Do non-practicing entities behave like patent trolls?

Stop Bad Patents!
A campaign by The Internet Association

A new study by Lauren Cohen, Umit G. Gurun and Scott Duke Kominers, entitled 'Patent Trolls: Evidence from Targeted Firms', found that non-practicing entities (NPEs) generally behave opportunistically, resembling the typical behavior of patent trolls. After a careful evaluation of the companies targeted by NPEs in litigation, the circumstances that surround NPE litigation, and the impact of litigation on the targeted companies' innovative activity, the researchers concluded that non-practicing entities target companies on the basis of ex ante expected profitability, preferring 'suits with high probability of payoff against firms with deep pockets'.

The researchers first described 'a parsimonious model of an innovative economy in which NPEs endogenously arise as patent trolls', due to the combination of a number of factors (heterogeneity in innovation quality across the agents, commercialization costs, imperfections in the legal system of IP enforcement). In such model, an agent that seeks to maximize profits acts on the basis of a comparison between the expected profitability of litigation, on one side, and of commercialization, on the other. Low-type innovators, therefore, commonly choose to litigate; as their expected profits from litigation depend upon the likelihood of obtaining compensation from the alleged infringer, and the extent of such compensation, the model predicts that 'targeted firms should be those cash-rich enough to fund payoffs and those most likely to settle or lose the case for any reason (even if they have less cash)'. The model implicitly discloses the risk that some meaningful inventions may not be brought to the market, where the expected profitability of litigation is higher than that of commercialization, or, conversely, where the probability of being sued acts as a deterrent.

To validate its theoretical model, the study primarily examined data on NPE behavior from PatentFreedom (and firm-related data from several other databases). The researchers found that non-practicing entities, as expected, commonly target companies with high levels of cash balances, or which had a recent positive cash shock (steep increase in cash holdings, compared to the previous fiscal year). A one standard-deviation increase in these indicators correlates, respectively, with an 11% and a 2% increase in the likelihood of being sued by an NPE. Considering that the unconditional probability of being sued by NPEs is 2.18%, such findings indicate a five-fold increase of the risk of NPE litigation in the case of higher cash levels, and a two-fold increase in the case of positive cash shocks. Non-practicing entities also target conglomerate firms regardless of the source of the cash levels (e.g. even where the cash revenues are not derived from business segments related to the infringing patents): the study found that 'profitability in unrelated businesses is almost as predictive of NPE infringement lawsuits as is profitability in the segment related to the allegedly infringing patent'.

As predicted by the theoretical model, NPEs prefer targeting companies against which they have a higher ex ante likelihood of winning (or, conversely, that have a higher ex ante propensity to settling). Thus, litigation blossoms if the targeted company is already engaged in a number of other litigation events unrelated to intellectual property (a one standard-deviation increase corresponds to a 1.67% increase in the likelihood of NPE litigation), but is deterred by the presence of a large legal team (0.5% decrease). The validated model combines the potential proceeds with the probability of success to determine the expected profitability of NPE litigation. Thus, expected profitability positively correlates with high cash levels, small legal teams, and preexisting litigation events.

Evaluating the impact of NPE litigation, the researchers found that the companies that lost against non-practicing entities in court experienced a subsequent significant reduction in R&D expenditure and inventive activity (in terms of post-litigation patenting activity and citations to their marginal post-litigation patents), concluding that 'it really is the NPE litigation that causes this decrease in innovation' in the United States. The small amount of the damages awarded in NPE litigation that flows back to end-inventors (estimated at 5%) does not affect this conclusion, as it constitutes an insufficient incentive for innovators to carry out inventive activity under the threat of NPE litigation.

The scholars validated these findings by comparing them to results obtained from a poll of practicing entities, and concluded that they 'are not just reflections of general characteristics of IP litigation'. The study, however, could not take into consideration informal patent assertions by NPEs (usually in the form of demand letters), due to the lack of reliable data on the phenomenon. While the researchers note that 'it is widely believed that informal patent assertions has been in decline recently, and is projected to decline further', a comparison between informal and formal (in court) assertions (as well as between successful and unsuccessful formal assertions - although undeniably subject to the uncertain attribution of settlements to either category) would help further distinguish between the different patterns of behavior that emerge even within the supposedly homogeneous group of non-practicing entities.

Intellectual Property Enterprise Court: Practice and Procedure -- now you can follow the Fox

Hot off the press is Intellectual Property Enterprise Court: Practice and Procedure by Angela Fox, a partner in the London-based IP firm of Jenkins in which she practises as a solicitor advocate and trade mark attorney.

According to the publishers:

Intellectual Property Enterprise Court: Practice and Procedure provides a reference for all litigators and practitioners seeking to make the best use of the court’s unique streamlined procedures for the cost-effective resolution of intellectual property disputes involving UK or Community IP rights.

* The only title available that focuses on the Intellectual Property Enterprise Court [true, and this is a bit of an innovation, seeing as there wasn't exactly a glut of books on the market on this court's predecessor, the Patents County Court (PCC)]

* Discusses essential topics including pre-action matters, starting proceedings, case management, applications, evidence, experiments and disclosure, trial, appeals, costs and small claims [I should hope so too!]

* Covers the jurisdiction of the Intellectual Property Enterprise Court, the types of proceedings it undertakes and representation before the court, offering practical guidance on navigating the system effectively [welcome, given the uncertainty about navigating the PCC --  and navigating between the PCC and its senior forum the Patents Court, under the old regime]

* Looks at the specialist rules of procedure introduced in 2010 and since that have broadened the Court’s appeal as a forum for resolving IP disputes in a streamlined and cost-effective way

* Also considers other dispute resolution mechanisms relevant to claims that may be brought before the IPEC, including domain names and company names, as well as ADR Includes example statements of case for a range of IP subject matter

* Draws on a range of sources to present a complete picture, including extracts from relevant source materials, court guides and the Civil Procedure Rules

Since my copy of the book has only just arrived, I've not had a chance to feast on it yet, but I look forward to doing so. The law is stated to be current to April 2014 and the book opens with some kind words from Mr Justice Birss and Judge Hacon -- the two members of the judiciary who between them have shaped the IPEC and made it what it is today, a thoroughly modern, effective and relatively affordable forum for resolving small IP disputes, as well as for resolving bigger disputes in a smaller way.

Bibliographic data: hardback, xlv + 545 pages. ISBN: 9780414028685. Price £165 or £175, depending on whether the book has been published or not when you order it.  Book's web page here.

A view of US trends: the 2014 PwC Patent Litigation Study

PwC's 2014 Patent Litigation Study has now been published online. You can read it in full here. The study's main thrust is summarised in its subtitle: "As case volume leaps, damages continue general decline".  The study, which is limited to US litigation, is only 30 pages long, and isn't too challenging to read.

The report is not a snapshot of contemporary conditions but rather a reflection of trends, since it analyses a database of 1,985 US District Court cases handed down since 1995 and recorded as having reached final decisions at summary judgment and trial, as recorded in two Westlaw databases -- US District Court Cases and Combined Jury Verdicts and Settlements -- as well as in corresponding Public Access to Court Electronic Records (PACER) system records. It thus bridges the coming into force of the America Invents Act, a series of major rulings from the US Supreme Court and the emergence of the non-practising entity (NPE) as both a business model and a force in patent litigation (NPEs have a 25% success rate in US patent litigation as against 35% for businesses that work their own patents, though this figure obviously doesn't take account of the "successes" achieved by NPEs in securing cash settlements without the need to go to court).

Thanks are due to Chris Torrero for providing the link.

Public investment in higher education research: the Australian government wants patents, not publications!

A few days ago, the Australian Minister of Industry, Hon. Ian Macfarlane, suggested (here) that public investment in higher education research should be linked to the number of patents granted to each University. The Minister said: ‘[w]e might think about realigning block grants to commercial outcomes, and awarding them to universities not on the basis of how many papers they’ve had published, but actually on how many patents they’ve had registered’. He declared that a similar change ‘is not rocket science’, and would simply align Australia’s approach to that of several other countries.

An interesting piece by Kim Carr (shadow minister for higher education, research, innovation and industry), published on the Guardian on 8 August, observed that ‘[s]cience research grants awarded on the basis of patents is patently wrong’. Carr noted that the objective of research is not commercialization, but the pursuit of new knowledge, free of any predetermined instrumentalism. Such curiosity-driven process, he added, does not align well with patent law: ‘excellent research doesn’t necessarily end in a patent, and where it does, genuinely useful patents can take years – often decades – to be realised’. The article also mentioned other issues, including those related to cost, attribution, and opportunity (e.g. companies in fast-evolving technological sectors may choose to rely on other industrial and commercial strategies to gain a temporary competitive advantage, in the brief period of time between invention and technological obsolescence). Carr concluded that, if the Australian government is interested in fostering the national economy and creating jobs, it should focus on ‘providing incentives for researchers and their partners who are trying to commercialise inventions’, expanding the R&D Tax Incentive scheme, and creating an environment where research and commercialization can easily interact.

Aside from the arguments analysed by Carr, the proposal of the Australian Minister raises several other tangential issues. First of all, it is readily apparent that criteria linked to the number of patents granted would not apply across the whole field of academic research, thus causing potential disparities in the allocation of public financing in different research sectors. Even restricting the applicability of the patenting criteria to scientific research susceptible of commercialization (and I suspect that it would be difficult to agree on an appropriate definition and limitation, considering how the density of patentable innovation changes, sometimes even dramatically, in different scientific areas), the grant of a patent would not attest to the overall significance and scientific quality of the underlying research (nor would allow its evaluation from a cost/benefit perspective). As the assessment of novelty and inventiveness for patents has a mere lower threshold, which excludes the tailoring of the reward to different levels of such constitutive elements, scientific research would be subject to the same system, and to its well-known traps. Thus, rather than incentivizing high quality research, the Australian proposal could potentially deter similar efforts, promoting low quality research, which would achieve the best prospect of attracting public spending with the lowest initial investment. The alternative would again force the government, upon implementation of the new system, to look into methods of creating a hierarchy of the commercializable research outcomes, perpetuating the issue that it intended to resolve.

Another significant issue concerns the temporal mechanics of the system. Paradoxically, in light of the considerable amount of time that elapses between the filing of a patent application and the granting of a patent, the proposed change would provide a time-delayed reward that could prevent any researcher whose work has not yet produced commercializable results (e.g. young scholars, theoretical scientists, etc.) from having access to the financial means necessary to carry out the kind of research that Macfarlane wishes to encourage. In other words, the allocation of financial resources would not be tailored to the research potential of a researcher, nor to the results of its most recent work. Long-term research projects would be similarly penalized, as would be collective research efforts, or ambitious research projects whose outcome may generate just a few patents, albeit of greater significance.

A third range of questions is raised by the unique structure and fabric of the scientific research carried out by publicly funded bodies, which cannot be reduced to a mono-dimensional, commercially or industrially-driven venture. While a private company necessarily evaluates its research objectives in terms of potential returns in a short to medium term (with the exception of larger companies which may risk significant investments in a long term perspective), one of the essential roles of Universities and other bodies financed by public spending is to engage in an all around research that first ventures into unexplored territories, pursuing theoretical hypothesis or abstract ideas, and later spreads into a number of more selective, concrete ramifications that finally lead to the attainment of practical, commercializable results. It is generally only the terminal path of this multidimensional research that leads to the filing of patent applications, as the prior steps do not usually provide researchers with all the elements needed to fulfill the statutory requirements for patenting. Discouraging the pursuit of long-term, exploratory, visionary research would probably reduce the need for public spending, but would also greatly contribute to the decline of scientific research and innovation. The trade off may not be worth it.

There are several other aspects that would deserve a more in-depth discussion (e.g. peer-review or patent examination, linking public investments to the number of patent applications filed, the role of patent lawyers in the process, the effects of rejection, etc.) - you are welcome to join the debate and share your point of view, ideas or comments!

Denmark tidies up its Brussels commitment following patent court referendum vote

Under the Agreement between the European Union and the Kingdom of Denmark on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters of 13 August, Denmark has told the European Commission that it is to implement Regulation 542/2014 amending Regulation 1215/2012 as regards the rules to be applied with respect to the Unified Patent Court and the Benelux Court of Justice (the "Brussels I Update Regulation").

Denmark originally opted out of the EU's Brussels I regime for recognition and enforcement of judgments but, following Denmark's recent referendum vote in favour of ratifying the Unified Patent Court Agreement, implementation of the Brussels I Update has become necessary.

Fancy bit of case management training: here's a course to pursue doggedly ...

The Chartered Institute of Patent Attorneys (CIPA) has informed PatLit that it is going to be repeating its residential course on making use of your rights in the Intellectual Property Enterprise Court (IPEC), England and Wales.  As CIPA explains:

Some patent attorney litigators
have a real "can"-do attitude

The course centres on a patent infringement & validity case study from pleadings, via the case management conference [this is the bit which this blogger gets very excited about, since case management is the best way of bringing cases on quickly and in a highly focused manner -- but only if handled properly] and culminating in a mock trial.  All participants will get hands on experience in the necessary skills to litigate in the IPEC with feedback from experts in the field (including PALs [patent attorney litigators, that is], solicitors and patent barristers).  Our tutors will also cover the practice and procedure necessary to handle such litigation. Judge Hacon has agreed to give a guest speech. The course consists of two parts: a preliminary day at CIPA on 2 September 2014 followed by a residential three days at Missenden Abbey [this sounds a bit like a religious retreat ...] from Thursday 18 to Saturday 20 September 2014.  The course is expensive intensive but so is litigation. It is aimed at those both with and without previous experience and provides an invaluable opportunity to acquire or sharpen one’s skills.

 Further details are available from the CIPA website here.

The cost of the course is £1,300 + VAT for CIPA members, inclusive of accommodation at Missenden Abbey, together with meals. If you're interested you'd better be quick: bookings close on Tuesday 19 August. To save a place just email CPD@cipa.org.uk

What business thinks about Europe's patent regime -- and how you can help

Dr Luke McDonagh (Lecturer in Law, Cardiff University) has been doing some valuable research into attitudes which patent owners are starting to develop with regard to the European Union's forthcoming Unified Patent Court (UPC) and Unitary Patent (UP) systems. However, his topic of investigation is by no means exhausted -- and you can help him.  Luke explains as follows:

Exploring Perspectives 

Readers of this weblog may be aware that on 10 July the UK Intellectual Property Office published a report, researched and authored by me,  entitled 'Exploring Perspectives of the Unified Patent Court and Unitary Patent Within the Business and Legal Communities'. The report is accessible here and there's an audio recording of the launch event, kindly hosted by CIPA (the Chartered Institute of Patent Attorneys), here.

The report discusses the views of 28 interviewees -- consisting of representatives from patentee companies, solicitors and patent attorneys -- concerning a range of issues concerning the new UPC/UP system, including the procedural and cost rules for the new court, and the all-important fees issues for the UP.

One particularly interesting issue that came up in the conversations I had with interviewees concerns the all important opt-in/opt-out question. It was noted that while businesses are concerned about the risks of opting-in their entire portfolios -- with the possibility of revocation across all UPC member states a clear worry in their minds -- virtually all businesses are considering opting-in at least some patents in order to test the new system and to avail themselves of centralised enforcement. In this respect, some patentees are considering opting-out their most valuable patents (to avoid the central revocation possibility), while others are focused on identifying and opting-in their 'strongest' patents (to take advantage of centralised enforcement). Few, however, seem willing at this stage to opt-in everything. For this reason, it is likely that for the early part of the UPC's life there will be a two-tier patent system, with cases involving UPs and opted-in European patents (EPs) heard at the UPC, and cases involving opted-out EPs heard in the national courts in line with the current fragmented system. The following question, therefore, arises: how will patents be perceived within this two-tier system? 

From the interview data I collected, it's clear that a small number of interviewees fear that an opted-out patent will be perceived as weak, and thus open to attack by competitors via the national route. By contrast, will an opted-in patent be automatically perceived as being strong i.e. of high quality, and thus less vulnerable?

It is not possible at this stage to answer these questions; yet, the fact that these concerns exist aptly illustrates that the coming into force of the UPC is likely to have (unintended) consequences that are difficult for businesses to predict -- or plan for -- at this stage. If any readers of this weblog have any insights to add on this issue, feel free to post comments to this blog, or alternatively to email me at mcdonaghl@cf.ac.uk.

Do please help Luke if you can!

Mined Regions - T 2231/09

When EP practitioners speak about inescapable traps, they usually refer to situations where the patentee in an opposition is faced with the problem that features added in the examination procedure extend beyond the subject-matter of the documents as originally filed (Art 123(2) EPC) but cannot be removed without extending the scope of protection (Art 123(3) EPC).

Very few people speak about a far more frequent sort of inescapable trap: the clarity-disclosure trap (sometimes appearing as enablement-disclosure trap as well). This unpleasant trap is set when somebody objects that an expression in a claim is unclear and the trap snaps if the pitiful applicant has no disclosure in the documents as originally filed which could serve as a clarifying limitation.

The decision T 2231/09 is an example of such a trap. The application relates to an image processing algorithm wherein a certain parameter is derived from a subset of pixels in a region (whereas the prior art used all the pixels in the region). Four years of search and examination at the EPO did not reveal any problems with the word "region". The application was then refused on the grounds that the subject-matter of the claims lacked novelty or did not involve an inventive step over the prior art.

The patentee appealed the decision, waited further four years and was then summoned to oral proceedings before the Technical Board of Appeal. The board raised objections on the clarity of the expressions "region" and "subset of pixels" for the first time in the annex to the summons. As a clarifying definition of these expression was missing in the documents as filed, all the attempts of the patentee to overcome this clarity problem were doomed to fail.

Apparently, the claim was considered sufficiently clear in the US, in JP and in China, where the patent was granted.

I cannot help to feel uncomfortable about this course of procedure and about the fact that a potentially valuable intellectual property right was completely lost as a consequence of a minute (if any) imprecision of the draftsman many years ago. The discretionary decision of the Board of Appeals whether or not the ordinary language expression "region" is clear is final and cannot be reversed by a higher instance It is therefore clearly problematic if it is introduced ex officio in the ex parte appeal procedure.

The full text of the decision can be accessed here

Basic Litigation course: room for patent attorneys too

Back in May of this year the IPKat weblog included this piece on the availability of Basic Litigation courses for newly qualified patent attorneys, writes Chris Ryan (IP Consultant to the Nottingham Law School at Nottingham Trent University). Chris continues:

"I and others posted some comments at the time; I mentioned the equivalent course run by the Nottingham Law School at Nottingham Trent University for Trade Mark Attorneys.  The Law School now finds that there are places free on a trade mark attorney’s Basic Litigation course in September, which it is able to offer to patent attorneys.  The course has been accredited by IPReg and would run from Monday 15 September until Friday 19 September 2014.    Anyone wishing to take advantage of this opportunity  (or two courses dedicated to patent attorney students and scheduled to take place in January and June next year) should follow this link".

This blogger, though acutely conscious of the difference between patent attorneys and trade mark attorneys -- and between patent litigation and trade mark litigation -- is comforted by the fact that the two species of IP practitioner can share the same Basic Litigation course in cheerful peace and harmony ...

Dealing with mumbo-jumbo

"Inventor says HDB infringed patent for clothes-drying rack" is the title of an article in Singapore's Today Online, here, which tells the story so far with regard to a patent infringement action brought by Mr Yiap Hang Boon, a 54-year-old inventor, against the Housing and Development Board (HDB) for infringing his patent for a clothes-drying rack. The HDB denies infringement and is seeking to revoke the patent, which was granted ten years ago.

This extract from the Today Online feature caught this blogger's eye:

Mr Yiap, who is not represented by a lawyer, appeared to have difficulty conveying his points yesterday.

Justice Chan Seng Onn interjected during his opening statement, saying he could not understand the latter’s “mumbo jumbo”. The judge also sought visuals for a clearer idea of the alleged infringements.

The invention itself, illustrated above, is of quite a low-tech nature. It is regrettable that the patentee should find it difficult to convey his points, and that the judge should have difficulties understanding it. With a specialist intellectual property court and firm pre-trial case management, these difficulties can be reduced, if not actually eliminated. As it is, the judge -- with degrees in Engineering and Industrial Engineering -- is at least in theory better equipped to hear low-tech infringement cases of this nature than are many others.

One new patent, one new court, one event -- and two venues

Managing Intellectual Property magazine, which this blogger founded back in the 1990s and for which he still has a soft spot, is running a conference, titled the "European Patent Reform Forum", in two European venues this autumn. On 9 September the Forum comes to Munich, Germany, and on 11 September it shifts to Paris, France. The significance of both venues, as well as a few words about the programme, can be found on my earlier Katpost here, together with details of registration discounts for readers of that weblog.

Apart from a session on the new unitary patent, the programme focuses almost entirely on patent litigation and dispute resolution issues. The sessions that address these topics are as follows:

The Unified Patent Court explained in detail 

• How to best navigate the new divisions and structures
• A practical guide to making best use of the courts and mitigating costs
• Understanding procedures: From starting proceedings through to trial
• Strategising in advance 

Split Proceedings and the UPC

• Transitional Period: Proceedings in National Court and in UPC
• Complaints by Licensees, Counterclaims for Revocation against Proprietor
• Bifurcation: Debunking the myths - Evaluating the possible pros and cons
• Appeals against Bifurcation under the 16th draft of the Rules of Procedure
• What should be learnt from current German practice?
• How judges will handle bifurcation 

The European Court of Justice and the Unified Patent Court 

• How the Spanish challenge affected plans for the new system
• When will/ won’t the ECJ be able to review issues of law pertaining to patents? 

Swiss focus 

• The new Swiss patent court – how does it work?
• The Swiss patent court and the UPC
• Challenges and opportunities for companies doing business in Switzerland 

Alternative IP strategies parallel to the UPC 

• Avoiding the down-sides of court litigation before the UPC: Alternative dispute resolution
and arbitration proceedings
• Best practices and strategies to utilize third party observations and opposition proceedings
before the EPO
• Interdependency and future interplay between existing legal mechanisms and the UPCsystem 

Litigation planning and forum shopping in the European Unified Patent Court

• Game over? Litigation planning and strategy under the new UPC
• Risks and opportunities of forum shopping in Europe 

Inter-industry debate - International litigation considerations

• How different countries regard the UPC
• The future of national legislation
• The unanswered questions about the UPC

This blogger is unable to attend, though he'd very much like to do so -- and while some of his friends are on the programmes (the cast of speakers is a little different, reflecting the fact that the host cities are in different countries, they are not in a position to do any real-time speed-blogging. Accordingly, if any of our readers are likely to be there and would like to write up a note on one or more of the sessions, for publication on this weblog, can they please email me at jjip@btinternet.com and let me know.

Further undertakings, a stay -- and an expression of hope

Last week PatLit reported on the refusal of Mr Justice Arnold, in Actavis Group PTC EHF v Pharmacia LLC [2014] EWHC 2265 (Pat), to grant a stay of patent revocation proceedings in England and Wales pending the outcome of parallel opposition proceedings before the European Patent Office. On Thursday of last week, in [2014] EWHC 2611 (Pat), the same judge delivered a further judgment in which he granted a stay, having considered the effect of two further undertakings from Pharmacia. This judgment is not yet on BAILII but, since it is only seven paragraphs long, PatLit is reproducing it below in full:

1. This is a renewed application by Pharmacia for a stay of these proceedings until the final determination of the parallel proceedings before the European Patent Office. The background is set out in full in my judgment of 11 July 2014 ([2014] EWHC 2265 (Pat), and I will not repeat it here. As was set out in the postscript to that judgment at paragraph 33, following the circulation of a draft of the judgment to the parties, Pharmacia offered two additional undertakings in return for a stay of the proceedings. Those additional undertakings are summarised in paragraph 33 of the previous judgment and have subsequently been elaborated, together with the other undertakings offered by Pharmacia, under cover of a letter from Pharmacia's solicitors dated 23 July 2014.

2. Against that background, Pharmacia now seeks a stay of the proceedings on the basis of all of those undertakings. As can be seen from paragraphs 30 and 31 of my previous judgment, I concluded that a stay should not be granted on the basis of the undertakings offered by Pharmacia set out in paragraph 12 of that judgment. As I stated, it seemed to me that the competing considerations were finely balanced, but nevertheless they favoured the refusal of a stay. The key consideration that weighed with me in reaching that conclusion was that, having regard to the likely length of time it would take for the EPO proceedings to be resolved, the undertakings that were offered by Pharmacia, although they largely eliminated the commercial uncertainty to Actavis during the period of stay, did not address the uncertainty caused by the prospect that Actavis might be removed from the market by an injunction in, say, five years' time and might have to pay ordinary damages or account for its profits for the last two of those years.

3. In my view, the additional undertakings now offered by Pharmacia meet that point, and accordingly do substantially eliminate the commercial uncertainty to which Actavis will be exposed in the United Kingdom as a result of a stay.

4. Actavis continues to resist a stay even on the basis of the additional undertakings proffered by Pharmacia. Actavis’ reasons for resisting a stay are set out in paragraphs 9 19 of the third witness statement of Mark Hilton of Actavis’ solicitors. In summary, the key points that Mr. Hilton makes on behalf of Actavis are twofold. First, he makes the point that Actavis wishes to launch its generic sustained release pramipexole product throughout Europe. Accordingly, Actavis wishes to remove the commercial uncertainty caused by the existence of the Patent as soon as possible across Europe. Actavis takes the view that an early decision from this court will be of considerable assistance to it in that regard. It will give Actavis and its customers confidence as to the position across Europe. Furthermore, it is likely to be of persuasive effect in other jurisdictions. The second main point made by Mr. Hilton follows on from the first, namely that an early decision of this court will assist in promoting settlement between the parties on a pan European basis. An additional point Mr Hilton makes, which to my mind is of less weight than the two main points, is to suggest that it is clear from Pharmacia’s attitude and the undertakings that it has offered that the Patent is a weak one, and that there is a strong public interest in the validity of weak patents being scrutinised by a competent court at the earliest possible date.

5. In my judgment, the matters that are relied upon from Actavis are considerations which do favour the refusal of a stay. Nevertheless, I have to consider the overall balance, having regard to the guidance given by the Court of Appeal in IPCom GmbH v HTC Europe Co Ltd [2013] EWCA Civ 1496, [2014] RPC 12, at paragraph 68. Taking all of the factors set out in that judgment into consideration, it seems to me that the overall balance now comes down in favour of the grant of a stay. While I accept that Actavis has a good reason to want to obtain a decision of this court at an early date and that that will be of assistance to Actavis in the ways that Mr. Hilton describes, I nevertheless consider that the additional undertakings offered by Pharmacia go sufficiently far to tip the balance in favour of a stay, having regard to the other factors mentioned in IPCom.

6. For those reasons, I will now grant a stay on the basis of the undertakings set out under cover of Pharmacia's solicitors’ letter dated 23 July 2014 as clarified with counsel for Pharmacia this morning.

7. I should say one thing further, which is this. Counsel for Actavis made the point that, although Pharmacia has offered an undertaking to co operate with Actavis to seek expedition of the opposition proceedings in the EPO, including any appeal to the Board of Appeal, there was room for doubt as to whether the EPO would accede to a request for acceleration, given that Pharmacia has offered an undertaking not to seek an injunction in the UK. I acknowledge the force of that point. However, it seems to me to be clear that expedition of the EPO proceedings is warranted not merely because of the existence of the English proceedings, which will include the counterclaim for infringement that Pharmacia has undertaken to bring. It seems to me to be plain from the current position of the parties that there is a strong likelihood of further proceedings elsewhere in Europe and, furthermore, a strong likelihood that those further proceedings will include infringement proceedings in one or more contracting states of the EPC. Accordingly, I express the hope that the EPO will accede to the joint request of the parties to accelerate the opposition proceedings and any appeal.

That the EPO should expedite proceedings is clear; whether it will take note of the hope of a British trial judge or of the parties themselves is however less certain.   Do readers of this weblog have any evidence, anecdotal or otherwise, of the EPO accelerating proceedings because a national court has expressed the wish that this should happen?

Expert can be "too clever" and still do his job

Rovi Solutions Corporation & Another v Virgin Media Ltd & Others [2014] EWHC 2301 (Pat) is a decision of John Baldwin QC (sitting as a Deputy Judge of the Patents Court, England and Wales) earlier this month. The subject of the judgment, in the fourth of a series of actions in which Rovi was suing Virgin, was the validity of a patent belonging to Rovi.  This blogpost is just focusing on one element of the judgment: the court's assessment of the role of the expert witness:

The judge said, at [14] to [16]:

"14. The expert witness instructed by Virgin was Mr Kerr. He was a business/IT consultant with extensive experience in the telecommunications, multimedia and TV areas up to 2001 and, subsequently, in more general communications and IT systems. His experience and expertise in the interactive TV/VOD arena spanned 19 years from 1981 to 2000. During this time he covered system-level architectures, designs and performance.

15. Mr Kerr was a very impressive and knowledgeable witness who was able to explain concepts clearly and succinctly. I found him very helpful.

16. Mr Abrahams, counsel for Rovi, had two main criticisms. The first was that Mr Kerr was much too clever and imaginative to be able to give an opinion upon what the skilled addressee might learn from a document or what the skilled addressee might do in consequence of any teaching in a document. But, as Jacob LJ explained in Technip France SA's Patent [2004] RPC 46 at [11] – [15], it does not really matter whether or not the expert approximates to the skilled team, what matters is how good he is at explaining things and what are the reasons for his opinion".

It's good to be reminded that being too clever needn't be a bar to discharging one's duties as an expert witness though, presumably, when it comes to issues of inventive step, some expert witnesses will be valuable to a party defending the validity of its patent if they're neither that clever or that imaginative.

This blogger is sad that the judge's quote began at [11], when [10] is the bit that contains one of Jacob LJ's most memorable lines. Speaking of the person skilled in the arts:

"The man can, in appropriate cases, be a team – an assembly of nerds of different basic skills, all unimaginative. But the skilled man is not a complete android, for it is also settled that he will share the common prejudices or conservatism which prevail in the art concerned".

No stay: balancing justice, speed and the chilling effect of uncertainty

Actavis Group PTC EHF v Pharmacia LLC [2014] EWHC 2265 (Pat), decided earlier this month by Mr Justice Arnold in the Patents Court, England and Wales, is yet another case involving an application for a stay. There sometimes seem to be more applications for stays than there are substantive proceedings, which says a lot about the way in which litigants have to struggle with a multitude of jurisdictions and causes of action in the Europe of today.

In this case Pharmacia owned a European patent relating to sustained release dosage forms of pramipexole, a product used for the treatment of Parkinson’s disease and restless leg syndrome. Actavis applied to revoke the United Kingdom designation of this patent on various grounds, there being parallel opposition proceedings relating to the same patent before the European Patent Office (EPO).

A dispute arose as to how quickly the EPO proceedings were likely to be resolved, both without and with expedition, and taking into account a possible appeal to the Board of Appeal and the remission of the case  by the Board of Appeal to the Opposition Division. Pharmacia then sought a stay of the UK revocation proceedings until the EPO proceedings had finally ground to a halt, while offering a number of undertakings as a sort of sweetener. These were (i) to seek expedition of the EPO proceedings, (ii) not to seek an injunction against Actavis or its customers until the determination of the EPO proceedings and (iii) only to seek damages of 1% of Actavis' net sales during the period from launch until the determination of the EPO proceedings if the patent was held valid both by the EPO and in the UK.

Actavis was unhappy with this, submitting that a stay should be refused because the proceedings regarding the UK segment of the patent would be resolved significantly earlier than the EPO proceedings and that the decision regarding the UK would provide it with reasonable commercial certainty, at least in the UK, and might assist in promoting settlement.

Arnold J, in a brief (33 paragraph) judgment, dismissed the application for a stay.

* the court's discretion to grant a stay of proceedings, which was very wide, should be exercised to achieve the balance of justice between the parties, having regard to all the relevant circumstances of the particular case;

* while that discretion was indeed wide, previous cases suggested that the default option was that the proceedings should be stayed. It was thus for Actavis to show why no stay should be granted.

* resolution of the proceedings before the courts in England and Wales was likely to take two years. In contrast, while both the Opposition Division and the Board of Appeal were likely to expedite the proceedings, neither the fact of expedition nor its outcome could be guaranteed.

* even with expedition, the EPO proceedings were likely to take at least three years to resolve -- possibly considerably more, if the Board of Appeal remitted the case to the Opposition Division.

* if the national proceedings were stayed, the oppositions failed and the national proceedings were then resumed, they would not be resolved until at least five years from now. In terms of commercial certainty, the starting point was to consider what Actavis’ position would be if there were no stay: it would be exposed to commercial uncertainty with regard to its position in the UK during the two years it would take to resolve the national proceedings.

* while the competing considerations were finely balanced, ultimately they favoured the refusal of a stay.

Arnold J's observations concerning the undertakings that Pharmacia was willing to offer is worthy of note. he said, at [30]:

"... Pharmacia's undertakings go a considerable way to reducing the commercial uncertainty to Actavis in the UK if the English proceedings are stayed, but in my judgment not quite far enough. While they do largely eliminate the commercial uncertainty during the period of the stay, and indeed give Actavis the positive benefit of ensuring that it can get on the market during that period rather than having to rely upon a claim under a cross-undertaking in damages, the problem is that they do not address the uncertainty caused by the prospect that Actavis may be removed from the market by an injunction in, say, five years' time and may have to pay ordinary damages or account for its profits for the last two of those years. That uncertainty will inevitably have a chilling effect on Actavis' investment decisions".

No stay of UK patent revocation proceedings in favour of later-filed Northern Irish court action

In Kayfoam Woolfson v Recticel SA & Recticel Ltd, BL O/315/14, 17 July 2014, UK Intellectual Property Office (UKIPO) hearing officer Phil Thorpe held that the UKIPO did have had jurisdiction to hear an application for revocation of a patent on the basis that the issue of revocation would not more properly be determined by the court.

By way of background, Recticel had already commenced infringement proceedings against Kayfoam in the Intellectual Property Enterprise Court (IPEC), England and Wales. As it happened, Recticel had discontinued its claim before Kayfoam's application for revocation was filed; although Kayfoam had reserved its position without actually opposing the discontinuance of Recticel's infringement proceedings, that reservation did not keep the action alive. Accordingly there was no action pending before the court at the date of filing f Kayfoam's revocation application.

As it happened, Recticel had also commenced infringement proceedings in Northern Ireland (also part of the United Kingdom, therefore covered by the same patent, but with its own separate judicial system).  However, Kayfoam's application for revocation before the UKIPO had been made before Recticel's Northern Ireland complaint was served.

Haqving taken all the relevant factors into account, the hearing officer concluded that this was not one of those cases that would be more properly determined by the court. Both the UKIPO proceedings and the Northern Ireland proceedings were still in early stages, which meant that there wouldn't be too much wastage and inconvenience if a stay were ordered. The stay would however be refused because the present situation was caused by Recticel discontinuing its IPEC action.

"Limitation and Amendments of claims during litigation" -- a report

"Limitation and Amendments of claims during litigation" was the theme of a conference held in Milan last month, the details of which were sent to us by our good friend Anna Maria Stein (Franzosi Dal Negro Setti). Anna Maria promised to keep PatLit informed of what transpired at this attractive event and, true to her word, this is what she says: Dear Jeremy,

This is a short update on the Conference on claims amendments. John Allen made a great speech and he was very appreciated by the audience [and indeed by all of us: see Katpost here].

1. The European Patent Convention allows limitations and modifications of claims after grant. Articles 105(a) and 123 EPC. When this is done at the EPO (central limitation), the effects are regulated (in a not totally clear manner) by Article 68 EPC. But also most national laws allows limitation or modification of claims of granted patents (local limitation). Each member state may behave differently: local limitations are governed by national laws. These laws should be in conformity with the European system, but full conformity is not guaranteed. The result is that a European patent may be modified differently in different States, thus resulting in different national patents, a variable geometry system. The European patent is granted unitarily, but then may be transformed into different titles, with different scope: quite embarrassing.

2. The first day of the Conference the various systems were compared (UK, DE, NL, FR and IT). What is surprising in the system (and to the present writer, somehow shocking) is that the patentee may change the patent at any time. Therefore claims may be changed in the first year after grant, or the second, or the last. They can be changed even after the patent expires. Whether Article 68 EPC mitigates the inconveniences is a question to be considered.

3. On the second day of the Conference a mock trial (or a series of trials) was conducted, and several patent attorneys discussed whether some modifications were allowable and what not. The results were somehow encouraging.

Not forgetting
the Mock Turtle ...

Although, in principle, all national systems have different rules, ultimately those rules could be interpreted in a not too dissimilar manner. This conclusion was evidenced by the mock trial, where six cases of claim modification were discussed. A mock court composed of mock judges of four mock countries (Sir Robin Jacob, Dr Marina Tavassi, Dr Klaus Bacher, Professor Jean-Christoph Galloux, Professor Mario Franzosi) issued a mock decision on the allowability of modifications.

Here's the sample mock patent [which you can read here or download here], with the mock amendments.

These six cases have all been discussed and decided. Adds Anna Maria: "I will let you have as soon as available the text of the decision issued by the panel".  Thanks so much, Anna Maria, we really appreciate this!

Precedent, the European Patent Office and a chance to discuss

"What is precedent and does the EPO have it?" is the title of a blogpost today by Darren Smyth on the IPKat weblog, here, with some input from fellow bloggers David Brophy and me. It raises questions relating to, among other things, the extent to which European Patent Office Board of Appeal and Enlarged Board of Appeal are governed, in theory and in reality, by the principle of being either bound or strongly influenced by their own decisions and those of other tribunals, as well as the extent to which national courts and patent-granting authorities are influenced or bound by them.

The IPKat's colleague Merpel concludes that:

" ... whether a decision is non-binding and non-influential, non-binding but influential, or binding, is a matter that has a substantial impact on players other than the relevant court or tribunal: it affects the decisions of parties whether to file, oppose, litigate and so on. It also affects the decisions of legislators as to whether a rule needs changing or not. If it is consistently applied with a consequence that is considered undesirable, legislative intervention is more likely than where bad decisions are distributed among good ones because the latter are not binding. Therefore, she points out, lack of consistent understanding and terminology between practitioners before the EPO is highly undesirable".

It would be good to hear from practitioners from outside the zone of Common Law countries as well as those who have grown up with the habit of precedent and who intuitively give advice on the assumption that it exists.

The place of patent drawings in IP litigation: a new article

"IP Litigation: What Place for Patent Drawings?" is the title of an article published online in the current (June 2014) issue of the WIPO Magazine. The author, Bernadette Marshall (NBG Drafting and Design, USA), opens by stating that

In today’s ever more complex technology landscape, the number of patent lawsuits is on the rise and patent litigation costs are skyrocketing. This is especially true in the United States where, in 2012, according to a recent study by PricewaterhouseCoopers over 5,000 patent lawsuits – an all-time record – were filed, each costing on average around US$2.8 million. Within this setting, companies should not underestimate the importance of using simple, clear and precise illustrations, not only to enhance their chances of obtaining a patent in the first place, but more importantly to defend their rights in the event of litigation.

You can read the article, which links to Bernadette's earlier WIPO Magazine article "Better Drawings Make a Better Patent", in full here.  Its principal relevance is to the United States, in respect of which the article refers to the US's design patents as well as the conventional sort, but the essential message is that, the more clearly an invention is described, the less room there is for uncertainty, ambiguity and mistake, and that an accurate depiction is likely to help achieve that end.

Secondary Legislation Implementing the Unified Patent Court: a consultation and workshops

The UK Intellectual Property Office (UKIPO) has organised a free webcast for this coming Wednesday 16 July at 4 pm for IP professionals on the following title "Consultation on Secondary Legislation Implementing the Unified Patent Court". 

You can get the details here. Follow-up workshops, run by the UKIPO, are being offered as follows:

• London, 30 July at 2 pm, hosted by UKIPO
• Edinburgh, 23 July at 2 pm, at the Law Society of Scotland
• Newport, 28 July at 2 pm, again hosted by UKIPO
• Manchester, 31 July at 2 pm, in the offices of Squire Patton Boggs LLP

Spaces are limited for the workshops, so please email UPCconsultation@ipo.gov.uk to reserve your place.

This blogger is conscious of the fact that, being based in the UK, he usually spots what is going on there but often misses parallel developments in other jurisdictions. He therefore wonders whether, and to what extent, the UPC's secondary legislation is under review in other UPC states. 

After Woolf comes Fox: a new book on patent litigation

I've just received the following information concerning a new title from publishers Sweet & Maxwell which is of obvious relevance to patent litigation in England and Wales. The author is Angela Fox, whose many qualifications and virtues are listed on her Jenkins web page here.  The book's subject matter is the functioning of an exciting experiment in civil litigation, very much in the spirit of the Woolf Reforms (here and here) of civil procedure rules.

According to the publishers:

"Intellectual Property Enterprise Court: Practice and Procedure is a unique standalone guide to practice and procedure before the Intellectual Property Enterprise Court, formerly the Patents County Court.

It provides a reference for all litigators and practitioners seeking to make the best use of the court’s unique streamlined procedures for the cost-effective resolution of intellectual property disputes involving UK or Community IP rights.

• Discusses essential topics including pre-action matters, starting proceedings, case management, applications, evidence, experiments and disclosure, trial, appeals, costs and small claims 

• Covers the jurisdiction of the Intellectual Property Enterprise Court, the types of proceedings it undertakes and representation before the court, offering practical guidance on navigating the system effectively 

• Looks at the specialist rules of procedure introduced in 2010 and since that have broadened the Court’s appeal as a forum for resolving IP disputes in a streamlined and cost-effective way 

• Also considers other dispute resolution mechanisms relevant to claims that may be brought before the IPEC, including domain names and company names, as well as ADR Includes example statements of case for a range of IP subject matter 

• Draws on a range of sources to present a complete picture, including extracts from relevant source materials, court guides and the Civil Procedure Rules".

More information about this timely book can be obtained from its website here. It costs £165, so I'll wait till I can get hold of a review copy rather than rushing out to buy it myself. Meanwhile, if anyone has any perspectives or insights into it, can they please share them with us.

Playing the game: amendments and double patenting

Koninklijke Philips Electronics NV v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat) is a decision of Mr Justice Birss, Patents Court for England and Wales, going back to 20 June of this year. It's a 452-paragraph judgment, produced pretty speedily by the judge following seven days of hearings just one month earlier.

In short, Philips sued Nintendo, alleging that the latter's Wii computer game console infringed three of its patents for computer implemented inventions. Nintendo counterclaimed for revocation and Philips then applied for conditional amendments to all three patents. The court had to decide on infringement and, inter alia, (i) whether the proposed amendments should be allowed or whether they would introduce added matter; (ii) whether one of the patents was obvious over the prior art, and (iii) whether the two other patents were valid as granted and whether there was an element of double patenting.

Birss J held that all three patents were invalid as granted but that the second and third, when amended, were both valid and infringed. He gave some helpful guidance with regard to double patenting that runs like this (at paragraphs 302 to 310):

1. First, the idea at the heart of the double patenting objections is that ordinarily an applicant should not obtain two patents for the same thing filed at the same time. That is because an applicant ordinarily has no legitimate interest in doing this [if this is so, should it not then apply equally to other registered IP rights, for example trade marks, where the question of double protection is more complex on account of considerations such as genuine use?].

1. Second, however "double patenting" is not a ground of revocation of a patent. It is not in s72 of the Act [Patents Act 1977, here] nor Art 138 EPC [European Patent Convention, here]. In the UK there are particular circumstances in which double patenting can lead to refusal (or revocation on the Comptroller's initiative). They are defined by statute (s18(5) and s73(2)).

1. Third, the EPO does recognise a double patenting objection as a ground for refusing amendments to a divisional application. Two conditions have to be satisfied. The proposed amended divisional claim has to claim the same subject-matter as a parent and the applicant has to have no legitimate interesting in obtaining the divisional claim. Generally if the first condition is true the second is likely to follow but there can be cases, such as T 1423/07 in which a legitimate interest in obtaining the divisional claim can be shown to exist irrespective of the relationship between the scope and subject matter of the parent and divisional claims.

1. Fourth, the EPO does recognise that if the independent claim of a divisional has the same scope as an independent claim in the parent then double patenting exists and an amendment which would give rise to that state of affairs will be refused. It is a test of substance and not merely form. It is not the settled jurisprudence of the EPO that double patenting exists merely because the scopes of the two claims overlap.

1. Fifth, one needs to take care when comparing the different procedural circumstances in which this point can arise. The EPO only deals with one patent at a time and so an EPO case considering a divisional application will not contemplate making changes to the claims of the parent to overcome an objection. Although post-grant centralised amendments are now possible in the EPO, that is a fairly recent development. In the UK the point only arises in two very specific statutorily defined circumstances.

1. Sixth, the judgment of the Court of Appeal in Marley's Roof Tile [1994] RPC 231 is directed to a point on statutory construction of s73(2) of the 1977 Act. Although both s73(2) and the objection applied by the EPO are referred to as "double patenting" and have the same underlying rationale, the Court of Appeal's judgment is not binding on the question arising in relation to the exercise of discretion under s75 of the Act.

1. Seventh, a patentee may have a legitimate interest in obtaining a divisional patent with claims which are broader than but encompass the scope of a parent patent. During prosecution of the parent the examiner may object to a broad claim but indicate that a narrower claim would be accepted. The patentee may not agree but may recognise that to win the point will need many more months or even years of proceedings and possibly appeals. This is true in both the EPO and UKIPO. However in the meantime the patentee may want to obtain an early grant because a competitor has launched an infringing competitive product [This is where commercial considerations come into play ...]. The infringing product may be very close to the patentee's invention and within the narrow claim on offer. At an early stage in this new market for a new product the patentee's business may be particularly vulnerable and the loss caused by the infringement may well not be fully compensatable in damages under s69 of the 1977 Act (Art 67 EPC). Thus the patentee decides to take what is on offer and obtain grant of the parent patent with a narrow claim. Under s76 of the Act and Art 123(3) EPC post grant amendments are not permitted to widen the scope of monopoly so, in order not to give up scope to which the patentee is entitled, a divisional application is filed. If the divisional is granted with a broader scope than the parent then the patentee's stance has been entirely vindicated.

1. In my judgment a patentee in the case I have described has a legitimate interest in obtaining the divisional in addition to the parent and it would be wrong to apply a double patenting objection based on overlapping scope such as in T307/07 or Marley's Roof Tile to prevent this. I also do not believe that a disclaimer or carve out amendment from the divisional to remove the scope of the parent claim should be required since such negative features can introduce uncertainty and make the claims hard to interpret.

1. I find that as a matter of UK law a double patenting objection taken as a ground for refusing a post-grant amendment to a claim can be taken but should only be taken in the following circumstances:

(i) The two patents must have the same priority dates and be held by the same applicant (or its successor in title); 

(ii) The two claims must be for the same invention, that is to say they must be for the same subject matter and by this I mean they must have the same scope. The scope is considered as a matter of substance. Trivial differences in wording will not avoid the objection but if one claim covers embodiments which the other claim does not, then the objection does not arise. 

(iii) The two claims must be independent claims. This necessarily follows from the rejection of the point on overlapping scope. If two independent claims have different scope then there is no reason to object even if the patents contain dependent claims with the same scope. The point might arise later if an amendment is needed e.g. to deal with a validity attack but in the case the point can be taken then. 

(iv) If the objection arises in the Patents Court in which both patents are before the court then it can be cured by an amendment or amendments to either patent. 

(v) Even if the objection properly arises in the sense that two relevant claims have the same scope, if the patentee has a legitimate interest in maintaining both claims then the amendment should not be refused.

Do readers agree with this summary, or does it invite comment and qualification?

SDL wrongful threats case: counterfactual history reaps reward

Almost exactly a year ago, PatLit posted this item on SDL Hair Ltd v Next Row Ltd and others; Master Distributor Ltd v SDL Hair Ltd and others [2013] EWPCC 31, a Patents County Court, England and Wales, decision on, among other things, the making of unwarranted threats of to sue for patent infringement.

Now, in  which emanated last month from Mr Recorder Richard Meade QC. With so much going on, it got overlooked at the time -- but it's still worth noting. Now, in SDL Hair Ltd v Next Row Ltd & others [2014] EWHC 2084 (IPEC), an Intellectual Property Enterprise Court ruling of 3 July 2014, in a 98 paragraph judgment Judge Hacon addresses the question of quantum: how much damage was caused by the making of wrongful threats?  In this case, said the judge, the total loss was £40,500, a sum on which the defendant was required to pay a so-far-unspecified sum of interest.

The judge's decision incorporated his reconstruction of what might have been, had the wrongful threats not been made, by setting out what he termed a "counterfactual history" at paragraphs 54 to 72 of his judgment. While this counterfactual history is obviously highly fact-specific, the approach is one which might expect to see transferred to other situations in which ungrounded threats of patent infringement are made , thus guiding the innocent party's decision whether to sue for damages or not.

Summary judgments: when experts can be dispensed with

In Nampak Plastics Europe Ltd v Alpla UK Ltd [2014] EWHC 2196 (Pat), a 3 July 2014 Patents Court, England and Wales, decision of Mr Justice Birss, some useful light was cast on the availability of summary injunctive relief in low-tech patent litigation.

This action involved an application for summary judgment where Alpla was seeking a declaration that a redesigned bottle did not infringe Nampak's patent for a plastic milk bottle, after Nampak --a manufacturer of moulded plastic milk bottles -- had commenced infringement proceedings against it. Having produced its modified design, Alpla invoked the commercial need for certainty at an early stage and sought summary judgment on the declaration.

According to Birss J, while although summary judgment was unusual in patent cases because claim construction and infringement determination generally required expert evidence, where a patent owner seeks to resist summary judgment he must give specific details as to issues where expert evidence would be required, since general assertions would not suffice. In this case, this patent was sufficiently simple for there to be no call for expert evidence: its claims did not use terms of art.  Accordingly the court could proceed to construe the claims.  On the facts, those claims would not be infringed by the redesigned bottle, so summary judgment on the application for a declaration of non-infringement would be granted.

Appearance before a national office and subsequent determination of jurisdiction

Future New Developments Ltd v B & S Patente Und Marken GmbH [2014] EWHC 1874 (IPEC) is a 9 June 2014 decision of the England and Wales Intellectual Property Enterprise Court (Judge Hacon).

In brief, by Article 5 of Council Regulation 44/201 on the Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters 1968:

"A person domiciled in a Member State may, in another Member State, be sued: … (3) in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur".

Article 23(1) adds:

"If the parties, one or more of who is domiciled in a member state, have agreed that a court or the courts of a member state are to have jurisdiction to settle any disputes which have arisen or may arise in connection with a particular legal relationship, that court or those courts shall have jurisdiction. Such jurisdiction shall be exclusive unless the parties have agreed otherwise. Such an agreement conferring jurisdiction shall be either: (a) in writing or evidenced in writing; or (b) in a form which accords with practices which the parties have established between themselves..."

And, by Article 24:

"Apart from jurisdiction derived from other provisions of this regulation, a court of a member state before which a defendant enters an appearance shall have jurisdiction. This rule shall not apply where appearance was entered to contest jurisdiction, or where another court has exclusive jurisdiction by virtue of Article 22".

A German-domiciled company, B&S, was the registered proprietor of a European patent for energy-saving technology for use with fluorescent tubes. The application, filed in September 1999, was assigned to FND in October 2001. It appeared from a written declaration of March 2009 that FND had assigned the patent to B&S, this alleged assignment being registered by the United Kingdom Intellectual Property Office (UKIPO). Following a subsequent dispute before the UKIPO as to whether the patent had been assigned FND issued proceedings in the Intellectual Property Enterprise Court (IPEC), maintaining that the person who signed the declaration had no authority to do so.

At this point B&S challenged the jurisdiction of the courts of England and Wales on the basis that Article 22(4) of the Convention did not apply to a dispute about the ownership of registered intellectual property rights. Since it was domiciled in Germany, the dispute should be brought there. FND disagreed, arguing that Articles 5(3), 23(1)(b) and 24 of the Convention applied.

Judge Hacon ruled that the courts of England and Wales did indeed have jurisdiction.

* The words "matters relating to a tort, delict or quasi-delict" in Article 5(3) embraced all actions which sought to establish the liability of a defendant and which were not related to a contract. In this case FND was relying on the torts of misrepresentation or fraud.

* On the meaning of "liability" of a defendant, FND's claim was to the entitlement of the patent; it was not alleged, nor could it be alleged, that the patent was owned by B&S through any misrepresentation on the part of B&S itself.

* Article 23(1)(b) allowed for an agreement on jurisdiction to be validated even where there was an absence of writing to record the assent of the party to be bound, so long as there was evidence of a practice having been established between the parties.

* In this case the litigation was not based on any agreement between the litigating parties and it was likely that, before the UKIPO, B&S had expressly abandoned any challenge to the jurisdiction of the courts of England and Wales. That would have been a concession by B&S in the course of the proceedings, not an agreement between the parties by way of a course of conduct or, more exactly, an agreement in a form that accorded with practices which the parties had established between themselves. The submission that the court had jurisdiction by agreement under Article 23(1)(b) would therefore be dismissed.

* The Convention had however undoubtedly been engaged. On the evidence, the overall conduct of B&S before the UKIPO could only be interpreted as its willingness for the dispute with FND to be heard in England, initially by the UKIPO and subsequently by the Patents Court or IPEC. Because B&S had entered an appearance before a court of the UK within the meaning of Article 24 of the Convention, the IPEC had jurisdiction.

All of this leaves parties such as B&S in a difficult position when contemplating the issue of jurisdiction. They must measure their response to any legal claim not just from the point of view of what they say but how their actions are likely to be construed.