Friday Fantasies

The AmeriKat's fantasy Brazilian island retreat,
complete with patent decisions to keep one
occupied

Yet another gray, bleak Friday afternoon in London.  If you are anything like the AmeriKat, you will be fantasizing about winning the lottery, escaping to your own private island off the coast of Brazil (something similar to Fernando de Noronha) and reading patent judgments while you bury your paws under the warm, soft sand.  But until that day comes, she will be here to alert you to this week's IP news stories you may have missed:

What would you do with $24.9 million?  That is the question that Dynamic Advances will have the luxury to answer as Apple settles the 2012 patent infringement lawsuit Dynamic Advances brought against the Silicon Valley giant in respect of its Siri program. The case was set to go to trial next month in the Northern District of New York (read complaint here).  Dynamic Advances is the exclusive licensee of Rensselaer Polytechnic Institute's (RIPI's) patent - US 7,177,798 - entitled "Natural language interface using constrained intermediate dictionary of results".   Dynamic Advances claimed that Siri processes natural language inputs as claimed in the patent. Claim 1 of the patent claims:

"A method for processing a natural language input provided by a user, the method comprising:

providing a natural language query input by the user;
performing, based on the input, without augmentation, a search of one or more language-based databases including at least one metadata database comprising at least one of a group of information types comprising:
case information;
keywords;
information models; and
database values;
providing, through a user interface, a result of the search to the user;
identifying, for the one or more language-based databases, a finite number of database objects; and
determining a plurality of combinations of the finite number of database objects."

Dynamic Advances parent company, Marathon Patent Group (a patent licensing company) , stated  in its SEC filing that under the terms of the settlement Apple will be granted a licence for the patent and a 3-year covenant not to sue.  In exchange, Apple will pay $24.9 million under the agreement, with $5 million of that sum payable upon dismissal of the litigation.  The remaining $19.9 million will be payable on any one of a number of conditions set out in the agreement (see here). Interestingly, the SEC filing also records that:

"Dynamic Advances believes RPI has unreasonably withheld its consent to the reasonable royalty rate set forth in the settlement agreement between Dynamic Advances and Apple, and that issue may have to be resolved in arbitration, but it will not deter the resolution between Apple and Dynamic Advances. The Company is unable to predict the resolution of any such arbitration."

Merpel wonders if this spells trouble in troll settlement paradise.  When the AmeriKat asked Siri if he/she was infringing a patent, she received this response:

Good one, Siri - your litigation team trained you well!   For more information see these articles in Ars Technica and Albany Business Review.  

What would you do with almost a $1 billion?  Last week a federal jury in Wisconsin awarded Epic Systems, a medical software company, $940 million in damages as a result of a trade secret lawsuit it brought against Tata Consultancy Services in 2014 . The $940 million damages award comprises of $240 million for compensatory damages and $700 million in punitive damages.  This hit the news in the US as it is understood to be one of the largest trade secrets awards on record.   The misuse came about when employees of Tata Group's US arm downloaded technical documents containing trade secrets relating to Epic System's software that it was helping to install in Kaiser Permamente hospitals. Tata Group then allegedly used the information to improve its competing Med Mantra hospital software.  To read the jury's liability verdict click here and the damages verdict click here.

Hungry for some trade mark meat?  Come to AIPPI's
event on the EU Trade Mark reforms

What would you do with a Wednesday evening in May?  If you struggle to answer that question, then do not fear, AIPPI is here!  On Wednesday, 11 May 2015 AIPPI UK and Oxford's Intellectual Property Research Centre are holding a session entitled "A Brave New World - an in depth look at the EU Trade Mark reforms" at the London office of Simmons & Simmons.  A panel consisting of Prof Graeme Dinwoodie (Oxford University), Simon Malynicz QC (3 New Square) and David Stone (Simmons & Simmons) promises to "deep dive into the real meat of the reforms" [Mmm...trade mark meat..." slobbers Merpel.]  The program states that:

"Much of the commentary on the recent trade mark reforms has focused on the big ticket items – such as the change in the name of the Office, IP TRANSLATOR and goods in transit. But many of the less obvious reforms may well have a bigger impact – and practitioners need to go back to the original Max Planck study for a full understanding."  

The panel will also examine:

• the new exclusions which potentially invalidate a range of non-traditional trade marks; 

• the new interaction between trade mark law and the Misleading and Comparative Advertising Directive;

• new rules on how company names may infringe a trade mark; and

• changes to the scope of defences.

Attendance is free for UK AIPPI members and new applicants for membership, and free to current students on the Oxford Post Graduate Diploma in Intellectual Property Law and Practice (2015/16 academic year); attendance is otherwise £25 for non-members. If you would like to attend this event please register here.

Maruissa won't be stopped by
an estoppel arguement

What would you do with a tube journey home?  Well, you may like to read Mr Justice Males' decision in Marussia Communications v Manor Grand Prix Racing and others [2016] EWHC 809 all to do with the exotic world of Formula One racing.  The Claimant, Marussia, was granted summary judgment in respect of Manor Grand Prix Racing's defence that it was using the Marussia's trade mark - MARUSSIA and accompanying logo for class 12 - with its consent.  Mr Justice Males concluded that Manor Grand Prix had no real prospect of proving that it had the consent of Marussia to use its trade mark.  The judge further held that Manor Grand Prix's defence that Marussia was estopped from asserting its right under the Community Trade Mark Regulation was not available as a matter of law.  This followed the line of authority excluding national law defences as illustrated by Case C-661/11 Martin y Paz Diffusion SA v Depuydt [2014] Bus LR 329 which stated that "...Consequently, save for the specific cases governed by article 8 et seq of that Directive, a national court may not, in a dispute relating to the exercise of the exclusive right conferred by a trade mark, limit that exclusive right in a manner which exceeds the limitations arising from articles 5 to 7 of the Directive."  The judge concluded:

"Mr Cuddigan for the defendant does not challenge the principle that defences under national law are not available to defeat the Article 9 rights of a Community trade mark proprietor, but submits that estoppel is merely a rule of evidence, and thus procedure, which is a matter for national law under Article 101(3) of the Regulation. This provides: 

"Unless otherwise provided in this Regulation, a Community trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located."

I have no doubt that the principle of estoppel by acquiescence on which the defendant relies in this case is not merely a "rule of procedure" within the meaning of Article 101(3). Even if for some purposes estoppel can be characterised as a rule of evidence, the principle on which the defendant relies operates as a substantive defence. Moreover, according to the defendant's own submissions by reference to Jennings v Rice [2002] EWCA Civ 159, it is a principle which enables the court to modify the parties' substantive rights in order to achieve what it regards as a just solution in the particular case 

I conclude, therefore, that the defendant cannot rely on principles of estoppel to avoid liability in this case."

Prince contributed more to the
world of IP than purple rain

What would you do in purple rain?  If you are  Prince fan, you know the only answer to that question is "laugh" and "bathe".  As many Kat readers will know by now the renowned musician, multi-instrumentalist and legendary performer, Prince, died suddenly yesterday.  As a kitten, the AmeriKat grew up listening to Purple Rain and recalls the dog-eared insert of the cassette tape, singing along to "Let's Go Crazy" and "The Beautiful Ones".  Although he will be remembered for his musical prodigy and creating hugely popular copyright works in his own right, in the IP world he may also be remembered for his role in establishing the limits of copyright.  Prince was a staunch defender of copyright, see for example the famous 29-second dancing baby fair use case (see AmeriKat report here) and ample use of Twitter take down notices.  For a recap of Prince's contribution to the world of IP, see these articles in the Wall Street Journal and Billboard.  To watch Prince's extraordinary guitar skills from 3:20 click here - the AmeriKat promises you won't be let down...