tag:blogger.com,1999:blog-5574479.post8064960560551575849..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: Actavis v Lilly - An Arnoldian Treasure ChestVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger11125tag:blogger.com,1999:blog-5574479.post-10802793410429876262014-05-20T13:39:17.659+01:002014-05-20T13:39:17.659+01:00The last two comments are very useful.
Germany l...The last two comments are very useful. <br /><br />Germany likes to tell the world that it offers "good justice because it is quick justice", that its decisions issue quickly. The tradition in Germany is to settle after the first instance hands down its reasoning, rather than Appeal. In that culture, it is legitimate to boast speed to first instance decision. That is all very well, if the reasoning is appeal-proof. Here though, who's going to settle, when D'dorf's reasoning strikes seasoned observers as so dubious?<br /><br />The main strength of the England venue is that successful appeals are so rare. As soon as that first decision issues, the litigation really is over.<br /><br />Suppose England and Germany are each trying to make out that theirs is the superior venue. That might explain Arnold: he's crafting a decision that is futile to appeal. That'll show those dastardly Continentals, won't it?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-72609059676072965862014-05-20T09:56:01.828+01:002014-05-20T09:56:01.828+01:00Personally I am not happy, neither with Düsseldorf...Personally I am not happy, neither with Düsseldorf’s, nor Arnold J’s judgement.<br /><br />Arnold J relied on file wrapper estoppel & justified it, among others, b/c it was short in this case. Short – what does it mean? 2 pages? 2 pages more? Another 2 pages more? Should a claim be subject to different principles in interpretation depending on whether the correspondence with the EPO is x or x+1 pages long?! Also I feel the perspective of the oncologist was not assessed correctly – why would an Oncologist not be aware of possible matrix effects?! That is common knowledge for any scientist in the medical field. (But the latter wouldn’t be decisive in this case, b/c Arnold J accepted the skilled team to comprise a chemist anyway…)<br /><br />Düsseldorf for my taste on the other hand focused too heavily on the latest development in Occultech/Diglycidverbindung. Going back to the ‘basics’ in the quadruple of Schneidmesser & Custodiol decisions, one can find: <br />1) What is stated in abstractly exact terms should be interpreted narrowly – and the pemetrexed disodium is exact in that sense. Any expansion thereof was only accepted in the industrial applicable tolerances – and mixing with one chemical or another is not surely not a matter of unavoidable tolerances in the production process<br />2) Decisive is the wording of the claim, and the third Schneidmesser question requires the claim to have some sort of hook. The claim here doesn’t. It claims disodium. Period. Furthermore the claim features Sodium, but then claims B12 and it’s derivatives – which seems similar to the case in Custodiol, where the fact that one feature was claimed narrowly and another feature was claimed more broadly, led to the assumption that the claim ‘hooks’ for the narrowly claimed feature to be less likely to be broadened by equivalency.<br />3) In the medical field the skilled person will typically consider special care b/c of matrix effects.<br />4) It is the responsibility of the patentee to take care for that in the claims everything is set out for what he/she/it seeks protection for.<br />In conclusion I feel the Düsseldorf judgment will not prevail on appeal.Bennoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-77969934311478495972014-05-19T11:07:58.627+01:002014-05-19T11:07:58.627+01:00This decision is a real treat, but it is too long....This decision is a real treat, but it is too long. There are for example lengthy quotes from other decisions which could be summarised. I wonder if Arnold is trying to be helpful to the Appeal Court in putting so much down on paper. However being concise is important because it helps to distil out the essential parts and therefore helps the reader a lot.<br /><br />Interesting to see at paragraphs 58 to 61 arguments about whether it is the same team of scientists for all the claims and for different issues (infringement and sufficiency in this case). Unlike at the EPO this seems to matter a lot in the UK.<br /><br />Paragraphs 104 to 107 talking of regretted prosecution amendments and inability to predict evolving technology sound dangerously like US Festo issues. Arnold uses the history of the case to determine what is 'fair', but should that be part of UK claim interpretation? Well, I suppose it is now.<br /><br />It now seems to be clear from the judgment that the Protocol on the Interpretation of Art 69 does not give us a US style doctrine of equivalents. That is helpful.<br /><br />Fascinating to see claim interpretation French, Italian and Spanish style. However it's clearly very complex and I'm not sure a UK judge is best placed to do these. It's very well to know the relevant tests for each, but the nuances of how to exactly apply the tests or modify them if needed will not be known.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-54926356367865244952014-05-16T10:04:26.414+01:002014-05-16T10:04:26.414+01:00Darren, when drafting a client's patent applic...Darren, when drafting a client's patent application directed to a novel compound, would you consider limiting the claim to a "disodium salt", or are you more likely to cover the compound in all its forms?<br /><br />Only asking, because if you did limit the claim to the disodium salt there is probably a very good legal reason for doing so (scientific reasons would be very rare for a new chemical entity). On making such a limitation I would, personally speaking, expect that the claim would be so limited in litigation. Once litigation commenced, I would, of course argue for a broader interpretation for infringement purposes, but that is a separate issue.<br /><br />I am well aware that the legal reasoning of a judge will need to cover all bases, hence the lengthy decision, but in a case such as this the position is usually clear from the outset. This is not a Catnic-level issue.<br /><br />As regards posting a comment before reading such a long decision, I must remind you that you are the pot calling the kettle black. I remember Jeremy jumping to your defence once when a commentator was critical of you for the same thing.<br /><br />Good to see that you have thoroughly digested the whole decision yourself on this case and all blogs postings yesterday before putting finger to iPad.<br /><br />Once you've taken a grasp of the subject of sarcasm that was clearly intended in my post then you may not be so supercilious in future. Unless of course, you believe that your are the Patent Apostle and your Word is that of the Patent God?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-75246364438554683292014-05-16T00:07:41.327+01:002014-05-16T00:07:41.327+01:00(sigh),
It is not a sigh alone that is protected ...(sigh),<br /><br />It is not a sigh alone that is protected - but the combination and expressive effect.<br /><br />If you want to play on a IP board, make sure that you are not the mouse ;-)Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-87991299766024848112014-05-15T23:38:19.415+01:002014-05-15T23:38:19.415+01:00PS to the same anon: I do wonder, if it is all so ...PS to the same anon: I do wonder, if it is all so clear, by the way, how the German court reached the opposite conclusion? Do you have a theory on that as well?Darren Smythhttps://www.blogger.com/profile/04252776942038752516noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-61983835990652929972014-05-15T23:36:03.526+01:002014-05-15T23:36:03.526+01:00Dear Anon at 23:28
Actually, the whole issue of th...Dear Anon at 23:28<br />Actually, the whole issue of the German decision is dealt with in 9 paragraphs (150 to 158) out of 376, so not really.<br />I do find it odd that you would bother to post such a comment before reading the judgment. Even reading my meagre blogpost would have made clear that 170 paragraphs of the decision relates to applicable law and abuse of process, and another decent chunk is on claim construction under French, Italian and Spanish law.<br />So yes, plenty of need for such a long decision, I think.<br />Kind regards<br />DarrenDarren Smythhttps://www.blogger.com/profile/04252776942038752516noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-72931814924196612042014-05-15T23:28:07.740+01:002014-05-15T23:28:07.740+01:00No need for such a long decision. A sodium salt is...No need for such a long decision. A sodium salt is a sodium salt, not an acid. An acid is an acid, not a sodium salt. We should simplify the improver questions and go straight to the third question.<br /><br />I shall download the decision and read it at leisure and I assume most of the decision will be the judge expressing his bemusement at why the German court got it so wrong.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-64658586847553850752014-05-15T23:13:56.273+01:002014-05-15T23:13:56.273+01:00Today I have learnt some new about the exciting ar...Today I have learnt some new about the exciting area of copyright law: Sighs are protected by copyright. I almost took a sharp intake of breath when I heard, until I realised may also be protected by anon.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-90900422474674826462014-05-15T21:07:49.001+01:002014-05-15T21:07:49.001+01:00As the Anonymous who was the poster of a similar m...As the Anonymous who was the poster of a similar message on a different thread, the *<i>copying</i>* here of the expression of my message is not appreciated.<br /><br />Try to create your own creativity please.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-36407667958142470942014-05-15T20:41:19.532+01:002014-05-15T20:41:19.532+01:00Sighhhhhhhhh!!!
Darren, IP does not stand for Is ...Sighhhhhhhhh!!!<br /><br />Darren, IP does not stand for Is Patent only you know!!!!!<br /><br />There must be plenty of copyright cases to discuss. Only this morning I saw someone photocopying a book and I'm sure the readers of this "IP" blog would have plenty to say about this.Anonymousnoreply@blogger.com