Monday, 30 November 2015
community, the media and the youth, in all of which IP is either poorly understood or simply disregarded. The financial community has a woefully inadequate comprehension of IP while few journals devote any meaningful attention to the area (Jeremy pointed to Managing Intellectual Property and Intellectual Asset Magazine as rare exceptions).
The media engages in excessive coverage of patent trolls and the copyright in selfies taken by a monkey rather than devoting sustained and robust treatment of IP issues. As for the state of IP with the youth, Jeremy brought by way of example Wallace and Gromit and the trivializing of innovation and creativity. This Kat would suggest that there is a fourth constituency that poses a challenge for IP, namely the treatment of IP within the university. Because the university is the link between Jeremy’s three other constituencies, since it is the place that goes about educating young minds who then venture out into the workplace, the state of IP in the university bears close attention. In so doing, there are good reasons for concern.
First, there is the state of IP in law schools. Focusing on the U.S., it appears to this Kat that the general view within the legal Academy is that there is “too much” IP protection, with the result that what is called a “low-protectionist” orientation to IP has taken root. Appealing principally to a call to strengthen the public’s right at the expense of the IP rightsholder, the low protectionist position has the effect of diminishing IP’s sheen as a factor for doing good. It is difficult to imagine that a young legal scholar seeking tenure will focus his research on showing that there is not enough IP protection. As in any other field of discourse, when diversity of the discussion diminishes, quality diminishes as well.
Second, from the vantage of economics, there is increasing skepticism that IP protection is conducive in enhancing innovation. No one challenges that innovation is a factor for doing good, the only issue being how we can best bring it about. The question then becomes whether IP rights contribute to innovation. Here, as well, it seems that the surest way to attract attention is to make the academic argument against IP as a force in supporting innovation. One need only think of the writings of Professors Michele Boldrin and David Levine and the increasing attention that they have received in advancing “the case against patents.”
Third, most MBA programs are characterized by neglect in making IP a material component of their programs. With a few exceptions, IP is not part of the mainline curriculum of most such programs. When IP is offered, often the instructor is an adjunct lecturer rather than a full-time faculty member. This Kat recognizes that there is a unique challenge in finding an effective way in presenting IP in a way that highlights its role in management decisions rather than merely as a form of legal protection. In particular, there is an absence of good case studies for use in presenting IP in the MBA context. But this should be a call for increased efforts in this regard. Instead, making a research career on the role of IP in business management does not appear to be the way to tenure and success for a prospective business school academic.
This Kat has frequently observed that IP went from post-war irrelevance, bordering on hostility, to a “perfect storm” moment in the 1980’s, where it seemed that IP could do no wrong. Some erosion from those giddy days was to be anticipated. But, as Jeremy reminded us in his final words, while cyclical advances and retreats can be expected, we are ultimately responsible for the state of IP within the broader community. That responsibility extends from doing a better job with the financial sector, the media and youth to contending with the erosion of IP within key segments of the university.
Last Thursday, the German Federal Supreme Court (BGH) decided on two actions against internet service providers over access to websites linking to copyright infringing material. In the first action, the collecting rights society GEMA sought to enjoin Deutsche Telekom, Germany's largest internet access provider, from providing access to the website "3dl.am". 3dl.am hosted a collection of links to files in file repositories such as Netload, Uploaded or Rapidshare (itself the subject of several BGH decisions), which contain material for which GEMA members own the copyright.
Both first and second instance ruled against GEMA, and the BGH on appeal (Revision) confirmed. The BGH reminded everybody that "Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right" (art. 8(3) InfoSoc Directive). Access providers could therefore be enjoined from providing access to sites hosting or linking to copyright infringing material if they knowingly (willentlich) provided the means to allow the infringement, provided they failed to take reasonable care ("zumutbare Prüfungspflichten verletzt").
But a blocking injunction against an ISP required that the right owner(s) had first taken steps against the primary infringer, such as the website operator or host provider, and failed to stop the infringement, or it was clear from the outset that there was no likelihood of success at all to prevent the primary infringement. The right owner(s) had to take reasonable steps, for example by hiring a private investigator or involving criminal prosecution authorities, to determine the identity and location of the primary infringer.
In the case against "3dl.am", GEMA had obtain an ex parte injunction against the operator of the website which could not be served at the address listed with the domain name registrar. GEMA then
|Nope, the primary infringer is not in here|
Since the full reasons for the decision are not published yet, a legal analysis is difficult at this moment. It does seem that the BGH places a rather high burden on the right owners to investigate the whereabouts of the primary infringers, and it is not exactly clear what the right owners need to do to fulfil these obligations. Fodder for lawyers, in other words.
|The AmeriKat taking off her paw socks and ready for a|
fight....or not, if the Stanford Technology Law Review study
is to be believed
'Tis the season for trade mark conference: If, having already been inundated by a swarm of holiday party invitations, you would rather flex your mental rather than your stomach muscles, then IPKat's friends from the Competition Law Association may have an event for you. The CLA brings news of an exciting event being held in London on 9 December 2015 at 6PM on the topic of "EU Trade Mark Law reform and its impact on practice" with the wonderful Verena von Bomhard (Bomhard IP, Spain) speaking. Details of the event can be found here and to register please click here.
Big brains to meet in Brussels at EPLAW congress: This year's EPLAW congress is being held this Friday in Brussels where the likes of Kevin Mooney (Simmons & Simmons), Pierre Véron (Véron & Associes) , Edward Nodder (Bristows), Klaus Haft (Hoyng Rokh Monegier), Benjamin Ostapuk (Intel), Penny Gilbert (Powell Gilbert) and József Tálas (Sar & Partners) will be speaking on numerous hot topics including the UPC, harmonization of national patent law on infringing acts, patent damages apportionment and UPC court fees. For more information click here.
Issue 4 of the Queen Mary Journal of IP out now: If having tussled with the intricacies of European trade mark reform and patent litigation, you are in a desperate need of more intellectual wizardry, then the latest edition of the Queen Mary Journal of Intellectual Property Law may come to the rescue. This edition discusses the enforcement of WTO rulings in trade marks in light of the fascinating Havana Club litigation (see AmeriKat posts here), the future of first sale/exhaustion defence in the cloud and gene-related inventions in Europe.
Friday, 27 November 2015
|Identification or information signals|
go unnoticed by the AmeriKat
Rovi's invention allows the television viewer to keep up to date of events/programs in real time which are currently available or will be (instead of scrolling or manually navigating to the information). The way the system does this is by using two signals - an identification signal and an information signal. The former signals that information is available. The identification signal may also include data that identifies an icon or text which is then displayed on the screen and alerts the view to the availability of information contained in the information signal. If the user presses the relevant button, the information signal is processed and the information is displayed on the screen.
Last year, Mr Justice Mann held that Rovi's patent was invalid for obviousness over Florin, an Apple PCT application published on 5 January 1995. Rovi successfully obtained permission to appeal on some its grounds, all of which were abandoned by the time it got to appeal. Rovi therefore sought permission to appeal from the Court of Appeal on one additional ground - whether the judge was wrong to find lack of inventive step in respect of claim 3 (and corresponding process claim 28). Claim 3 is a product claim dependent on claim 2. Although the Court of Appeal granted permission to appeal on this ground, after 15 pages the appeal was eventually dismissed. "Close, yet so far away...." chimes Merpel.
The issue that preoccupied the Court of Appeal was one of claim construction. The construction at issue was of the critical additional feature set out in item (ii) of feature C of Claim 3 below (underlined):
A system according to claim 2, wherein said first identification signal comprises:
i. data indicating the availability of said first information signal;
ii. (a) data defining an icon or textual matter alerting a viewer to the availability of information or (b) data enabling access to such an icon or textual matter as may be already stored on said computer; and
iii. data defining said preselected times and said predetermined time increments. "
Writing the leading judgment, Lord Justice Floyd highlighted two legal points on the construction of patent claims. First, it cannot be assumed that it was the patentee's intention that optional features described in the specification have been translated into requirements of the claim (Nokia v IPCom  EWHC 3482). Second, that the inventor's purpose is not the be-all and end-all - one still must be concerned with the meaning of the language used (Virgin Atlantic v Premium  EWCA Civ 1062).
Because the focused of Rovi's appeal was squarely on a dependent claim, the Court highlighted that the
"...frequently deployed canon of construction is that dependent claims would normally be expected to add technical subject matter to what is claimed in the claims from which they depend. Patent attorneys would not normally be expected to go to the trouble (and sometimes expense) of adding extra claims if they were no narrower than those which precede them. However, the judge’s construction did not mean that claim 3 had the same scope as claim 2. It is now common ground that feature C(iii) was not implicit in claim 2. Feature C(i) on the other hand was implicit. In these particular circumstances I can see no reason at all why the skilled person should assume that either option in feature C(ii) was intended to add something to claim 2. In truth claim 3 sets out to list explicitly the contents of the identification signal. That is not something which is attempted in claim 2. I would not attach weight to the fact that, on the judge’s construction, feature C(ii)(b) did not itself add anything of substance to claim 2.
Whilst admiring its sophistication, I am not persuaded by Mr Meade’s “mis-match” submission about options (a) and (b) in feature C(ii). I do not accept that anything is to be drawn from the fact that option (a) of feature C(ii) requires extra data capacity, and therefore something different from claim 2. I think it is unrealistic to suppose that the skilled reader would reason that, because option (a) adds something to claim 2, then he should assume that option (b) is also seeking to do that as well. I accept Mr Mellor’s submission that the skilled person is more likely to assume that the patentee is seeking to cover, in explicit language, all ways he can think of arriving at a prompt on the screen."The AmeriKat has not had time to fully digest the decision, but wonders how much the "last minute" nature of Rovi's inventiveness argument on Claim 3 had actually played in the judge's mind. Although he dealt with the point on the record, had the feature really been that inventive one may have expected the patentee to have dealt with it a little earlier than on day 6 of the trial. Indeed, the judge observed that it was not always clear throughout the case where the dispute about the feature lay. The Court of Appeal, at paragraph 45 (the penultimate paragraph above), plainly had sympathy for the judge on this point.
The patentee’s purpose is of course a powerful guide to the construction of patent claims. One must, however, be careful to match up any purpose one derives from a reading of the specification with the claim or claim feature under discussion. This is not always straightforward. The purpose on which Mr Meade relies arises out of the description of content-specific icons in paragraph  of the specification. The skilled person would, so the argument runs, infer that the patentee had chosen the language of feature C(ii)(b) specifically in order to limit this claim to an arrangement capable of providing this functionality. I see no reason why the skilled person should follow this line of reasoning at all. Rather I consider that the skilled person would infer that the patentee had chosen entirely general language which was capable of encompassing such an arrangement, but was not limited to it.
It is true that the judge said that the point about multiple icons appeared to have fallen away. Given that claim 3 was not high on the agenda of issues at all until a very late stage in the trial, I am not surprised that he had gained that impression. Certainly, paragraph  of the specification does not seem to have featured strongly in the submissions or evidence until then. Moreover, it is possible that what the judge meant was that it was not contended by Rovi that claim 3 was limited to a system with multiple icons. Mr Meade accepted before us, and I believe before the judge, that a system with a pointer to the address of a unique icon would still be within claim 3. But I have reached a very firm conclusion that paragraph  does not help Rovi or save claim 3 from a finding of obviousness. So, if the judge indeed misspoke, it makes no difference to the outcome.
I do not think, therefore, that the judge overlooked or misunderstood Rovi’s arguments about the construction of claim 3. He considered and rejected them, and in my judgment he was right to do so. "
|Jeremy Phillips, who retires from this blog to |
a unanimous chorus of praise, gratitude and affection