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 DS…
DSS’ patent out of the money in Germany, too
July 13th, 2010 · No Comments
Tags: Copyright · Design rights · Trade marks
Letter from AmeriKat: This ‘n That
May 2nd, 2010 · No Comments
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!
Tags: Copyright · Design rights · Trade marks
Two bites and you’re out
February 17th, 2010 · No Comments
Readers with good memories may recall the decision of Mr Justice Warren (Patents Court, England and Wales) in Actavis v Novartis [2009] EWHC 41 (Ch) (noted briefly by the IPKat here) concerning the validity of Novartis’s European patent EP0948320 which claimed a sustained release formulation for fluvastatin, a drug intended to prevent heart attacks caused by high cholesterol. Fluvastatin, as the name suggests, was a statin, used to lower levels of LDL cholesterol in the body by affecting its synthesis in the liver.
Presented with a large volume of evidence, Warren J considered that the matter was “finely balanced” but held the patent invalid for lack of inventive step in that fluvastatin was itself known for a long time before the patent was applied for and the sustained release formulations claimed in the patent were well known at the time. Since the skilled person, in the form of a research team, would know of these facts, it would be an obvious step to combine them. The patent was consequently found to be invalid for being obvious.
The Court of Appeal (Lords Justices Jacob, Lloyd and Stanley Burnton) today held, in [2010] EWCA Civ 82, that Novartis’s appeal should be dismissed. Their Lordships agreed with the trial judge that the invention as claimed was obvious. Jacob LJ however took the opportunity to disagree with him about the “finely balanced” bit:
“The upshot is that I would uphold the decision of the Judge. Unlike him, however, I do not think the case was finely balanced. Once the basis of the patent was proved illusory there was nothing left to save it.”
The same judge reminded us that the proper route to the determination of inventive step is via Pozzoli:
“I have to say I do not think that the two-bite approach [Merpel says, which are the two bites?] is actually a convenient way to deal with obviousness. It is, after all, a multi-factorial assessment. The thing to do is to identify all the relevant factors, orientate oneself à la Pozzoli and then decide whether the invention is obvious”.
Says the IPKat, Pozzoli is a great case for big Kats, being possibly the first occasion on which Lions in the Path were linked with Paper Tigers in the same piece of judicial analysis.
Lion in the path here
Lions in the bath here
Tags: Copyright · Design rights · Trade marks
Breaking news: Nokia triumphs over IPCom
January 18th, 2010 · No Comments
A report from Reuters (“Nokia says UK High Court rules for it vs IPCom”) declares that giant mobile phone-maker Nokia has claimed victory in its Patents Court (England and Wales) patent dispute with German company IPCom, from which it now plans to seek to recoup its legal costs. According to Nokia’s spokesman,
“This is an important decision, as it is not possible to infringe an invalid patent [oh yes it is, says the IPKat. See Coflexip v Stolt, here]. Nokia is pleased with these results, having won all patent infringement cases between Nokia and IPCom that have come to judgment”.
Back in December a district court in Mannheim, Germany, put on hold an application by IPCom for injunctions to ban the sale and distribution of Nokia handsets in Germany, pending final decisions on the validity of the patents by the European Patent Office. These decisions are due later this year. IPCom is the owner of what used to be Bosch’s mobile telephony patent portfolio, created between the mid-1980s and 2000, which includes about 160 patent families worldwide that are key for mobile communications standards.
The IPKat hasn’t yet had the chance to read the decision in full. It’s vast (67 pages and 27,000+ words) and it’s not yet available on BAILII. If there’s one thing it clarifies, it’s the question as to what Mr Justice Floyd might have been doing over the Christmas break. You can read the full text, courtesy of the Kats, here [not any more -- see Addendum 2, below].
Addendum 1: After posting this report, the IPKat received a helpful note from Richard Vary (Nokia). He explained that the Nokia spokesman quoted in the Reuters report was explaining that you can’t infringe an invalid patent because IPCom had previously claimed victory in similar circumstances, announcing that “Nokia was found to infringe”. Nokia then had to explain to journalists, analysts and investors, who know little about patent law, why Nokia hadn’t lost but could carry on selling mobile phones. Richard also points out two factual errors: (i) the patents are not before the EPO, but their German equivalents are before the Federal Patent Court; (ii) IPCom doesn’t claim to have 160 standards related patents — they claim around 30 families on their website.
Addendum 2: the report is now available on BAILII, so you can click and get it here.
Tags: Copyright · Design rights · Trade marks
Haulm Sweet Haulm for the Grimme Reaper?
November 5th, 2009 · No Comments
Some good folk would say that quite enough has already been said about Tuesday’s Patents Court for England and Wales ruling of Mr Justice Floyd in Grimme Landmaschinenfabrik GmbH & Co. KG v Derek Scott (trading as Scotts Potato Machinery [2009] EWHC 2691 (Pat), an earthy tussle over rights in machines for separating potatoes from weeds, earth, clods, stones and haulm. Grimme alleged patent and design infringement.
Right: nothing to do with potatoes, this is actually a machine for recovering costs …
Scott denied infringement and counterclaimed for (i) invalidity and (ii) ungrounded threats to sue for patent and design infringement. Both sides emerged as both winners and losers (see PatLit here for a brief explanation and some idle speculation as to what the costs order might look like), and Class 99 waxed lyrical on the analogy between the design issues in this action and those in the ‘pig fenders’ case ( C & H Engineering v Klucznik [1992] FSR 421: as David Musker notes, “for pig read potato”).
So is there anything left for the IPKat? Yes, there is. The question is again raised as to whether the commercial success of a patent is an indication of inventive step. Says Floyd J:
“Commercial success127. Grimme also rely on commercial success of machines made in accordance with the invention. Commercial success can, in some fairly rare and clear cases, amount to a secondary indication of inventive step. The reasoning behind why this is so was explained in characteristically lucid terms by Laddie J in Haberman v Jackel [1999] FSR 683 at 699 to 701.
128. Grimme have provided a table of the sales which it relies on to show commercial success. It relies on the Grimme MultiSep spiral segment separator sales from 2000 when it was launched. It contrasts these with sales of other separators, including the MultiSep with paddle star wheels. Grimme contend that the MultiSep spiral segment is made in accordance with the Patent but that the MultiSep paddle star is not.
129. I have not found the evidence of commercial success helpful on any issue of obviousness in this case. The basis on which I have found claim 1 to be obvious is that a Rollastar machine with rubber clod rollers is sufficiently adjustable that it falls within the claim. That being so, no amount of commercial success of either MultiSep machine can have a bearing on the issue. The same applies to claim 24.
130. So far as claim 17 is concerned, I have been able to find that claim to be inventive by a sufficient margin not to require secondary indicia of the kind provided by commercial success. But given the level of sales enjoyed by the paddle star, which did not have this feature, I do not think that it is established that commercial success is due to the features of claim 17.
131. I think it would be unwise to attribute the success of the MultiSep to anything disclosed in the Patent. The lips or projections taught by the Patent are nothing like those used in the MultiSep. The evidence showed that those used in the Patent would fill with mud and be difficult to clean. I believe that the commercial success of the machines relied on is likely to be due to a combination of factors including Grimme’s market position and the decline of the Pearson business. It is impossible to distill from that evidence any indication that the features of claim 17 played a significant role”.
The IPKat doesn’t like to see himself as an extremist or an iconoclast; still less does he like to take issue with the late Sir Hugh Laddie — but he fervently wishes that the ‘commercial success’ criterion were consigned to the scrapyard of legal history along with frankalmoign and enfeoffments. If you look at Article 56 of the European Patent Convention, there’s a bit in it that read:
“An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”.
The Kat knows this sounds somewhat trivial, but this looks to him as though inventive step is measured by looking at the invention itself, rather than the receipts and invoices. He understands that, in the days when judges knew plenty of Latin and Greek but whose knowledge of science was confined to apples falling from trees, it was cruel and unfair to blind them with science, so lovely little rules of thumb like ‘long-felt-want’ and ‘commercial success’ were devised. Surely there’s no room for them now, with specialist patent courts and even some judges with a science background to staff them. In any event, as one member of the Court of Appeal once pointed out (and there’s a pint of beer for whoever first posts his name below together with the case he said it in), the absence of commercial success is as much an indicator as the existence of commercial success (i.e. if something’s sufficiently non-obvious, people won’t see how you can make it pay: think of Frank Whittle’s invention of the jet engine).
At this juncture, three things occur to the IPKat. First, we are all supposed to be good Europeans now. So can anyone tell him how far ‘commercial success’ is used as a criterion of inventive step elsewhere in Europe?
Secondly, if we are all supposed to be looking for ways to streamline and accelerate patent litigation, can the judges make it a point of case management to say something like: “don’t go bothering me with evidence of commercial success in support of a patent’s validity unless I say so”?
Thirdly, it may only be a matter of impression, but ‘commercial success’ generally looks to the IPKat as though it’s thrown in when the case in favour of a patent’s validity is pretty weak. So, other than to make the client happy by letting him hear his patent praised and running the risk that he might be faced with disclosure of some of his more delicate financial and management records if he does so, does ‘commercial success’ really achieve anything?
Grimme reapers here
Cat potato here
Tags: Copyright · Design rights · Trade marks