For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.
Showing posts with label patent validity. Show all posts
Showing posts with label patent validity. Show all posts

Sunday, 2 March 2014

Unilever's Ariel assault on P&G: a victory/defeat in the Netherlands

For at least one Shakespeare-loving Kat, the name Ariel will always be synonymous with a character in his play The Tempest However, for the literally Great Unwashed, the word conjures up a brand of laundry detergent sold with great success by Procter & Gamble.  Given the connections with sorcery and satanism that P&G has long sought to deny, the choice of the name Ariel, he (or possibly she) being a sprite or demon always seemed a little daring.  Be that as it may, from Denise Verdoold and Maarten Rijks (both of Banning NV, The Netherands), comes news of a curious episode of litigation between PG and arch rival Unilever which seems to have had quite a twist in its tail.  They write:

Unilever's ‘laundry detergent war’ against Procter & Gamble in the Netherlands

Last December, in a decision you can read here, the Presiding Judge of the District Court The Hague in preliminary proceedings ordered Procter & Gamble to stop selling water-soluble packages containing laundry detergent marketed under the name Ariel 3-in-1 Pods in the Netherlands, subject to an immediately payable penalty of € 100,000 per day with a maximum of € 2,500,000. According to the Presiding Judge, the Ariel 3-in-1 Pods infringed European Patent 1 361 172 (“EP 172”), of which the Dutch part was owned by Unilever NV.  Moreover, P&G was ordered to remunerate Unilever’s legal costs amounting to € 250,000 and to recall all infringing products still in stock of P&G’s professional customers in the Netherlands.

What is EP 172?

EP 172, filed on 29 February 2000, claimed priority from GB 9906175, filed on 17 March 1999. The patent concerned the protection of a water-soluble package containing a laundry detergent for release on dissolution of the package. According to the description, EP 172 aims to overcome at least some of the problems related to the prevalent forms of laundry detergents such as washing powders and granules. It contained ten product claims, nine of which were dependent, and five process claims, one for the machine-washing of laundry and four for the production of a water soluble package.

The grant of EP 172 was opposed by, inter alia, P&G on the grounds that the subject matter was not patentable under the EPC and that the patent contained added subject matter in view of its parent application WO 00/55068. In 27 June 2012 the European Patent Office’s Opposition Division upheld EP 172 in amended form, amending claim 1 by deleting the words “or gel” so that the claim was only for liquid and not for gel laundry detergents. The Division also deleted four process claims for the production of a water-soluble package.

The Opposition Division rejected the claim that EP 172 contained added subject matter, this being was based on the ground that parent application WO 00/55068 did not directly disclose the combination of all technical features of claim 1 of EP 172. All features of claim 1 had to be gathered from different sources from the claims and description of the parent application. According to the Opposition Division, the different features of claim 1 were disclosed by WO 00/55068 and the skilled addressee would not be surprised by the combination of selections to be made to arrive at claim 1, since these were not arbitrary selections. Accordingly, sufficient basis was given in the parent application for the combination of features of claim 1, so that the requirements of Articles 123(2) and 76(1) of the European Patent Convention were fulfilled. P&G appealed to the Technical Board of Appeal. The TBA is expected to deal with the appeal mid-May 2014. 

According to the amended claim 1, the water-soluble package for which protection is sought had five characteristics:

·         The package had a body portion comprising two sheets; a body wall and a rectangular or square base wall, both made of water soluble material.
·         The body portion was generally dome-shaped.
·         Both sheets of the body portion comprised a polyvinyl alcohol or a polyvinyl alcohol derivative.
·         The maximum height of the body wall above the base wall was less than or equal to the maximum width of the base wall.
·         The laundry detergent was a liquid having a certain viscosity.

The other nine product claims sought to protect packages according to claim 1, each claiming slightly different characteristics, such as a different viscosity or different shape of the base wall.


P&G disputed the infringement based on two main grounds. First, P&G asserted that its Ariel 3-in-1 Pods did not contain a base wall and that this base wall was not rectangular or square shaped. P&G interpreted this characteristic as if the package under EP 172 had to be formed of a flat base on a which a dome was placed -- unsurprisingly, since the drawings in EP 172 all showed (two examples) packages with a flat base:

The Presiding Judge however ruled differently and pointed out that, although all drawings showed packages with a flat base and this pointed to the preference for a flat base, the scope of protection of claim 1 of EP 172 — interpreted by the skilled person in the art —  also extended to packages with a base with a somewhat convex shape (like that used in the Ariel 3-in-1 Pods). One of the reasons for this broad scope of protection was derived from claim 2 of EP 172 which explicitly mentions a “somewhat concave or convex” shape.

P&G also asserted that the Ariel 3-in-1 Pods contain two additional compartments that were fitted to the base wall but this argument was denied by the Presiding Judge:

“Unilever rightly pointed out that infringement cannot be escaped by adding something to a feature that is present. The compartments do not diminish the fact that the Ariel Pods have a base wall as claimed in claim 1, that also performs the function of a base wall according to EP 172, namely that of a seal.”

In conclusion, the Presiding Judge ruled that P&G infringed EP 172 with the sale of its Ariel 3-in-1 Pods in the Netherlands. The Dutch decision referred to several comparable cases between Unilever and P&G in —  inter alia —  the UK and France, and the first judgment in proceedings on the merits had been expected in the Netherlands -- but there's a sequel to all of this. 
The sequel 
Denise and Maarten tell us that it was subsequently reported in the Financieel Dagblad (the Dutch equivalent of the Financial Times) that Unilever had apparently withdrawn itself from the opposition proceedings before the EPO regarding the patent in issue, and that it will not enforce the decision of the Presiding Judge of the District Court of The Hague discussed above. The swiftly-lodged appeal against that decision has also been withdrawn (most likely by P&G after learning from the withdrawal of Unilever from the opposition proceedings).  Finally, Unilever is said to have informed P&G that it can regard the decision of the District Court of the Hague as null and void. Willem Hoyng (acting for P&G) told the Financieel Dagblad that these latest developments mean a ‘complete victory’ for P&G. There are hints of possible proceedings to recover damages in respect of the losses incurred by P&G.  Therefore, it seems that Unilever may have won the first battle but lost the war…

Friday, 20 December 2013

Court of Appeal gets strict with priority in Novartis v Hospira (Part II)

The Court of Appeal's decision

Ouch.  That is all.  
In light of how one can lose priority, the problem Novartis faced in seeking to establish that Claim 7 was entitled to priority from the US application was that disclosure of the US application was either too general or too narrow.  The "2-10 mg once a year" passage did not teach the skilled person about the dosage range for any particular method of administration for zoledronate (i.e., the passage was too general).  Example 5, was specific as to intravenous administration but only in patients with post-menopausal osteoporosis with a 4 mg, once a year administration (i.e., the passage was too narrow).

Novartis argued that the "2-10 mg once a year" passage is applicable to all modes of administration as the disclosure of the US application does put forward that one of the preferred methods of administration is intravenous administration and that osteoporosis is one of the highlighted target conditions.  As regards Example 5, other study arms used less than 4 mg of zoledronate, albeit at more frequent intervals.  Therefore 4 mg would not be understood by the skilled person as the only possible dose.

The Court of Appeal did not accept those submissions as they depended on reading the "2-10mg once a year" passage as saying that:
"no matter how you administer zoledronate and no matter what condition you administer it for, 2-10 mg is a suitable dosage range.  To put it another way, it would be read as saying that this particular dosage range can be used independently of the condition being treated and independently of the method of administration."
The Court of appeal therefore held that:
  • Because the US patent application's specification expressly states prior to the "2-10mg once a year passage" that the dosage is dependent on method of administration and condition, the passage could only be read by the skilled person as teaching that depending on the method of administration and the condition being treated, some doses within this range may be suitable.
  • The skilled person knows from her common general knowledge that dosage is critically dependent on condition and method of administration.  Intravenous administration delivers the drug directly to the bloodstream without the loss of drug via the excretion which would occur in oral administration.  A lower dose would apply in such a case.
  • Other dosage ranges are given in the patent.  These examples cannot be taken as disclosing that they are suitable for every condition and every means of administration.  For example, the reference to a dose of 0.005-20 mg/kg would be an enormous dose for a 75kg man.  This does not therefore support the argument that the "2-10mg once a year passage" is of general application.
  • The expert evidence at first instance indicated that the skilled team would think that the "2-10mg once a year" passage"was intended to account for various modes of administration, not specifically intravenous.  This is because some of the range would be suitable for intravenous, whilst the higher range would be suitable for other modes such as transdermal.  Although one of the experts stated that the 2-10 mg range would be "in play" for intravenous administration, that fell short of disclosing that this range was suitable for treating osteoporosis by intravenous administration.  
The Court of Appeal therefore held that Claim 7 could not benefit from the earlier priority of the US application and therefore the patent was invalid.  


Although this decision may appear harsh given that the elements of Claim 7 were disclosed in the US application, the AmeriKat questions whether it is correct to characterize this decision as\indicative of an increasingly strict treatment of priority in the English courts. 

The only priority for the AmeriKat
 is to get some sleep
On one view, it is clear that without linkage of the features of Claim 7 in any passage in the US application, the subject matter was not unambiguously disclosed to the skilled person.  The mere planting a priority flag without ensuring that the priority document embodies the subject-matter of the invention, especially in circumstances where the patent claims have been amended, can be a recipe for a finding of invalid priority.  This is not new.  Indeed, following the Court of Appeal's 2004 decision in Unilin, many commentators issued such warnings. 

On the other hand the AmeriKat feels a bit unsatisfied by the way in which the Court of Appeal did (or , more accurately, did not) address Novartis's arguments head on about the need to read the priority document as a whole (see Jacob LJ in Unilin at paragraph 61), not each passage in isolation.

But whether the decision is harsh depends on whether there was anything that could and should have been done when publishing the patent to rescue the priority entitlement?  The AmeriKat defers to the IPKat's learned readers as to what they would do, in light of the Court of Appeal's decision, to rescue or prevent a perished priority.  

Court of Appeal gets strict with priority in Novartis v Hospira (Part I)

The AmeriKat using a priority mail
box for it's intended purpose
The AmeriKat loves priority.  Priority access when flying means first dibs on the overhead bin compartments.  Priority mail appearing on her desk means something important which demands opening (like, hopefully, jewelry).  Priority in patent law allows a patentee to file a subsequent patent application for the same invention in another country but benefit from an earlier priority date and stave off any attacks on validity from later killer prior art.  Priority is a good thing but only if you have it, as today's Court of Appeal decision in Novartis v Hospira [2013] EWCA Civ 1663 demonstrates.  Giving judgment for the Court, Lord Justice Floyd held that Claim 7 of Novartis's patent was not entitled to priority from a US application and therefore the patent was invalid.


Readers may remember the progeny of Novartis v Hospira cases from earlier this year in relation to, first, Hospira and then Generics (UK) Limited's revocation proceedings in relation to Novartis's EP (UK) 1 296 689  relating to the use of zoledronic acid (zoledronate in hydrated forms) for the treatment of osteoporosis.  Both parties wished to launch products falling within Claim 7 of the patent.

In March, Mr Justice Arnold held that the patent in suit and another related patent were invalid and that the loss of priority rendered Claim 7 invalid.  The parties also had a dispute about whether or not Novartis could benefit from an interim injunction pending appeal which also saw an outing in the Court of Appeal (see decision here).

Claim 7, which is dependent on Claim 5, claims the use of a zoledronate medicine for the treatment of osteoporosis where the medicine is adapted for intravenous administration in a unit dosage of approximately 2 - 10 mg of zoledronate and is administrated annually.   It covers Novartis's  ACLASTA, the first and only once-yearly bisphosphonate infusion product worth a reported $612 million annually.  Claim 7 claimed priority from US Patent Application No 267689 with a priority date of 20 June 2000.

The question before the Court of Appeal in this case was whether the US application disclosed the subject matter of claim 7.  The parties agreed that Claim 7 would be invalid if it was not entitled to priority because an intervening publication  - a 2001 publication in Bone (you know the one) - disclosed the invention.

The Court of Appeal held that Claim 7 contains, in combination, features directed to:
i.  The drug
ii.  The fact that the drug is for treatment of osteoporosis
iii.  The mode of administration (intravenous)
iv.  The range of dosage sizes (about 2-10 mg)
v.  The dosing interval (about once a year)
The US patent application discloses that:

  • the invention relates to bisphosphonates (of which zoledronic acid is a member) for the use of abnormally increased bone turnover, such as osteoporosis
  • the dosing interval for the present invention was "at least 6 months...or less frequently, conveniently once a year, or any interval in between....Dosing intervals of greater than once per year may be used." 
  • the dosage size would depend on various factors, including the mode of administration as well as the ailment being treated:  "Normally, the dosage is such that a single dose of bisphosphonate active ingredient 0.005-20 mg/kg, especially 0.1-10 mg/kg, is administered..." Such a dosage would be typically administered intermittently with a period of at least 6 months or longer.
  • the dosage size would also depend on the potency of the bisphosphonate and the dosing interval.
  • for more potent, recent bisphosphonates such as zoledronic acid the application disclosed that "a unit dose of from about 1 up to 10 mg may be used...for dosing once every 6 months; whereas a dose of from about 2 up to about 10 mg may be used for once a year dosing."  This passage was referred to as the "2-10mg a year" passage and was the focus of the priority arguments in the appeal 
  • intravenous administration is one preferred mode of administration
  • Example 5 teaches that 4 mg, once a year, administered intravenously to patients with post-menopausal osteoporosis is effective
The High Court Decision

At first instance, Mr Justice Arnold held that there was nothing in the priority documenet linking zoledronate, osteoporosis, intravenous administration and administration at intervals of at least six months:
 "The nearest one gets is the abstract, which links zoledronate, osteoporosis and six monthly administration, but does not mention intravenous administration....As for Example 5, this is limited to the intravenous administration of particular doses of zoledronate to post-menopausal osteoporosis patients six months and yearly..."
Mr Justice Arnold held that in relation to the "2-10mg a year" passage, there was nothing to link it to intravenous administration.  The expert evidence indicated that some range would be expected to be appropriate for intravenous administration but that there was nothing specific in the passage to indicate that it related to or was effective for the treatment of osteoporosis by the intravenous administration.

On appeal, Novartis argued that Mr Justice Arnold failed to read the document as a whole.  Had he done so, he would not have failed to see the link between zolderonate, osteoporosis, and intravenous administration.  He had, instead, read each passage in isolation.

The law on priority

A road sign warning to all patentees to be
careful in narrowing the disclosure
from the priority document
Although the language of Article 87 of the European Patent Convention and Section 5 of the Patents Act 1977, which provide for the entitlement to an earlier priority date, is different they are taken to mean the same thing (Unilin Beheer [2008] EWCA 800).  The language of the Convention was interpreted as meaning that the priority of a previous application is to be acknowledged "only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole." (Enlarged Board of Appeal in G2/98).

Priority can be lost by:
  • narrowing down the disclosure from the priority document in a manner which the invention could not be derived directly and unambiguously from it (Pharmacia Corp v Merck & Co Inc [2002] RPC 41); or
  • widening or generalizing from the priority disclosure (Beloit Technologies Inc and another v Valmet Paper Machinery Inc and another [1995] RPC 7005 and Unilin)

The story continues in Part II.

Tuesday, 26 November 2013

A closer look at whether to Stay, and whether to heed the Supreme Court

Our beloved blogmeister posted a short report last week on the decision of the Court of Appeal in the IPCom/HTC case, concerning the guidance on whether patent infringement cases should be stayed in this country when there are pending opposition proceedings at the European Patent Office.

The timing of the decision was very interesting to this Kat.  Just the previous week Lord Justice Floyd, who gave the leading judgment in this decision, gave the Herschel Smith Lecture. Entitled "What has IP done for the law?", one of the themes of the lecture was welcoming the idea that decisions of the Patents Court have to survive legal scrutiny by non-IP specialists in higher courts.  This moggy, by contrast, has just published a rather polemical article in the Journal of Intellectual Property Law & Practice, whose controversial thesis is that non-specialist superior courts can not in general be trusted with patent matters.  While UK Courts did not contribute much to the examples in this article, this moggy's human amanuensis did find fault with Lord Sumption's criticism (in the Virgin/Zodiac decision) of the assumptions upon which the guidance of the Court of Appeal on whether patent infringement actions should be stayed were based.  This guidance is set out in the Glaxo/Genentech case, and what Lord Sumption said about it was:

I add a brief observation on the procedural implications. If I had concluded that the defendant was estopped from relying on the revocation or amendment of the patent once the court had adjudged it to be valid, that would have had important implications for the question whether English proceedings should be stayed pending a decision in concurrent opposition proceedings in the EPO. On that footing, it would in my opinion have been essential to stay the English proceedings so that the decision of the EPO would not be rendered nugatory by the operation of the law of res judicata. On that hypothesis, it would have been difficult to defend the guidance given by the Court of Appeal in Glaxo Group Ltd v Genentech Inc [2008] Bus LR 888 to the effect that the English court should normally refuse a stay of its own proceedings if it would be likely to resolve the question of validity significantly earlier. The effect of that guidance is to put more litigants in the impossible situation in which successive decisions of the Court of Appeal placed the parties in this case. As it is, the problem has not gone away, even on the footing that those decisions are overruled. In the first place, a similar problem may well arise if the patent is revoked by the EPO after a judgment has been given for a liquidated sum. Second, that problem is aggravated by the fact that a decision of the English court on validity is directly effective only in the United Kingdom, whereas the EPO’s decision, being the decision of the authority which granted the patent, is directly effective in every country for which the patent was granted. Third, even if the EPO opposition proceedings are concluded in time to affect the English proceedings, the uncertainty and waste of costs involved do little credit to our procedures. This is not a suitable occasion, nor is the Supreme Court the appropriate tribunal to review the guidelines, but I think that they should be re-examined by the Patents Court and the Court of Appeal.

(What the article criticised was not this part of the judgment, but rather Lord Sumption's criticism earlier in his speech of Jacob LJ's "assumption" that "that the “slowest horse” would usually be the EPO" - which seems to this Kat not be be an assumption but a fact borne out by many years of experience).

Many practitioners assumed (correctly) that the Court of Appeal would have to revisit the "Glaxo" guidance, but were concerned what the new guidance would be, in the light of Lord Sumption's critical comments of the previous practice.  Many feared that stays would become the norm, or perhaps even mandatory, resulting in the situation that justice would be delayed (and justice delayed, is, as the saying goes, justice denied).

Against this background, Floyd LJ's elegant and nuanced decision is most welcome.  The stay was not granted in the particular circumstances under consideration, apparently influenced by the offer to repay damages in the event that the patent is subsequently revoked in EPO proceedings. But of more general application are the revised general guidelines, which will control subsequent cases.  They are reproduced below, with comments in red as to their variation from the Glaxo approach.

“1.The discretion, which is very wide indeed, should be exercised to achieve the balance of justice between the parties having regard to all the relevant circumstances of the particular case.”
2. The discretion is of the Patents Court, not of the Court of Appeal. The Court of Appeal would not be justified in interfering with a first instance decision that accords with legal principle and has been reached by taking into account all the relevant, and only the relevant, circumstances.
3.  Although neither the EPC nor the 1977 Act contains express provisions relating to automatic or discretionary stay of proceedings in national courts, they provide the context and condition the exercise of the discretion.
4. It should thus be remembered that the possibility of concurrent proceedings contesting the validity of a patent granted by the EPO is inherent in the system established by the EPC. It should also be remembered that national courts exercise exclusive jurisdiction on infringement issues.   [Guidelines 1-4 are essentially unchanged] 
5. If there are no other factors, a stay of the national proceedings is the default option.  There is no purpose in pursuing two sets of proceedings simply because the Convention allows for it.  [This is substantially changed - previously stated (at "sixthly") there are no grounds for presuming that duplication of proceedings would be, without further reason, grounds for a stay.] 
6.  It is for the party resisting the grant of the stay to show why it should not be granted.  Ultimately it is a question of where the balance of justice lies. [This is also substantially changed - previously referred to “much weight” being given to the party resisting the stay as it is the best judge of its own interests. New guidelines put greater onus on party resisting stay] 
7. One important factor affecting the exercise of the discretion is the extent to which refusal of a stay will irrevocably deprive a party of any part of the benefit which the concurrent jurisdiction of the EPO and the national court is intended to confer.  Thus, if allowing the national court to proceed might allow the patentee to obtain monetary compensation which is not repayable if the patent is subsequently revoked, this would be a weighty factor in favour of the grant of a stay.  It may, however, be possible to mitigate the effect of this factor by the offer of suitable undertakings to repay. [This guidance is new]
8. The Patents Court judge is entitled to refuse a stay of the national proceedings where the evidence is that some commercial certainty would be achieved at a considerably earlier date in the case of the UK proceedings than in the EPO. It is true that it will not be possible to attain certainty everywhere until the EPO proceedings are finally resolved, but some certainty, sooner rather than later, and somewhere, such as in the UK, rather than nowhere, is, in general, preferable to continuing uncertainty everywhere.  [Essentially unchanged from previous guidelines at "seventhly"]
9. It is permissible to take account of the fact that resolution of the national proceedings, whilst not finally resolving everything, may, by deciding some important issues, promote settlement. [Also new - previous guidance does not mention settlement] 
10. An important factor affecting the discretion will be the length of time that it will take for the respective proceedings in the national court and in the EPO to reach a conclusion.   This is not an independent factor, but needs to be considered in conjunction with the prejudice which any party will suffer from the delay, and lack of certainty, and what the national proceedings can achieve in terms of certainty.  [First sentence essentially unchanged from previous guidelines at "fifthly".  Rest of paragraph is new – previous version (end of para. 5) refers to supplying “some certainty in the public interest and in the parties’ legitimate interests”, but does not refer to consideration of the prejudice which a party would suffer from the delay.]
11.  The public interest in dispelling the uncertainty surrounding the validity of monopoly rights conferred by the grant of a patent is also a factor to be considered.  [Essentially unchanged]
12. In weighing the balance it is material to take into account the risk of wasted costs, but this factor will normally be outweighed by commercial factors concerned with early resolution.
13. The hearing of an application for a stay is not to become a mini-trial of the various factors affecting its grant or refusal.  The parties’ assertions need to be examined critically, but at a relatively high level of generality.” [These last two paragraphs are also essentially unchanged]

Merpel cannot help noticing that there are a host of conflicting considerations in this guidance - as indeed in real life - and both she and the IPKat look forward to seeing how Patents Court judges apply them in practice to future cases.  Merpel is also trying to work out - but so far without much success - what factual situations would result in a different outcome under the Glaxo guidelines and the current guidance.  Any thoughts, dear readers?

Thursday, 21 November 2013

Breaking news: Court of Appeal affirms "no-stay" decision in IPCom/HTC patent scrap

This Kat has received an excited email circular from his friends at Bristows concerning the fiercely-contested battle between is-it-a-European-patent-troll IPCom GmbH [better known for its dramatic patent litigation against Nokia, on which see, e.g., earlier Katposts herehere, here, here, here and here].

"The ... Court of Appeal [for England and Wales, there being no UK Court of Appeal] today handed down a significant judgment for the enforcement of patents in the UK.

Is it the EPO's fault that its decisions are
so slow, or should we just blame the parties
and their professional representatives ...?
There has long been a question mark as to whether national courts should proceed with a patent dispute where the validity of the same patent is also being considered at the European Patent Office (“EPO”). Doing so brings the risk of inconsistent decisions, and as the EPO ultimately trumps national courts on questions of validity, faster moving national proceedings can be undermined by a subsequent EPO decision. EPO proceedings, however, can move very slowly, taking at least several years and in some cases a decade or more. Staying the national case may, therefore, deny the parties a resolution in a meaningful timeframe. Given the very large financial sums at stake in modern IP disputes, dealing with this dilemma is hugely important to industry.

The Court of Appeal has looked again at the guidelines which courts should use in exercising their discretion in such cases. Lord Justice Floyd concluded that, given the tensions inherent in the European patent system, judges should maintain their ability to exercise a discretion to progress or stay a case depending upon its facts. One factor in favour of a stay would be if the patentee were likely to irrevocably gain some compensation from the defendant which might later be found to have been wrongly bestowed. If the patentee is prepared to give an undertaking to return any such money, however, then allowing the proceedings to progress in parallel could achieve at least some certainty as between the parties in a sensible timescale".
Bristows acted for IPCom in this appeal, which affirmed the decision of trial judge Mr Justice Roth in the Patents Court back in January at [2013] EWHC 2880 (Ch).

Lord Justice Floyd, with whom Lady Justice Rafferty and Lord Justice Patten concurred, explained the background succinctly at [4] of his 95-paragraph judgment:

"The appeal arises in a case where IPCom, a patentee which does not itself manufacture or market products in accordance with its patent, seeks to cause HTC to enter into a licence rather than, on IPCom’s case, to continue infringing by selling its mobile telephones.  It is accepted that this is a case where no injunction will be granted: the patent is said by IPCom to be essential to the UMTS mobile telephony standard, and IPCom have undertaken to grant licences on fair, reasonable and non-discriminatory (“FRAND”) terms.  HTC characterises the case as just being about money, whereas IPCom maintains that its whole business depends on the exploitation of its patents, and a stay would prevent it moving towards a position where it can enforce them".
The decision of the Court wasn't on BAILII when this note was posted, but you can read it here or download it here.  When one or more of the Kats have had a chance to digest the court's words carefully, a follow-up Katpost may materialise.  In the meantime, Merpel comments that, as EPO proceedings seem to get slower and slower, while the commercially valuable life of a patent shrinks and British patent proceedings get faster and faster, prospects of securing a stay of British proceedings ahead of a definitive validity ruling should become increasingly remote.

Wednesday, 27 July 2011

Taking the Exudate - ConvaTec v Smith & Nephew [2011] EWHC 2039 (Pat)

Seeping wounds: not the name of a village in the West Country (the Kat has checked), and neither is it the most savoury of subjects for polite after-dinner conversation. However, it does form the background for the decision in Convatec v Smith & Nephew [2011] EWHC 2039 (Pat), handed down this morning by HHJ Birss – the Judge having discarded his usual Patents County Court hat for the matter and donned that of a Judge of the High Court.

When but a kitten, one of the first things that one learns about tearing around the place with reckless abandon is the fact that most inanimate objects simply cannot be trusted. Apparently immovable, this Kat lost count of the number of playgrounds and trees that conspired to take large chunks out of his paws, elbows and knees by subtly reorientating themselves in respect of his person at a critical point during a daring manoeuvre. Needless to say: there were often cuts and grazes, blood and associated ooze. Anyone that has suffered from high-speed playground contact syndrome will appreciate that the damage caused is usually relatively slight, and the blood loss low. The ooze factor, however, is high, and many a good pair of trousers has been the source of significant pain and discomfort by becoming firmly adhered to the graze site. Wounds, you see, seep, and fabric tends to stick to this seepage.

So back to the case in hand. ConvaTec own a number of patents relating to wound dressings. The patent in suit (EP(UK) 0 927 013) concerned a non-adherent dressing comprising certain fibrous material that operated to absorb wound exudate (i.e. seepage) whilst maintaining a moist environment around the wound. Keeping a wound moist is generally agreed to aid healing, but too much moisture is a bad thing as it can lead to maceration (i.e. over-hydration) of the surrounding skin. Accordingly, at the priority date of the patent there were a number of wound dressings on the market that promoted the maintenance of a moist wound environment by gelling – absorbing the exudate and forming a gel within the dressing itself.

Smith & Nephew wished to sell a wound dressing called Durafiber. ConvaTec alleged that this would infringe their patent, and so brought an action against them. Smith & Nephew, for its part, denied infringement and counterclaimed for revocation on the ground of invalidity.

Having orientated himself by considering the technical background to the invention, the identity of the skilled addressee and their common general knowledge, the Judge then addressed the issue of construction. Distinct issues of construction arose in respect of claims 1 and 3 of the patent:
Claim 1:
A wound dressing comprising a blend of discrete modified cellulose gel forming fibres with at least one other type of discrete gel forming fibres.
Claim 3:
A wound dressing as claimed in any preceding claim wherein the dressing comprises a wound contacting surface consisting of a blend of discrete modified cellulose fibres with at least one other type of discrete gel forming fibres.
Setting out the law, the Judge adopted the tried and trusted formulation found in Kirin Amgen Inc v Hoechst Marion Roussel [2004] UKHL 46, [2005] RPC 9, and also recited the 11-point plan endorsed by the Court of Appeal in Virgin v Premium Aircraft Interiors [2009] EWCA Civ 1062, [2010] RPC 8. When addressing claim 1, he explained that there 2 issues of construction: the first was the meaning of “blend of discrete fibres” and whether this rendered it a product by process claim; and the second was the meaning of the word “type”.

Rejecting the contention that claim 1 would be understood by a skilled reader to refer back to the process by which the product was made, the Judge explained that it was a simple product claim:
[55] “…The claim is a claim to a thing – a wound dressing. The thing comprises a blend of (at least) two types of discrete fibres. In other words a mixture of discrete fibres.”

[57] “No doubt the reader would expect it to be likely that one would make such a wound dressing by mixing (blending) the two fibre populations but that processing is not what the claim is talking about. The claim is talking about a product…. The reader would understand that the invention is about using the mixture of fibres which gives beneficial properties as a wound dressing. It is not an invention focussed on manufacturing methods. How you choose to make the mixture is irrelevant.”
Moving on to the construction of “type” within claim 1, the Judge noted (at [60]) that ConvaTec had argued that “type” referred to fibres with different absorbency properties. Smith & Nephew, by contrast, contended that “type” referred to a particular polymer – i.e. to the chemistry of the fibre. In a rather radical move, the Judge considered that “both the claimants’ and the defendants’ submissions are wrong.” He explained that
[63] “The flaw in each side’s submission is to approach the matter as one of construction of the word “type”. Type is a perfectly ordinary English word which ordinarily would not be expected to bear the kind of refined analysis each side have subjected it to. The key it seems to me is to appreciate that the correct question is to construe claim 1. Claims should, if they can, be construed as a whole.”
Accordingly, by focussing on the meaning of one word within the claim, the parties had missed the way in which claim 1 was written. As this Kat has long maintained, the process of atomising phrases within the claims is capable of distorting the message conveyed by the whole. The natural tendency when faced with a deconstructed sentence is to treat the individual particles as elements of precision. One assumes that the message conveyed by the whole is simply the sum of its parts, whereas often the true story is much more complicated. Or, as in this case, much simpler: accordingly as the Judge explained –
[65] “…[C]laim 1 is actually rather simple. If all the gelling fibres in the wound dressing are modified cellulose then the claim is not satisfied. The claim requires a blend of (gel forming) modified cellulose fibres and some other type of fibres, that is to say some other fibres which are not modified cellulose. If I ask in a shop for a bowler hat and another type of hat, I do not expect to be given two bowler hats, differing only in their size or colour or whatever.”

[66] “…Asking, out of the context of claim 1, what a “type” is, is an example of meticulous over analysis of the words. Once you embark on asking the (wrong) question of what is a type, there is support in the specification for many different answers.”
Moving on to claim 3, the Judge explained that the term “modified cellulose fibres” was not a term of art and was “not a term which reader would think was meant to impose a tight limitation. The term is broad and is not intended to be limiting.” Accordingly, it was not limited to chemical modifications.

Given the Judge’s construction of the claims, there was evidently no infringement:
[104] “The only gel forming fibres in Durafiber are made of CES, i.e. modified cellulose. In other words, as regards gel forming fibres, Durafiber uses modified cellulose alone and there is no other type of gel forming fibre present. Therefore on the true construction of the claims, Durafiber does not infringe claim 1.”
[105] “Moreover since claim 3 is dependent on claim 1, Durafiber does not infringe that claim either, irrespective of the issues of construction of claim 3.”
Moving to validity: by the end of the trial ConvaTec had accepted that claim 1 of the patent was anticipated and therefore invalid. Claim 3, stated to have independent validity, was attacked on grounds of obviousness – it being alleged to lack inventive step over three pieces of prior art (Qin, Lassen and ‘746) and the common general knowledge. Diving in to the issues, the Judge applied the Pozzoli reformulation of the classic Windsurfing test and sought to apply this to the facts. In respect of the first two pieces of prior art (Qin and Lassen), claim 3 passed muster – it was not obvious in their light. ‘746 deserves special mention.

‘746 was a PCT application published about a year before the priority date of the patent in suit. It is entitled “Wound dressings” and relates a wound dressing employing CMC (i.e. carboxymethyl cellulose – modified cellulose) fibres in the wound contacting surface. On the Judge’s construction the point did not arise, however, on ConvaTec’s proposed construction – assuming that the defendants’ product did infringe the claims – then it was alleged that the product of ‘746 would also fall within the patent’s scope of protection. As such, the patentees were evidently on the classic “horns of a dilemma”: the defendants alleging that there was nothing patentably distinct between ‘746 and their actions which were alleged to infringe. As the judge noted (at [170]) this was “a Gillette defence of the purest kind.”

Nevertheless, as construed by the Judge, the patent was safe from these challenges. It was also not obvious in light of the common general knowledge – this being a case in which one could legitimately ask “if it was obvious why was it not done before?”

Accordingly the patent was valid, in part, but not infringed.

Friday, 17 June 2011

Nokia v IPCom - Round Two of the English Leg of the International Patent Battle

The tussle between Nokia and IPCom has reached the courts once again and is, in the mind of this Kat at least, beginning to appear a little like the legal equivalent of UK TV uber-serial Eastenders - not quite up there with the Coronation Street-like behemoth of the Chiron v Organon litigation in the 1990s, of which this Kat seems to recall at least 14 decisions, but nevertheless still on its way to epic status.

By way of a reminder: IPCom (described by the Court of Appeal in previous litigation ([2011] EWCA Civ 6) as a “non practising entity”, i.e. a patentee with no business of its own in products covered by the rights it holds), owned a number of patents (which it had bought from Bosch) in the field of mobile communications technology. It originally approached Nokia offering to licence these rights, but Nokia refused to pay the sum that IPCom requested. IPCom therefore commenced infringement proceedings against the Finnish company in Germany. This riled Nokia who retaliated, seeking revocation of a number of the patents in Germany and the UK, and the dispute escalated into what has been described as “an international patent battle”.

Floyd J had previously dealt with matters between the two on a number of occasions and had produced three judgments (of 20th November 2009, [2009] EWHC 3034 (Pat) (“the first amendment judgment”); 18th January 2010, [2009] EWHC 3482 (Pat) (“the main judgment”); and 31st March 2010, [2010] EWHC 789 (Pat) (“the second amendment judgment”)). The parties, having taken a little time off to visit the Court of Appeal (which pronounced on the matter on the 20th January 2011, [2011] EWCA Civ 6 – noted by the IPKat here), were recently back before the Judge for another round. Floyd J’s latest decision in the matter was handed down yesterday.

This particular episode of litigation concerned IPCom’s European Patent (UK) No. 1 841 268, a divisional of European Patent (UK) No. 1 186 189 which had found fame in the previous round. The judge had found the parent patent invalid in his January 2010 judgment ([2009] EWHC 3482 (Pat)), and Nokia now sought the same fate for its offspring. IPCom, for its part, made a conditional application to amend the patent and also counterclaimed alleging infringement. Nokia denied this and also sought a declaration of non-infringement in relation to a series of other mobile phones.

Those who take delight in the technical aspects of the UMTS mobile telecommunications standard will, once again, be in seventh heaven reading this judgment. For the rest of the IP population, a summary will suffice. As the Judge explained (at [5]), the patent concerned a “method of managing the problem of contention on a random access radio channel uplink between mobile phones and a network base station.” Essentially, it offered a manner of regulating a UTMS mobile radio network so as to distinguish between various user classes and to dynamically prioritise certain mobile traffic over others. Priority traffic would gain direct access to the network, whereas other traffic would compete for access in a ‘lottery’.

The meat of the judgment revolves around the obviousness attack upon the patent’s validity, although a significant portion of the judgment is also directed to discussion of added matter. Insufficiency gains a brief look-in as well.

Cutting to the chase, Floyd J was not convinced that any of Nokia’s three prior art references rendered the invention obvious. The same fate befell Nokia’s final challenge – that the alleged invention was actually obvious in light of the common general knowledge (CGK). Despite this being described (at [116]) as “a very simple and attractive argument, untrammelled as it is by any of the details of a practical working system”, it was nevertheless considered to fail. The Judge concluding (at [123]) that even though the patented invention may not have achieved anything in terms of general functionality when compared with the prior art or CGK, “it does not follow that IPCom’s approach to achieving that functionality is obvious. It is entirely possible that invention lies in achieving the same functionality in a different way.”

Objections to the amendment of the claim based on added matter went the same way: all failed. Similarly, all objections on the basis of insufficiency were also rejected, the Judge concluding that:
[176] “…The patent would not be understood to be pretending that the invention would work without modification in whatever UMTS system was ultimately agreed. This case is nothing like a patent where there is a missing essential ingredient. The cross-examination of Mr Gould did not show that a system could not have been built based on the draft standards: it merely showed that it would not have been possible to guess what choices would be made in the final standards, and that if there was a difference the phone would not work.”
Having concluded that IPCom’s patent was valid, the Judge went on to consider the question of infringement. He noted that there was a “Product and Process Description for each of 14 types of Nokia device designated “the A1”, “the A2”, “the B1”, “the B2”, “the C1”, “the C2”, “the D1”, “the D2”, “the E1”, “the E2”, “the F1”, “the F2” , “the G1”and “the G2”.” A1 and A2 were found to infringe, but the B to G devices were not. As the Judge explained:
[206] “The only case of infringement which IPCom could have advanced on these devices would have to be based on class barring. But they cannot espouse that construction because they have now accepted that on that construction the patent would be invalid over GPRS.”
Accordingly, a declaration of non infringement was granted in respect of the B to G devices.

With this round going, on balance, to IPCom the next instalment in the €12 billion European saga is eagerly awaited.

Monday, 18 October 2010

The chips are down in spud-separator shoot-off

Hot(ish) off the press, the IPKat brings you news of the Court of Appeal’s (Jacob and Etherton LJJ and Sir David Keene on the Bench) judgment in Grimme Landmaschinenfabrik GmbH & Co KG v Derek Scott (trading as Scotts Potato Machinery) [2010] EWCA Civ 1110, handed down on Friday by Lord Justice Jacob. By way of background: Grimme had originally alleged that Scott was infringing its European Patent (EP(UK) 730 399) and unregistered design rights in a potato separator by sale of a machine called “Evolution”. [For those not versed in the day-to-day mechanics of the potato farming industry: the potato separator is an ingenious machine that (somewhat conveniently, given its name) separates potatoes from the assorted detritus that one would expect things wrenched from the ground to be duly associated with – i.e. weeds, earth, stones, stalks, etc.]. Scott, for his part, resisted those claims, and in turn sought revocation of the patent and relief for unjustified threats alleged to have been made by Grimme in respect of both patent and design right infringement.

At first instance [noted by the IPKat here], Mr Justice Floyd, had held that, while claim 1 of the patent was invalid as it lacked inventive step, claims 17 and 24 were valid. He found that Evolution infringed claim 17 “provided that at some point in the separating path it has two counter-rotating pairs of rubber rollers”. If, however, Evolution did not have two counter-rotating sets of rubber rollers at some point in the separating path, then because it was adaptable to include two such sets, its sale would infringe claim 17 under section 60(2) – Scott knowing, or it being obvious to a reasonable person in the circumstances, that users might swap the steel rollers for rubber ones. Furthermore, in cases where rubber rollers were already fitted to Evolution when sold, the sale of spiral replacement rollers was additionally, and of itself, an indirect infringement under s60(2) Patents Act 1977 (Scott once more being found to possess the requisite knowledge). Grimme’s design rights survived the allegation that they were commonplace, and were found to be infringed by Scott’s original roller (although not a subsequent incarnation). The fate of the counterclaims for unjustified threats was, as may be expected, tied to the outcome of the allegations of infringement and so succeeded in relation to the design right but not in relation to the patent infringement proceedings – in respect of the latter, although threats were made, they were justified.

The arguments raised upon appeal were confined to “issues about the Patent and the unjustified threats claim and include a point of general application about the meaning of s.60(2) of the Patents Act 1977.” All in all, 12 issues had been agreed at the outset of the hearing, but the Court was of the opinion that it would be advantageous to “consider first whether the Judge’s construction of claim 1 was correct or whether it was, as Grimme contended, narrower. If we concluded it was narrower, then we should consider the question of its obviousness. The advantage of this course was that if we concluded that claim 1 was valid, then the separate points sought to be raised by Mr Scott about claims 17 and 24 would fall away.”

(1) Construction & Validity

Approaching, therefore, the issue of construction, the Court considered that the Judge had construed claim 1 of Grimme’s patent too widely. In particular, Grimme had argued that the Judge had not addressed the “requirement that that the rib part (we use that as shorthand for lip, rib or like extension) should project beyond the contours of the cylindrical shell part”. It had been submitted that this meant that the rib had to project from the cylindrical surface of the roller as in fig.12 of the patent (reproduced below right) where the rib extends out of the cylinder. The Court considered that there may have been a number of reasons for this omission, but agreed with Grimme’s contention that the experts on both sides thought that the star wheels of Rollastar were not themselves within the language of the claim. Thus, whilst “the court is not bound by the views of the experts as to the meaning of ordinary words in the claim …, it is obviously a strong thing for the court to take a different view from a consensual view of the experts.” Furthermore, it was “consistent with the inventor’s purpose to read the claim in the narrower sense: “That purpose is to remove mud, stones and haulm by dragging them through the gaps between the ribbed rollers and the clod roller.
If you use star wheels of the sort in Rollastar you are not aiming to do that. You are aiming to remove stones and mud by a sieving action.” (see [35] to [43]).The Court therefore considered that the claim required that the “lip, rib or like extension” must rise out of the cylindrical portion – and thereby that it must have axial length and there must be a recognisable cylindrical portion from which it projects. This was a narrower construction than that adopted by the Judge and, accordingly, obviousness had to be looked at afresh – the Judge having concluded on a (now incorrect) wider reading of the claim that it was obvious. “The Biogen principle of deference by an appeal court … to the multifactorial assessment of a trial judge” not applying in such circumstances.

Therefore, applying the Pozzoli v BDMO ([2007] EWCA Civ 588, [2007] FSR 27), restructuring of the classic Windsurfing test, the Court concluded that to move from the prior art (Rollerstar) machines to Grimme’s patented invention would not have been obvious. There were a number of steps along the way that provided impediment to the allegedly obvious path that were such that “the skilled man simply would have no motive or reason for even embarking [it].”

In the Court’s words: “The upshot is that the Patent is wholly valid and Mr Scott’s machine sold with elastomeric clod rollers falls within claim 1. Its sale and offering for sale is a direct infringement prohibited by s.60(1) of the Act.”

(2) Contributory/Indirect Infringement under s60(2)

The Court considered that Scott’s sale of the Evolution machine with steel rollers fitted fell outside of claim 1. However, the fact that “the machines [were] designed so that the rollers were interchangeable …, and that those supplied with steel clod rollers could be changed by the ultimate user (or indeed a middleman) over to rubber rollers …, [when combined with the fact that] they were marketed on that basis”, easily supported a claim for contributory infringement under s60(2).

In relation to this latter point, the Court gave full treatment to the origins and scope of the section [by far the fullest treatment of the provision that this Kat has ever seen in an English decision]. It therefore noted that the section originates from Art. 30 of the 1975 draft of the Community Patent Convention, and which became, in unchanged form, Art. 26 of the 1989 version, neither of which ever entered into force, but is still one of those provisions of which the Patents Act 1977 is “so framed as to have, as nearly as practicable, the same effects in the UK as the corresponding provisions of the Community Patent Convention”. As with nearly all such provisions, the text of the CPC was taken and remixed when bringing it within the domestic legislation (a practice described as “preposterous” by the Court, which also notes that this practice “serves [only] to confuse”). Nevertheless:

[88] “Section 60(2) creates a statutory tort, but it does not spring from any previous notional or common law tort. Its distinctive features, by way of contrast with common law tortious claims, are that the tort is actionable (1) even though what is supplied is capable of perfectly lawful, non-infringing use, (2) even though what is supplied never has been and may never in fact be used in a way directly infringing the patent in suit, (3) without any damage being suffered by the patentee, and (4) at the moment of supply, irrespective of anything that may or may not occur afterwards.

…[90] [This] makes the description “contributory” as opposed to “indirect” infringement something of a misnomer. If and to the extent that Mr Scott’s case is that there can be no infringement under s.60(2) unless there is actual direct infringement, it is plainly wrong. In this connection it is particularly important to observe that there can even be infringement by “offering” to sell an essential means – at the time of the offer there is unlikely to be any particular end user in mind.


“[102] …Grimme’s invention is “put into effect” when the Evolution machine is fitted with rubber rollers. The supply of a steel-rollered machine, which is designed and indeed promoted to enable the steel rollers to be changed for rubber rollers, is plainly the supply of the means by which that can be achieved, and is the supply of a means essential for that purpose. The fact that a steel-rollered Evolution machine, so long as it remains steel-rollered, does not infringe and is capable of lawful use as a complete machine in that state is irrelevant. The section is clearly intended to apply to, among other things, products which are perfectly capable of being used in a manner which will not constitute a direct infringement within s.60(1). The requirements as to suitability and knowledge of intended use limit the scope of the statutory tort in relation to such products, not whether the product itself is capable of lawful use without alteration, addition or adaptation.”

However, s60(2) PA 1977 also requires knowledge for there to be infringement: specifically that the supplier “knows … that those means … are intended to put the invention into effect”. Accordingly, a number of questions concerning knowledge arose in this dispute. These are listed by the Court in [107] of the judgment, and the answers discussed in [108] to [132], but are condensed here:

(i) Whose intention is referred to?

The Court considered that it was self-evidently not the supplier himself. The required intention relates to putting the invention into effect, and so the reference to intention must be to the intention of the party that is in a position to put the invention into effect, i.e. the person supplied. “The question is what the supplier knows or ought to know about the intention of the person who is in a position to put the invention into effect – the person at the end of the supply chain.” However, the person whose intention is referred to need not be the person directly supplied as “if that view were right, a party who only supplied essential means to middlemen could never fall within the provision”, which cannot have been the intention of the legislation.

(ii) How specific must the intention be?

Here the Court considered that “it was enough if the supplier knew (or it was obvious in the circumstances) at the time of his offer to supply or supply that some (disregarding freak use) ultimate users would intend to use, adapt or alter the “means essential” so as to infringe.” Several decisions of the Bundesgerichtshof (German Supreme Court) were utilised to support this view (Deckenheizung [BGH X ZR 153/03], 13 June 2006; Haubenstretchautomat [BGH X ZR 173/02], 9 January 2007; and Pipettensystem [BGH X ZR 38/06], 27 February 2007. The three earlier cases are Luftheizgerät, [BGH X ZR 176/98], 10 October 2000; DI B.V. [2004] ENPR 194 of 25 March 1999 (Oberlandsgericht, Düsseldorf); and Antriebsscheibenaufzug [BGH X ZR 247/02], 7 June 2005).

(iii) When must the intention be formed?

Again referring to the German decisions, the Court considered that “[w]hilst it is the intention of the buyer (this must mean ultimate buyer) which matters, a future intention of a future buyer is enough if that is what one would expect in all the circumstances.”

In summary, the Court noted (at [131]) that:

“…[T]he knowledge and intention requirements of Art. 26 and section 60(2) are satisfied if, at the time of supply or offer of supply, the supplier knows, or it is obvious in the circumstances, that ultimate users will intend to put the invention into effect. That is to be proved on the usual standard of balance of probabilities. It is not enough merely that the means are suitable for putting the intention into effect (for that is a separate requirement), but it is likely to be the case where the supplier proposes or recommends or even indicates the possibility of such use in his promotional material.”

Therefore, the fact that Scott not only pointed out that users could adapt the Evolution machine by simple modification, but also sold the means to do so, clearly marked him with the requisite knowledge. The Court was not moved by the contention that only a few users actually made the change. Mr Scott knew that users would intend to make their devices infringing if it suited them and positively encouraged that intention.”

As an endnote, this Kat was going to begin this post with a comment that potatoes and the law do not often find their paths crossing, however, upon searching a well-known legal database of case law for the word “potato” he received a not altogether unrespectable 1275 hits, and so shelved this comment on the basis that it was not, in fact, true. (For the curious (and despite the obvious dangers to any feline: who isn't?), “cat” receives 1748 hits, whilst “cat” & “potato” receives 25 - the mind boggles).

That potatoe: here

Famous potatoes: here and here

Tuesday, 13 July 2010

DSS' patent out of the money in Germany, too

Regular IPKat readers will already be familiar with Document Security Systems (DSS), which has been attempting to enforce their European patent (EP 455 750) relating to anti-forgery measures, and in particular against the European Central Bank, who DSS would argue are either already using or at least will want to use their patented technology in banknotes. The ECB has responded by attempting to have the patent revoked in each state in which it is in force. It has, so far, succeeded in the UK (noted here), in France (noted here) and in Austria (not noted), but failed in the first instance in the Netherlands (noted here) and Germany (noted here).

The ECB can claim another (and final) victory in Germany now, the BGH having overturned the decision of the Bundespatentgericht. In its judgment of 8 July 2010, the BGH comes essentially to the same conclusion as the English and Dutch courts, i.e. that the patent as granted contains added matter over the application as originally filed (the grounds for the decision are not yet available; press release here). The judgment is interesting insofar as the BGH has lately mostly overruled decisions of the Bundespatentgericht invalidating patents. Yes, adds Merpel, but mostly if the invalidity was based on lack of inventiveness; this challenge succeeded on other grounds.

As another Kat has noted earlier, these types of disputes involving the same facts in several jurisdictions, with courts coming to opposite conclusions, really are an argument in favour of centralised patent litigation. And, if I may add, sorry, Germans, but taking three years for an appeal (the Bundespatentgericht judgment dates of 27 March 2007) is too long.

Sunday, 2 May 2010

Letter from AmeriKat: This 'n That

Last week the AmeriKat was hanging on tenterhooks constantly refreshing the US Supreme Court page hoping that the decision in Bilski had finally been issued. Low and behold, a watched Supreme Court webpage doesn't deliver opinions. Time was not completely wasted, however. (picture, left - the AmeriKat takes a nap while awaiting Bilksi) The AmeriKat has learned that waiting for someone or something to occur is generally a wasted activity and so she spent the interim time prowling the web for other IP news, going to the gym, tackling her two page To-Do list and various other ignored activities. After all of this, the Supreme Court still had not delivered a decision but that was no skin off the AmeriKat's nose leather. She had been extremely productive in the interim period. So productive, it seems, that the bulk of US news stories that she was to write about in her weekly Letter she already posted during the week. So this week, she delivers a some bits of bobs from the US IP.

Catcher in the Rye Back to Batts: Last Friday, the US Second Circuit Court of Appeals held that Judge Batts had erred in her reasoning by not applying all of the equitable principles required for the evaluation of a preliminary injunction when she granted the injunction to prohibit the sale of Fredrick Colting's sequel to Catcher in the Rye,60 Years Later: Coming Through the Rye. In June last year, JD Salinger, the now deceased author of The Catcher in the Rye, filed a lawsuit in the US District Court in New York claiming that 60YL infringed “both his novel and the character of Holden Caulfield” and aiming to prohibit the publication of the sequel in the US (for further background on the case see the AmeriKat's previous reports here). In overturning the injunction, the Court of Appeals found that Judge Batts had considered only the likelihood of success of Salinger's copyright infringement claim and not also, for example, whether Salinger would suffer irreparable harm if the injunction was not granted. Judge Guido Calabresi stated:

"Because Salinger had established a prima facie case of copyright infringement, and in light of how the district court, understandably, viewed this court's precedents, the district court presumed irreparable harm without discussion."
Judge Calabresi continued by saying that the lower court's decision was understandable given that the US Supreme Court's standard for granting injunctions in eBay Inc v MercExchange (2006), a patent case, was inconsistent with the 2nd Circuit's standard for preliminary injunctions in copyright cases. The Court of Appeals vacated Batts' decision but allowed the injunction to remain for 10 days so that Salinger's estate could apply for a temporary restraining order pending the rehearing. It is important to note that although the Court of Appeals vacated the injunction, the issues regarding Salinger's likelihood of success for the substantive issues remained in his favor.

Patent's inequitable conduct to get a rehearing: Last week the US Court of Appeals for the Federal Circuit granted an en banc rehearing of the appeal of a Californian district court decision in Therasense, Inc v Becton Dickinson & Co that held a patent to be unenforceable due to inequitable conduct. (picture, left - an example of inequitable conduct) The panel opinion delivered this past January affirmed the lower court's finding that the applicant's failure to disclose statements made to the EPO about their patent's European counterpart amounted to inequitable conduct. This opinion was also vacated by last week's order. Under Rule 56, patent applicants must disclose to the USTPO all information that is material to the patentability of the invention. Withholding any material information or making false representations along with the intent to deceive the USTPO is held to be inequitable conduct. Inequitable conduct is generally pleaded by defendants as an affirmative defence and allows a federal judge to void patents on a finding that a company deceived the USPTO in order to obtain a patent. The Federal Circuit's January decision was heralded by some as meaning that applicants had to submit all information relating to their patent application including documents submitted to foreign patent offices - a massive burden you can imagine for some international pharmaceutical and biotech companies! The en banc court will prove to be important in that setting out guidelines as to what documents and from where a patent applicant must disclose to the USPTO to avoid a finding of inequitable conduct. The Federal Circuit has asked the parties to submit arguments addressing these questions prior to the hearing. Also last week, a majority panel in last week's case of Avid v Crystal Import Corporation found there had been inequitable conduct on the part of the applicants.

Awaiting Judge Lee's Decision in Rosetta Stone - Last week, the AmeriKat and IPKat wrote about the breaking news of Judge Lee's granting of summary judgment in favor of Google in the Adwords case brought by Rosetta Stone. The AmeriKat has been prowling the Internet for the past hour and has determined that Judge Lee has yet to issue his formal decision. As soon as he does the AmeriKat will be on it!

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