Wednesday 26 June 2013

Interim costs where applicant to invalidate is not told of application to surrender

Boston Scientific International BV and another v Orbusneich Medical Inc is a decision last week of Richard Meade QC, sitting in the Patents County Court,. England and Wales. It's not on BAILII, but this blogger found it noted on the very handy Lawtel subscription-only service.

In these proceedings the court was required to determine costs in relation to a patent validity claim which Boston brought against a patent held by Orbusneich.

There was naturally some background. Orbusneich had previously brought patent infringement proceedings against Boston in respect of some of its patent in the Netherlands, without disclosing to Boston that it had applied to surrender one of them. Boston later launched invalidity proceedings against Orbusneich in the United Kingdom in relation to patents that Orbusneich had applied to surrender. Even at this point Orbusneich still did not disclose to Boston its application to surrender. The application to surrender was subsequently granted, with the result that Boston's invalidity claim relating to that patent fell away. The judge had to determine the appropriate level of costs in relation to the claim based on the surrendered patent, particularly in light of the parties' conduct of the case.

Richard Meade QC ruled as follows:

  • Orbusneich's actions were apt to mislead Boston into assuming that it continued to maintain the patent, and it would have been reasonable for Orbusneich to tell Boston that it was applying to surrender.
  • It was wrong to say that it was unnecessary for Orbusneich to disclose its application to surrender simply because that application was publicised on the European Patent Office website.
  • It was obvious that Boston was under the impression that the validity of the patent would be contested.
  • Since Boston was successful, the general rule applied so that they were entitled to payment of their costs. An order for an interim payment of less than 50 per cent would be made.

No more is known about this ruling at present. Suffice it to say, though, that (i) litigants do not appear to have constructive notice of applications to surrender on the sole ground that they have been published on the EPO website, and (ii) it seems to be the prudent course to inform your adversary that you have applied to surrender a patent which he has applied to invalidate.

Tuesday 25 June 2013

Last Call for British Representatives Still at 11pm

Though this blogger is not as acquaintaned with the customs in british pubs as some of his colleagues, he knows that the closing time of brithish pubs has been more or less abandonded in 2005 but is still observed (with some degree of flexibility) in some more traditionalist venues closing about one hour earlier than their continental counterparts.

The EPO counts among these venues, as reported by Laurent Teyssèdre on his blog "Le Blog du Droit Européen des Brevets" here.

The statement setting out the grounds of appeal was received at the EPO in electronic form at three minutes past midnight (CET) on 29 March 2011, i.e. three minutes after expiry of the four-month time limit for filing the grounds of appeal under Article 108 EPC but was sent from Cambridge at 11.03pm (British Summer Time)  on  29 March 2011.

The board confirms that the relevant time is the Central European Time applicable in Munich and The Hague but turns out to be unexpectedly generous in granting re-establishment of rights with regard the non-observation of the curfew:

The Board considers the appellant's request for re -establishment of rights as regards the time limit for filing the notice appeal allowable ( Article 122(4) EPC), in particular because the appellant has shown that the non - observance of the time limit was not caused by lack of due care but rather by a justifiable human error of the representative (emphasis added).
A closer look reveals that the generosity does not go so far that a delay of 3 minutes is considered excusable per se. Rather, the human error consisted in that the representative had missed the fact that the Central Europen Time had switched from summer- to winter-time on march 27 and had relied on the EPO web-site for the purpose of determining what time it was on the continent. The appelant argued:

The board did not further scrutinize the degree of diligence required by professional representatives to know the exact local time at the EPO office because the appeal was finally rejected on other grounds.

For the time being, it remains advisable for european patent attorneys residing in Great Britain to use a raido-controlled clock set to CET when planning last-minute filings.

Friday 21 June 2013

Encryption does not Imply Decryption - BGH X ZR 130/11 "Verschlüsselungsverfahren"

Rosetta-stone: decryption not even obvoious
The Bundesgerichtshof had to decide on a divisional application relating to a method including both a step of encryption and a step decryption of data, whereas the parent application described encryption methods only and was completely silent on deciphering of the encrypted data.

Actually, the decryption was entirely symmetric to the encryption algorithm and the patentee argued that the step of decrypting/deciphering the data was, though implicitly, still clearly and unambiguously disclosed in the parent application for the person skilled in the art. Any economically sensible use of the invention would arguably require a playback of the signals, which would in turn inevitably be preceded by a deciphering.

Given that the German skilled persons usually derive far more implicit information from "between the lines" than skilled persons in other jurisdictions, it was not quite clear how the senate would decide.

The senate did not folow these arguments and confirmed the nullification of the patent.

However, the decisive point was not that the step of decrypting was not explicitly mentioned but that the claims of the divisional application were directed to an "Aliud", i.e. to a "different thing" in the legal sense.  This happens in particular where subject-matter is originally disclosed but not disclosed "as belonging to the invention".

According to the senate, the patentee had the possibility to claim encryption and decryption alone or in any combination at the time of filing and has chosen to claim encryption only.  Even if steps other than the encryption step were clearly unavoidable and an enabling disclosure for these steps would have been given, the skilled person would not have considerd these steps a "belong to the invention" in the absence of any indications in this regard.

The case emphasizes the necessity to duly consider every possible technical context in which an invention could eventually be used when drafting a claim set.

 The full decision can be read (in German) here: BGH X ZR 130/11 "Verschlüsselungsverfahren"

Posted by Michael Thesen

Sunday 16 June 2013

Interim injunctions pending an appeal: Court restates principles

In Novartis AG v Hospira UK Ltd [2013] EWCA Civ 583, a decision of the Court of Appeal, England and Wales, of 22 May, the court, consisting of Lords Justices Lewison, Kitchin and Floyd), restated the principles applying to the grant of an interim injunction pending appeal where the claimant was unsuccessful at first instance. Giving judgment for the court, Floyd LJ said
"I would summarise the principles which apply to the grant of an interim injunction pending appeal where the claimant has lost at first instance as follows:

i) The court must be satisfied that the appeal has a real prospect of success.

ii) If the court is satisfied that there is a real prospect of success on appeal, it will not usually be useful to attempt to form a view as to how much stronger the prospects of appeal are, or to attempt to give weight to that view in assessing the balance of convenience.

iii) It does not follow automatically from the fact that an interim injunction has or would have been granted pre-trial that an injunction pending appeal should be granted. The court must assess all the relevant circumstances following judgment, including the period of time before any appeal is likely to be heard and the balance of hardship to each party if an injunction is refused or granted.

iv) The grant of an injunction is not limited to the case where its refusal would render an appeal nugatory. Such a case merely represents the extreme end of a spectrum of possible factual situations in which the injustice to one side is balanced against the injustice to the other.

v) As in the case of the stay of a permanent injunction which would otherwise be granted to a successful claimant, the court should endeavour to arrange matters so that the Court of Appeal is best able to do justice between the parties once the appeal has been heard".
In this case the Court determined that the trial judge was right to say that the best way of "holding the ring" pending trial would have been to grant an injunction (had one been necessary) but wrong to say that the same did not apply pending the appeal. The Court accordingly allowed the appeal and granted the injunction until final judgment in the appeal or further order.

This ruling is a curiosity in that all three Court of Appeal judges are former members of the Patents Court, a fact that will no doubt considerably enhance its authority.

Thursday 13 June 2013

US Supreme Court Rules That Isolated DNA Is Not Patent-Eligible, But cDNA Is Eligible

In this morning's 9-0 decision written by Justice Clarence Thomas, the U.S. Supreme Court ruled that isolated human DNA is not eligible subject matter under 35 U.S.C. § 101. Assoc. for Molecular Pathology v. Myriad Genetics, Inc., No. 12-398 (June 13, 2013). The Court rejected the position articulated by Judge Lourie at the Federal Circuit that the isolation of the DNA molecule results in a physical change in the molecule, rendering it patentable, as it is chemically removed from its intracellular environment.  The Court noted:
Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule. Myriad’s claims are simply not expressed in terms of chemical composition, nor do they rely in any way on the chemical changes that result from the isolation of a particular section of DNA. Instead, the claims understandably focus on the genetic information encoded in the BRCA1 and BRCA2 genes. If the patents depended upon the creation of a unique molecule, then a would-be infringer could arguably avoid at least Myriad’s patent claims on entire genes (such as claims 1 and 2 of the ’282 patent) by isolating a DNA sequence that included both the BRCA1 or BRCA2 gene and one additional nucleotide pair. Such a molecule would not be chemically identical to the molecule “invented” by Myriad. But Myriad obviously would resist that outcome because its claim is concerned primarily with the information contained in the genetic sequence, not with the specific chemical composition of a particular molecule.
Slip op. at 14-15.

The Court ruled that complementary DNA (cDNA) molecules are eligible for patenting, as the Federal Circuit held. Justice Thomas wrote that although the cDNA contains the same genetic information as naturally-occurring DNA molecules, it is physically something that does not exist in nature (at least for longer cDNA fragments that do not span non-coding intron regions):
[The petitioners argue that] that cDNA is not patent eligible because “[t]he nucleotide sequence of cDNA is dictated by nature, not by the lab technician.” That may be so, but the lab technician unquestionably creates something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. As a result, cDNA is not a “product of nature” and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA. 
Slip op. at 17 (citation ommitted). Jusitice Scalia filed a concurring opinion, stating essentially that he did not claim to understand all the science, but generally agreed with the Court's result.

The opinions are available HERE.

Thursday 6 June 2013

Washington Catches “Troll Fever” – Multiple Strategies Proposed For Addressing NPEs

After years of grumbling about the adverse effects of patent infringement actions filed by plaintiffs who acquire their patents in order to generate licensing revenues through aggressive litigation tactics (variously called non-practicing entities (“NPEs”), patent assertion entities (“PAEs”), or trolls), several new proposals have been put forward in the U.S. to deal with the problem.

In May, New York Senator Charles Schumer introduced legislation entitled the "Patent Quality Improvement Act of 2013" (S. 866). In essence, the bill would expand the transitional program for covered business method patents ("TPCBM") provisions of the America Invents Act to cover a wider range of computer-implemented technologies. The TPSBM currently allows members of the public to oppose newly-issued patents by seeking post-grant review of certain business method patents in an administrative proceeding before the USPTO, rather than litigating patent validity in federal court. The TPSBM is an eight-year program for patents that claim a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service. Schumer's bill would remove the eight-year limit and expand eligibility to inventions used in any "enterprise, product or service[.]”

On June 4, the White House announced a series of initiatives to at least chip away at the NPE/PAE/Troll problem. The White House issued a report entitled “Patent Assertion and U.S. Innovation,” detailing the extent of the NPE litigation problem and its effects on innovation. The report concluded that 62% of patent lawsuits commenced in 2012 were filed by PAEs. The full report is available HERE.

The White House also challenged Congress to draft legislation to make it harder for PAE’s to conduct business by:

  • Requiring patentees and applicants to disclose the “Real Party-in-Interest,” by requiring that any party sending demand letters, filing an infringement suit or seeking USPTO review of a patent to file updated ownership information.
  • Permitting more discretion in awarding fees to prevailing parties in patent cases, providing district courts with more discretion to award attorney’s fees under 35 USC § 285 as a sanction for abusive court filings. (Incidentally, on this very point Chief Judge Randall Rader of the Federal Circuit just published an Op-ed piece in the New York Times this week encouraging judges to get tougher on abusive litigation tactics in patent cases.).
  • Expanding the PTO’s transitional program for covered business method patents, similar to Sen. Schumer's proposed bill.
  • Protecting off-the-shelf use by consumers and businesses by providing protection against liability for an off-the-shelf product being used as intended.
  • Changing the International Trade Commission ("ITC") standard for obtaining an injunction to better align it with the traditional four-factor eBay test.
  • Creating a system of public filing of demand letters to make them searchable and accessible to the public; and 
  • Increasing ITC flexibility in hiring qualified Administrative Law Judges.

Finally, the White House announced a series of Executive Orders aimed at making it more difficult for companies to employ patent assertion as a business model:

1.         Ordering the USPTO to begin the rulemaking process to require patent applicants and owners to regularly update ownership information when they are involved in proceedings before the office, specifically designating the “ultimate parent entity” in control of the patent or application. 
2.         Ordering the USPTO to initiate new targeted training to examiners on the review of functional claims and develop strategies to improve claim clarity, such as by using glossaries in patent specifications to assist examiners in the software field. 
3.         Developing new USPTO education and outreach materials for businesses threatened by NPEs, including an accessible, plain-English web site offering answers to common questions by those facing demands from a possible troll. 
4.         Planning a nationwide series of roundtables and workshops organized by the USPTO, Department of Justice, and Federal Trade Commission to develop new ideas and consensus around updates to patent policies and laws. 
5.         Expanding the USPTO Edison Scholars Program, which would bring distinguished academic experts to the office to research issues bearing on abusive litigation. 
 6.         Launching an interagency review of existing procedures relating to the scope of ITC exclusion orders to ensure that the process and standards used during exclusion order enforcement activities are transparent, effective, and efficient.

Litigation in the Brave New World: a full set of links

For the convenience of readers -- particularly for new followers of this weblog, who missed the beginning -- here is a full list of blogposts in Don McCombie's 'Brave New World' series on what we can expect from the new EU patent litigation package:
Litigation in the Brave New World 1: overview of the EU reform package

Litigation in the Brave New World 2: Jurisdiction and the Unified Patent Court

Litigation in the Brave New World 3: Early Stages of a Claim and Choice of Forum

Litigation in the Brave New World 4: The Governing Law

Litigation in the Brave New World 5: Preliminary Procedures and Provisional Measures

Litigation in the Brave New World 6: Case Management, Evidence and Trials
PatLit once again thanks Don, a patent litigator in the London office of Latham & Watkins, for taking the trouble to put this series together.

Litigation in the Brave New World 6: Case Management, Evidence and Trials

Case management: a term that means
different things to different people ...
This final post in Don McCombie's Brave New World series on the European Union's Unified Patent Court (UPC) looks at certain aspects of case management, evidence procedures and trials under the proposed UPC system.  More could be written about these topics, but the author, a patent litigator in the London office of Latham & Watkins, has concentrated on the aspects which, in his s opinion, are the most noteworthy.  This is what Don writes:
Case Management, Evidence and Trials
 Case Management and Evidence

The posts in the this series have been based on the 14th draft of the Rules of Procedure.  A 15th draft is now circulating online, but as no final version yet appears to be publicly available, all references in this note are to the 14th edition.  Rule 10 sets out the five stages of proceedings before the UPC.  Stage 1, the written procedure is covered in my third post, and this post focuses on stages 2 and 3, the interim procedure and the oral procedure respectively.

As detailed in the third post, parties are required to provide all evidence in support of their claim/defence, or at least an indication of the evidence that the party intends to rely upon, together with the statements of case at the outset of the case.  This is likely to place a heavy burden on the parties, especially defendants who counterclaim for invalidity, although any party expert evidence may not be required until later in the proceedings (see Rules 181 and 104).

As noted previously, it is intended that a ‘judge-rapporteur’ will have wide-ranging management powers for the active management of UPC cases, which will mainly be exercised during the interim procedure.  The Rules are not very prescriptive, providing the judge-rapporteur with a great deal of discretion; the quality of decision-making will be key to the successful operation of the UPC system.

Once all written pleadings have been exchanged (see Rules 12, 35 and 36), the judge-rapporteur will arrange an ‘interim conference’ (see Rules 101-106), which will be very broad in scope – certainly broader than most ‘case management conferences’ in English proceedings.  Rule 104 lists the main purposes of interim conference, which include enabling the judge-rapporteur to
·         identify the main issues and determine which facts are in dispute; 
·         explore the possibility of settlement; 
·         issue orders regarding further pleadings and evidence (including party and court expert evidence), experiments and the scope of oral evidence and the questions to be put to witnesses; 
·         hold preparatory discussions with witnesses; 
·         convene separate hearings to hear oral witness evidence, and make all preparations necessary for the oral trial hearing; and 
·         set the value-based element of the court fee.

It is not clear at what stage any decision as to the bifurcation of revocation counterclaims from infringement claims is to be made, although it is likely to be at or before the interim conference.

If many of the above matters are disputed between the parties, it is possible that the interim conference will be a lengthy hearing in itself, potentially little shorter than the one-day trial hearings envisaged under the Rules.

Specific Evidential Issues: Experts

Part 2 of the Rules of Procedure (currently Rules 170-202) relates specifically to evidence procedures under the UPC, although I will not be cover these in great detail here.  A key point to note, however, is the likely role of expert witnesses under the UPC.

Under the current English and US systems, party experts play an absolutely central role, particularly in support or defence of allegations of obviousness.  Court appointed experts are very rare in English patent cases, for example, although scientific assessors have been appointed in recent years in some of the most technically difficult cases.  From experience, a very significant proportion of the work (and costs) involved in preparing an English patent case relates to the identification and interviewing of expert witnesses, drafting expert reports in chief and in rebuttal of opposing party expert(s), and preparing for cross-examination of expert witnesses.  The majority of the trial hearing itself often consists of expert witness cross-examination, largely relating to the validity of the patent(s) in suit.

By contrast, in many continental European systems far less weight is often placed on the evidence of party experts than in common law systems, and oral expert evidence at trial on validity issues is rare in many countries.  Practitioners in England (admittedly, myself included) can get very animated when discussing the need for cross-examination of statements made in expert reports, but given that one of the stated aims of the Rules of Procedure is for trials to be completed within a single day (Rule 113), the scope for lengthy cross-examination is limited.  The Rules of Procedure do allow for the convening of a separate hearing for witness evidence in front of the judicial panel (i.e. unlike US-style depositions - see rules 104(g), 113 and 115), but it appears unlikely that UPC trials and evidence hearings will permit several days of cross-examination as standard, in contrast to the current practice of the English and US courts.

As someone accustomed to the central importance of party expert witnesses in patent proceedings, I see this as a very significant change.  I recognise, however, that practitioners accustomed to, say, German or EPO proceedings may take a different view.  The emphasis to be placed on expert evidence, and the willingness to convene extensive separate evidential hearings may vary between the different local, regional and central divisions, influenced by the legal backgrounds of the individual national judges composing the panels.  If such variations arise, this may be a further factor influencing the parties’ choice of forum.

Trials and Decisions

Oral trial hearings are covered in Rules 111-118.  As noted above, these are intended to be a maximum of one day in duration, although no specific provisions are made for multi-patent trials.

Unless a single judge has been requested by the parties, at least three judges will preside over every UPC first instance trial, comprised of:
·         two local legally-qualified judges and one legal judge from the central ‘pool’ in the case of local divisions averaging more than 100 cases per annum;
·         one local legal judge and two legal ‘pool’ judges in the case of local divisions averaging fewer than 100 cases;
·         two regional legal judges and one legal ‘pool’ judge in regional divisions; and
·         in the central division, two legal judges drawn from different Contracting Member States and one technically-qualified judge from the central ‘pool’ (see Article 8 of the UPC Agreement).

In the case of revocation counterclaims or where the parties so request, an additional technical judge will be allocated to the panel in the local or regional division.

Panels are supposed to deliver a decision on the merits within six weeks on the oral hearing, with issues of quantum of damages and compensation and legal costs being dealt with in separate proceedings (Rule 8).  The form, content and length of judicial decisions varies enormously between Contracting Member States at present, with modern English judgements being particularly encyclopaedic, at least in part as a result of the common law system.  Little guidance on the content of judgments is provided in any of the UPC documents, although Articles 35 and 36 of the Statute of the UPC  do contain some limited provisions, including the possibility of judges expressing dissenting opinions in exception circumstances (see also Article 78 of the UPC Agreement).  Again, the practice of judges may vary depending on the legal tradition in which the members of the judicial panel were trained, although the proposals provide for judicial training regimes and the rules on the composition of panels is intended to provide as much uniformity as possible.

End of the Line
This is the final post in the series, ending with a ‘fade out’ rather than a bang.  I hope readers have found these posts interesting, or at least informative - I have certainly learned a lot through writing them.  If anyone reading has any comments or questions about the contents of this series, or about the UPC in general, I would be happy to hear from you.

Wednesday 5 June 2013

Calling all junior practitioners: IPSoc event on the UPC

IPSoc member examining
an expert witness in a
patent trial?
“Following on from Don McCombie’s recent series of posts on this weblog, IPSoc (the society for junior IP practitioners in the UK) has organised a seminar on Tuesday 11 June entitled “The European Unified Patent Court – Patent Litigation in the Brave New World: What do the proposals mean for junior practitioners in the UK?” The event is hosted at Latham & Watkins’ Bishopsgate offices. Registration opens at 18:30, with the talk commencing at 19:00, and there will be a drinks reception to follow from 20:00.

The seminar will provide an overview of the Unified Patent Court (UPC) proposals, with a particular focus on:
• the potential impact of the UPC on UK patent attorneys, solicitors and barristers in particular;

• the likely timing of the proposals and how long it might take for the full effects of the UPC to be felt; and

• our hopes and fears for the day-to-day practice of patent litigation in the UK and Europe under the new system.
Full details of the event, including how to sign-up, can be found here

Although the event is only open to IPSoc members, IPSoc membership is itself open to the vast majority of junior IP practitioners in the UK (see here for membership details).

Monday 3 June 2013

No Specific Form for Transfer of Priority Right in Germany

 In the decision X ZR 49/12 “Fahrzeugscheibe”, the German Bundesgerichtshof had to decide on the validity of a transfer of a priority right to a “successor in title” according to Art. 87 (1) EPC . Actually, the first (German) patent application had been filed in the name of a subsidiary and the subsequent EP application had been filed by a mother company in the same commercial trust. In the case at issue, German law was applicable to the assignment.

In the first-instance nullity procedure, the Bundespatentgericht had considered the priority claim to be invalid such that the priority application turned into a poisonous post-published national right under Art. 139(2) EPC.

The senate stated that the transfer of the priority right Art. 87 (1) EPC does not impose any specific formal requirements to be met. In particular, the requirements of Art. 72 EPC  for the transfer of the application as a whole (assignment in writing with signatures) do not apply when only the priority right is transferred.

This finding is in contradiction to the decision T 62/05 of a technical board of appeal of the EPO, wherein the board found that “it ... appears reasonable to the Board to apply an equally high standard of proof as the one required for the assignment of an European Patent application by Article 72 EPC, i.e. that the assignment of priority rights has to be in writing and has to be signed by or on behalf of the Parties to the transaction”.

To be on the safe side not only before the German courts but also before the EPO boards of appeal, it therefore remains advisable to prepare a suitable assignment document in the case of a transfer of the priority right.

Posted by Michael Thesen