* disputes between business corporations, co-operatives, groups.

In order to maintain the specialisation gained over the past years, the Courts of Milan and Rome have already created two subsections, one for IP matters and the other for company matters, which should ensure better quality judgments. This same arrangement may also be adopted by other Italian courts.

Source: Modiano & Partners