Friday, 31 July 2015

IP litigation in the UK: on the increase, thanks to IPEC

[Note: a slightly longer version of this post appears on yesterday's IPKat weblog, here]. Back in March, PatLit posted "Patent litigation in England and Wales 2007-2013: is it a predictor for UPC behaviour?", here, having received from Luke McDonagh some fascinating information and thoughts relating to current IP litigation research in the UK.  This has now been followed by the publication of a 53-page UK Intellectual Property Office-commissioned report, Evaluation of the Reforms of the Intellectual Property Enterprise Court 2010-2013, published on Wednesday and accessible via this link. As Luke explains:
In this report, which I co-authored with two economists, Christian Helmers and Yassine Lefouili, our task was to examine the impact of the 2010­-2013 reforms undertaken at the former Patents County Court (PCC), now the Intellectual Property Enterprise Court (IPEC). The primary aims of the reforms were to streamline litigation procedures and reduce litigation costs, and thereby increase access to justice for IP litigants, particularly for individual claimants and SMEs who had previously found the PCC an expensive and unwieldy litigation venue. The reforms introduced a number of changes -- staggered over the period 2010-­2013 -- including a cap on recoverable costs and damages, a reduction of the length as well as complexity of court actions, and the reconstitution of the PCC -- a county court -- as the specialist IPEC within the Chancery Division of the High Court.

In our report we assess the reforms both quantitatively and qualitatively. In our quantitative case counts we find that there has been a large increase in the quantity of IP cases filed at the IPEC post-reforms, and via a comparative study of IP cases at the High Court (HC) and Patents Court (PHC) we show that with the exception of patent cases, there has not been a corresponding increase in cases at the higher level.
We find quantitative and qualitative evidence that the costs cap and active case management by the IPEC judge have been the most influential reforms with respect to the large increase in cases filed at the IPEC post-reforms. We also note that case filings by SMEs have increased substantially following the reforms, fulfilling one of the key aims of the reforms. Importantly, we find that this effect is driven by changes at the extensive (more claimants) and intensive (more cases per claimant) margins of litigation behaviour at the IPEC. Finally, we provide a theoretical model that allows us to gauge the effect of the reforms on those IP disputes that never reach a court. Our theoretical predictions suggest that in addition to encouraging more IPEC case filings, the reforms have had the effect of increasing the quantity of out-of-court settlements as well.
This all suggests that the experiments in reformatting, restructuring and rebranding have paid off. The period in question stops before the Small Claims track started gathering its current momentum, so there may be even better news to come when use of the IPEC is next reviewed.

Wednesday, 29 July 2015

The New European Patent: a new title

The New European Patent, by Alfredo Ilardi, has recently been published by Hart Publishing, now part of the Bloomsbury Publishing.  According to the publishers:
On 17 December 2012, following a complex negotiation which lasted 12 years, the European Parliament adopted Regulations (EU) 1257/2012 and 1260/2012 and the text of the Agreement on a Unified Patent Court (UPC Agreement). These instruments institute the ‘European patent with unitary effect’, the first unified system for the protection of inventions within the European Union. The two Regulations will be applicable after the entry into force of the UPC Agreement, which was signed on 19 February 2013 by 24 Member States of the European Union. 
This book traces the evolution of the idea behind the institution of the European patent with unitary effect, including a comparative analysis of the existing parallel regional and international procedures for the protection of inventions. It presents a synthesis of the different phases of the negotiations which led to the adoption of the first unitary patent system within the European Union. In addition it examines the provisions of the two Regulations, of the UPC Agreement and of the jurisdictional system under Brussels I Regulation. Finally, it reproduces in the Appendix the texts of Regulations (EU) 1257 and 1260/2012 and of the UPC Agreement.
This is not a practitioners' guide; the author is a former Head of the World Intellectual Property Organization's Collection of Laws and Treaties. More than half of it (and it is a slim volume) is taken up with Appendices that can be freely downloaded from the internet.  It would have good to publish the substantive part of this book, giving a somewhat official view of the evolution of the new European patent package, as a stand-alone item, with soft covers and at a fraction of the £65 which is being asked for it.

Details: ix + 150 pages; hardback ISBN 978184946833. Price £65. Book's web page here

Tuesday, 28 July 2015

Coming soon: the new Spanish Patent Act

From our friend and occasional contributor Ignacio Marqués Jarque (Abogado, IP/IT, Baker & McKenzie Barcelona, S.L.P.) and his colleague Silvia Saenz de Ormijana comes this very helpful summary of the new Spanish Patent Act. Many thanks, Ignacio and Silvia!
On 25 July the Spanish Official State Gazette published the new Spanish Patent Act (“Act 24/2015, on Patents”), which amends the still in force 1986 Spanish Patent Act (enacted the same year Spain became a full member of the European Economic Community).

The reforms responds to the legislators' wish
* to adapt the existent patent statute to the new technological developments* to harmonize the Spanish regulatory framework with the European principles set forth in the European Patent Convention*  to simplify and speed up the protection of inventions,  and
 to strengthen legal security and provide for "solid titles" to inventors.
The New Patent Act will enter into force on 1 April 2017, so Spanish industry and legal practitioners will have plenty of time to adapt to the upcoming legislation.

Acknowledging that there is no rush, time has finally come to start digesting the contents of the new Act, which introduces remarkable chances to the traditional patent landscape in Spain. 
This piece (humble in intention) aims to summarize some of the new statute's main developments. As there is a wealth of noticeable changes, so we will be only focusing in those that we consider more relevant without any intention to exhaust the topic … we will have more that 18 months to revisit the issue anyhow! So here we go: 
1.      For the first time, and together with the "traditional" patents and utility models, supplementary protection certificates for medicines and phytosanitary products are included in the list of legal titles granted by the Spanish Patents and Trade Marks Office ("SPTO") for the protection of industrial inventions. (Section 1). 
2.      In order to assess novelty, the six months grace period that is currently granted to the applicant to test the invention where said test does not imply commercial exploitation or offering of the invention (a Spanish peculiarity) is now suppressed. 
3.      The new Act establishes a rebuttable presumption in favour of the employer to claim inventions applied for registration by the employee within a year following expiry of the employment or service relationship. According to the current Patent Act, such inventions could be claimed by the employer in all cases ("iuris et de iure" presumption, Section 19). 
4.      The new Act establishes one single administrative procedure for the grant of patents entailing prior examination on the merits. By doing so, the new Act eliminates the (traditional) possibility to choose between (i) the so-called "general granting procedure" (with no prior examination) and (ii) the much less used granting procedure with prior examination (Sections 36 and 39). The establishment of a "single road" to registration (entailing prior examination in all cases) will be quite an important trend-changing development; according to the SPTO's reports, less that a 10% of the patents applied for in Spain in 2014 were issued with prior examination. 
5.      The traditional system of pre-grant oppositions will be replaced with a post-grant opposition system (EPO alike). Under the new Act, third interested parties will have a six month period to oppose the patent after the publication of its grant. Nevertheless, third-party observations regarding the patentability of the invention might still be filed  (Section 43). 
6.      In accordance with the recent case law set by the Spanish Supreme Court, the Act regulates separately (i) the experimental use exception, which excludes from the scope of the patent protection those acts performed with  experimental purposes and (ii) the "Bolar provision" (performing studies and trials needed for obtaining authorization for the commercialization of pharmaceutical drugs is also excluded from patent  enforcement  - Section 61). 
7.      Without prejudice to collect damages deriving from the patent infringement, "coercive" daily fines are envisaged and will be imposed to condemned infringers as a measure to force the voluntary fulfillment of civil patent infringement judgments. The amount of these daily fines will be determined in the enforcement of the judgment (Section 74.4). 
8.      Two new situations are added to the cases that determine the grant of compulsory licenses (Sections 91 and subsequent sections):
a.      When there is a need to bring to an end anti-competitive practices, declared as such by a final administrative decision or judgment. 
b.      Within the frame of the manufacture of pharmaceutical drugs for export to countries with public health issues, pursuant to Regulation (EC) no. 816/2006, of the European Parliament and the Council of 17 May.
9.      The patentee will be allowed to revoke or limit the scope of his/her patent by modifying its claims at any time during the patent lifespan (which also covers the validity period of the supplementary protection certificate) (Section 105). 
10.  The power of instituting legal actions is acknowledged not only to the patentee, but also to those who can evidence that of having applied for the recordation of the legal instrument (i.e. deed or contract) from which his/her right to file actions derives (Section 117). 
11.  In an unprecedented exemption to the general rule in civil proceedings, the defendant ("alleged infringer") will be granted a two month term to answer the claim /file a counter claim (Section 119). General principle under Spanish law is that defendants in civil litigation have 20 working days to prepare their defense and file all relevant documents to sustain their case.
This noticeable amendment -says the new Act- aims to ensure the principle of defense by adapting procedural deadlines to the "reality of patent litigation", where technical expertises have a decisive role.   
12.  In patent cancellation proceedings where the parties have submitted contradictory expertises, the Judge might decide to request the SPTO the issuance of a non-binding "technical expertise" on the controversial technical issues. The author of such expertise might be called to witness at the trial (Section 120.7). 
13.  For "pre-litigation discovery proceedings" (filed by patentee in order to learn facts or data that are critical to sustain the complaint in a later stage), it is expressly foreseen that investigated party ("future defendant" in the deriving patent litigation) will not be notified of the pendency of such proceedings in order not to frustrate its outcome (Section 124.1). 
14.  For the first time in statutory law, the new Act introduces the possibility for parties foreseeing that will be subject to subsequent interim relief applied inaudita parte to submit the so called "preventive briefs/writs" (Section 132). 
15.  Prior conciliation (mediation) before the SPTO in employment-related inventions is no longer compulsory, but is subject to an agreement between the interested parties (Section 133). 
16.  Utility model protection (until now it seemed quite restricted to mechanical inventions) will now be available for any inventions "capable of industrial application" that consist of providing an object or product of a configuration, structure of composition which results in a "noticeable advantage" in its use or manufacturing process (Section 137 and subsequent sections). 
The state of the art relevant to determine whether a utility model is new and implies an inventive step will consist of everything which prior to the date of submission of the application of the utility model has been made available to the public in Spain or abroad by means of written or oral description or by any other means (same with patents). 
The required level of inventive step, however, seems lower as it will only require that the applied utility model does not derive from the relevant state of the art "in a very evident manner" for the person skilled in the art. This lowered level of inventive step justifies a different duration (10 years compared with the 20 years granted to the patentee). 
Given that utility models will still be granted without examination of the merits (and oppositions will be pre-grant), owners aiming to enforce a utility model granted under the new Act will have to provide for a search report on the state of the art (this being a pre-requisite for the enforcement claim to be processed).

Sunday, 26 July 2015

Obviousness -- not for experts

PatLit has just heard from our friend Colm Ahern (Elzaburu, Madrid) about the latest development involving patent litigation in Spain -- a development which some readers will welcome and others will dread. He writes:
A task for experts -- or for judges?
The Spanish Supreme Court has ruled that the question of obviousness in inventive step is a legal matter, in a judgment of 18 June which was notified just last week. This is an important development for a Court which has traditionally refused to review this matter on the grounds that it was factual and could only be reopened where the ruling of the lower court was shown to be completely irrational. The lack of binding case-law meant that the appeal courts in Spain’s seventeen different regions could adopt widely different approaches.

The author of this judgment is Justice Sancho Gargallo. It is just the latest in a rapidly increasing body of Supreme Court patent case-law which is being led by a number of judges who, like him, have been promoted in the last few years from the Barcelona Appeal Court. A binding precedent has now been created as the ruling confirms the doctrine initially set out in the judgment of 14 April by the same author. It has far-reaching implications for both judges and lawyers, who have traditionally tended to leave the question of obviousness to expert witnesses, a quite extraordinary situation if one considers that these cannot be expected to have anything more than a superficial knowledge of the law. We can now expect to see not only a growing body of Supreme Court case law but also far more lively exchanges at first and second instance.

It is worth noting that the BGH similarly declared that obviousness was a legal question in 2006 (vorausbezahlte Telefongespräche and Demonstrationsschrank). This led it to instruct the German courts in 2010 to take the rulings of other contracting member states and of the EPO into account when deciding the question of obviousness for the same European patent (Walzenformgebungsmaschine).
PatLit has asked Colm for a copy of the decision and will make it available as soon as possible.

Friday, 24 July 2015

Legality of UPC opt-out fees: Ingve is not alone

Verdict on the UPC opt-out fee ...?
Yesterday PatLit drew the attention of readers to this article by German IP practitioner and scholar Ingve Stjerna on the doubtful legality of the proposal to charge prospective patent litigants in Europe for exercising their right to opt out of using the Unified Patent Court (UPC).  Well, it seems that Ingve is not alone.  This blogger has now learned that Benedikt Migdal, of leading British IP practice Bristows, has also questioned the legal basis for this fee on the Bristows UPC Blog, here.

PatLit agrees that the legality of the opt-out fee should be carefully reconsidered. Apart from its plainly dubious legal basis, it is surely wrong in principle and does, as Ingve indicates, suggest that those responsible for the UPC have little confidence in its attractiveness to users if it has to penalise them for not using it.

Any old judge can handle a patent-related contract action, rules court

Medical Research Council v Celltech R&D Ltd, an extempore judgment of Mr Justice Nugee in the Chancery Division of the High Court, England and Wales, on 7 July, is noted on the subscription-only Lawtel service. It's another instructive case as to the court on which an action should be allowed to proceed. Usually the argument is as to whether an action should be heard before the more expensive and high-powered Patents Court or its cheaper, less formal and generally swifter Intellectual Property Enterprise Court. This time, however, the discussion focused on whether the action should be placed before the specialist Patents Court or left on the High Court's General List.  As a contract dispute it could be expected to be heard on the General List, but as a dispute involving patents it could be said to belong to the Patents Court.

The background goes like this: the MRC had licensed Celltech to use inventions covered by a number of patents and applications in various geographic regions, the inventions being in the field of recombinant antibodies and methods for their production, including altered antibody binding sites. Under the patents, Celltech was obliged to pay royalties on the sale of relevant products by itself or one of its affiliates; it was not in dispute that this arrangement included sales by sublicensees.

In 1997, this royalty-bearing patent licence was amended, adding a proviso to the scope of the obligation to pay royalties. Celltech then granted a sublicence to a US company, which in turn granted licences to two other pharma companies. Those two pharma companies then developed two antibody products which they sold in the US. Said the MRC, in addition to royalties already paid by Celltech, royalties at one per cent of the net proceeds of all of those sales during a particular time period were outstanding under the amended licence agreement. The amount outstanding was said to be US$44 million, exclusive of interest, at the issue of these proceedings.

Celltech argued that the proceedings potentially raised complex issues that should be determined in the Patents Court. In particular, a Patents Court judge would more securely and easily resolve questions concerning the construction of the patent licence agreement as well as questions of US patent law, if necessary; case management, including requests for further information, would be better dealt with in the Patents Court rather than the General List. The MRC disagreed:what the court had to look at initially was the construction of the agreement and an estoppel argument, since the agreement had been operative for several years: these were suitable for the General List. Celltech hadn't argued that the products did not fall within the patents and there was no substantial technical dispute. If one did arise, the matter could be looked at again, The MRC also invoked section 62(1) of the Senior Courts Act 1981, in respect of matters that did not arise under the Patents Act 1977.

Nugee J refused the application to list the action with the Patents Court.  In his view:

* In due course there could be a dispute about which products fell within the claims of the existing US patent, but the court did not yet have the material from which it could conclude that something was bound to, or likely to, be in issue;

* The case might be disposed of entirely in relation to questions of contractual construction, fact and the estoppel plea. None of those things gave rise to the need to decide the highly technical issue of which drugs fell within the subsisting patents and nothing before the court indicated that that was something likely, let alone bound, to be in dispute.

* This being so, it was prima facie inappropriate for this action to proceed in the Patents Court -- which would have the practical effect of having the action heard by one of two full-time specialist patent judges, or a deputy judge, which were scarce judicial resources.

* The fact that it might be easier, quicker and sounder for a patents judge to construe licences did not of itself justify the order sought, since construing a patent licence did not require the level of expertise required to decide a patent action.

* There was no reason for thinking that case management issues had to be decided by a Patents Court judge rather than experienced masters in the General List.

Nugee J added obiter that the list of matters that had to be heard in the Patents Court under s.62(1) of the 1981 Act was not exhaustive: it could be that the natural meaning of s.62(1) was that the only proceedings that could be commenced in the Patents Court were those specified, but the practical consequence would be so inconvenient that the word "only" should not be read in.

Thursday, 23 July 2015

The Unified Patent Court and pay-to-opt-out: a critical analysis

If only it were so easy!
From our friend and German intellectual property attorney Ingve Stjerna comes information that he has now had the chance to take a closer look at the planned fee for an opt-out from the competence of the Unified Patent Court; he has thoughtfully summarised his findings with regard to the proposal's legality in "“Unitary patent” and court system – Urgently needed: A legal basis for the opt-out fee", a highly readable four-page paper which you can read in English or in German.

What is the outlook for European patent litigation in light of the planned fee structure? Ingve explains:
The approach of trying to foster the adequate utilization of a newly created court system by making the use of a concurrent judicial competence dependent on the payment of a fee does not really show great trust and confidence of the Contracting Parties as to its expected acceptance. Vice versa, this feeds and increases the skepticism among the users.

This approach becomes fully bizarre as regards patents and patent applications which were granted or applied for prior to the entry into force of the UPCA and thus at a time at which the new court system which they are now meant to be subjected to retroactively, has not even been existing. Such protective rights stand under the previous regime of legal protection, this should continue to be available for them free of charge.

Already due to these manifest doubts in the lawfulness of an opt-out fee under constitutional law its collection should be abstained from entirely, all the more since the confidence in the Unified Patent Court expressed by such step would be an important signal to the user circles. However, this is not to be expected. Therefore, the constitutionality of such fee and of the Agreement purportedly providing for its collection may possibly have to be discussed in the future.

"Before we go to trial, can you explain how you're construction your claims?"

News of Electromagnetic GeoServices ASA v Petroleum Geo-Services ASA & others, an extempore Patents Court, England and Wales, ruling of Mr Justice Mann on 21 July, comes via a short Lawtel note.

This action for patent infringement seems to have attracted quite a bit of pre-trial skirmishing since the court had previously ruled that the claimant patent owner did not have to serve a further pleading giving particulars of the alleged infringement because its construction of the allegedly infringed patent could actually be discerned from earlier correspondence between the parties. Subsequently the claimant wrote to the defendants, indicating a change of stance on its case as to the construction of its patent. At the point the alleged infringers applied for an order that the claimant patent owner provide them with further information in relation to its case on claim construction on the ground that the claim of infringement was now unclear. While this application was granted, Mann J however held that it was not appropriate for him to require the claimant to answer a certain specific question in pleaded form because it was too early in the proceedings to do so and the defendants did not need to know the claimant's answer to their question in order to be able to advance their own case.

Said Mann J, while there was nothing wrong in principle in isolating and defining issues as to claim construction in pleaded form, there were obvious problems in defining construction issues in such a way at too early a stage in proceedings. Claim construction could not be considered in the abstract, but had to be viewed in a context -- and the views of experts would inevitably form an important part of the background against which claim construction should be considered. Large parts of the relevant factual background in any given case would not be apparent at too early a stage, especially where the background was complex, as in the case here.

Friday, 17 July 2015

18th draft of UPC rules "well received"

Via William Jensen (Marks&Clerk solicitors) comes this link to some exciting news for those who are itching to get litigating in Europe's experimental Unified Patent Court (UPC). This latest information reads thus:

The 10th meeting of the Preparatory Committee was held at the Hungarian Permanent Representation to the European Union at the 10th of July. At the meeting the 18th draft of the Rules of Procedure were presented by Johannes Karcher, coordinator of the Legal Framework working group, and Kevin Mooney, Chair of the Drafting Committee. The draft was very well received by the Committee and even if there is one or two items still to settle it was concluded that the Committee expect to agree on a final set of Rules at its meeting in October. The Committee then went on to agree the draft Protocol on Provisional Application of parts of the Agreement on a Unified Patent Court. The Protocol will be opened for signature in the autumn at a date later to be announced.
The Committee also discussed the salary package of the judges, the privileges and immunities of the UPC and the division of costs and responsibilities of the UPC and the hosting Member States. Neil Feinson, coordinator for the IT workstream also confirmed that the contracts for the IT work had been awarded to T-Systems for the hosting work, Miggle for development of the website and Net Services Spa for the case management development.
The next meeting of the Committee will take place on 3 September 2015.
Frustratingly, there was neither a link to the 18th draft nor a conveniently attached Word or pdf document, which leaves us all wondering what the 18th draft looks like. This blogger has no doubt that many people will be sad to see the back of the 17th draft, with which they have been gradually familiarising themselves; he hopes that, if the 17th and 18th drafts are not entirely dissimilar -- as he suspects will be the case -- someone will prepare a handy concordance.

Friday, 10 July 2015

CAFC Judges Debate Correct Claim Construction Standard For AIA Trials

On June 8, 2015, the U.S. Court of Appeals for the Federal Circuit again considered one of the earliest final decisions from the USPTO’s Patent Trial and Appeal Board in an inter partes review proceeding under the Leahy-Smith America Invents Act of 2011. In a set of revised opinions from the panel hearing the appeal, and three additional opinions debating the court’s denial of the patent owner’s petition for rehearing en banc, the court exposed strongly-held – and nearly equally divided – views on the proper claim construction standard applicable to AIA trial proceedings. In re Cuozzo Speed Technologies, LLC, No. 2014-1301 (Fed. Cir. Jun. 8, 2015)(revised panel decision and order denying motion for rehearing en banc). Revised merits opinions are HERE. Order denying rehearing is HERE.

The revised decision did not affect the earlier holdings in the case. See In re Cuozzo Speed Technologies, LLC, 778 F.3d 1271 (Fed. Cir. 2015). Specifically:

·         The “broadest reasonable interpretation” standard applies in AIA trial proceedings.
·         The PTAB’s final decision holding that three claims are invalid as obvious, despite applying references not identified in the challenger’s petition, was not erroneous.
·         The PTAB did not err in denying the patent owner’s motion to amend claims because the proposed claims would have impermissibly broadened the claimed invention.

However, the court as a whole disagreed sharply on whether the panel was correct in applying the “broadest reasonable interpretation” standard when construing claims during the trial.


Cuozzo Speed Technologies, LLC owns U.S. Patent No. 6,778,074, titled “Speed limit indicator and method for displaying speed and the relevant speed limit.” The patent claims, among other things, a speed display connected to a global positioning system device that displays a vehicle’s current speed and indicates when the speed exceeds the legal speed limit for the vehicle’s exact location. Garmin International, Inc. filed a petition for inter partes review of certain claims of the ‘074 patent on September 16, 2012 – the first day that IPR proceedings were available under the AIA. Garmin contended that specific combinations of prior art references created a reasonable likelihood that the challenged claims were invalid. See 35 U.S.C. § 312(a). The PTAB instituted review on claims 10, 14 and 17 of the ‘074 patent, although the PTAB based its decision on claim 10 and 14 by applying references that Garmin did not identify as relevant to those claims. In the ensuing trial, the PTAB construed the claims by giving them the “broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). It also denied Cuozzo’s request to substitute amended claims for the challenged claims. Ultimately the PTAB ruled that all three claims were invalid as obvious.

Cuozzo appealed the result to the Federal Circuit. In a February 4, 2015 divided decision, the court ruled that the USPTO’s decision to institute an IPR proceeding was not appealable, either prior to or after the PTAB’s final decision. See 35 U.S.C. § 314(d) (“[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”). The majority also held that the “broadest reasonable interpretation” standard was appropriate. The court held that the PTAB properly denied Cuozzo’s request to amend the ‘074 patent claims because the proposed claims were broader than the original claims in some respects, even though they were narrower in other respects. See 35 U.S.C. § 316(d)(3). Finally, the court affirmed the PTAB’s final determination that the three claims were obvious. Cuozzo filed a petition for rehearing en banc.

Federal Circuit Denies En Banc Review

The Federal Circuit declined the request for en banc review by a razor-thin margin. Five judges joined an opinion written by Chief Judge Sharon Prost, dissenting from the denial. Four other judges joined an opinion by Circuit Judge Timothy B. Dyk, concurring in the denial. Judge Newman also wrote a separate dissenting opinion.

The principal point of disagreement on the court was the standard the PTAB should use to construe claims during AIA proceedings. The USPTO implemented the AIA’s post-grant provisions by promulgating rules requiring that claims be interpreted using the “broadest reasonable interpretation” standard. In federal court proceedings, on the other hand, claims are construed to have their “actual” meaning to a person skilled in the art based on the claim language, specification, prosecution history, and – occasionally – other extrinsic evidence. The USPTO’s broader construction may make it easier for the Board to invalidate a claim as obvious or lacking novelty. This is a conservative approach when a claim is undergoing examination, but becomes an issue when applied to issued claims not undergoing further examination.

In a short opinion concurring in the denial of rehearing, Circuit Judge Dyk argued that the “broadest reasonable interpretation standard” was supported by the AIA’s legislative history. The USPTO’s use of that standard for decades was well known to Congress, and the legislative history is silent about requiring a different standard. In addition, Judge Dyk argued, Congress extended broad regulatory authority to the USPTO to adopt rules governing PTAB trials, so it must have understood that the Office was likely to adopt the standard it had consistently used. Judge Dyk also noted that court action was inappropriate when Congress currently is considering legislation that would change the applicable standard:

In the absence of evidence of congressional intent to abrogate the broadest reasonable interpretation standard, we should not act to adopt a different standard based on our own notions of appropriate public policy. If the standard is to be changed, that is a matter for Congress. There are pending bills which would do just that.

Slip 2 (citing three bills pending in current Congress: Innovation Act, H.R. 9, § 9(b)(1)(C); PATENT Act, S. 1137, § 11(a)(4)(A)(vii); and; STRONG Patents Act of 2015, S. 632, § 102(a).

In her dissent, Chief Judge Prost argued that the AIA post-grant trial mechanism was a “new, court-like proceeding[,]” and thus the construction standard that applies in traditional litigation matters should apply. The dissent dismissed Judge Dyk’s review of the AIA legislative history, noting that the history is silent about the proper claim construction standard and, as the Supreme Court has noted, Congress’ silence on an issue is not helpful in resolving an issue of statutory intent. Instead, she argued:

Congress’s intent in creating a completely new type of PTO proceeding—one bearing the efficiency and finality of district court adjudications of patent validity— could not have been clearer. The panel majority fails to explain why Congress (or anyone else) would have thought it desirable or necessary for the Board to construe the claims during IPRs under a different legal framework than the one used by district courts.

Prost Dissent at 3. Chief Judge Prost also argued that the Federal Circuit has only embraced the “broadest reasonable interpretation” standard as a useful tool prior to patent issuance or during reexaminations or reissues. In those settings, the standard reduces the possibility that a claim later will be construed more broadly than was assumed during examination. In contrast, the standard should not apply when the patentee lacks a liberal ability to amend pending claims. She noted that under the PTAB rules, amendments are possible, but limited. Because the AIA IPR trials are much like the district court proceedings they were intended to replace, with “no back-and-forth between the patentee and examiner seeking to resolve claim scope ambiguity [and] there is no robust right to amend[,]” the dissent argued that the “broadest reasonable interpretation” standard should not apply.

To find otherwise would ignore the difference between the broadest reasonable interpretation and what a patent actually claims. In obtaining a patent, a patentee discloses his invention to the public in exchange for a limited monopoly, as defined by the claims of the patent. To invalidate those claims using a different standard than one that considers the true meaning and scope of a claim would violate the bargain the patentee struck with the public.

Prost Dissent at 4-5.

Judge Newman filed a separate dissent, pointing out that all amicus briefs submitted in the case argued against different standards in PTAB and district court proceedings, stressing the concern that different claim constructions would lead to uncertainty a lack of predictability in patent rights.

In light of the divergent views expressed in the concurring and dissenting opinions, it is likely that Cuozzo will petition the U.S. Supreme Court to take the case in the 2015 term. In addition, the judicial debate may affect Congress’ consideration of pending proposals to resolve the issue in patent reform legislation. In the interim, the “broadest reasonable interpretation” standard will continue to apply in all AIA proceedings.

On Finding the Most Promising Springboard - T0698/10

The decision T0698/10 of one of the EPO's technical boards of appeal contains interesting notes on the problem of determining the closest prior art as a starting point for the problem-and-solution approach used for the assessment of inventive step.

Here is the analysis of the board (emphasis added by the board):
Determining the closest prior art

3. The first step of the problem and solution approach is to determine the closest prior art, i.e. the most promising starting point - or the most promising springboard to the invention - for the assessment of inventive step. The jurisprudence of the boards of appeal has established criteria for identifying the closest prior art, see CLBoA, section I.D.3, with an emphasis on the following two:
(a) As a first criterion, the closest prior art should be related to the claimed invention, in the sense that it should disclose subject-matter conceived for the same purpose or aiming at the same objective, corresponding to a similar use, or relating to the same or a similar technical problem or, at least to the same or a closely related technical field.
(b) As a second criterion, the closest prior art should disclose subject-matter having the greatest number of relevant technical features in common with the claimed invention, i.e. requiring the minimum of structural and functional modifications.

3.1 In the present case, the subject-matter of claim 1 of the main request concerns a video processing method for decoding a bitstream according to the AVS standard. The claimed method provides an improvement over a conventional AVS decoding in that it allows the decoding of bitstreams coded according to different versions of the AVS standard (see section 2 above).

3.2 D1 is an article describing the main technical features of the AVS standard for coding and decoding video signals. The AVS standard is described in the present application as the starting point for the invention (see paragraphs [0002] to [0006] of the application as filed). D1 thus belongs to the same technical field as the claimed invention, i.e. the coding and decoding of video signals according to the AVS standard. It also serves a similar purpose and implicitly or explicitly addresses similar or the same technical problems as the claimed invention, i.e. those solved by the use of the AVS standard, such as a highly efficient video coding/decoding and an optimisation between absolute coding performance and complexity of implementation (see the INTRODUCTION section on the first page of D1). Moreover, the video processing method disclosed in D1 has several technical features in common with the method of claim 1, these features being essentially implied by the reference to the AVS standard in claim 1.

3.3 The appellant disputed that D1 could be regarded as the closest prior art, because it did not disclose the problem arising from the existence of different versions of the AVS standard (see paragraph [0006] of the application as filed).

3.4 The board concurs with the appellant that D1 does not disclose this further problem, but disagrees that it should disqualify D1 as starting point for the assessment of inventive step. Indeed, the closest prior art need not disclose all the problems solved by the claimed invention, in particular it need not disclose the objective technical problem, which is only determined in the second step of the problem and solution approach based on the technical effect(s) provided by those features distinguishing the invention as claimed from the closest prior art.

3.5 In the present case, there is no other prior art on file which discloses the objective technical problem or which would qualify better than D1 as the closest prior art. During the oral proceedings, when asked by the board which prior art was the closest prior art if not D1, the appellant replied that there was none. The board cannot agree with this view. According to Article 56 EPC an invention is to be considered to involve an inventive step if, "having regard to the state of the art", it is not obvious to the skilled person. Hence, the assessment of inventive step has to be based on an evaluation of the invention in view of the prior art. The expression "closest prior art" also does not mean that it must be sufficiently close to the claimed invention on an absolute basis, but only that it must be relatively closer to the claimed invention than the other prior-art disclosures, i.e. it is selected as the most promising starting point - or the most promising springboard towards the invention.

3.6 The appellant further argued that, according to the established jurisprudence of the boards of appeal, it was essential that the (objective) technical problem be at least suggested in the closest prior art, in order to avoid an inadmissible ex post facto analysis. It referred to CLBoA, section I.D.6 and several decisions cited therein.

3.7 The board disagrees with the appellant's interpretation of the jurisprudence in section I.D.6 of the CLBoA. This section does not refer specifically to determining the closest prior art (dealt with in CLBoA, I.D.3), but generally to the interpretation of prior-art documents, which should not be influenced by the problem solved by the invention, where the problem is neither mentioned nor suggested in these documents.

When applied to D1, this jurisprudence means that the interpretation of D1 should not be influenced by a problem solved by the invention, but neither disclosed nor suggested by D1, which in the present case is a problem arising from the existence of different versions of the AVS standard (see point 3.3 supra). However, it does not mean, as argued by the appellant, that this problem should at least be suggested in D1 in order to avoid an inadmissible ex post facto analysis (see point 3.6 supra). The board's interpretation of D1 under point 3.2 supra is based on the disclosure of D1, without any reference to or influence by the above problem relating to different versions of the AVS standard.
Hence, the appellant's arguments under point 3.6 supra are not persuasive and the board's interpretation of D1 complies with the jurisprudence in CLBoA,
section I.D.6.

3.8 The appellant further submitted that the established jurisprudence of the boards of appeal required that the objective technical problem be related to the actual disclosure of the closest prior art. The appellant referred to CLBoA, I.D.3.3 and specifically to decisions T 835/00, T 686/91 and T 1898/07 cited therein.

3.9 The board is not convinced by these arguments for the following reasons.
According to the above three decisions, a prior-art disclosure not mentioning a technical problem which is at least related to that derivable from the patent specification under examination does not normally qualify as the closest prior art, however many technical features it may have in common with the claimed subject-matter (see T 686/91, point 4 of the Reasons, T 835/00, point 4.2 of the Reasons, and T 1898/07, point 45 of the Reasons).

In each of decisions T 686/91 (see point 4 of the Reasons), T 835/00 (see section 4.4 of the Reasons) and T 1898/07 (see points 46 to 48 of the Reasons), the board considered that the prior-art document which had the greatest number of features in common with the claimed subject-matter solved a technical problem unrelated to the problem solved by the claimed invention. For this reason, the board concluded in each of these decisions that the closest prior art, i.e. the most promising springboard towards the invention, was another prior-art document which had fewer features in common with the claimed subject-matter but solved a problem more closely related to that of the claimed invention.

In other words, in each of these three decisions the board considered that in those particular cases, although the afore-mentioned second criterion (greatest number of features in common) was met, the afore-mentioned first criterion was clearly not met, because the solved problem was unrelated to that of the invention. Hence, the board considered that, overall, that prior art was less suitable as closest prior art for assessing inventive step than other available prior art.

3.10 In the present appeal case, the situation is different from that of decisions T 835/00, T 686/91 and T 1898/07 in several aspects:
(a) D1 does not solve an unrelated problem. As explained above, it relates to the same technical field as the present application, which implies that it addresses problems related to video encoding using the AVS standard. Hence, there is no problem solved by D1 which is unrelated to a problem solved by the claimed invention.
(b) The application as filed describes the AVS standard as the starting point of the invention. D1 is essentially a prior-art document providing an overview of the AVS standard. D1 is thus essentially the same prior art as the one used by the appellant (and presumably also by the inventors) as the starting point for the claimed invention. It is thus surprising that the appellant argued that document D1 was not a suitable starting point for the assessment of inventive step.
(c) The reasoning in decisions T 835/00, T 686/91 and T 1898/07 is based on the underlying principle that the closest prior art should be the most promising springboard towards the invention (see T 835/00, point 4.1 of the Reasons). This is clearly the case for D1. Moreover, the appellant could not point to more suitable prior art; instead, it merely stated that in the present case there was no closest prior art.

Hence, the board is not convinced by the appellant's arguments that only with hindsight can D1 be regarded as the closest prior art.

3.11 In view of the above, the board considers that D1 meets the requirements established by the jurisprudence for being regarded as the closest prior art.
Note for the practice: If you argue that a certain document is not the closest prior art, be sure to know which one you think is closer. 

Point 3.4 hints to a discussion which is sometimes more problematic: Inventions sometimes solve a whole plethora problems (to render the apparatus cheaper, better, fancier or simply more beautiful) and these may depend on the starting point chosen and vice versa.  The choice of the "subjective" problem is decisive for the "objective technical" problem and plays an important role not only in relation to inventive step (Art. 56 EPC) but also in relation to infringement by equivalent means.

Posted by Michael Thesen

Thursday, 9 July 2015

Barcelona makes special fast-track provision for MWC-related litigation

From our friend Ignacio Marqués Jarque (Abogado. IP/IT Baker & McKenzie Barcelona, S.L.P.) comes news of a fascinating development from Barcelona -- a special fast-track procedure that covers patents and the protection of confidential information as well as other species of intellectual property rights.  This is what he tells us:
IP specialized Commercial Courts of Barcelona (Spain) committed to provide quick relief during the Mobile World Congresses. A "rocket docket" by the Mediterranean?

Since 2006 and until 2018 (at least), Barcelona hosts the renowned Mobile World Congress (MWC) - which happens to be the world's largest exhibition for the mobile industry, with an average attendance of more than 90,000 professionals representing more than 200 countries from across the globe.

In order to protect IP rights in a timely and effective manner during the celebration of the MWC, the IP-specialized Commercial Courts of Barcelona have jointly agreed to create a sort of "fast track" to deal with IP-related interim relief applications generated within the context of the congress.

The timeframes considered by the Commercial Courts in Barcelona are ambitious, specially when compared with the standard duration of these kind of proceedings in Spain: it will be
1. two days to deal and resolve ex parte interim relief application and

2. ten days to do so in adversarial proceedings (the general rule in Spain is that parties are summoned to attend a specific hearing to discuss the merits of the sought relief).
In order for these timeframes to be effective, the plaintiff needs a specific protective letter -- in Spanish, "escrito preventivo"-- previously filed and recorded within the Barcelona Commercial Courts (please see this post on this issue in Spanish patent litigation).

Why is the recordation of a protective letter a pre-requisite for accessing the "fast track"? According to the resolution of the Commercial Courts of Barcelona, the filing and recordation of a protective letter (i) lets the Court learn the arguments of the alleged infringer (even if the IP owner asks for the application to be specifically processed ex parte), and (ii) secures the alleged infringer's readiness to attend the interim relief hearing within a short timeframe (in case the Court decides that it wants to hear the parties before taking any decision).

These measures were approved with the occasion of the 2015 edition of the MWC, and will be probably re-established for future editions.
It would be good to know if any other jurisdictions make special event-related arrangements for speedy IP litigation.  If readers have any information, we hope that they will share it with us.

Wednesday, 8 July 2015

Extrication from the Stranglehold of Art. 123(3) EPC - T1360/11

The decision T1360/11 relates to a captious problem in relation to Art. 123(3) EPC (extension of the scope of a granted claim).

Presume that a claim defines a composition as comprising substances of Group A in a total amount of 1 - 10%, wherein Group A includes the substances A1, A2 and A3. Limiting claim 1 to the substance A1, i.e. to a composition comprising substance A1 in an amount of 1 - 10% would not exclude the presence of A2 and A3 - even in amounts higher than 10%. A composition with 10% of A1, 10% of A2 and 10% of A3 would be covered by claim 1 as amended but not by claim 1 as granted and therefore contravene Art. 123(3) EPC. According to the technical board of appeal, "This gives rise to a situation in which a way out for the patentee is anything but easy." (Reasons 3.1)

The technical board of appeal proposes the following solution (cited from the headword):
Where a granted claim directed to a composition defined in an open manner and including the presence of a component belonging to a class or list of compounds in a quantity defined by a range is later amended by limiting the definition of the class or list of compounds, a possible infringement of the requirements of Article 123(3) EPC may be avoided by including in the amended claim a quantitative condition on the limited class or list of compounds and an additional constraint on the total amount of compounds belonging to the broader class or list (point 3.11).
Translated to example mentioned above the claim would read composition comprising substance A1 in an amount of 1 - 10% , wherein the total amount of substances of Group A is 1 - 10%.

Tuesday, 7 July 2015

Undermined by Hamsters - T 1846/10

The decision T 1846/10 of one of the EPOs technical boards of appeal relates to a method for cultivating live vaccines. The method includes cultivating attenuated L. intracellularis bacteria to obtain strains which are apathogenic, immunogenic and genetically stable.

Paragraph [0043] of the patent states that:

"Generally, an attenuated immunogenic L. intracellularis strain is produced after continuous culture for between at least about 150 and 250 days, during which time the culture is passaged at least about 7 to about 12 times."

Pursuant to the patent, serially passaged bacteria are tested in host animals for signs of attenuation. Tests were then carried out with various host animals including hamsters (example 5) and pigs (example 6) and it turned out that no immunogenic effect could be proven for hamsters (example 5).

The opponent used this as a basis for his argument that the disclosure of the patent did not enable the skilled person to carry out the invention without undue burden. The patentee responded as follows (cited from margin numbers 28 and 29 of the decision, epmphasis added):
The respondent submitted that for an objection of lack of sufficiency of disclosure to succeed there must be serious doubts, substantiated by verifiable facts, that the invention can in fact be carried out by the average person skilled in the art without undue experimentation or inventive skills (see decision T 19/90, reasons, point 3.3). Since the burden of proof lies with the appellant (the opponent), it was necessary to provide experimental evidence that the invention could not be carried. This had not been done.

In the board's judgement, verifiable facts are
(i) that example 5 of the patent was carried out in line with the general teaching of the patent,
(ii) that the percentage of animals which developed enteritis in example 5 was the same between the group vaccinated with the culture of a high passage strain of L. intracellularis and the non-vaccinated group, and
(iii) that the histological lesions were worse in the vaccinated group (the evidence supporting this fact being in paragraph [0103] and the table on page 17 of the patent).

Therefore, the board concludes that example 5 of the patent provides verifiable facts which raise serious doubts that the invention can in fact be carried out by the average person skilled in the art without undue experimentation or inventive skills by following the guidance provided in the patent. Under these circumstances, no additional experimental evidence from the appellant is required as it can rely on the evidence provided by the patent itself. The board concludes that the appellant has discharged its burden of proof.
As a note to retain for the practice: be careful mentioning embodiments for which the invention does not properly work. These might be used against the patent for an attack based on insufficiency of disclosure.

Friday, 3 July 2015

What happens to the UPC if the UK leaves the EU?

From the most recent Rouse newsletter comes some highly pertinent information and some thoughtful comment on a question that this blogger is frequently asked:
What will happen to the UPC [that's the Unified Patent Court] if the UK leaves the EU?

Will the planned referendum on the UK's continued membership of the EU delay the opening of the UPC? It appears the UK Intellectual Property Office has had this question in mind, since after months of speculation, it released the following statement to the IPKat blog, last week:
"The Government is committed to this project and wants the UK to be part of a European patent system that supports growth and fosters innovation. The Prime Minister was personally involved in the negotiations on the Unitary Patent regulations [so you know who to blame or bless, depending on your point of view] and the UPC Agreement and the UK is taking an active role in the current work to implement the new system.

There is still work to be done before the UK can ratify the Agreement, and I am committed to pressing ahead with this. It is the Government’s intention for our domestic preparations to be completed by Spring 2016".
Questions remain as to how much money the UK government will be prepared to invest in setting up the UK Divisions of the UPC before the planned referendum. The statement is notably silent on when the Government intends to ratify the UPC Agreement. Even if it is proposing to ratify in 2016, will it want to secure a venue, administrative staff and IT system for the UK Divisions of the Court before this date, or is it likely to defer this investment? Indeed, might it delay ratification itself until after the 2017 referendum leading to inevitable delay to the UPC? [this blogger assumes that a delay until after the referendum is the course of action that is both easiest to implement and simplest to justify, given the uncertainties and the need to avoid incurring wasted expense]

If the UK votes to leave the EU, it must also leave the UPC and UP although there is nothing to stop the new system continuing without the UK. However, it may well be less attractive to patentees and litigants if the UK is excluded. We would also expect the London branch of the Central Division to be moved elsewhere -- possibly to the Netherlands which is the fourth biggest patent filing country in the EU. However, regardless of the UK's participation, the new system will still offer costs savings for patent protection and litigation covering a territory that is home to hundreds of millions of consumers.

Implicit disclosure in prior art - a matter of fact? - "Coenzym Q10"

Skilled person reproducing the prior art
Appeal proceedings in German nullity actions are limited to the examination of errors of law. The Supreme Court is therefore bound by the facts established by the court of first instance, unless specific grounds justifying doubts about their correctness or completeness exist (§ 117 of the Patents Act § 529(1) Nr. 1 ZPO).

This is, however, hardly perceivable in real life patent nullity appeal proceedings because the discussions mostly turn around the question of patentability, sometimes enablement and all of these are considered to be questions of law (see e.g. BGH "Stabilisierung der Wasserqualität") and therefore fully re-examined in the 2nd instance. The above exclusion of questions of fact is therefore, in practice, mostly limited to factual circumstances of prior use.

In the decision "Coenzym Q10", the BGH establishes a further group of cases where the examination is precluded. It relates to the specific case of implicit disclosure where carrying out the teaching of the prior art is said to inevitably lead to a product falling under the scope of the claim, wherein the product itself (or the properties thereof) are not explicitly described. These cases leave plenty of room for speculations on what the skilled person might or might not have experienced when reproducing the prior art.

The BGH rules (in a rough translation by the author of this note) that ".... judgements of the Patent Court supporting the conclusion that reproducing an embodiment in a document of the prior art lead to the realization of a feature of the subject-matter of the patent in suit are binding for the appeal procedure unless specific indications justifying doubts in their correctness exist"

Inventive step: is 'long felt want' still worth arguing?

VPG Systems UK Ltd v Air-Weigh Europe Ltd [2015] EWHC 1862 (IPEC), is a tidy little decision of Judge Richard Hacon, sitting in the Intellectual Property Enterprise Court, England and Wales, on 1 July, where the court found that VPG's patent for a device for indicating to the driver of a commercial vehicle that load limits for that vehicle had been reached or exceeded was invalid as lacking an inventive step [this is the second blogpost on issues arising between these parties: here's the first].

Of particular interest to this blogger is the judge's comment at [66]:
"I would only add this. No argument of long felt want was run by VPG. Superficially one might have expected an argument of that kind in these proceedings. The evidence from the experts suggested that this was a field in which the performance of inclinometers and accelerometers was advancing at quite a rapid rate in the period leading up to the Patent's priority date. Had long felt want been run, it is possible that it was around 2006 when such advances made a system of the type claimed in the Patent commercially attractive. As it is, long felt want was not enrolled to assist VPG's case so the change in performance of inclinometers is neutral".
'Long felt want' is an argument that had its heyday in the previous century, when a patent's inventive step (a.k.a. lack of obviousness) was something that was more often than not established by the application of rules of thumb which established that an invention was not obvious if, e.g., there had long been felt to be a want of it but that want had not been hitherto satisfied, or that it was obvious if it consisted of the application of a known principle for a known purpose or was reasonable for the person skilled in the art to try it. However, after (i) the Court of Appeal in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 created a formula that looked specifically at the difference between the alleged patentable invention and the prior art and (ii) advances in computer storage, retrieval and search made the prior art far more accessible than had previously been the case, reliance on rules of thumb -- including 'long felt want' -- appears to have declined.

This is very much a personal impression, but this blogger feels that the very fact that a party raises 'long felt want' as an argument that its patent is not obvious is a flag being waved in the direction of the court that the argument in favour of there being an inventive step is a really weak one. A search of patent cases on the BAILII database suggests that the words 'long felt want' have scarcely been uttered by any British judge over the past five years.