Wednesday, 29 February 2012

Res Judicata, French style: Wehrkamp-Richter v Louis Paul Guitay

Patent litigators all round
Europe have been flagging up
this decision for discussion
Several readers have forwarded to me the helpful note from Pierre Véron (Véron & Associés) on the recent French Cour de Cassation en banc ruling in Reginald Wehrkamp-Richter v Louis Paul Guitay, which I would have posted earlier but for the fact that I was ploughing through a backlog of work when I received my own copy of it.  This decision, handed down on 17 February, concerns the situation in which a patentee prevails on infringement and validity and obtain damages as a result of a final judgment against a first infringer. Subsequently, in proceedings against a second alleged infringer, the patent is revoked.

The Court ruled that a first infringer cannot claim the restitution of the damages he has paid because the binding and final decision on liability is res iudicata and is not affected by the subsequent revocation of the patent. Pierre has made the judgment available in English here and in French here. He has also summarised the decision briefly:
"The answer given in the 17 February 2012 judgment, handed down en banc by the full court (Assemblée plénière) is loud and clear: 
"Because the first infringer had been held liable for infringement by an irrevocable decision, the Cour d'Appel rightly came to the conclusion that the retroactive and absolute revocation of the patent… in a subsequent decision could not justify the restitution of the sums paid in pursuance of the decision on the infringement."
It is quite exceptional that the French Cour de cassation deal with a patent case en banc (it does so only when conflicting decisions from various panels have been reported or to prevent such conflict). According to its standard practice, the Court does not explain its decision in the judgment itself, which is very short (2 pages). However, detailed explanations (in French) can be found in the 24-page report prepared by the rapporteur, which is available on the Court’s website here and in the 15-page advocate general’s opinion, available on the Court’s website here
This question was discussed during the 14th European Patent Judges' Symposium held in Bordeaux, 16-20 September 2008, published in the EPO’s Official Journal, Special Edition 1, 2009, page 56, "A patent held in a binding ruling to have been infringed is subsequently revoked: what happens next?" (here), with national reports from Germany, the United Kingdom and France".
Thank you, Pierre, for this useful information.

Pierre's firm runs the French Patent Case Law website, here.

Wednesday, 22 February 2012

Some Need a Slight Nudge, Some Need a Kick in the Trousers

One of the more problematic issues when discussing the inventive step is the “incentive” or “prompting” needed by the skilled person to combine particular pieces of prior art. Both EPO examiners and opponents sometimes have a really hard job to find such an incentive and often end up with citing the unlucky EPO decision T 1126/09 out of its context, according to which this prompting “need not be found in the cited documents but may result from the inventor’s fundamental endeavour to simplify the existing method/device“.

The German supreme court BGH has now found in the decision X ZB 6/10 “Installiereinrichtung II that it depends on the circumstances how intense this prompting has to be. According to the judgement of the BGH, the prompting need not be explicit but may also be found in these factual circumstances:

The headnote (in a rough translation) reads:
 The extend and the degree of concreteness of promptings in the prior art needed by the skilled person in order to further develop a known solution in a particular direction is a question which must be answered on a case-by-case basis requiring an overall consideration of all relevant elements of the factual circumstances. However, not only explicit textual indications to the skilled person are relevant. Rather, the characteristics of the technical field under consideration, in particular concerning the education of the skilled persons, the standard approach for developing technological innovations in the field, technical requirements resulting from the construction or from the application of the subject-matter concerned as well as non-technical requirements may play a role.”

Friday, 17 February 2012

Patent litigation in Canada: standards of review

"What is the standard of review for patent litigation in Canada?" is the title of an article by Professor Emir Aly Crowne (Associate Professor in the Faculty of Law at the University of Windsor; a barrister and solicitor) which has already been published online in the March 2012 issue of Oxford University's Journal of Intellectual Property Law and Practice (JIPLP). According to the abstract:
"In Canada patents are administratively granted by the Commissioner of Patents. Yet administrative law principles have never been applied when determining the validity of a patent during litigation.

Courts have always proceeded on the basis of a trial de novo to determine whether (on a balance of probabilities) the patent was valid and properly granted.

This paper examines the apparent tension between the Patent Act, patent jurisprudence and administrative law principles in litigating the validity of a patent".
This is a topic which appears to have received little attention in most jurisdictions; readers' reflections, both from inside Canada and elsewhere, are welcomed.

Non-subscribers to the online version of JIPLP can purchase short-term access to online articles. To do so for Professor Crowne's article, click here and follow instructions under ' Purchase Short-Term Access'.  The print version will be published at the end of the month.

Monday, 13 February 2012

Italy: Pfizer fined 10.6 M (abuse of dominant position)

We finally have a decision in the Xalatan case, started in October 2010 (reported here and here).

In a 33 page decision (here), the Italian Competition Authority concludes that Pfizer artificially extended patent protection of the active ingredient latanoprost (used to treat eye glaucoma) to prevent or delay generics entering the market.

I find of particular interest the following paragraphs of the decision (fast translation):

"74. The documentation inspection revealed the existence of a complex strategy - developed by a working group of Pfizer (the so-called "LOE group") - for the defense of the drugs after the expiry of patent protection, primarily designed to protect their share market entrance of equivalent drugs. The latter, in fact, are retained by Pfizer a particularly serious threat.

75. Among the strategies designed, beside those purely commercial or promotional, special emphasis is given to the use of "legal strategies" to change the date of expiration of patent protection.

76. … Pfizer appears to have full knowledge of the peculiarities of the Italian situation and the risk of a possible entry in the market of equivalents to Xalatan in advance of the rest of Europe.

84. Additional documentation shows Pfizer’s knowledge about the violation of antitrust law in the case concerning the release of the new SPC in Italy and the extension of patent protection in September 2009 to July 2011, in view of the doubts of the company regarding the validity of the SPC obtained.

89. Fears about possible actions by Pfizer to prevent access to the market for generic drugs were confirmed in the letter, sent in July 2009 by an attorney of Pfizer to Ratiopharm, requesting not to introduce its drug in commerce…

90. The documents included in the file show that similar communications were sent to other producers of Xalatan equivalents. The purpose of these letters was to prevent latanoprost generics entering the market before the patent expiration in July 2011.

91. However, comments from employees of the company suggest that sending warning letters to generic companies before placing their drugs in the market has been practiced successfully by Pfizer in other circumstances… (should we expect new investigations?)

The effectiveness of this strategy appears to support Pfizer’s choice to use the same even with regard to drugs whose patents where to expire. In particular, with reference to four blockbuster products, the company aimed to further prolong the patent rights from two to three years.

113. … Following the listing of Ratiopharm and Sifi (May 2010) the sales of Xalatan have suffered a drastic reduction in volume of approximately 70%. This share has been gradually acquired a 50% to Sifi and the remaining 20% from Ratiopharm.

138. The evidence acquired during the procedure, described in detail above, fully confirm Pfizer's abusive behaviour.

139. This documentation proves the existence of Pfizer's strategy to artificially extend the patent protection of Xalatan in Italy from September 2009 to July 2011, in order to align it with other European countries, by requests - solely to this end - both the EP168 divisional patent in 2002 and the following SPC, requested in Italy in 2009.

144. Pfizer's exclusionary conduct aimed not only to defend the sales of Xalatan in the Italian market, but also to those made in the entire European market as a price reduction to the public in Italy (to effectively combat the entrance of genericis) would inevitably risk a drastic decrease in revenues from sales of Xalatan in other Member States due to import from Italy, via parallel trade.

198. Again demonstrating the exclusionary nature of Pfizer's request (reference is made to the SPC), is relevant to make reference to the absence of a new drug, which normally follows the divisional application. This shows that the company had no intention to launch a new drug, but only to exclude prostaglandin generics from the Italian market - regardless of the absence of a statutory obligation in this regard, a fact underlined by Pfizer –.

212. The exclusionary nature of Pfizer’s overall strategy can be also seen in the request made in January 2011, to obtain a further term of protection extension based on pediatric trials of Xalatan (up to January 2012).

With the release of the extension of patent protection, Pfizer appears to have obtained a new extension of patent rights on their drug, this time not only in Italy but in all EU countries (should the European Commission start an investigation?)

214. … testing for pediatric use of a drug, like Xalatan, used to treat a disease that typically affects old people, appears only as seeking further extension of patent coverage of the drug.

As evidence, the documents in the case shows that the pediatric trial is held by Pfizer a tool to use for all drugs for which patent is near expiration, not just those intended primarily for the treatment of diseases that may also cover the children.

217 It should be emphasized that the request to extend patent protection for pediatric use has been made by Pfizer in January 2011, after the revocation of the divisional application by the EPO in October 2010 - which led to the annulment of the SPC - and, then, after disappearing in Italy the legal basis on which that request was based.

225. … Finally it appears Pfizer’s intention to use the same strategy to defend next drugs to “expire” … (will the Italian Authority start new investigations regarding those drugs?)

231. Finally, it should be noted that despite the huge estimated losses from the decrease in sales of Xalatan on the Italian market, Pfizer believes that it can not lower the price in Italy. Such a choice, in fact, is considered extremely dangerous because, as a result of parallel trade, a price cut in Italy would inevitably be forced to adjust the price of Pfizer's Xalatan on other European markets with "high price", where the patent protection was guaranteed by the SPC until July 2011 (and subsequently extended to January 2012).

233 Pfizer's strategy has produced significant effects on the market.
First to mention is the delay with which generics have entered the market ... (will now companies affected file damages actions? And the Italian Government, taking in to account the excess paid through the national health system?)

245 Direct result of the Pfizer’s strategy is the damage suffered by the NHS in terms of lost savings on drug reimbursement prices as a result of delaying the entry of generics in the market. The data reported by Pfizer itself confirms that the amount of Xalatan sold in the period following the expiration of the patent in September 2009, was approximately 1.4 million units.
In view of the price difference of the reimbursement price by the NHS of drugs based on latanoprost before and after the entry of generics in the market, the lack of savings for the NHS can be estimated around Euro 14 million.

251. According to the Commission Communication 2004 / C 101/07 - Guidelines on the effect on trade between Member States concept contained in Articles 81 and 82 of the Treaty on OJ C 101/81 of 27 April 2004, the concept of effect on trade between Member States must be interpreted taking into account the influence, direct or indirect, actual or potential, on the pattern of trade between Member States.

252. In light of that legal framework the case falls under Article 102 TFEU - and integrates many cases of violation - given the fact that the conduct engaged in by Pfizer were eligible to restrict trade between Member States. In particular, the conduct in question has produced its effects on the entire Italian territory, which is significant part of the Community market and on which there are many multinational companies and international operators.

255… the conduct in question - delaying, for about seven months, the entry of generics on the market - has enabled Pfizer to continue enjoying a monopoly rent quantifiable up to about Euro 17 million - in view of the market share gained by generics in the first seven months of their entry on the market -".

Tuesday, 7 February 2012

E-Justice at the Bundespatentgericht

In every trial in patent matters at the Bundespatengericht (BPatG) this blogger has been attending to, there was sooner or later a situation where somebody tried to explain something by pointing at features of a figure in one of the documents. What happens then is that everybody leaves his bench or desk to bow over the document such that all of a sudden, the orderly procedure collapses and turns into a gesticulating crowd of at least six or seven technically qualified poeple trying to explain something.

This was one of the annoyances - besides of old cars and potholes on the German Autobahn - the Government attacked when trying to find possibilities to spend money on for its stimulus package in the begining of the still ongoing financial crisis in 2009. See infromation on the BPatG website and press release.

As of November last year, the Bundespatentgericht (BPatG) in Munich has provided two of its courtrooms with electronic equipment enabling the sharing of electronic documents between the parties and the judges. Furhter, there is a video camera mounted on a stand over one of the tables such that both a document and the finger of a person pointing on it can be filmed and displayed on the monitors provided at the judges bench, the attorney's desks and (a big one) on the wall.

After a report on GermanIP, pointing to the regretful situation that it is difficult for the parties to predict whether or not a particular trial will be held in a traditional courtroom or in the "electronic courtruoom", Presiding Judge Dr. Norbert Mayer (20th Senate and responsible for the BPatG's e-justice programme) has informed us that the 19th, 20th and 23th senates (Technical Appeals) use the electronic coutrooms (Rooms No. 6 and 4) on a regular basis. The 5th Senate (Nullity) uses one of the rooms if it is sitting with technical members of the 20th senate. Furhter information may be found in Dr. Mayer's article in "Mitteilungen der Deutschen Patentanwälte" issue 7/8, 2011.

The big courtroom ("Kapelle") in the 5th floor will be electronically equipped within this year and may be used (just as the Rooms 6 and 4) by other senates if necessary and if the room is available.

The Bar Organization of the German Paten Attorneys, the "Patentanwaltskammer" is about to organize an introduction to the new technical possibilities together with Dr. Mayer.

Friday, 3 February 2012

When the excuses have to stop

In Musion Systems Ltd v Activ8-ed Ltd and others [2012] EWPCC 5, a patent infringement action, Judge Colin Birss QC had to deal with an application to strike out a defence and counterclaim on the basis that the defendants had failed to pay a wasted costs order to the tune of over £45,000 following the previous adjournment of the trial.  In short, this was one of those uncomfortable situations in which you can more or less read the court's thought bubbles along the lines of "there's a dodgy and unreliable defendant here who is messing around but we can only operate within the rules -- the more's the pity".

The judge gave the defendants a further seven days in which to pay the wasted costs order, plus a further £9,000 costs in the claimant's application to date. From his judgment one can pick out some useful advice for defendants who want to string the court along and put off the dread day when they are sunk without trace.  Thus

  • Don't tell the court that you are not available due to “other commitments” without telling the court what those commitments are;
  • If you say you can't appear in court because you are ill, it might be worth giving some clue as to what your ailment is;
  • Where you decline to appear by telephone "on advice", the court might just be curious as to (i) what the advice is and (ii) whose advice it is -- a doctor's, a lawyer's, a friend's or a telephone engineer's;
  • It also helps to let the court know the grounds on which you propose to resist the patent owner's claims, other than saying that you haven't got any money -- and if you don't have money, it's a good idea to give the court some sort of evidence to that effect.

Thursday, 2 February 2012

The Older the Better? Not in Bavaria!

In one of the less discussed cases (LG Muenchen 21 O 26022/11) in the never-ending series of litigations between Apple and Samsung, the Munich District Court has now rejected Apple's request for preliminary injunctive relief banning the sales of Samsung's Galaxy 10.1N and Galaxy Nexus mobile phone, as reported by Bloomberg.

The opposition period of the patent in suit had not yet expired. It is the established jurisdiction of the courts in Düsseldorf and Mannheim (as outlined e.g. here) that, with certain exceptions, only patents having been challenged and havig survied an opposition procedure or a nullity suit may serve as a suficciently certain basis for a preliminary injunction.

While the reasons of the decision are not yet published, Bloomberg reports at least an interesting Statement of the Munich Judge Müller:
"We don’t share the idea that young patents are less valuable than those who have survived for a longer period of time. We don’t think that would be in line with European rules of enforcing IP rights".
The injunction was not granted nonetheless because Samsung's attorneys were apparently successful in casting doubts on the validity of the patent. I guess that this decision will strongly increase the attractivity of the Munich court for patentees seeking preliminary injunctive relief based on "young" patents.

Wednesday, 1 February 2012

FRAND - Commission opens proceedings against Samsung

The European Commussion has announced to have opened a formal investigation against Samsung in the question whether Samsung's strategy seeking injunctive relief based on standard-relevant patents amounts to an abuse of a dominant position which may affect trade and prevent or restrict competition given that Samsung had given its irrevocable commitment  to license any standard essential patents relating to European mobile telephony standards on fair, reasonable and non-discriminatory (FRAND) terms.

PatLit had reported on a selection of the litigations in question e.g. here and here.

Meanwhile, Florian Müller reports on FOSS that Judge VOSS at the Mannheim District court has announced his decision reject Samsung's requests for injunctive relief in both pending cases despite of the suspicious attitude towards the FRAND defence used by Apple discussed in a previous post. However, the reasons for the decision are not yet available.