• The Problem of Obviousness

    The overly inclusive nature of obviousness interpretations has led to problems. First, with an overly broad view of obviousness, patent applicants are encouraged to flood patent examiners with prior art references in order to immunize prosecution from …

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  • The Berkeley brief in the CRISPR interference appeal

    On July 31, Kevin Noonan at Patent Docs posted Berkeley Files Opening Brief in CRISPR Appeal, which included the text:


    The brief also faults the Board for not considering a provisional application by Kim (U.S. Provisional Application No. 61/717,324, filed October 23, 2012, and later published as U.S. Application No. 14/685,568) as prior art under 35 U.S.C. §102(e). (In many ways this is the brief’s strongest argument, because this reference is clearly prior art to the earliest-filed Broad provisional, and Berkeley has a strong argument that the Board not considering it was legal error.)

    Finally, Berkeley argues that Broad had not shown that it was entitled to the December 12, 2012 filing date of its earlier provisional. According to the brief, the Board should have considered October 15, 2013 as the relevant “end date” for considering prior art; if it had done so, many of the references not considered by the Board (set forth in the table above) would have made it impossible for Broad to satisfy its burden of proof that its claims were not obvious. Instead, the brief contends that the Board “assume without analysis” that Broad was entitled to its December 12, 2012 first provisional filing date for its “hundreds of involved claims,” a conclusion Berkeley contends was error.

    Broad will have the opportunity to make its arguments in favor of the Board’s decision in the coming months; oral argument should be scheduled for some time before the end of the year.

    ***Of the Kim reference mentioned by Noonan:

    *One notes that US application 14/685,568 (published appl. 20150322457) has first published claim:


    A composition for cleaving a target nucleic acid sequence in a eukaryotic cell, the composition comprising a Type II Clustered Regularly Interspaced Short Palindromic Repeats (CRISPR)/Cas system in a eukaryotic cell, wherein the Type II CRISPR/Cas system comprises: a) a nucleic acid encoding a Cas9 polypeptide, and b) a nucleic acid encoding a guide RNA that hybridizes with the target nucleic acid sequence, wherein the Cas9 polypeptide and the guide RNA form a Cas9/RNA complex in the eukaryotic cell and wherein the guide RNA has sufficient sequence complementarity to the target nucleic acid sequence in the eukaryotic cell to allow the Cas9 polypeptide to mediate double stranded cleavage at the target nucleic acid sequence.

    *This application derives from a PCT application, which in turn claims priority to more than one provisional: The present application is a continuation application of PCT/KR2013/009488 filed Oct. 23, 2013, which claims priority to U.S. Provisional Application No. 61/837,481 filed on Jun. 20, 2013, U.S. Provisional Application No. 61/803,599 filed Mar. 20, 2013, and U.S. Provisional Application No. 61/717,324 filed Oct. 23, 2012, the entire contents of each aforementioned application are incorporated herein by reference.

    *It is not so clear that the saga of the Kim application is “good” for UC/Berkeley. In the rejection mailed November 7, 2016, the attached interview summary shows the applicant argued for unpredictability.
    Dr. Bryan Cullen argued there was no expectation of success that the Doudna/Jinek system would work in eukaryotic cells, the same argument as that of Broad. Does UC/Berkeley want the Cullen material on the record?

    Furthermore, in pre-AIA law, the granting of the provisional filing date to a later patent/published application is a bit tricky.

    As William Valet pointed out in discussing Dynamic Drinkware v. National Graphics :


    The ultimate issue during this appeal was whether Dynamic had satisfied its burden of proving that the claims of U.S. Patent No. 7,153,555 to Raymond (the “Raymond Patent”) were supported by the written description of Provisional Application No. 60/182,490 (the “Provisional Application”), thus permitting the use of the disclosure of the Provisional Application to anticipate the claims of U.S. Patent No. 6,635,196 (the “‘196 Patent”) to National Graphics, LLC (“National”).

    (…)

    Dynamic’s troubles did not end there. Since Dynamic was not entitled to a presumption that a non-provisional application claims priority to its provisional application, Dynamic had the burden of proving that the Raymond Patent was entitled to the benefit of the filing date of the Provisional Application. Unfortunately, Dynamic merely compared “the claims of the ‘196 patent to the disclosure of the Raymond Patent and claim 1 of the ‘196 patent to the disclosure of the Raymond provisional application,” and therefore failed to meet this burden. (Slip Op. at 11, citing Appellant’s Br. at 22).

    Because Dynamic failed to meet its burden, the court ultimately agreed with National Graphics, noting that, “[a] reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1. (Slip Op. at 11, citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981).) The court included a reminder that “[a] provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.” (Slip Op. at 11). Ultimately, the court noted, by failing to “compare the claims of the Raymond patent to the disclosure in the Raymond provisional application,” “Dynamic did not make that showing.” (Id., citing Appellant’s Br. at 22, emphasis added).

    To be specific, from the case, 800 F.3d 1375; 2015 U.S. App. LEXIS 15764; 116 U.S.P.Q.2D 1045 :


    For a patent to claim priority from the filing date of its provisional application, it must satisfy 35 U.S.C. § 119(e)(1) (2006), which provides that:

    An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title . . . .
    (emphases added). “In other words, the specification of the provisional must ‘contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms,’ 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.” New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (emphases in original).

    Of the Giacomini case:


    As relevant here, we found that “[b]ecause Giacomini never argued before the Board that the Tran provisional failed to provide [page 1381] written description support for the claimed subject matter in accordance with [page 1050] section 119(e), Giacomini waived the argument by failing to raise it below.” Id. at 1383 (citation omitted). We ultimately concluded that the Tran patent had the same “patent-defeating effect” as though it was filed on the date of the Tran provisional. Id. at 1385. Because Giacomini waived the argument that the Tran provisional application did not support the Tran patent, we did not reach the question whether the Tran patent was presumptively entitled to the benefit of the filing date of its provisional application.


    Asserting that it carried that burden, Dynamic argues that it provided sufficient evidence to prove that the Raymond provisional application provided written description support for the claims of the Raymond prior art patent. Dynamic contends that, as part of its petition, it compared the claims of the ‘196 patent to the disclosure in the Raymond patent. According to Dynamic, it then provided a claim chart in its reply brief to the Board establishing anticipation of claim 1 of the ‘196 patent by the Raymond provisional application. Dynamic argues that the combination of the two charts demonstrates that the Raymond provisional application provides written description support for the claims [page 1382] of the Raymond patent.
    National Graphics responds that Dynamic only made a conclusory assertion in its petition that Raymond was entitled to an earlier effective date, and the argument is therefore waived. National Graphics also argues that, even absent a determination of waiver, the Board’s decision is supported by substantial evidence because Dynamic never compared the claims of the Raymond patent to the disclosure in the provisional application.

    First, we find that Dynamic did not waive its argument that Raymond was entitled to an earlier effective date. As discussed supra, Dynamic did not have the burden of producing evidence relating to the Raymond provisional application until after National Graphics made its argument regarding reduction to practice. As a result, it was not necessary for Dynamic to prove in its petition that Raymond was entitled to the filing date of its provisional application. Thus, there was no waiver.

    We ultimately agree with National Graphics, however, that the Board’s decision was supported by substantial evidence because Dynamic failed to compare the claims of the Raymond patent to the disclosure in the Raymond provisional application. A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1. In re Wertheim, 646 F.2d 527, 537 (CCPA 1981).2 As Dynamic acknowledges, it provided charts to the Board comparing the claims of the ‘196 patent to the disclosure of the Raymond patent and claim 1 of the ‘196 patent to the disclosure of the Raymond provisional application. See, e.g., Appellant’s Br. at 22. Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. That was Dynamic’s burden. A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional. Dynamic did not make that showing.

    Of published applications (rather than issued patents) see also Amgen, 2016 U.S. Dist. LEXIS 26049 :


    3. Because I asked the parties to identify the case that best supports their respective positions, I assume that there is no case on point, that is, a case where defendants are relying for their obviousness defense on a published application (as opposed to a patent) which is only prior art by claiming priority to an earlier filed unpublished application, neither of which have claims that have been examined. I recognize that the references at issue may change; nevertheless, I believe the law is more accurately described in Dynamic Drinkware. However, because plaintiffs did not object to the two prior art references at issue until the conclusion of expert discovery through the Daubert motion exercise, I decline to grant plaintiffs’ motion to preclude defendants from presenting their obviousness defense and will, instead, give defendants the opportunity to supplement their expert reports to appropriately address the question of whether the Schering and Novartis references constitute prior art by comparing their claims to the prior disclosures. (D.I. 247 at 62) If the parties need a short postponement of the trial date to accommodate this order, I will make it so.

    See also VERINATA HEALTH, INC., 2017 U.S. Dist. LEXIS 7728 :


    Ariosa is correct that the PTAB never specifically compared Fan with the challenged claims of the ‘794 Patent in its final written decision. See Decl. Wathen (Dkt. No. 301), Ex. 18. Rather, the PTAB found that, under the Federal Circuit’s decision in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), Ariosa failed to carry its burden to demonstrate that Fan was prior art under § 102. Establishing priority is one of the elements of a claim that the patent is invalid on anticipation grounds, not an evidentiary “technicality.”

    ***Pre-AIA law is NOT what one intuitively expects (did the provisional provide DISCLOSURE rendering the later challenged claims not patentable?) but rather is claim-centric (did the written description of the provisional support the claims of the patent/application arising from the provisional?). Intuitively, Dynamic had a good case; legally, under pre-AIA, it did not.

    link to Valet piece: http://www.cdfslaw.com/publications/think-provisional-application-qualifies-prior-art-better-think/

    Also:
    http://ipr-pgr.com/provisional-application-not-%C2%A7-102e-prior-art-in-ipr/

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  • VLP Law Group Adds Intellectual Property Partner David Thibodeau

    Palo Alto, CA (August 1, 2017) – VLP Law Group LLP is pleased to announce that David J. Thibodeau has joined the firm’s Intellectual Property Practice Group as a partner, based in Boston and New Hampshire. Mr. Thibodeau’s law practice emphasizes the development and refining of patent portfolios, strategic advice concerning competitive intellectual property rights, and due diligence for technology-based financial, merger/acquisition and other business transactions.

    The post VLP Law Group Adds…

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  • R.36 No Opinion Judgments at the Supreme Court

    A third petition for writ of certiorari to the United States Supreme Court has now been filed stemming from the Federal Circuit’s Rule 36 Debacle.  Despite the need for clear guidance on the implementation of AIA Trials, most such appeals are being decided by the Federal Circuit without any opinion.  I have argued that the process violates a provision of […]

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  • PTAB Life Sciences Report

    By John Cravero — About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Celltrion, Inc. v. Biogen Inc. et al. PTAB Petition: IPR2017-01230; filed March 30, 2017. Patent at Issue: U….

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  • CURVE (動詞)

                            目次はこちら

    CURVE (動詞)

    $$ This effect is exaggerated in the design of FIG. 16(d) in which the sides of the polygonal cross section are inwardly curved. / この作…

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  • Patent Academixer

    Any votes on guest posts from patent law academics – The Intellectual Property Scholars Conference (IPSC) shows some ideas of what IP law professors are working on. https://www.ipsc2017.org/schedule/

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  • More Matchmaking: Aqua Licensing Offers Access to More than 60,000 Patents

    In another attempt to create an efficient marketplace for patents, Aqua Licensing is offering access to a substantial portfolio of patents—“more than 60,000.”  The patents are part of the portfolios of AT&T, Rambus, Lenovo and Entegris, among others.  According to the Aqua Licensing website:

    Startups submit business plans to the pool as they would to a venture capital investor, at which point the team of patent experts at AQUA identify IP assets that will improve the defensive position of the company and contribute to its long-term growth and value potential. When a match is made, the IP is offered to the startup in exchange for equity, rather than cash, as part of their next-round of financing. This structure enables the startup to secure the Strategic IP Investment from the technology leader prior to pricing the financing round, allowing the benefits of the secured IP and strategic investment to be reflected in the valuation of that round. In many cases this allow for an immediately accretive acquisition of assets.

    This sounds similar to one of Google’s recent efforts.  At least one study has shown that supposed patent trolls may target new companies near significant events such as IPOs.  This type of portfolio may provide defensive protection against practicing entities—which is a valid concern, of course.  According to Bloomberg BNA, Aqua’s program is closer to a marketplace because it can result in patent ownership. 

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  • Trump Administration Suspends Program for Visas for Entrepreneurs

    The Trump Administration suspended an Obama Administration program about to go in effect that would provide visas to entrepreneur immigrants.  According to the Wharton School of Business, the program would help create jobs in the United States and had little downside.  The program is apparently similar to others created in Canada, France and Argentina.  Notably, the Trump Administration is supporting new legislation to radically reform the immigration system in the United States by moving to a supposed “merit” based system designed to reduce immigration by 50%.  The Wharton School of Business states:

    Immigrants make up about 12% of the U.S. working population, [Hsu] added. Among STEM (science, technology, engineering and math) workers, immigrants make up 24% of bachelors and 47% of doctorates, he continued. “So [immigrant entrepreneurs] are punching above their weight in the talent pool for the workforce that we desire in the U.S.,” he said. He pointed to one much-cited statistic: foreign-born entrepreneurs make up about half the founders in the so-called “billion dollar club” of startups that are worth at least a billion dollars each. 

    In an Op-Ed in Crain’s New York Business, Orin Herskowitz, the Senior Vice President of Intellectual Property and Technology Transfer of Columbia University and President of Columbia Technology Ventures, states that:

    The rule, one of President Barack Obama’s final acts in office, provides so-called “startup visas” long sought by Silicon Valley. It is narrow, allowing foreign entrepreneurs to live in the United States for 30 months while building their companies. To qualify, applicants must show that they have reputable investment in their company of no less than $250,000 and the potential for a positive impact on economic growth and job creation. The rule has now been delayed until next March, and the Department of Homeland Security has given notice that the administration will propose rescinding the program before then. . . .

    There are other storm clouds on the horizon. The president’s proposed budget reduces funding for basic science. And the legal playing field is beginning to tilt against innovators, most dramatically through a retreat from the respect for patent protection recognized by our Constitution more than two centuries ago as a bulwark of our economy. The former director of the U.S. Patent and Trademark Office, David Kappos, points out that a series of court decisions have rendered many biotech and software inventions un-patentable or at best uncertain in the U.S., causing the abandonment of promising research, or the repositioning of that research overseas to China, where affirmative steps have been taken to strengthen patent protection.

    [Hat tip to Technology Transfer Central for the lead to the articles.] 

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  • Impossibility of the Doctrine of Equivalents?

    Enzo Biochem v. Applera (Federal Circuit 2017) (nonprecedential) The Federal Circuit’s decision in this case begins with a statement that “this court now has considered this infringement action on three separate occasions over the course of thirteen years of litigation between these parties. We assume the parties are familiar with the background facts, and we […]

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  • Kevin Collins on Patent Law’s Authorship Screen

    Numerous scholars have examined the various functionality screens that are used to prevent non-utility-patent areas of IP from usurping what is properly the domain of utility patent law (see, e.g., the terrific recent articles by Chris Buccafusco and Mark Lemley and by Mark McKenna and Chris Sprigman). But hardly anyone has asked the inverse question: How should utility patent law screen out things that should be protected by non-patent IP? In Patent Law’s Authorship Screen (forthcoming U. Chi. L. Rev.), Kevin Collins focuses on the patent/copyright boundary, and he coins the term “authorship screen” as the mirror image of copyright’s functionality screen. As with pretty much everything Collins writes, it is thought provoking and well worth reading.

    As a normative matter, Collins argues that an authorship screen is important to prevent patents as “backdoor copyrights” that “override the competition/protection balance” of copyright law. Patent protection for authorial innovation “becomes thick when it should be thin”; e.g., it “overrides copyright’s requirement to demonstrate copying as part of infringement, its idea/expression dichotomy … and its fair use doctrine.” (Of course, figuring out whether either patent law or copyright law draw the right competition/protection balance is a more difficult question!)

    As a doctrinal matter, he contends that the authorship screen is implemented through multiple doctrines, as illustrated below. An informative authorship screen screens out informational content to a human audience, and an aesthetic authorship screen screens out aesthetic innovations (i.e., those “that allow[] a human audience to enjoy pleasurable, form-centered experiences”). And within each of these screens, there is both a coarse screen against goods that lack any functional features, and a finer screen against functional goods whose point of novelty is aesthetic.


    Finally, Collins examines how the authorship screen works (and how it should work) in his particular area of expertise: architectural innovation. (If you haven’t read Collins’s article on the history of architectural copyright, you should at least read Mark McKenna’s review at Jotwell.) He concludes that “the PTO seems to issue patents on what is plainly authorial innovation in dispositions of space on an unusually frequent basis,” but that the problem “is not poorly calibrated doctrine but rather PTO errors in the application of the doctrine.”

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  • Enzo, Yale lose appeal at CAFC

    The outcome:


    Enzo Biochem, Inc., Enzo Life Sciences, Inc., and Yale University (collectively, “Enzo”) appeal from the District of Connecticut’s entry of summary judgment in favor of Applera Corp. and Tropix, Inc. (collectively, “Applera”). See Enzo Biochem, Inc. v. Applera Corp. (District Court Decision), No. 3:04cv929 (JBA), 2016 U.S. Dist. LEXIS 20904 (D. Conn. Feb. 22, 2016). Because the district court accurately interpreted this court’s decision regarding the proper construction of the claims in U.S. Patent No. 5,449,767 (“the ’767 patent”) and correctly analyzed Enzo’s doctrine of equivalents argument, we affirm.

    Lipoic acid and biotin are mentioned:

    As an alternative to the use of radioactive labels, the ’767 patent explains that “a series of novel nucleotide derivatives that contain biotin, iminobiotin, lipoic acid, and other determinants attached covalently to the pyrimidine or purine ring have been synthesized.” Id. at col. 2 ll. 63–68. These nucleotide derivatives interact “specifically and uniquely with proteins such as avidin or antibodies.” Id. at col. 3 ll. 2–3. “If avidin is coupled to potentially demonstrable indicator molecules, including fluorescent dyes, . . . electron-dense reagents, . . . or enzymes capable of depositing insoluble reaction products, . . . the presence, location, or quantity of a biotin probe can be established.” Id. at col. 1 ll. 61–67.

    The CAFC states that D. Conn. made a proper analysis:


    We conclude that, after carefully parsing our decision, the district court correctly interpreted Enzo II. As the district court explained, Enzo II consistently refers to the “claims” at issue in that appeal, which extended beyond claim 1 to include claims 8, 67, 68, and 70. See District Court Decision, 2016 U.S. Dist. LEXIS 20904, at *14. For example, our opinion in Enzo II, after acknowledging that Enzo had asserted claims 1, 8, 67, 68, and 70, states that the district court “erred in its claim construction by finding that the claims at issue covered direct detection.” Enzo II, 780 F.3d at 1150 (emphasis added). We reiterated this statement in the conclusion, where we stated, “[t]he district court erred in construing the disputed claims of the patent-in-suit to cover both direct and indirect detection.” Id. at 1157 (emphasis added). The opinion also looks to the specification to consider whether it includes any teaching of direct detection applicable to the claims and concludes that the specification does not “support[] the inclusion of direct detection.” Id. at 1156. As noted by the district court, it would have been illogical for us to recognize the existence of five claims in the appeal and then repeatedly refer to the “claims at issue” or the “disputed claims” when referring only to claim 1 and not to claims 67, 68, and 70. See District Court Decision, 2016 U.S. Dist. LEXIS 20904, at *14.

    The district court also correctly noted that our decision in Enzo II acknowledged Applera’s alternative invalidity arguments regarding lack of written description and lack of enablement, but did not address the merits of those arguments. Id. We did not need to address Applera’s alternative arguments because our analysis found that the scope of the claims at issue, including claims 67, 68, and 70, did not extend beyond indirect detection.

    The doctrine of equivalents arguments failed because of exclusion:


    Indeed, Enzo’s attempt to reframe its infringement case under the doctrine of equivalents runs headfirst into our decision in Enzo II. In that decision, we reviewed the claims and the specification to find that the claims covered only indirect detection. Enzo II, 780 F.3d at 1154– 55. We explained that “[t]he specification provides additional support that claim 1 covers only indirect detection.” Id. at 1155. We also stated that the specification does not “support[] the inclusion of direct detection, even when extrinsic expert testimony is considered.” Id. at 1156. And the specification’s “only discussion of direct detection . . . was exclusively in the context of discussing how indirect detection is a superior method.” Id. at 1155. Based on these facts, we were “persuaded that the inventors were claiming only indirect detection.” Id. at 1156.

    Our decision in Enzo II, therefore, focused entirely on the conclusion that the asserted claims do not include direct detection in part because they excluded direct detection. Enzo’s attempt to incorporate direct detection methods now through the doctrine of equivalents fails. In Dolly, we concluded that “the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims.” 16 F.3d at 400. Applying this concept to that case, we noted that “[a] stable rigid frame assembled from the seat and back panels is not the equivalent of a separate stable rigid frame which the claim language specifically limits to structures exclusive of seat and back panels.” Id. Indeed, we found that the district court erred by “failing to give effect to this claim limitation in applying the doctrine of equivalents.” Id. The same principle applies in this case; the concept of equivalency cannot embrace direct detection because it is “specifically excluded from the scope of the claims,” id., as we found in Enzo II.

    The CAFC referenced other cases:


    See Akzo Nobel Coatings, 811 F.3d at 1342 (“Under the doctrine of equivalents, an infringement theory thus fails if it renders a claim limitation inconsequential or ineffective.”); Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1338–39 (Fed. Cir. 2011) (concluding that a theory of equivalence was “legally insufficient” because it “would vitiate [the] claim limitation by rendering it meaningless” to find that “a signal from one source” was equivalent to “signals from a plurality of sources”)

    **Separately, in passing

    Kim Kardashian phone case company sued $100M for patent infringement

    The Al Capone theory of sexual harassment can help Silicon Valley stop hiring horrible people

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  • Some Recent Articles, Posts on Damages Multipliers and Attorneys’ Fees in the E.U.

    In July 2016, the CJEU handed down its judgment in UnitedVideo Properties, Inc v Telenet NV, C-57/15, on the recovery of attorneys’ and advisors’ fees in IP cases (see my blog post here), and in January of this year it handed down its judgment in Stowarzyszenie ‘Oławska Telewizja Kablowa’ v. StowarzyszenieFilmowców Polskich, Case C-367/15, on whether E.U. member states can award double damages for copyright infringement (see my blog post here).  Here are some recent articles and blog posts:

    1.  Thibault Gisclard has published an article titled La nature des “dommages et intérêts” sanctionnant la contrefaçon:  À propos de l’arrêt de la CJEU, 25 janv. 2017, aff. C-367/15, Stowarzyszenie Olawska Telewizja Kablowa c/ Stowarzyszenie Filmowców Polskich (“The nature of “damages and interest” for infringement:  Regarding the Judgment of the CJEU, Jan. 25, Case No. C-367/15,” etc.) in the May 2017 issue of Propriété Industrielle. (pp. 23-27).  Here is the abstract (my translation):
    Directive 2004/48/CE of April 29, 2004 permits an award of lump-sum damages unconnected with just the harm effectively suffered and proven by the victim of the infringement.  The Court of Justice of the European Union indicates in its judgment of January 25, 2017 that such an award may correspond to double the royalty based on a hypothetical license, which does not consequently constitute punitive damages and interest.  The court, however, does not specify if the latter are compatible with the Directive.  In French law, if the laws of 2007 and 2014 permit an extension of the notion of damages and interest beyond injury in the tort-law sense, the award of a fictive license has more of a quasicontractual nature, and the disgorgement of the gain realized by the infringer, which is no way punitive, is just a form of restitution of the fruits of the illicit exploitation of the intellectual property.
    2.  Magdalena Kogut-Czarkwoska and Dr. Birgit Clark have published an article titled “Copyright and Punishment”:  CJEU Rules that the IP Enforcement Directive Does Not Prevent “Lump Sum” Damages in IP Cases, 39 E.I.P.R. 315 (2017).  Here is the abstract:
    The Court of Justice of the EU (CJEU) has held that art.13 of the IP Enforcement Directive 2004/48 (the Directive) does not preclude an EU Member State from enacting national legislation which offers a method of establishing damages as a “lump sum” equivalent to double the hypothetical royalty rate. The decision confirms that the Directive merely aims to introduce “minimum” standard of protection, but does not prevent the Member States from introducing a higher level of protection: Stowarzyszenie Oławska Telewizja Kablowa v Stowarzyszenie Filmowców Polskich (C-367/15).
    3.  Peter R. Slowinski has published an article titled Case Note on: “United Video Properties” , 48 IIC 373 (2017).   Mr. Slowinski argues that the CJEU has left open “a number of important practical questions,” among them how to determine what “reasonable” costs are, given that “[a]s of today, all information on legal fees in Europe is based on more or less structured surveys, which must be categorized as anecdotal.”
     
    4.  Jan-Diederick Linemans has published two posts on the Kluwer Patent Blog, one titled First Belgian Ruling on Costs in Patent Proceedings Post United Video Properties/Telnet (May 4, 2017), and Recovering Lawyers’ Fees in Belgium:  Antwerp Court Beats Mons Court to First Substantive Ruling (May 24, 2017)According to Mr. Lindemans, in two recent cases Belgian courts have awarded fees for technical advisors, on the ground that “the ‘direct and close link’ required by the CJEU had . . . been proven.”  In the case before the Antwerp court, however, the court concluded that “an individual can only invoke his rights under the directive against a Member state . . .  and not against another individual,” although “the prevailing party could have a claim . . . against the Belgian government for not having implemented article 14 of the Enforcement Directive correctly or in a timely fashion.”

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