The Unitary EU Patent System: a new book

The Unitary EU Patent System, edited by the dynamic and thoroughly scholarly pairing of Justine Pila and Christopher Wadlow, has just been published by Hart Publishing. According to the web-blurb:

The purpose of this book is to explore the key substantive, methodological, and institutional issues raised by the proposed unitary EU patent system contained in EU Regulations 1257/2012 and 1260/2012 and the Unified Patent Court Agreement 2013. The originality of this work lies in its uniquely broad approach, taking six different perspectives (historical, constitutional, international, competition, institutional and forward-looking) on the proposed EU patent system. This means that the book offers a multi-authored and all round appraisal of the proposed unitary system from experts in patent law, EU constitutional law, private international law and competition law, as well as leading figures from the worlds of legal practice, the bench and the European Patent Office. The unitary patent system raises issues of foundational importance in the fields of patent and intellectual property law, EU law and legal harmonisation, which it is the purpose of the book to engage with.

This is a work which will enjoy wide and enduring interest among academics, policy makers and decision makers/practitioners working in patent law, intellectual property law, legal harmonisation and EU law.

This blogger hasn't seen it yet and is unlikely to see a review copy for a couple of weeks, so he thought he'd let everyone know that it was available. Justine and Chris have assembled an impressive array of contributors from the UK and beyond, so he'd expect it to be good. Since the new European patent package is still capable of being described as "work in progress", it's unsurprising that this volume is described as the "First Edition": clearly we can expect a sequel.

Further details are available from the publisher's web-page for it, here.

Late references to prior art: how to reach a sensible solution

VPG Systems UK Ltd v Air-Weigh Europe Ltd was an extempore ruling of Judge Hacon yesterday, sitting in the Intellectual Property Enterprise Court (IPEC), England and Wales. It will never hit the law reports, but at least it was noted on the Lawtel subscription-only service. It's one of those small but revealing cases that shows how a low-tier court goes about its unglamorous daily business of resolving disputes as efficiently and economically as possible, given the obstacles facing the judge (otherwise known as the parties).

In short, this was all about a pre-trial case management conference in a standard infringement claim where the defendant alleged invalidity. The lists of issues had been determined at a case management conference, following which the defendant sought to include reference to a new item of prior art. Although that item of prior art had not been referred to in the original list of issues, it was not one that surprised anyone since it had been mentioned both in the pleadings and in evidence.

The defendant submitted that its expert had not realised, before the case management conference, that certain documents relating to the new item of prior art were available. It also argued that, since the relevant item of prior art had been referred to in the pleadings and in the evidence, in that sense it was already part of the material before the court.

Judge Hacon granted the defendant's application.

First, the bad news for the applicant: the primary difficulty for the defendant was one of the provisions of the Civil Procedure Rules, CPR r.63.23(2), which deliberately made it difficult for parties to add material into the case after the first case management conference. What's more, the fact that the expert had not realised that documents relating to the relevant piece of art were available before the first case management conference did not constitute an exceptional reason that could justify the proposed amendment.

What about the good news? Given that the prior art had been referred to in the pleadings and in evidence, it could not be said that the defendant was seeking to submit new material into the case; rather, it was seeking to rely on the new material as a specific item of prior art.  This being so, r.63.23(2) did not of itself provide a barrier to allowing the amendment -- and there wasn't any other barrier to allowing the specific item of prior art to be added into the list of issues. Plainly it was an item of prior item with which the patentee was familiar, it having been referred to in the pleadings and in the evidence, and therefore it had to be something that was well within the patentee's contemplation, and there was no real prejudice to the patentee in allowing the defendant to rely on it.

Now for the qualification: since its application would be allowed, the defendant would not be permitted to put in any material relating to the item of prior art that was not already before the court in the form of disclosure or evidence.

This seems to be a neat solution, protecting the interests of both parties and enabling the court to have a better stab at either invalidating or affirming the status of a patent that might well be of interest to others in the same market.

No new substance, no admissibility - T2077/11

The decision T2077/11  of the EPO's technical board of appeal is a warning for all those who appreciate the art of copy & paste in appeal proceedings.

The appellant had filed a voluminous writ with grounds of appeal against a decision in opposition proceedings. Further scrutiny revealed that most of what was said therein was a copy of the grounds of opposition. Some additional phrases like "contrary to the contested decision" were sprinkled throughout the text but no new substantive arguments were added and none of the reasons given by the opposition division why the arguments of the appellant/opponent was wrong was discussed.

Disregarding what was a copy of the arguments filed in the first instance, the board of appeal summarizes the grounds of appeal as follows:

In fact, the appellant's statement of grounds can be summarised as follows: "We disagree with the contested decision. Contrary to the opinion of the opposition division the subject-matter of claim 1 according to the first auxiliary request fails to meet the requirements of sufficiency of disclosure (Article 100(b) EPC) and does not involve an inventive step (Article 56 EPC) for the reasons given in our grounds of opposition (reproduced here)."

The appellant submitted that the reproduced arguments did substantiate the grounds of opposition and were to be considered correct despite of the finding to the contrary in the first instance. However, the board notes that substantiation of the appeal requires discussing the reasons given for the decision of the first instance, not the grounds of opposition:

The appellant is of course correct in stating that there is nothing in the EPC or in the case-law that prohibits a party from repeating arguments presented during the previous proceedings. This approach however ignores the fundamental function of appeal proceedings, whether ex parte or inter partes, which is the judicial review of a contested decision. To this end it is foreseen that all decisions subject to appeal must set out the reasons supporting the conclusion reached having duly considered all the facts and arguments of the parties (Article 111(2) EPC). By the same token, the party contesting the reasoned decision is expected to consider and rebut at least one of those reasons in its effort to prove that the impugned decision is wrong and should be set aside. (emphasis added)

Patent litigation in Japan: Chief Judge speaks on latest developments

There's a fascinating and highly educative event coming up next month in London, thanks to the generosity of its sponsors and the kindness of its hosts -- our friends the Chartered Institute of Patent Attorneys (CIPA) and the IP Lawyers Network Japan,  The details of this attraction look like this:

Recent Developments in Patent Litigation in Japan

13 April 2015

Time: 5:30-6:30 pm, followed by drinks & canapés thanks to generous contributions from the co-host IP Lawyers Network Japan and sponsors: Asahi Breweries Ltd, Canon Europe Ltd, Fujitsu, Honda Motor Europe Ltd., Kameda Seika Co Ltd, and Niigata University.

CIPA and the IP Lawyers Network Japan are pleased to announce a joint seminar inviting the new Chief Judge of the Japan Intellectual Property High Court (an appeal court), Judge Ryuichi Shitara, as the speaker.

The talk will cover the following topics:

Overview of procedures and recent trends

Introduction to the latest notable IP High Court’s Grand Panel judgments:

•   FRAND SEP, injunction and damages: Apple v Samsung
•   Patent term extension: Genentech v Japan Patent Office

Speaker: Judge Ryuichi Shitara, Chief Judge of the Japan Intellectual Property High Court

Price: Free for both members and non-members

CPD: 1 Hour

CIPA members must book on this seminar using the 'book me on event' button [this link should, with luck, lead to the right page]. If non-members or ITMA members wish to book, or for more information on the event, please email cpd@cipa.org.uk.

Fancy writing a report on this event for the CIPA Journal in exchange for a free place? For more information or to volunteer, please contact cpd@cipa.org.uk.

Patent litigation in England and Wales 2007-2013: is it a predictor for UPC behaviour?

Thanks to IP scholar and enthusiast Luke McDonagh my attention has been drawn to Examining Patent Cases at the Patents Court and Intellectual Property Enterprise Court 2007-2013, a 24-page report on patent litigation in England and Wales which was prepared by Luke together with two other scholars, Christian Helmers and Yassine Lefouili. You can access it on the GOV.UK website here.

To cut to the chase, the report concludes:

Our data show that 445 patent cases were filed at the PHC [that's the Patents Court] during 2007-2013, whereas a total of 96 patent cases were filed at the IPEC during the same 7-year period [presumably this includes cases filed in the Patents County Court, since the IPEC has only been in existence since 1 October 2013]. This demonstrates that the majority of patent litigation in the UK’s largest patent jurisdiction – England and Wales – takes place at the PHC rather than at the IPEC, even post-IPEC reforms [I think this is a reference to the Patents County Court reform of 1 October 2010, which have that court a considerable boost]. Nonetheless, we also observe that the amount of IPEC patent litigation has increased substantially post-reforms, while over the same period the PHC has not seen fewer cases – quite the opposite, in fact.

Regarding patent-level data, it is worth noting that a very large number of the PHC patent cases - 372 - concern an EP, while at the IPEC 47 out of 96 patent cases centre on an EP. In other words, EPs tend to be the subject of PHC litigation much more frequently than GBs, but there is a more even split at the IPEC. In terms of case-level data, we show that infringement is the most common initial claim at both the PHC and IPEC; but that revocation is a frequent claim at the PHC and a frequent counter-claim at both courts [this confirms the widely-held impression of court users]. With respect to litigant-level data, we observe that more SMEs (106) were involved in PHC litigation than were involved in IPEC litigation (41) over the same period, a fact which shows that despite the increasing popularity of the IPEC, a large proportion of litigant SMEs are familiar with the PHC, something which may enter into their UPC opt-out considerations [that familiarity may not be based on choice, but on technical issues such as the damages limit].

Looking ahead to the UPC, there is little doubt that the answers to two key questions - (i) whether UK firms will begin to opt for UPs, and thus litigate sole at the UPC for these patents and (ii) whether UK firms will decide to opt-out their EPs during the transitional period, and thus continue to solely conduct litigation concerning their EPs at the PHC/IPEC, will determine how substantial and immediate the impact of the coming into being of the UPC/UP will be felt with respect to the amount and types of cases filed at the PHC/IPEC. On the one hand, if patentees decide en masse to opt for UPs instead of EPs or GBs it would seem logical that there would be less litigation at the PHC and IPEC in the coming years. On the other hand, recent survey evidence suggests that not all current patentees are actually considering doing this in the early years of the new system; some are taking a ‘wait and see’ approach (McDonagh, 2014). Indeed, in the coming years patentees may decide to maintain a spread of different types of patents – GB, EP and UP – a decision that would leave multiple potential litigation venues open, and which in turn would mean that in the immediate term the current rates of patent litigation at the PHC and IPEC may not be drastically affected by the coming into being of the UPC. Ultimately, by providing an authoritative, data-driven account of patent litigation at the PHC and IPEC for the period 2007-2013 this report makes a useful contribution to current discussions concerning patent litigation within the UK and the wider EU [I feel that, whatever value these findings have for patent litigation in England and Wales, it is very difficult to draw from them to any likely guidance as to how the same litigants might perform under the UPC].

Litigating in IPEC: a hands-on course

While competition between the various IP professions in England and Wales remains brisk, it's good to see how they cooperate in both running patent litigation courses and in making them available to those who wish to take advantage of them. An example of this cooperation is "Intellectual Property Enterprise Court – Use your rights!" This is a Chartered Institute of Patent Attorneys (CIPA) course which takes place first on Tuesday 9 June 2015 at the headquarters of CIPA, 95 Chancery Lane London WC2A 1DT and thereafter from Thursday 25 June to Saturday 27 June 2015 at Missenden Abbey, Great Missenden, Buckinghamshire HP16 0BD. What's this course all about? The CIPA website explains:

With the growing popularity of the IPEC amongst SMEs, and its more EPO-like procedures, patent attorneys are starting to take the opportunity to offer competitive litigation services. The aim of this course is to provide experienced patent attorneys (3+ years PQE) with an understanding of the procedures of the court by running a patent case study from issue to trial.

This course, which was run successfully in 2011 and 2012, will give you the tools to conduct proceedings in IPEC, either alone or with a barrister – or at the very least give you the confidence to look after your client through the litigation process. This time, we also hope to provide direct experience of the IPEC in action by arranging for at least some attendees to act as marshals in the court after they complete the course.

The course starts with an introductory day at CIPA Hall followed by a residential “long weekend” (Thursday lunch time to mid-Saturday pm). This takes place at conveniently situated Missenden Abbey, in the Chiltern Hills. Much of the time will be spent in groups of four or five working on the case study, under the supervision of a tutor. There will also be plenary sessions dealing with procedural law, case management and practical aspects of running a case and preparing for trial. There is nothing like a “long weekend” course, with hands-on experience for delivering the required levels of competency and confidence to act.

Further details of the course, which is being run by Vicki Salmon (IP Asset) and Richard Davis (Hogarth Chambers), can be found here. The contributions of Vicki and Richard will be augmented by the contributions of others, drawn from the ranks of the nation's IP barristers, solicitors and patent attorney litigators.

While this course is designed for Fellows of the CIPA, a limited number of places are available for solicitors and barristers. The course is limited to 30 delegates, to ensure that everyone gets the opportunity for hands-on learning.  The cost of the course includes accommodation at Missenden Abbey together with meals. CPD: 16+ hours Cost: Members: £1,560 (£1,300+VAT), Non-Members: £1,920 (£1600+VAT)

Patent litigation and dispute settlement: a conference

"Litigation and Settlements in Patent Disputes", an attractive two-day conference organised by the Academy of European Law (ERA), takes place in Trier on 7 and 8 May 2015. Its main themes are (i) how to make the best use of EU and international legal instruments and (ii) invalidity, infringement and damages actions. There is a strong cast of speakers drawn from the judiciary, academe and private practice.
  Click here for programme details and registration.

EPO petitions for review are not third level hearings

Case R 0005/14, Apparatus for circulating flows of washing and rinsing liquids in a laundry washing machine/CANDY SpA (4 March 2015) a reminder from the Enlarged Board of Appeal of the European Patent Office (EPO) that petitions for review of decisions of the EPO's Technical Board of Appeal are not third level hearings, despite the view that many petitioners seem to take to the contrary. The review procedure is an exceptional means of redress, introduced into the amended European Patent Convention 2000 with a view to rectifying intolerable procedural violations.

The review procedure, as the Enlarged Board emphasises, was never intended to operate as a third instance. As it states in its decision:

2.2 As to the substantiation of the petition, the Enlarged Board can see no evidence that the dismissal of the appeal results from any violations of the right to be heard or from other procedural defects within the meaning of Article 112a and Rule 104 EPC. ...

The reference made to gaps in the minutes to support the petitioner's argument that it was impossible to verify –in the absence of a recording of the oral proceedings – whether his arguments were indeed taken into account, or to establish the circumstances surrounding the Board's refusal of his request to hear a university professor, is immaterial: the Enlarged Board notes that all the petitioner's grounds mentioned in the petition received a written response, irrespective of their relevance or acuity. However, as shown by ... the contested decision, some of them were completely ineffective or even alien to
patent law. In such circumstances, it may well be that the petitioner has not grasped the full import of the reasons given for the decision, but if so, that certainly does not mean that the Board has infringed his right to be heard.

3. The review procedure is an exceptional means of redress created by the legislator in the amended EPC 2000 with a view to rectifying intolerable procedural violations. It was never intended to operate as a third instance. These principles were established in the first decisions taken on petitions for review (see e.g. R 0001/08 of 15 July 2008, Reasons 2 and 3). The right to be heard does not mean that the Board must accept argumentation; it must merely consider it. Equally, it does not mean that the Board has to allow requests; it simply has to give reasons when refusing them. If the Board's response does not satisfy a party, that is not a procedural violation; it simply means that the Board took a different view of the facts. And that is not a matter for the Enlarged Board. ...

This blogger is willing to bet that this is not the last time that a petition for review will be made in the hope that it will fulfil the function of a further level of hearing.

Report on possible amendments to UK law to accommodate new Unified Patent Court: little to report

It's a rather technical document, but it's quite short and it's definitely about patent litigation: published by the United Kingdom's Intellectual Property Office, it's called Technical Review and Call for Evidence: Summary of Responses. In short,

The Intellectual Property Office consulted on proposed changes to the Patents Act 1977 to introduce the Unified Patent Court (UPC) and the Unitary Patent between 10 June 2014 and 2 September 2014.

The Government received twenty responses to the Technical Review and Call for Evidence. These came from businesses which may own patents or use patented inventions, legal firms and patent attorney practices, and also some organisations representing particular business/technology sectors. Responses went into varying levels of detail, with some looking at the fine detail of the proposed legislation, and also those which looked at high level principles. Different sectors had different concerns and priorities.

You can read the document here.  If you don't want to read it, or haven't the time, don't worry: there will not be any legislative proposals springing out of it before the UK government has published its own formal Response document -- for which there is as yet no projected publication date.

What's interesting is the very small number of interested parties making responses, listed on page 7. Whether this is a result of poor publicity for the consultation process, apathy or people simply being too busy, it's a disappointing and does send out something of a message that most people aren't particularly concerned.

Congress to Consider Alternative Patent Litigation Reform Bill

Last month, the so-called “Innovation Act of 2015” (H.R. 9) was introduced in the U.S. House of Representatives. That bill proposed several reforms of the patent system, including restrictions on patent litigation such as a partial “loser pays” provision for infringement cases. We reviewed some of those proposed changes HERE.

The Innovation Act has triggered concern in some quarters that it might go too far in limiting patent enforcement rights, especially in light the popularity of inter partes review proceedings under Leahy-Smith America Invents Act (“AIA”) and recent Supreme Court cases generally viewed as favoring defendants.

Last week, three senators introduced an alternative reform bill, named the “Support Technology and Research for Our Nation’s Growth (i.e., ‘STRONG’) Patents Act of 2015. The sponsors argue in the proposed legislation’s proposed findings that the AIA has caused “unintended consequences[,] including the strategic filing of post-grant review proceedings to depress stock prices and extort settlements.” In addition, the sponsors suggest that “efforts by Congress to reform the patent system without careful scrutiny create a serious risk of making it more costly and difficult for legitimate innovators to protect their patents from infringement, thereby weakening United States companies and the United States economy.” The bill’s findings also note that recent Supreme Court decisions in “Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S.Ct. 1749 (2014) and Highmark Inc. v. Allcare Health Management System, Inc., 134 S.Ct. 1744 (2014) [have] significantly reduced the burden on an alleged infringer to recover attorney fees from the patent owner, and increased the incidence of fees shifted to the losing party[.]”

As a result of these concerns, the STRONG Patents Act takes a different tack in approaching patent system reform. Rather than making patent infringement actions more difficult maintain, the bill seeks to strengthen patents rights, including by reforming the still-evolving procedures in AIA post-grant proceedings, which it targets as being too favorable to petitioning parties challenging patents. Major provisions of the STRONG Patents Act include:

AIA Post-Grant Proceedings Reforms. The bill proposes changes to AIA post-grant proceedings to “ensure balance.” Changes include requiring PTAB panels to construe claims using the district court standard, rather than construing claims to have their broadest reasonable meaning; more liberal availability of claim amendments; and restoring an issued patent’s presumption of validity by requiring challengers to prove invalidity by clear and convincing evidence. The bill also would require one PTAB panel to decide whether to institute proceedings and a different PTAB panel to decide the merits of a challenge.

Pleading Standard. The bill would increase the patent infringement pleading requirement to match the standard for other civil cases under Iqbal and Twombly, including by deleting Form 18 from the Federal Rules of Civil Procedure. Under the so-called “Twiqbal” standard, a pleading must contain enough factual allegations to state a plausible claim for relief, but not the detailed contentions that would be required under the Innovation Act.

Willfulness Infringement. The bill would change the standard for willful patent infringement from the Seagate standard to that applied by the Supreme Court in Octane Fitness. Under the new standard, the court could award multiple damages if the patentee proves by a preponderance of the evidence that the infringement was willful or in bad faith.

Divided Infringement. The bill responds to the Supreme Court’s Akamai v. Limelight case relating to divided infringement by clarifying that in cases of indirect infringement, it is not necessary for all steps of a patented process be performed by a single entity.

Other Provisions. In addition, the STRONG Patents Act includes several other provisions, including: eliminating USPTO fee diversions, clarifying the status of universities under the AIA’s “micro-entity” fee schedule, and empowering the Federal Trade Commission to regulate abusive patent demand letters.

The STRONG Patents Act was introduced by Senators Chris Coons (D-Del), Richard Durbin (D-Il), and Mazie Hirono (D-HI). The full text of the bill is available HERE.

Lyrica or generic pregabalin? An innovative court order

Warner-Lambert Company, LLC v Actavis Group PTC EHF and others [2015] EWHC 485 (Pat) is a Patents Court, England and Wales ruling of Mr Justice Arnold on 2 March which has already received substantial attention on the IPKat blog, thanks to Darren Smyth, here. 02 March 2015

In short, in January 2015, in an action for patent infringement the Patents Court dismissed Warner-Lambert's application for an interim injunction. The problem before the court was that doctors, when prescribing pregabalin as a painkiller for neuropathic pain (the sole use that remained within the scope of patent protection), weren't prescribing it by reference to its brand name LYRICA but rather by reference to its generic name, i.e. pregabalin. Said Arnold J, it did not lie within the power of Warner-Lambert, or indeed of Actavis (which was poised to launch its own generic version of pregabalin) to ensure that doctors prescribed the drug only as LYRICA when treating neuropathic pain, since this was an outcome that depended entirely on the behaviour of the doctors as prescribers.

Subsequently both Warner-Lambert and Actavis sought orders that prescribers be given clear guidance by the National Health Service (NHS England), to the effect that the brand name should be used for the patented indication while the generic name should be used for non-patented indications. The parties also wanted prescription software suppliers to alter their software in order to make it easier for doctors to prescribe pregabalin by brand name. Meanwhile. the parties agreed that Warner-Lambert should give a cross-undertaking in damages, but they could not agree as to its ambit: should it only be given to Actavis or should it also cover other generic manufacturers, in this case Teva and Dr Reddy.

Arnold J's conclusions, in brief, were as follows:

On the evidence, the issuing of guidance by NHS England was the most efficacious, dissuasive and cheapest solution to the problem, especially since the alternative from Warner-Lambert's point of view would be to pursue its applications for interim relief against all the generic suppliers.

The benefit of the cross-undertaking should be extended to the other generic companies for two reasons: (i) if Warner-Lambert's patent later turned out to be invalid, the companies ought not to be prevented from making sales of generic pregabalin, and (ii) even if the patent was valid, the effect of LYRICA being prescribed and dispensed at the expense of generic pregabalin in circumstances that did not amount to an infringement of the patent could not be discounted.

EPLIT meets in Paris: will you be there?

PatLit has just been contacted by the working group within the European Patent Litigators Association (EPLIT) which is responsible for organizing the association's annual meetings.  Says the working group:

"As you may know, EPLIT is focusing on patent litigation in Europe, in particular litigation before the future Unified Patent Court.  

We now have the pleasure to announce our second annual meeting which will take place on 29 May 2015 in Paris. The speakers at the meeting are deeply involved in setting up the Unified Patent Court, so we are confident that they will share some hot off the press news regarding the ongoing preparatory work for this Court with us".

The programme for this event can be accessed here or downloaded here.

Portuguese court strikes down 30-day mandatory arbitration deadline in patent infringement trial

... can be unconstitutional

PatLit has learned of an important Constitutional Court ruling from Portugal, where in recent years there have been substantial steps to improve the speed and efficiency of the resolution of intellectual property disputes. The ruling in question is Decision No. 123/2015, of 12 February 2015, which establishes that the 30-day deadline imposed for the initiation of mandatory arbitration of patent disputes is unconstitutional. This deadline was introduced by Law No. 62/2011, which created a system for settling disputes arising from industrial property rights regarding reference medicines and generic medicines, which was published on 12 December 2011.

The challenge to the law's constitutionality was brought after the country's Intellectual Property Court refused to grand interim injunctive relief in a patent infringement action, saying that the parties had first to go for mandatory arbitration.

Source: email circular from Baptista, Monteverde & Associados, Lisbon, Portugal.  Further details of this decision can be found here.  For more background, see guest post on PatLit by Pedro Malaquias here.

EPO Proceedings: a practical guide to success?

Proceedings Before the European Patent Office: a Practical Guide to Success in Opposition and Appeal, by Marcus O. Müller and Cees A.M. Mulder, is a neat little book and quite a departure from the usual Edward Elgar Publishing fare. While that publisher's list of IP titles has blossomed in recent years, it has been firmly and unashamedly directed towards the academic market. But here's something for the practitioner.

This blogger does not believe for a minute that there is any guarantee of success in EPO proceedings, given -- if nothing else -- the procedural inconsistencies that may be encountered. However, he does believe that, with common sense and good preparation. the chances of succeeding will be greatly enhanced. This little guide seems to him to do much to offer the intelligent reader a reasonable prospect of coming away from it with a far better understanding of how to tackle EPO proceedings, with neatly flagged pellets of practical advice and examples sprinkled throughout the text and with plenty of citations and even some statistics.

As the publisher says:

Experienced practitioners will find that the detailed case law citation adds depth to their knowledge. The practical advice and the illustrations from case law provide patent lawyers and patent attorneys with invaluable guidance on specific procedural and substantive questions, as well as on how to act properly in opposition and appeal proceedings. Proceedings Before the European Patent Office: A Practical Guide to Success in Opposition and Appeal is an indispensable tool in the armoury of all patent practitioners.

The first-named author is a member of the EPO Boards of Appeal, while the second is a practitioner. Between them they seem to have come up with an accessible and user-friendly package, a good deal more readable than much of the inevitably more formal material that can be found in Board of Appeal decisions and on the EPO website itself.  This blogger hopes that when, as will certainly happen, it is revised for future editions, it will be allowed to remain fresh and slender and will not suffer from the middle-age spread that comes from absorbing too many details.

Bibliographic data: paperback and online. xxii + 174 pages. ISBN:9781784710095, eISBN:9781784710101. Book's web page here.

MIP International Patent Forum: something for patent litigators too

This blogger thinks it might be a good idea to draw the attention of readers of this blog to the fact that Managing Intellectual Property magazine's International Patent Forum 2015 will take place less than a month away, on 10 and 11 March, in the elegant yet functional surroundings of London's Waldorf Hilton Hotel. In keeping with the traditions of this event, which was first held five years ago, admission is free for in-house corporate and patent counsel, academics and R & D professionals.  If you don't fall within any of these categories but are a reader of the IPKat weblog, you are entitled to the benefit of a £300 discount against the cost of registration.

From the point of view of anyone litigating patents, there are sessions on post-grant and inter partes procedures in the United States and on the new IPR courts in China and Russia, not to mention some cerebral stuff on advanced strategies for litigating patents in the new Europe.

You can see what the IPKat weblog has had to say about this event here, and about some of its speakers here.  The Forum's website, with programme, speaker and registration details, can be accessed here.  Some 200+ folk are expected to attend. This blogger suspects that many will be there because, by pure coincidence no doubt, the Managing IP Global Awards 2015 dinner takes place on the evening of 11 March in the InterContinental Hotel Park Lane.

Disclosure: this blogger is the founding editor of Managing Intellectual Property and is already looking forward to his dinner ...

US To Take Another Crack At Patent Litigation Reform?

In January, the 114^th Congress arrived in Washington, D.C., with Republicans controlling both the Senate and the House of Representatives for the first time since 2006. One of the first orders of business was to restarted the patent litigation reform efforts that stalled in the last Congress.

On February 5, 2015, a group of legislators introduced a new bill, HR 9, entitled the “Innovation Act.” A copy of the bill as introduced is available HERE.

HR 9 continues recent attempts to address issues left unresolved by the Leahy-Smith America Invents Act of 2012. Very similar legislation passed the House in the last Congress, but did not advance in the Senate, apparently due to opposition from then-Senate Majority Leader Harry Reid. With Republicans now controlling the apparatus of the Senate, it appears that some form of reform legislation has a good chance of passing. HR 9 was introduced by a bipartisan group of lawmakers. In addition, the White House repeatedly has endorsed some steps to curb abusive patent litigation.

The following are some key features of HR 9:

1. Detailed Pleadings. HR 9 proposes to add a new provision to the Patent Act, 35 U.S.C. § 281A, requiring claims for patent infringement raised in a complaint, cross-claim, or counterclaim to be pleaded with significant detail, including identifying the patents and claims asserted, the specific accused products or processes, and a statement of how the product or process infringes the claim, including “with detailed specificity, how each limitation of each claim identified . . .  is met by the accused instrumentality.” The pleading also would need to include information concerning the claimant’s standing, prior litigation involving the patent, and whether the patented invention is “essential” for purposes of implementing any industry standards. If the required information is “not reasonably accessible,” the claimant would be allowed to substitute an explanation, identifying the steps taken to ascertain the information. The bill would direct the Supreme Court to eliminate Form 18 of the Federal Rules of Civil Procedure. The Federal Circuit has relied on that form in refusing to require additional factual allegations in infringement pleadings. See R+L Carriers v. Driver Tech LLC, 681 F.3d 1323 (Fed. Cir. 2012).

2. Loser Pays. HR 9 would amend 35 U.S.C. § 285 to create a loser pays system for fees and expenses incurred in any action “arising under” the Patent Act. A “prevailing party” would be entitled to an award of reasonable fees and expenses unless the court concluded that the losing party’s “position and conduct . . .  were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust.” A party could move for an order requiring an opposing party to state whether it is able to pay such an award, and if it could not pay the court would be authorized to join an “interested party” and hold that entity liable for any fees and expenses awarded.

3. Discovery Stays. If the district court determines that claim construction is required, the bill would automatically stay discovery on any subject other than the meaning of the patent claims, subject to exceptions at the court’s discretion.

4. Customer Stays. HR 9 would automatically stay infringement actions brought against customers when the manufacturer of an accused product is named in the action and the customer and manufacturer agree to the stay. Although the customer would be bound by issues decided in litigation against the manufacturer in most cases, it could seek relief from an adverse result if the manufacturer did not defend the action through appeal or entered into a consent judgment, where the result would unreasonably prejudice the customer or be manifestly unjust.

5. Trademarks in Bankruptcy. HR 9 would amend the Bankruptcy Code, 11 U.S.C. § 101, to include trademarks, service marks and the like to the definition of “intellectual property” in the Code. This change would give some additional protection to trademark licensees when a licensor files for bankruptcy protection. 11 U.S.C. § 365(n).

6. Demand letters. The bill seeks to address, at least in part, criticisms that non-practicing entities (NPE’s) and patent assertion entities (PAE’s) engage in deceptive licensing efforts by sending generic demand letters to hundreds of potential infringers, seeking to leverage the threat of expensive litigation to extract settlement agreements. A number of states recently have enacted laws to prohibit abusive patent assertion practices. HR 9 would provide that a demand letter cannot be used to establish willful infringement unless it “identifies with particularity the asserted patent, identifies the product or process accused, identifies the ultimate parent entity of the claimant, and explains with particularity, to the extent possible following a reasonable investigation or inquiry, how the product or process infringes one or more claims of the patent.”

7. Disclosure of real party in interest. The bill would require a plaintiff to notify the USPTO, the court, and all parties of the real parties in interest in any patent infringement suit (and their ultimate parent entities), including any assignee, licensee with the right to grant sublicenses, and any other entity with a financial interest in the patent. If a party in interest is a partnership, the bill would require disclosure of all partnership interests in excess a five percent share of the partnership.

8. Discovery reforms. The bill would direct the Judicial Conference of the United States to investigate and propose procedural reforms to remedy the “asymmetries in discovery burdens and costs” in patent litigation, including the cost and burdens of document and ediscovery, sequencing and bifurcation of discovery, and case scheduling and management in patent actions.

Although HR 9 continues the momentum towards patent litigation reform that started in the last Congress, some commentators have noted that recent changes in the law, including provisions of the America Invents Act and court decisions, may be reducing the incidence of litigation by NPEs and PAEs. As a result, some groups representing patent owners may oppose the bill due to concern that the additional restrictions are unnecessary and would needlessly impair the ability of patentees to enforce their rights against infringers.

Clash of Bread Cultures

Bread and beer are reported to have been the main foodstuff in medieval France and Germany but the crafts have developed in completely different directions.

German beer is governed by the German purity law of 1516 and German brewers would never ever add anything other than water, malt and hops to their beer. German beer consumers appreciate the subtly different nuances of the taste of their Pilsner or Helles. On the other hand, French brasseries offer all kinds of beer with all sorts of natural and artificial flavours and brewed using strange ingredients.

In what concerns bakery, German shops are known to offer a large variety of bread with all sorts of cereals and other stuff in it. French bakery is governed by a sort of purity law for baguette foreclosing using ingredients other than baking flour, water and salt in their bread and yeast or leaven/sourdough for the fermentation (at least when it comes to ""pain de tradition française", "pain traditionnel français", "pain traditionnel de France" or the like to be precise). French people love to discuss the subtle differences in the crispiness and fluffiness of the baguettes of the different boulangers in their hometown.

It would therefore be just as non-obvious for the traditional French Boulanger to put stuff like bran or oatflakes into his dough as it would be non-obvious to put bananas, whiskey or other flavours into his beer.

How does this notion of obviousness, which is based on national traditions, translate into patent law?

The patent underlying the the decision T 1303/10  of the EPO's technical board of appeal relates to a recipe and to a baking mix for "pains de type français à goût levain" (Frech bread with a taste of leaven) held by a French company, which was opposed by the German bakery association "Verband der Backmittel- und Backgrundstoffhersteller e.V.  Geschäftsbereich Deutschland. The patent as granted differed from the prior art that a narrow range of dry leaven was selected from a broader range known in the prior art. The board held that this range could have been found by trial without inventive skill.

Auxiliary request III was more interesting by far because it proposed to add some bran to the dough (to thereby deviate from the French purity law) in order to improve the preservability and the organoleptic properties of the bread. Of course, the German bakery association submitted that adding bran to the bread is obvious for the skilled person.

A document D30 disclosed information the effects of larger amounts of bran onto the properties of bread but the amounts were such that be skilled person would have feared that the characteristic organoleptic properties of French bread would have been impaired (in other words: he would have ended up with  German bread).

The board finally found that, starting from a very specific recipe for French bread, adding 0,4 to 1 weight parts of bran was non-obvious for the person skilled in the art.

To conclude, using Bran and Sourdough in bread is obvious, but not when it comes to Baguette.

Beware of Digital Signature Folders

In the good old times, patent attorneys used to work by messing up the file, scribbling amendments into documents, dictate submissions to the offices and then letting their secretaries do the clean up and prepare the documents and present them neatly in a leather-would signature folder. The attorney would then put his glasses on, leaf through everything put his signature on the documents if everything was to his satisfaction and proceed to the tea break.

While the work distribution of messing up and cleaning up the file is basically unchanged, this blogger sometimes misses the leather-wound signature folder. The electronic equivalent is a PDF-viewer software included in the EPOline client and today's assistants have to prepare neat PDF documents for online-filing rather than writs on handmade paper. The PDF-viewer opens automatically when clicking on the "sign" button in the software and the electronic signature can be applied only after closing the viewer again and confirming that the signature shall be applied indeed. As compared with the leather-wound signature folder, the PDF-viewer is much less classy. Besides of the PDF-documents, it shows a lot of unreadable XML code and leafing through a submission with multiple attachments may be fairly bothersome.

It is therefore tempting to circumvent the clumsy PDF-viewer, have the documents presented on paper (in a leather-wound signature folder if you like) and to trust that your secretary makes sure that what is electronically signed is identical to what you have checked on paper.

This is what the attorney did in the case underlying the decision T 1101/14 available here. In this case, the secretary had been instructed to upload the document with the grounds of appeal but failed to do so. The attorney had applied the electronic signature without remarking that the grounds of appeal were missing. In the request for re-establishment of rights, it was argued that these were two isolated mistakes in an otherwise secure system.

The Technical Board of Appeal did not find the attorney's error excusable. The catchword reads:

A representative who mistakenly signs a statement of grounds of appeal having most of its pages missing must, in the absence of special circumstances which could justify the representative's mistake, be considered not to have taken all due care required by the circumstances.

What can the attorneys learn? We have to leaf through the electronic documents in the PDF-viewer before applying the electronic signature and are not entitled to blame the secretary if something is missing.
 

ZTE fails in bid to reopen patent trial post-judgment but before judge seals order

Vringo Infrastructure Inc v ZTE (UK) Ltd [2015] EWHC 214 (Pat) is a 30 January decision of Mr Justice Birss, sitting in the Patents Court, England and Wales.  It's far from being the first time that these two adversaries have clashed in the courts of England and Wales [see eg earlier PatLit post here with links to earlier litigation].

This time round, ZE applied to re-open a trial at which Birss J concluded that Vringo's patent was valid, having found that the relevant prior art documents did not disclose protocol transparency. ZTE then looked for other examples of protocol transparency, finding prior art documents on which it sought to rely. Having done so, it obtained an order suspending the court's sealing of the order arising from the trial pending this application to reopen the trial.

In short, Birss J refused the application to reopen the trial. In his view

* The power to reverse a decision before the order had been drawn up existed, and was not limited to exceptional circumstances: every case depended on its circumstances and the overriding objective was the starting point [ie the court should deal with cases justly and at a proportionate cost].

* Allowing an amendment before a trial began was different from allowing it at the end of the trial to give an apparently unsuccessful defendant a chance to run a new argument, particularly where the amendment was sought after judgment,

* A party could not just wait for a judge's findings and say that he could have called more evidence on that point. If an amendment to the statements of case would not have been permitted before trial, it was unlikely to be permitted afterwards -- and, even if it were permitted, that did not mean that it should be permitted after judgment,

* In the context of patent litigation, the selection of prior art by a party challenging a patent was a matter of his own free choice and it was not open to a challenger simply to re-open the matter on the basis that a judge had not dealt with it.

* The prior art relating to protocol transparency was plainly potentially relevant earlier and could have been found with reasonable diligence. It was a toss-up as to whether that prior art would have had an important influence on the trial's result, and this new evidence was entirely credible.

* Points in favour of granting ZTE's application were that neither party had acted to its detriment in reliance upon the judgment; the patent was to be effective; the case was really only about money rather than injunctive relief; and costs incurred in a retrial would be compensatable

* Points against granting the application included the facts that there was no excuse for ZTE not having used the documents before; it would lead to a trial of at least two days; and the legitimate expectation of finality following the original trial would be thwarted. The strength of ZTE's case was not so clear as to show that the patent was probably invalid, since it would merely involve an arguable piece of prior art. A party had to make careful selections of prior arts and it was incomprehensible that ZTE had overlooked this prior art earlier.

Come to Bournemouth! Free public lecture on the unitary patent and the UPC

Next week, on Thursday, 19 February, there's a public lecture that should appeal to anyone who is interested in patent litigation and is not too far from England's south coast. The title is "The Unitary Patent and the Unified Patent Court: a private international law perspective" and the speaker is the excellent Professor Paul Torremans (University of Nottingham, which is a long, long way from the seaside).

The lecture takes place in Bournemouth University; it's free -- but space is limited. Details and registration can be accessed here.