Tuesday, 23 September 2014

Patents and patent litigation in the EU: a multidisciplinary approach

"The EU Patent Package: Multidisciplinary and International Perspectives" is the title of an event jointly organised by the University of Antwerp and the Centre for Intellectual Property Rights (CIR) at the University of Leuven. In the charming venue of the Royal Flemish Academy of Belgium for Science and the Arts (Academy Palace, Hertogsstraat 1, 1000 Brussels). According to the organisers:
The conference starts off with a presentation on the latest developments concerning the implementation of the Patent Package from the perspective of the EPO by Margot Fröhlinger (Principal Director Patent Law and Multilateral Affairs EPO) followed by an update on the progress regarding the Unified Patent Court by Paul van Beukering (Chair of the Preparatory Committee of the Unified Patent Court). These developments will then be examined critically from an economic perspective by Bruno van Pottelsberghe (ULB, former Chief Economist of the EPO), a legal perspective by Matthias Lamping (MPI) and a governance perspective by Ingrid Schneider (University Hamburg).
In the afternoon, the European patent reforms will be reviewed by two high-level international keynote speakers, Rochelle C. Dreyfuss (New York University) and Yoshiyuki Tamura taking into consideration the patent reforms in the US and Japan. Esther van Zimmeren (University of Antwerp) will focus on the international trend to establish specialized IP courts and the lessons to be drawn from other jurisdictions. This session will be followed by another critical feedback session with practitioners with an impressive track record from university, different industry sectors and legal practice: Nicole Antheunis, TTO Université de Liège, Emil Pot, ActoGeniX, David Laliberté, Microsoft, Bart Van den Hazel, GSK and Eric De Gryse, Simont Braun.
Even better news is that there will be ample time for discussion and extensive networking opportunities.

PhD students can register for just 150 euro, while everyone else pays 200 euro (inclusive of lunch and reception).

The organisers ask you to register online by 3 October here.

This blogger would only add that the multidisciplinary approach has much to commend it and he would like to see it extended to disciplines other than law and economics.  The psychology of litigation and dispute resolution would be one worthy topic, as well as the sociology of crowd behaviour in response to patent law challenges -- for example, the establishment of patent pools and the collective aggregation of defensive patents.   Let's go for it!

Monday, 22 September 2014

Dividing the costs: is there an interface between justice and surmise?

Baxter Healthcare UK Ltd v Fresenius Kabi is a 17 September ruling of Judge Richard Hacon in the Intellectual Property Enterprise Court, England and Wales, delivered extempore on 17 September. This blogger found the case noted on Lawtel's subscription-only service.

In March 2014, without issuing a letter before action, Baxter issued patent revocation proceedings against Fresenius, alleging lack of novelty and inventive step. Fresenius did not counterclaim for infringement and in May 2014, as part of its defence, said that it would not assert the patent against Baxter. No, said Baxter in June, that wasn't good enough: it would still leave Fresenius free to sue Baxter's customers and could cause problems if the patent came into the hands of assignees. After an amendment of the pleadings was ordered, Fresenius itself applied on 1 August for unconditional amendment of the patent that whittled it down to just one claim, effectively giving Baxter everything it wanted. Baxter then sought costs up to 1 August.

Fresenius didn't see why it should have to shoulder the costs. After all, if Baxter had only written a letter before action, the parties would have resolved their differences and arrived at the same point without the need for proceedings and without therefore incurring consequent cost. Fresenius said that it would have offered Baxter a contractual undertaking not to bring infringement proceedings, extended that offer to cover Baxter's customers, and would have agreed to extract an undertaking from any assignee to give the same protection.

Baxter maintained that this was unrealistic: after all, it was only the filing of Fresenius's unconditional amendments to the patent and acknowledgement of non-infringement on 1 August 1 that dealt with its concerns and resulted in its entire protection. Fresenius asserted that it had taken that long for it to realise that Baxter would be content with a patent with only one claim.

Judge Hacon ordered Fresenius to pay 50% of Baxter's costs up to 1 August. In his view:

* It was not easy to draw any sensible conclusion as to what would have happened, had Baxter issued a letter before action, since there was fault on both sides.

* It was virtually always appropriate for a claimant to write a letter before action -- even if there was no reasonable expectation that there would be any sensible response. In this case, Baxter's failure to do so meant that it was not possible to say how matters would have been resolved; the court was thus required to speculate.

* It was likely that there would have been an exchange of correspondence resulting in Fresenius making it clear to Baxter that it did not wish to engage in litigation against it, and that Fresenius would have offered the commitment not to assert the patent against Baxter. It was, however, likely that Baxter would not have been satisfied with that, as it needed protection for its customers and from any assignee of the patent.

* When Baxter had raised its concerns initially in May 2014, Fresenius had not responded with speed and Baxter had only become satisfied with the position on 1 August. Had the letter before action been written, it was possible that matters would have been resolved, but equally possible that they would not  --  so that litigation would have started and costs would have been incurred in any event.

This blogger is prepared to accept that the judge has made the correct decision on the facts before him, but he feels some unease at the amount of speculation and surmise on which the determination of the allocation of the costs burden was based. Judges are expected to know the law and to be able to establish facts, either in absolute terms or on a balance of probabilities. However, they do not come equipped with retrospective crystal balls and reasoning of this nature would, it seems to him, be vulnerable to challenge if closely scrutinised by an appellate court.

Friday, 19 September 2014

Biogen v Medeva: historical patent litigation landmark recognised

"Biogen v Medeva 20 years on" is the title of a seminar organised by Rouse for Thursday 16 October in the Crisis Skylight London Café (64 Commercial Street London, E1 6LT). You can check out the details here.  According to the rubric:
"Biogen v Medeva occupied the English patent courts for much of the early 1990s and the ‘Biogen insufficiency’ principle is still applied today [for a view of some applications of that decision in recent years, noted by the IPKat, click here]. Twenty years later, Rouse is bringing the protagonists of this landmark case together again...

We would be delighted if you would join us to hear about the impact this case had on the commercial, legal and scientific arenas as well as the personal recollections of the individuals involved. Our distinguished panellists include one of the expert witnesses in the case: Professor Jeffrey Almond; members of the parties’ in-house teams: Peter Cozens, Marcus Dalton and Bill Tyrrell; as well as a number of the external solicitors, barristers and US lawyers who acted in the litigation: Jim Haley, Mark Hodgson, John Ilett, Professor Sir Robin Jacob, Leslie McDonell, Adrian Speck QC and Diana Sternfeld".
This blogger is delighted to see an event that records the significance of a decision which, over the years, has remained centre stage and has fostered so much debate and sometimes fierce argument.

You can read the October 1996 decision of the House of Lords here

Cautionary Tale: CAFC Rules That Delay Resulting From Reexamination Can Trigger Litigation Laches

Defendants accused of patent infringement sometimes raise the equitable doctrines of laches and estoppel as affirmative defenses. Although the defenses often appear to be linked, they are actually quite separate. As the Supreme Court explained last term, laches arises from an unreasonable delay in commencing suit that resulted in prejudice to the defendant, while equitable estoppel requires some action by the patentee, combined with reasonable reliance on that action by the defendant. See Petrella v. Metro-Goldwyn-Mayer, Inc., ___ U.S. ___, 134 S. Ct. 1962 (2014)

This week, the U.S. Court of Appeals for the Federal Circuit applied laches to bar a patentee’s infringement suit. SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 2013-1564 (Fed. Cir. Sept. 17, 2014). The patentee, SCA Hygiene Products, owns a patent for adult incontinence products. On October 31, 2003, it notified First Quality Baby Products, LLC that First Quality appeared to be infringing the patent. SCA and First Quality exchanged letters for eight months. Then SCA requested ex parte reexamination of the patent based on a reference identified by First Quality. SCA did not notify First Quality of the reexamination proceedings. The U.S. Patent and Trademark Office issued a reexam certificate confirming the original claims and adding additional claims on March 27, 2007. SCA immediately began preparing to sue, but did not actually file suit until August 2, 2010 – six years and nine months after SCA’s first letter. During the pendency of the reexam, First Quality made substantial investments relating to the accused products, including purchasing a division from another diaper manufacturer and spending $10 million to expand production.

First Quality raised both laches and estoppel as defenses to SCA’s action. The Federal Circuit reviewed the elements of laches, as laid out in A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc):
Laches is an equitable defense to patent infringement that may arise only when an accused infringer proves by a preponderance of evidence that a patentee (1) unreasonably and inexcusably delayed filing an infringement suit (2) to the material prejudice of the accused infringer. If these prerequisite elements are present, a court must then balance “all pertinent facts and equities,” including “the length of delay, the seriousness of prejudice, the reasonableness of excuses, and the defendant’s conduct or culpability” before granting relief. . . Delays exceeding six years give rise to a presumption that the delay is unreasonable, inexcusable, and prejudicial. Under this presumption, the burden of evidentiary production shifts from the accused infringer to the patentee. Both of these presumptions disappear if the patentee can identify evidence sufficient for a reasonable jury to conclude either that the delay was excusable or not unreasonable, or that it was not materially prejudicial. If the patentee meets this burden of production, the accused infringer must prove both elements of laches by a preponderance of evidence.
SCA, Slip op. at 5-6 (citations omitted).  

Since SCA’s delay in filing suit was more than six years, the delay was presumed to be unreasonable, inexcusable, and prejudicial. SCA attempted to rebut the presumption by pointing out that three years of the delay was due to the reexam, which was a public proceeding. The Federal Circuit was not impressed. First, it rejected SCA’s argument that the time spent in reexam should not count toward the six year presumption trigger. Second, it ruled that SCA’s overall conduct , including its delay in filing suit after the reexam, could not rebut the presumption:
Under such circumstances, SCA was not required to provide notice of the reexamination to First Quality. But even though SCA’s delay may have been excusable when viewed in isolation, we must examine whether SCA’s delay, viewed as a whole, was excusable. The district court found that “SCA admitted that it has continuously tracked First Quality’s activity since 2003 and has an entire department dedicated solely to competitive intelligence.” SCA then continued to evaluate First Quality’s products during the reexamination period. SCA was also represented by U.S. patent counsel when it sent letters to First Quality in 2003 and 2004 and during the reexamination proceedings between 2004 and 2007. No evidence suggests that SCA was unable to find counsel or reinitiate contact with First Quality shortly after the reexamination ended. Moreover, “personal lack of familiarity with the patent system . . . does not excuse . . . failure to file suit.” Given the circumstances, SCA should have been prepared to reassert its rights against First Quality shortly after the ’646 patent emerged from reexamination. [Cites] But SCA remained silent for more than three years after the patent came out of reexamination. Accordingly, SCA has failed to raise a genuine issue of material fact regarding the reasonability of its delay. Viewing all of the facts in the light most favorable to SCA, no reasonable fact-finder could conclude that SCA’s delay, viewed as a whole, was reasonable. 
Slip op. at 11-12. Since First Quality was able to establish prejudice due to the delay, laches barred SCA’s claim. 

One fascinating aspect of the SCA decision is the Federal Circuit’s treatment of SCA’s argument that the entire laches defense, as well as the Aukerman case on which it rests, was severely undermined by the Supreme Court last term in Petrella, a copyright case. In Petrella, the Supreme Court ruled 9-0 that although laches sometimes is adopted as a “gap filling” doctrine when a federal statute omits any limitations period, it has a limited role when Congress provides a statutory limitation period. “[L]aches is a defense developed by courts of equity; its principal application was, and remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitation.” 134 S. Ct. at 1973. The Court noted that laches’s role is “gap-filling, not legislation-overriding,” and the Court has “never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.” Id. at 1774-75. This view of laches is squarely contrary to the Federal Circuit’s reasoning in Aukerman. Since SCA's claim was timely under the Patent Act's limitations provision, 35 U.S.C. § 286, laches would appear to be unavailable as a defense.

Nonetheless, the Federal Circuit in SCA considered itself bound by Aukerman, wounded though it may be:
But Petrella notably left Aukerman intact. See 134 S. Ct. at 1974 n.15 (“We have not had occasion to review the Federal Circuit’s position.”). Because Aukerman may only be overruled by the Supreme Court or an en banc panel of this court, Aukerman remains controlling precedent.
Slip op. at 8. 

The Federal Circuit reversed the district court’s ruling that SCA’s conduct also created an estoppel, since there was no affirmative act, or failure to act, that First Quality could reasonably have relied upon.  The full decision is available HERE.

Thursday, 18 September 2014

UPC Roadmap updated

Anglo-German law firm Taylor Wessing has just published an updated version of its Roadmap for the UPC is published. According to the rubric on the firm's website:
The Preparatory Committee of the Unified Patent Court has published a September 2014 update on the progress of its work towards the opening of the court. The key milestones in the update are:
The Committee will continue to work on the basis that "the Court will not be ready before the end of 2015", although it acknowledges that this is "ambitious";

Following a hearing of user organisations in November 2014 and then further review, the Committee expects there to be agreement on the Rules of Procedure in May 2015;

A draft schedule of court fees – fixed fee, and calculation method for value based fees in matters above the defined ceiling of the fixed fee – is being considered by the Finance Group. A second draft is expected to be discussed at the beginning of 2015;

A revised draft of the rules on the litigation certificate for patent attorneys is expected in early 2015;

The procurement process for the electronic filing and case management system of the UPC is expected to take place in autumn 2014. Development and testing of this system is expected to be finalised by the last quarter of 2015;

Work on the number and qualifications of local staff is due to be finalised in March 2015;
A provisional list of legally and technically qualified judges has been approved by the Preparatory Committee. The first training programmes for those judges deemed to require training will begin in December 2014. The Committee aims to appoint a sufficient number of part-time and full-time judges before the entry into operation of the UPC and to create a reserve list of judges who could be appointed should the case law increase more than expected.
The six-page document, which you can read here, has a handy list of 13 tasks completed by the Regulatory Committee over the past 12 months. Some of these tasks are not particularly onerous or significant, but there is a certain pleasure in placing little ticks next to activities that have been dealt with.

Our good friend and occasional contributor both to this blog and to the IPKat, Paul England, is the person to contact if you want any further information.

Hijacked book-launch? Or two for one ...

This blogger attended a very pleasant event at London's Oxford and Cambridge Club yesterday afternoon, this being the launch of Angela Fox's new tome, Intellectual Property Enterprise Court: Practice and Procedure (already noted here on PatLit and soon to be reviewed on the IPKat).  To his delight he was able to exchange some amicable words not only with the excellent Angela herself but also with that court's Enterprise Judge, Richard Hacon, plus a brace of more senior judges who creditably support numerous IP events in their own spare time and make themselves generally visible, demonstrating the fact that they are not remote from society but an active component of it.

To his surprise, though, this blogger discovered that Angela's was not the only new book on the block, as it were.  On display, indeed on the same table as Angela's book, were copies of the second edition European Unitary Patent and Unified Patent Court, an agreeably short softback by Angela's fellow Jenkins partner Hugh Dunlop that apparently had rolled off the presses earlier in the day.  This text is the second edition, a year later than its predecessor, and it includes a brief commentary on the structure, the legislation and the draft 16th revision of the Rules of Procedure of the Unified Court.  You can get a bit more information from this book, plus an order form and, if further temptation were needed, a review of the 2013 edition, from the website of publishers CIPA here.

Oktoberfest and Patented Technology

While Munich is pleasantly anticipating the forthcoming Oktoberfest season, the EPO has produced really fancy movie on patented technology at the Oktoberfest.

Have a look! This blogger really appreciates the efforts of the EPO to create positive headlines (other than ones involving mutant tomatoes) in relation to patents.

Wednesday, 17 September 2014

Enablement to USE drugs vs. enablement to PRODUCE drugs

The decision T 1616/09 deals with an application including both claims directed to pharmaceutical compositions and claims directed to the medical use of such compositions. The application had been rejected based on lack of enabling disclosure. The arguments of the examining division were based on an alleged lack of evidence in the application showing that the technical problem as stated in the application - synergistic improvement of the effectiveness of antineoplastic agents - had indeed been solved, especially in view of all possible anti-neoplastic agents encompassed in the claims.

The decision contains interesting notes on the level of disclosure required for the different categories of claims. Here are the headnotes:
For the purposes of Article 83 EPC, the level of disclosure in the application which is required for claims directed to pharmaceutical compositions or kits is not the same as that which is required for medical-use claims. For claims directed to pharmaceutical compositions or kits it is in principle sufficient that the application provides information which allows the skilled person to produce the composition or kit, and that there are no substantiated doubts that it could indeed be used in therapy. For second-medical-use claims on the other hand it is required not only that the composition itself is disclosed in an enabling way but also that its suitability for the claimed treatment is plausibly disclosed in the application (Reasons 6).

In the case of a claim directed to a pharmaceutical composition comprising two classes of compounds which have both already been used in therapy in the prior art, there is a priori no reason to doubt that such a pharmaceutical composition can be produced; no specific functional effect has to be demonstrated (Reasons 6.1.1 and 6.1.2).

In the case of second-medical-use claims, if the claimed therapeutic effect was already known to the skilled person at the priority date, it is not necessary to demonstrate it in the application (Reasons 6.2.2).

Monday, 15 September 2014

Broad Claims with narrow support – Vorrichtung zur Schwingungserzeugung

The decision 4 Ni 16/11 of the 4th senate of the Bundespatentgericht (BPatG) is worthwhile noting because it approaches the jurisdiction of the BPatG with a jurisdiction of the Technical Boards of Appeal of the EPO.

The patent subject to the nullity action had claimed a direct power transmission of power created by reaction torques (reactive power) using servo motors in a very general way. The claim was much broader than the specific solution described in the documents as a whole, which described a hydraulic solution without overlapping drive.

The Court finds that the generalized solution of the claim is no longer represented by the disclosed way of solving the problem and that, as a consequence, the patent protection extended beyond the contribution of the invention to the prior art. As a consequence, the requirement of the enabling disclosure is not met (§ 21, paragraph 1, number 2 and § 22, paragraph 1 PatG).

BPatG notes that the balancing assessment (wertende Betrachtung) should account for the facts that the electronic solution - which was covered by the claim but not disclosed in an enabling way - does not only require an autonomous technical development starting from the prior art but further that this embodiment has considerable economic importance and that the patentee had explicitly noted the existence of such an embodiment engrafting the application and claimed this alternative embodiment in a dependent claim without, however, being able to disclose a way to reproduce the embodiment.

After “Okklusionsvorrichtung” and “Diglycidverbindung”, this is a further example of the case where the abstract mentioning of possible embodiments without detailed support is detrimental rather than helpful for the scope of protection.
The full text (in German) can be found here, the headnote here.

Posted by. M. Thesen

Do people know that patents exist? A judge opines

OOO Abbott & Another v Design & Display Ltd & Another [2014] EWHC 2924 (IPEC) is a 4 September 2014 ruling of Judge Hacon in the Intellectual Property Enterprise Court, England and Wales, on the subject of calculation of an account of profits after a patent has been held infringed.

This blog post focuses on just one small issue arising in this case: the availability of the remedies of damages and an account of profits against an ostensibly innocent infringer.
  1. Section 62(1) of the Patents Act 1977 states:
  2. "In proceedings for infringement of a patent damages shall not be awarded, and no order shall be made for an account of profits, against a defendant or defender who proves that at the date of the infringement he was not aware, and had no reasonable grounds for supposing, that the patent existed; and a person shall not be taken to have been so aware or to have had reasonable grounds for so supposing by reason only of the application to a product of the word "patent" or "patented", or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent accompanied the word or words in question."
So, to what extent is a person said to be unaware, and of having no reasonable grounds for supposing, that an infringed patent existed?  Judge Hacon had this to say:
  1. ... I am not satisfied that Design & Display has established the necessary lack of knowledge or reasonable grounds for supposing that the Patent existed. In cross-examination Mr Lloyd [managing director of Design & Display] said that he had only heard of patents because he was a local historian and he did not know whether his colleagues knew what a patent was. While it is easy for those whose working lives are concerned with patents to over-assume how much the general public know about patents, I think most individuals, such as Mr Lloyd and presumably his colleagues, will have heard of the concept of patents and will have on board the basic notion that you can get one to protect your idea. It seems to me unlikely that an interest in local history is needed to know that much".
Duly noted!

Friday, 12 September 2014

NPEs in the US: who's doing the suing?

Which non-practising entities (NPEs) are filing patent infringement suits in the United States? We have found a great table depicting new NPE litigation over the past eight months thanks to Article One Partners, whose crowd-sourcing of devastating prior art to blast unpopular patents off the face of the Earth looks must seem particularly attractive if one of these businesses comes knocking at your door:

This information comes from PatentFreedom, whose chairman and founder is Daniel McCurdy, whose patent risk management company RPX Corporation acquired it earlier this year.