"For those of you ... who have never heard of "Wilkof"s Law", it goes like this. Question: "How do you know when there is economic slowdown?" Answer: "There is an increase in patent litigation."Wilkof's article, "Patent Litigation, the ITC and Hardship in the Chip Industry" gives examples, reflecting an increased rate of patent litigation in the United States which can be seen not merely in the courts but in terms of actions brought before the International Trade Commission. The full text of his article can be read here.
Wednesday, 31 December 2008
Monday, 29 December 2008
Saturday, 20 December 2008
" ... all claims for infringement are to be tried with the Mexican Patent Office, which renders the cases to be administrative processes rather than judicial instances. Decisions rendered by the Mexican Patent Office will only rule on whether the infringement took place or not and, in a declarative type of decision, the defendant will be ordered to immediately stop the infringing activity and will also be fined. Fines for patent infringement cases can go as high as US $85,000.00, although the Mexican Patent Office has hardly ever applied the maximum penalty".One might wonder whether trial of inter partes disputes relating to infringement as administrative processesm with penalties that appear derisory in relation to actual damage, are TRIPs-compatible.
Monday, 15 December 2008
The IPLC database includes real-time data summaries, industry indices, and trend analysis together with a full-text search engine, providing detailed and timely information that cannot be found elsewhere in the public domain. The Patent Litigation Module, includes more than 23,000 cases filed in US district courts since 2000--raw data for every district court patent case and all results (outcomes and opinions).
The IPLC website can be found here.
Sunday, 14 December 2008
* "Patent Troll Litigation", a robust account by Stephen S. Korniczky (Hastings, Janofsky & Walker) of the tactics that defendants can adopt in infringement actions brought against them by non-trading entities.For further details of Patent World click here.
*"Simplifying the System", in which PW editorial board member Michael Burdon (Olswang) further articulates the 'Burdon Plan' for accelerating UK patent litigation while bringing down the cost.
Some patents are never litigated, because they are simply too silly. A collection of these, together with some pointed comments by the author Daniel Wright, can be found in Patently Silly -- published by Carlton Books (web details here). The author's Patently Silly weblog provides more of the same, and is ideal reading material for those fascinated by personal hygiene. This little book slips neatly into a typical Christmas stocking and provides some mild amusement for those within the profession whose own examples of silliness probably come from the behaviour of patent litigants as much as from the subject matter of the granted patent.
Wednesday, 10 December 2008
The Brussels-based regulator still needs the backing of the region's 27 nations if its 2007 proposal to create a single EU patent and a centralised court to handle disputes over inventions is to come into operation. An earlier debate on the same plan broke down in 2004 when governments failed to agree on the languages to be used. The proposal on the table now is more straightforward and will make headway under the Swedish EU presidency, said Froehlinger.
Monday, 8 December 2008
"Plaintiffs have gravitated to these courts north and east of Houston, because the Eastern District has been providing plaintiffs some degree of certainty. Plaintiffs have come to expect several things, including a relatively short track to trial, the use of specific local patent rules, a no-nonsense policy toward discovery, and a low likelihood of cases being transferred out of the district. Most importantly, plaintiffs have relied on the reputation that its judges rarely grant defendants summary judgment and that its juries frequently decide in favor of plaintiffs. Indeed, until recently, no jury in the Eastern District had invalidated a plaintiff’s patent. This had the result of limiting defendants for practical purposes to non-infringement defenses and provoking many, often lucrative, settlements in plaintiffs’ favor.
Lately, however, this pro-plaintiff orientation has been proven not to be absolute. As a case in point, recently Palomar Medical Technologies Inc., a Burlington-based manufacturer of light-based cosmetic treatment devices, prevailed in a significant patent infringement lawsuit brought by its competitor, Wayland-based Candela Corp., in the Eastern District of Texas. ...
Furthermore, the jury found all of the asserted claims ... to be invalid. Specifically, the jury found them anticipated by one prior art reference and rendered obvious by four separate combinations of additional prior art. Following the trial, the jurors told counsel they had spent the bulk of their deliberations considering the prior art and the validity of plaintiffs’ patent.
Palomar’s victory is only the fourth time that an Eastern District jury has invalidated a patent. All four, however, have come in the past two years. Why are Eastern District juries now willing to consider and, more and more, accept invalidity defenses? Perhaps defendants are doing a better job of educating juries on their role in being the ultimate decision makers about the validity of patents. Perhaps, the less patent-friendly publicity of the past few years, as Congress debates patent reform and industry complains about the costs of patent litigation, has filtered down and is making an impression. Perhaps in the current economic climate, juries are taking a harder look at whether plaintiffs really should be entitled to significant recoveries. ...".
Thursday, 4 December 2008
Monday, 1 December 2008
It may seem like a fair sum of money but, divided among the eight patents, infringed in respect of three separate products, US$18.5 million doesn't seem very much at all. We may speculate as to how much Sony would have had to pay if it had taken 3 x 8 conventional licences.
Friday, 28 November 2008
Wednesday, 26 November 2008
"Once RPX gains ownership of a patent, it takes the patent off the market, thereby reducing an existing product's susceptibility to patent trolls. RPX also allows member companies to license the patents RPX owns. As part of the contractual agreement between RPX and members, a provision states that RPX will not assert or litigate patents it acquires".Focused almost exclusively in the IT field, including software, e-commerce, mobile communications, networking, and consumer electronics devices, RPX seeks initially to buy $100 million in patents each year, raising the cash through membership fees (US$35,000 to US$5 million, depending on the size of the company).
Thursday, 20 November 2008
Monday, 17 November 2008
Friday, 14 November 2008
Right: the Windsurfer -- a potent image for European patent litigators, but there's no plain sailing on the way to establishing the new European patent court
Reporting from the Trilateral Authorities users’ meeting in The Hague, he writes:
"It seems that patents are no longer a priority for the French – although that is probably a bit too simplistic. In fact, I have been told that there are splits between ministries within the French government. Some departments (such as that responsible for industry) are keen to press on and others are less inclined to waste (as they would see it) political capital on trying to reach an agreement on patents when there are far more important (as they would see it) issues to deal with; and this is a view that seems to be shared by the French delegation in Brussels.
That said, there is a new document relating to the patent court. Intriguingly, it is entitled “Draft Agreement on the European Union Patent Judiciary - compatibility of the draft Agreement with the EC Treaty - possible request to the EC Court of Justice for an opinion (Article 300(6) EC)”. Unfortunately, it does not yet seem to be available to view.
Anyway, the clock is ticking down. ... There is a chance that things may be revived under the Swedes when they take the reins in the second half of 2009. But do not bet on it. Instead, the chances are that nothing much is going to happen and a single European patent jurisdiction will remain a distant dream".
Wednesday, 12 November 2008
Monday, 10 November 2008
"If a client has a good case there is a good chance that client can offset anywhere from 50-100% of the cost risk, typically at no upfront cost and at no cost if the case loses".But what happens, it may be asked, where both sides can establish a good case?
Friday, 7 November 2008
"The need for a legal "Elements of Style" aimed at U.S. patent litigators has long been acknowledged by patent law attorneys and judges within the Federal Circuit. The United States Court of Appeals for the Federal Circuit has recently embarked on a campaign to improve the quality of briefing. With Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit , Mark Davies has provided attorneys with an indispensable guide to briefing and arguing cases before the Federal Circuit.While the text is obviously aimed at the US market, there is plenty to commend it to the non-US reader, whether as a good handle on US patent appellate proceedings or as a source of ideas that can arguably be transplanted to other, less litigious jurisdictions,
Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit is a practical guide to appellate advocacy for patent attorneys appearing before the federal appellate court responsible for patent law. The book guides readers through the organizational requirements needed for a Federal Circuit appellate brief, as set out in the Federal Rules of Appellate Procedure, with an emphasis on developing an appellate style for briefing a patent appeal. It is an essential manual of instruction for litigators and anyone interested in understanding the procedures of writing a winning appellate brief and presenting it in court. Topics include clear writing, the importance of presentation, the types of arguments most likely to succeed, and the formal requirements for filing a brief. Other issues include effective oral argument presentation and petitions for panel rehearing and rehearing en banc. Samples (all written by the author) are included".
You can check out this book's details via the publisher's web page here.
Wednesday, 5 November 2008
Tuesday, 4 November 2008
In "US court blocks Amazon-style patent trolls", The Register reports on Re Bilski and Warsaw, a controversial decision (full text here) in which the United States Court of Appeals for the Federal Circuit upheld an earlier decision by the US Patent Office to reject a patent application for a method of hedging risks in commodities trading. The 9-3 decision rejects the court's own earlier State Street Bank ruling of what can be patented. Instead, it favours earlier Supreme Court guideline that maintains a stricter, two-pronged standard. IP auctioneers Ocean Tomo have sought to assuage fears that business method patents are no longer valid in the US, but The Register's view is one that is widely held in commercial rather than technical legal circles.
Friday, 31 October 2008
Wednesday, 29 October 2008
".. patent litigation in the US is not as fast as it could be and that it is expensive; but, he said, that was the case in most types of civil dispute in the country and would continue to be so while discovery was mandated by law. “This is out of the judges’ control,” he explained. “Unless Congress changes things, civil litigation will always cost a lot of money. It is not fair to blame courts. We have to follow the rules made by Congress.”
Michel also denied that the CAFC has been a pro-patent court since it was formed in 1982. “I have heard these kinds of criticisms, but I have never seen them backed up with anything much in the way of evidence. I am not aware of any figures that establish a preference, bias or predisposition,” he said. “It is absolutely false that we go out of our way to avoid invalidating patents. The statute says that patents are presumed valid, but that they can be proved invalid. We follow that".
Thursday, 23 October 2008
In this dispute, Northern Territory planted cypress pine on a plantation during the 1960s in an attempt to raise a commercial timber crop. Between 1993 and 2001 the Territory granted licences to Collins and later to the Australian Cypress Oil Company (ACOC) to harvest the trees in return for a commercial royalty. In 1999 Collins registered a patent for producing oil from the mixture of the bark and wood of cypress trees through steam distillation. The oil is used in aromatherapy and for making cosmetic and body care products.
After the Territory’s granted a licence to ACOC, Collins sued the Territory for contributory infringement under section 117(2)(b) of the Patents Act which provides that:
Collins alleged that the Territory supplied a staple commercial product--trees--with reason to believe that it would be used to produce oil in a way that infringed his patent. The Territory conceded that it reasonably believed that ACOC would infringe the patent, but said it was not liable under section 117, as it did not supply the timber and because the timber was a staple commercial product.
"If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patentee, and
A reference in subsection (1) to the use of a product by a person is a reference to: “if the product is not a staple commercial product - any use of the product, if the supplier had reason to believe that the person would put it to that use…”.
At first instance, the Federal Court ruled in the Territory’s favour on both points: the licences were not supplies as they were passive agreements to let ACOC harvest the timber itself and the timber was a staple commercial product with numerous commercial uses. Collins successfully appealed to the Full Court of the Federal Court and the Territory then appealed to the High Court.
The High Court allowed the Territory's appeal. It agreed that the grants of the licences constituted a supply, focusing on their practical effect rather than their legal nature: they were a means of allowing ACOC to remove and use the timber. This was, in practical effect, a supply. However, the High Court ruled in the Territory’s favour on the issue of whether the timber was a staple commercial product, concluding that it was.
Monday, 20 October 2008
"As far as patents are concerned, the first thing that struck me is that the majority of companies surveyed in both countries have not been on the receiving end of any infringement claim for the past three years (67% in the US and 73% in the UK). Those reporting between one and five claims come in at 26% in the US and 23% in the UK. Broadly speaking, therefore, over 90% of both British and American companies – if the respondents to the survey are in anyway representative – have no or relatively few problems with patent litigation. In fact, even those companies that report claims being made against them do not always end up in full-blown disputes; 44% of claims do not lead to litigation in the US, while the figure stands at 32% in the UK. It’s not a surprise when you think of how many suits are filed in each country during the course of a year, but it does offer further confirmation that those who claim that the patent system is running out of control could fairly be accused of over-egging their position somewhat.
I am not saying that being a defendant in patent litigation is any fun. In some cases it can be hugely damaging, especially for smaller companies. It is almost always very expensive - especially in the US and the UK. But the simple fact is that, if this survey is to be believed, only a relatively small number of businesses are affected. In fact, even in technology-driven industries, patent litigation is not a given – in the US, for example, although 52% of companies report at least one claim being made against them during the last three years, that leaves 48% of companies that reported none. Just 12% of businesses valued at under $100 million received a claim. Of course, this must have been a great worry to them, but how do such figures sit with the idea that patents are forcing smaller businesses to abandon innovation for fear of being sued? If this is happening, maybe it is the perception rather than the reality that is causing the decline. And if that is the case, naysayers and doom-mongers need to ask themselves some pretty tough questions.
So, where does this leave us? Well, clearly for some, patent litigation is a hugely expensive, time-intensive, pain in the behind. But the Fulbright study is yet another indication that such companies are actually very much in the minority. For the vast majority, patent litigation is not an issue or is a relatively minor one. And when you understand this, it does make the case for a major overhaul of the patent litigation system in either the US or the UK rather less compelling".
Thursday, 16 October 2008
Wednesday, 15 October 2008
Ariad seeks reinterpretation of the asserted patent claims by the Court of Appeals for the Federal Circuit so that Ariad's infringement case against Amgen may be tried by the Delaware Court. Amgen's challenges to the validity and enforceability of the '516 patent claims will not be considered by the Delaware Court until that time.
Monday, 13 October 2008
Last week Mr Justice Norris in Les Laboratoires Servier and another v Apotex Inc and others  EWHC 2347 (Ch), heard on 9 October. Servier developed and patented a pharmaceutical known as Perindopril (a prescription drug used in treating hypertension), which it sold under the trade mark Coversyl. This patent was the '341 patent'. In July 2000 Servier applied for a further patent (the '947 patent') covering an allegedly new form of Perindopril. In July 2006, the European Patent Office dismissed an opposition, so the 947 patent survive unscathed.
Generics manufacturer Apotex decided to make Perindopril, receiving the necessary market authorisations. Apotex wasn't afraid of the 947 patent which, it considered, was only a rehashed version of the 341. Servier sued for patent infringement and secured interim relief, restraining importation of Apotex's product. In subsequent proceedings the patent was found to be invalid and was revoked by the court. Since the interim injunction had stopped Apotex selling Perindopril for a large period of time, the court now had to quantify its entitlement to damages under the cross-undertaking given by Servier when the application for interim relief was granted. While the inquiry into damages was grinding towards a close, Servier sought permission to amend its case in the light of a finding of infringement against Apotex in the Canadian Federal Court in Canada, in proceedings to which Servier was not a party, this patent being held not by Servier but by an associated company. The point of the application was this: the Perindopril which Apotex would have sold if no injunction had been granted would have been made in Canada and would have infringed the associated company's patent.
Norris J dismissed Servier's application. In his view it was made at too late a stage in the proceedings. The Canadian proceedings actually predated the commencement of the inquiry into damages on the cross-undertaking; the underlying legal point, if valid, had been in existence since the beginning of the inquiry and it had been open to Servier to make the application from the outset -- but it didn't. Worse news was still to come for Servier when Norris J concluded that, on the evidence, the appropriate award under the cross-undertaking was damages totalling £17.5m.
Norris J added that a party that secures interim relief before failing to establish infringement is not actually a 'wrongdoer', but someone who has obtained an advantage upon consideration of a necessarily incomplete picture. From the court's perspective such a person should be treated as if he had made a promise not to prevent that which the injunction in fact prevented. There had to be some form of symmetry between the process by which he obtained his relief (an approximate answer involving a limited consideration of the detailed merits) and that by which he compensated the subject of the injunction for having done so without legal right, particularly where -- as here -- the paying party had refused to provide full details of the sales and profits which it made during the period when the injunction was in force.
Servier expressed itself "disappointed" by the decision and said it was considering whether to appeal. The claimant did have some comfort, seeing as Apotex was actually seeking £27 million. Moreover, said the former patent owner:
"The UK is the only European market, with the exception of the Netherlands, where Servier has been challenged on the validity of a national designation of European Patent number 1 296 947 and there has been a decision in favour of a generics company".
Wednesday, 8 October 2008
"The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success."
Tuesday, 7 October 2008
* Glaxo Group v Genentech  EWCA Civ 23 (CA)
* Menashe v William Hill Organisation  1 All ER 273 (CA)
* Stena Rederi v Irish Ferries  RPC 36 (CA).
Monday, 29 September 2008
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