Dyson again: prior art lost in translation

The Dyson decision (noted by PatLit here) is particularly interesting from the viewpoint of an ex-patent translation proofreader, writes Luke Ueda-Sarson, who says:

"I'm convinced that translation errors are rife in patent litigation, but they just happen to go undetected. A recent American paper on the topic indicated that translation errors may be important, but the authors basically couldn't find any actual examples from court cases. Dyson looks like it is such a case. True, Samsung only came away with claim 9 intact, but there is every chance they shouldn't have got that either. Perhaps more interestingly, Dyson are really leaving themselves to further attack open with that Sanyo reference, since it's not as poor as it was made out to be.

I'm currently discussing this case on the patent translation e-mailing list on yahoo groups, and trying to get a variety of views from experienced translators on their take on the critical passage. Hopefully I can synthesize the various threads at some point.

Anyway, the critical 1977 Sanyo reference was "in the agreed translation" (sic, whatever that means) held to disclose:

"Even if the air flows within the intermediate cover 11 through the turn guide pipe 17, a predetermined amount of dust still remaining in the air is caught by means of the fine filter 18."

The reference was essentially discounted because the skilled reader wouldn't know what to make of the words "fine" and "predetermined"; they render the passage non-sensical, and the general sense is incapable of clear interpretation. Hence being unavailable for an obviousness attack.

But neither of the critical words appear in the Japanese.

A first-stab translation is as follows:

"The air travels through the inner lid 11 via the swirl-guidance barrel 17, and due to the filter 18 disposed part-way along, some of the dust that is still contained in the air is captured."

This of course is entirely different from what was proferred in court. There is no conditional "if".  The filter is just a filter, not a "fine" filter, so there is no reason to ask "why doesn't it clog?". Perhaps more importantly, there is no later contradiction that was held to exist with it requiring to be coarse. In fact, on page 3 it describes filter 18 specifically as being a *coarse* filter.  And "predetermined" is simply a mistake for "some"; "some" making perfect sense in his invention, unlike "predetermined".

Thus the facts that the judge took into account are completely wrong - not one of the problems which he cited with the translation exists in the original.

As an aside, I must say the judge has to my mind a highly improper way of referring to the translation as if it is the original document. Does not the person skilled in the art know all languages, needing no translation service? Judges should be alive to the fact that any translation may contain errors. If a translated document looks to have some weird language usage, surely (surely!), the first thought should be to ask "is this translation up to scratch?" and not say, as happened in this case, that the skilled reader could reasonably "conclude that [the people who actually invented the technology] had not fully understood the technology"!

Bad facts lead to bad law, 'tis said..."

From OED to QED: "vacuum cleaner" defined

Last week, in the Patents Court for England and Wales, Mr Justice Arnold invalidated the main claims in two Samsung cyclone vacuum cleaner patents in Dyson Technology Ltd v Samsung Gwangju Electronics Ltd, [2009] EWHC 55 (Pat). The cited prior art included Dyson vacuum cleaners and one patent which predated even Dyson's original patent. Samsung did however have some limited success in its being able to amend certain other claims.

One curiosity that arose in this case was that the parties could not agree upon the meaning of the term "vacuum cleaner". Dyson contended that, in both of the challenged patents, "vacuum cleaner" had a broad meaning and covered any apparatus that sucks up dust and dirt from a surface. Samsung disagreed: in its view the term should be interpreted more narrowly, being restricted to machines for domestic and light industrial cleaning duties. The judge expressed some surprise at the fact that, since neither party claimed that "vacuum cleaner" was a term of art, no dictionary definition was offered as to what the words meant, leaving it to the judge himself to turn the pages of the Oxford English Dictionary and conclude that the words meant "an electrical appliance for removing dust (from carpets and other floorings, soft furnishings, etc.) by suction". While it is clear that dictionaries in general, and even the respected Oxford English Dictionary, have no binding force, their power to persuade and perhaps even to tip the balance should not be overlooked.

Ocean Tomo strikes again: this time it's fixed fee damages assessments

Earth Times reports that Ocean Tomo, best known as an intellectual property auction house, is offering another novelty: fixed fee pricing for damages expert services in patent infringement cases.

Left: will fixed-fee packaging for damages assessment lead to good value -- or to commoditisation?

According to Andrew Carter, Managing Director of Ocean Tomo’s Expert Testimony Practice:

"While law firms have already been moving in this direction by providing flat fee services, instituting cost caps, and providing firm budgets, expert testimony has remained more of a traditional ‘pay by the hour’ business. Given the changing nature of the patent infringement landscape, the traditional system may be inappropriate for some cases or certain clients".

According to the report, pricing will typically range from US$10,000 to US$45,000 per phase for participating experts.

In a notoriously open-ended area like the cost of patent litigation, a flat-fee system for assessing damages means that at least one element of the litigation bill can be confidently predicted and budgeted for -- but not everyone will welcome the move. Per-hour fees are the fruits of a professional relationship, while fixed fees are the sign that those services have become a commodity. If Ocean Tomo's service catches on, market forces will find it impossible to resist entering into competition -- and where price-sensitivity is the reason why a litigant opts for a flat-fee assessment, that same price-sensitivity may drive the same litigant to the cheapest damages assessment package, squeezing profit margins and putting quality of service at least in theoretical jeopardy.

Are the UK courts anti-patent? Judge for yourself

The debate as to whether British patent courts are anti-patent has flared up again (see the IPKat post here, plus appended comments from Lord Justice Jacob, among others). You can judge the attitude of the British judiciary for yourself here, where IP practitioner and fellow blogger Peter Groves has compiled a list of all 17 Patents Court and Patents County Court decisions on infringement and validity which have been made available on the BAILII website.

RIM v Visto: Mr Justice Arnold takes charge

An interesting study in case management can be found in Research in Motion UK Ltd v Visto Corporation (and vice versa), [2008] EWHC 3025 (Pat), a Patents Court decision of Mr Justice Arnold on 12 December which PatLit nearly overlooked completely on account of its proximity to the holiday season.

In short, BlackBerry operator Research in Motion (RIM) applied for patent proceedings involving patent-owning but non-manufacturing entity Visto to proceed by way of a split trial, with the first trial being expedited. RIM had previously commenced proceedings for the revocation of three of Visto's European patents, while Visto (i) counterclaimed for infringement of its own patents by the entire Blackberry system and (ii) revocation of four of RIM's patents. Visto failed to identify any product that might infringe RIM's patents, and RIM offered an undertaking not to assert its four patents against Visto, its customers or licensees. 

Before Arnold J, RIM submitted that a single trial would require common general knowledge of the field to be considered at different priority dates for each patent. RIM also argued that Visto's counterclaim for revocation involved consideration of additional prior art.  Accordingly it made sense to split the trial.  Visto maintained that there was a valid juridical forensic advantage for it in having all the claims heard at the same time: by doing so it could place RIM in a squeeze: any contention by RIM that Visto's inventions were obvious would have the effect that RIM's patents were also invalid.

Arnold J ordered a split trial.  In his view

1. The trial of all seven patents together would be unwieldy and burdensome, demanding consideration of seven different sets of claims and raising the possibility of the parties seeking to assert the independent validity of more than one claim for each patent. The impact of differing priority dates and, therefore, differing states of common general knowledge, also had to be considered, as did the additional prior art. 

2. Since Visto's attack on RIM's patents was of no commercial significance to the non-manufacturing Visto, the case for a split trial was overwhelming. Visto's attack on RIM's patents could be described as purely forensic manoeuvring, which was not sufficient justification for imposing the burden of a trial of all seven patents together upon the court and the parties.

3. The only real argument against a split trial was the forensic advantage from the squeeze--but even this was not a significant advantage in terms of the commercial realities of the situation. 

4. It was plain that RIM's overriding objective was to avoid infringing Visto's patents, preferably through their revocation. RIM would stop at nothing to achieve this, risking even the possibility of an adverse impact on its own patents.  Any relevant evidence adduced by RIM concerning Visto's patents could be used by Visto at the subsequent trial of its counterclaim. A split trial was therefore appropriate. 

The judge added that commercially significant patent disputes should be tried promptly wherever, and to the greatest extent, that this was possible. If Visto's counterclaim was successful it could shut down the entire Blackberry network in the United Kingdom.  This being so, the commercial significance of this battle ran far wider than merely the interests of the immediate parties, but also affected third parties such as mobile phone operators. Also, the court's decision on validity might be of assistance to foreign courts confronted with infringement issues--although that factor was of less weight. Accordingly, a modicum of expedition was appropriate in fixing the trial date for RIM's assault on Visto's patents. However, the trial of the counterclaim for revocation of RIM's patents would be listed in the ordinary way.

Draft judgment accounts for patentee's share price sensitivity

In Schlumberger Holdings Ltd v Electromagnetic Geoservices AS, Mr Justice Mann (Patents Court, England and Wales) was informed that the dispute -- involving the validity of three patents -- was highly price sensitive. This was because the judge's decision could affect the valuation of Electromagnetic Geoservices, a Norwegian company, on the Oslo stock exchange. The judge was asked, and agreed, (i) not to take the normal course of providing a judgment to the parties in draft before handing down the finalised version but instead to deliver his decision on notice to the parties and to provide a written judgment on that occasion and (ii) to do that at a point in the day after the Oslo stock exchange had closed (hence "the timing of this excercise, at 4.30pm", GMT). Giving the draft judgment on Monday, the judge added:

"For the avoidance of doubt, the substance of the judgment, and in particular this summary, is available for public and can be made available to third parties. In the event of any conflict between this summary and my judgment, the latter prevails and is authoritative".

For the record, the judge's summary was available in court to anyone who asked, and there were many people in the public gallery.

Nowhere to escape from virtual world patent?

The US patent infringement suit brought by virtual world platform Worlds.com against MMO ("massive multiplayer online") publisher NCSoft has attracted some opprobrium, as bit-tech.net reports. The action alleges infringement of a patent filed back in 2000 for an invention reportedly described, somewhat vaguely as a "system and method for enabling users to interact in a virtual space". The objection is that the wording of the patent is such that it could pretty well apply to any MMO or online world in existence. NCSoft plans to fight. In the meantime, sympathisers might draw some comfort from this comic strip on penny-arcade, kindly sent in by Kristof Neefs.

Commercial success: not the easy way to prove non-obviousness

The December 2008 Finnegan newsletter "Last Month at the Federal Court" carries a note on In re DBC, No. 08-1120 (Fed. Cir. Nov. 3, 2008), in which the Federal Circuit held that, during ex parte reexamination, evidence that it was necessary for a patentee asserting the validity of its patent to prove that sales of its product were a direct result of the unique characteristics of its claimed invention in order for it to demonstrate non-obviousness, where the non-obviousness was founded on an assertion of commercial success.

DBC's patent was for a nutraceutical composition comprising a mixture of the pulp and pericarp of the mangosteen fruit. The USPTO granted a third party’s request for ex parte reexamination and rejected the patent in its entirety as being obvious over a combination of seven prior art references. To provide objective evidence of nonobviousness, DBC submitted three declarations which sought to demonstrate the success of the commercial embodiment of the patented invention, sold commercially as XanGo juice. The examiner, unpersuaded by DBC’s evidence, made the rejection final in a decision that was upheld by the Board. DBC then appealed to the court.

The Federal Circuit agreed that there was substantial evidence to support the Board’s determination that DBC’s evidence of commercial success was insufficient to upset the prima facie case of obviousness. Declarations made by officers and employees of XanGo LLC, the exclusive licensee of DBC and marketer of XanGoTM juice, were offered in an attempt to show that the juice was made according to the patent's claims and to demonstrate the commercial success of XanGo juice. The evidence was sufficient to demonstrate that XanGoTM juice fell within the scope of the claims and DBC did not need to show that the product fell within every conceivable embodiment of the claims in seeking to rely upon evidence of commercial success. However, the sales evidence had to reveal in some way that the driving force behind those sales was the claimed combination -- after all, the sales might have been boosted by factors other than the patent, such as the increasing popularity of the fruit from which it was made or the appealing nature of the branding and marketing strategy that sold it.

This blog notes that the court's decision, which is based on logical and patent-relevant premises, imposes a substantial evidential burden upon the patent owner.  Corporate trading records are not kept with a view to separating out the various strands of intellectual property which may be exploited in the sale of a product, and in the case of a soft drink the success of a product might relate to causes as diverse as unusual climatic conditions, conscious or unconscious celebrity endorsements, product placements, weak marketing on the part of competitors or innovative packaging and design. This burden makes the notion of defending against an assertion of non-obviousness by reference to the gap between the challenged patent and the prior art seem very much the lesser of two evils.

Korea's Patent Court adopts ethics code

According to the Korean newspaper the JoonAng Daily, the Patent Court has published its first "ethics code" in an attempt to establish its credentials as a corruption-free agency. The Court posted the six tenets on its official website last Wednesday, after the court’s 17 judges and 50 employees held meetings on the subject last December.

The Patent Court’s statement was significant for the detail it went into on the measures that would be taken to heighten the agency’s ethical standards. First the officials pledged that they would not financially exploit court property for personal gain. Then they declared that their family members shared some responsibility in maintaining the organization’s moral integrity, adding that “spouses and other family members should not receive money, gifts or real estate”. They also agreed not to give special favours to people who shared regional, academic or blood relations in carrying out their duties.

Money spent on pat lit is well spent, says PWC

The 2008 PriceWaterhouseCoopers patent litigation study, based on US data, concludes that:

"Patent litigation appears to continue to be an effective protection and monetization path for patent holders. Although legislation is to be put in place that may influence patenting activities and the litigation process, for now, the courts appear to be increasingly protecting those patent holders proving the validity, enforceability, and infringement of their patents.

With trial success rates at their highest level in history, patent holders appear to be winning with considerable awards of damages".

To study the trends related to patent decisions, PWC identified final decisions in both summary and full trials, as recorded in two WestLaw databases, Federal Intellectual Property - Cases (FIP-CS) and Combined Jury Verdicts and Settlements (JV-ALL). The study focuses on 666 summary judgments, 616 trial, and 481 unique CAFC patent decisions issued since 1995.

You can download the study, which is 23 pages long, from the PWC website here.

Wilkof's Law

Writing today for the IP Finance weblog, veteran IP commentator Neil J. Wilkof hypothesises the validity of what he calls "Wilkof's Law". He explains:

"For those of you ... who have never heard of "Wilkof"s Law", it goes like this. Question: "How do you know when there is economic slowdown?" Answer: "There is an increase in patent litigation."

Wilkof's article, "Patent Litigation, the ITC and Hardship in the Chip Industry" gives examples, reflecting an increased rate of patent litigation in the United States which can be seen not merely in the courts but in terms of actions brought before the International Trade Commission. The full text of his article can be read here.

Another Lipitor dispute looms large

The Financial Post reports that pharmaceutical giant Pfizer Inc. is accusing leading Canadian generics company Apotex of infringing its US patent for best-selling cholesterol drug Lipitor. Apotex has applied to the US Food and Drug Administration for permission to import and sell four dosage strengths of the drug; Pfizer says this infringes its 1993-issued patent 5,273,995 (the enantiomer patent), which is not set to expire till 2011, the New York-based company said in court papers. Pfizer also seeks legal fees, costs and expenses for the lawsuit.

According to Duncan Bucknell's IP ThinkTank scorecard, Pfizer has litigated Lipitor patents in 24 jurisdictions, mainly in vigorously-contested validity proceedings involving Indian pharma company Ranbaxy.

Mexico: trial by patent office

In "Patent Litigation In Mexico" (published on Mondaq), Carlos Perez De La Sierra, of law firm Calderón & De La Sierra, summarises the characteristics that distinguish Mexican patent litigation from that of better-established forums. In particular,

" ... all claims for infringement are to be tried with the Mexican Patent Office, which renders the cases to be administrative processes rather than judicial instances. Decisions rendered by the Mexican Patent Office will only rule on whether the infringement took place or not and, in a declarative type of decision, the defendant will be ordered to immediately stop the infringing activity and will also be fined. Fines for patent infringement cases can go as high as US $85,000.00, although the Mexican Patent Office has hardly ever applied the maximum penalty".

One might wonder whether trial of inter partes disputes relating to infringement as administrative processesm with penalties that appear derisory in relation to actual damage, are TRIPs-compatible.

US patent litigation clearing house launched

According to a press release reported in MarketWatch, The Law, Science & Technology Program at Stanford Law School has launched the Stanford Intellectual Property Litigation Clearinghouse (IPLC), a first-of-its-kind online database that offers comprehensive information about intellectual property disputes in the US. A publicly available online research tool, the IPLC will enable scholars, policymakers, lawyers, judges, and journalists review real-time data about IP legal disputes filed across the US, with the aim of providing a tool for analysis of the efficacy of the system that regulates patents, copyrights, trade marks, antitrust, and trade secrets.

The IPLC database includes real-time data summaries, industry indices, and trend analysis together with a full-text search engine, providing detailed and timely information that cannot be found elsewhere in the public domain. The Patent Litigation Module, includes more than 23,000 cases filed in US district courts since 2000--raw data for every district court patent case and all results (outcomes and opinions).

The IPLC website can be found here.

Recent publications

The December 2008/January 2009 issue of Patent World features several items of interest to the patent litigator. These include

* "Patent Troll Litigation", a robust account by Stephen S. Korniczky (Hastings, Janofsky & Walker) of the tactics that defendants can adopt in infringement actions brought against them by non-trading entities.

*"Simplifying the System", in which PW editorial board member Michael Burdon (Olswang) further articulates the 'Burdon Plan' for accelerating UK patent litigation while bringing down the cost.

For further details of Patent World click here.



Some patents are never litigated, because they are simply too silly. A collection of these, together with some pointed comments by the author Daniel Wright, can be found in Patently Silly -- published by Carlton Books (web details here). The author's Patently Silly weblog provides more of the same, and is ideal reading material for those fascinated by personal hygiene. This little book slips neatly into a typical Christmas stocking and provides some mild amusement for those within the profession whose own examples of silliness probably come from the behaviour of patent litigants as much as from the subject matter of the granted patent.

Commission optimistic that Swedes will see European patent court through

Stephanie Bodoni (Bloomberg) has reported Margot Froehlinger as saying that chances of a pan-European patent litigation system are better than ever. Ms Froehlinger, a director at the European Commission in charge of the EU proposal, suggested that this was because Europe was in an economic crisis and every crisis provides the chance to turn it into an opportunity.

The Brussels-based regulator still needs the backing of the region's 27 nations if its 2007 proposal to create a single EU patent and a centralised court to handle disputes over inventions is to come into operation. An earlier debate on the same plan broke down in 2004 when governments failed to agree on the languages to be used. The proposal on the table now is more straightforward and will make headway under the Swedish EU presidency, said Froehlinger.

Is nothing sacred? Defendant wins East Texas patent suit

Writing in Mass High Tech, patent litigator John Gutkoski (Foley & Lardner LLP) draws attention to a shift in US patent litigation that will be welcomed by all who truly believe that defendants in patent litigation should be given a sporting change. The article's title, "Patent verdicts in Eastern Texas no longer a slam dunk", gives the game away pretty quickly. The article explains:

"Plaintiffs have gravitated to these courts north and east of Houston, because the Eastern District has been providing plaintiffs some degree of certainty. Plaintiffs have come to expect several things, including a relatively short track to trial, the use of specific local patent rules, a no-nonsense policy toward discovery, and a low likelihood of cases being transferred out of the district. Most importantly, plaintiffs have relied on the reputation that its judges rarely grant defendants summary judgment and that its juries frequently decide in favor of plaintiffs. Indeed, until recently, no jury in the Eastern District had invalidated a plaintiff’s patent. This had the result of limiting defendants for practical purposes to non-infringement defenses and provoking many, often lucrative, settlements in plaintiffs’ favor.

Lately, however, this pro-plaintiff orientation has been proven not to be absolute. As a case in point, recently Palomar Medical Technologies Inc., a Burlington-based manufacturer of light-based cosmetic treatment devices, prevailed in a significant patent infringement lawsuit brought by its competitor, Wayland-based Candela Corp., in the Eastern District of Texas. ...

Furthermore, the jury found all of the asserted claims ... to be invalid. Specifically, the jury found them anticipated by one prior art reference and rendered obvious by four separate combinations of additional prior art. Following the trial, the jurors told counsel they had spent the bulk of their deliberations considering the prior art and the validity of plaintiffs’ patent.

Palomar’s victory is only the fourth time that an Eastern District jury has invalidated a patent. All four, however, have come in the past two years. Why are Eastern District juries now willing to consider and, more and more, accept invalidity defenses? Perhaps defendants are doing a better job of educating juries on their role in being the ultimate decision makers about the validity of patents. Perhaps, the less patent-friendly publicity of the past few years, as Congress debates patent reform and industry complains about the costs of patent litigation, has filtered down and is making an impression. Perhaps in the current economic climate, juries are taking a harder look at whether plaintiffs really should be entitled to significant recoveries. ...".

Crocs, Skechers worldwide pat-scrap settles

In a move that will disappoint many patent trial lawyers, shoe maker Crocs Inc and Skechers USA Inc have announced the settlement of all litigation between them in the action brought by Crocs. There's something to disappoint transactional lawyers too: the the settlement terms were not disclosed. The agreement covers all outstanding worldwide litigation and appears to be resulting in Skechers concentrating on its core styles in place of Croc-type molded footwear.

Sony to pay up, but is it a bargain?

The British-based Gamesdog website reports that computer games giant Sony has been ordered to pay US$18.5m in compensation, after a US court rules that the company was liable for infringement of eight of its patents. The court said it found "clear and convincing evidence" that Sony wilfully infringed patents covering "wireless local area network apparatus" while manufacturing its PSP, mylo Personal Computer and Network Walkman products. The successful claimant was Agere Systems, an integrated circuit components company which first filed the complaint eight patents in 2006. Agere has since merged with a company called LSI.

It may seem like a fair sum of money but, divided among the eight patents, infringed in respect of three separate products, US$18.5 million doesn't seem very much at all. We may speculate as to how much Sony would have had to pay if it had taken 3 x 8 conventional licences.

IP lit sector remains buoyant

Lawjobs.com has reported that, despite the weak economic climate and lack of commercial confidence, the IP sector, and particularly patent litigation, is more than holding its own. According to "Amid the Bad News, IP Firms Are Hiring", the opinion has been expressed that IP work is "insulated" from the current crunch, with patent owners pursuing infringers and regular businesses seeking relief from trolls.