Newegg wins TQP patent case after challenging judge over delays – Ars Technica


Ars Technica
Newegg wins TQP patent case after challenging judge over delays
Ars Technica
Two weeks after online retailer Newegg filed a petition complaining about “excessive and unreasonable” delays in getting a final judgment in its patent case, the judge in that case has handed Newegg a big win. In an order published yesterday afternoon
East Texas Court Finally Issues Newegg Order Two Years Late; Judge Upset Techdirt

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  • Patent Reform Under Attack, But Needed More Than Ever – EFF


    TechCrunch
    Patent Reform Under Attack, But Needed More Than Ever
    EFF
    Recent reports from Congress suggest that patent reform might be taken off the table for the summer. This bad news arrives at the same time as a new study showing that patent trolls are more active than ever before. Opponents of reform are trying
    Tech CEOs Call On The House To Move Its Ass On Patent ReformTechCrunch
    Opposition Imperils House’s Patent Troll BillNational Journal
    Tech CEOs press House leaders for patent voteThe Hill
    MarketWatch -NJ.com -Patently-O
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  • Busting Myths and Countering Misinformation From the Campaign Against … – EFF


    Watchdog.org
    Busting Myths and Countering Misinformation From the Campaign Against
    EFF
    We’ve seen an all-out assault on the side of the opposition to kill the House’s Innovation Act and the Senate’s PATENT Act. As a result, patent reform stands on shaky ground in Congress. A common trend has emerged in the anti-reform camp’s rhetoric, …
    Tech CEOs press House leaders for patent voteThe Hill
    Members of Congress warn against throwing patent system out of balanceWatchdog.org
    Opposition Imperils House’s Patent Troll BillNational Journal
    NJ.com -The Libertarian Republic -Patently-O
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  • Netflix Scores Victory in Rovi Patent Litigation – Variety


    Variety
    Netflix Scores Victory in Rovi Patent Litigation
    Variety
    Netflix won a key victory in its ongoing patent-infringement litigation with entertainment-tech firm Rovi, as a U.S. federal judge ruled Wednesday that the five Rovi-owned patents at issue were invalid. Judge Phyllis J. Hamilton, of the U.S. District
    Netflix nukes Rovi’s “we own TV guide” patentsArs Technica
    Rovi to appeal court order favoring Netflix in patent caseReuters
    Rovi Says Committed To Enforcing Its Intellectual Property Against NetflixNasdaq

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  • Bank in hot water over Hot Water: Coty ruling brings good news to brand owners

    This weblog has already visited Luxembourg once today, to pick up breaking news of the Huawei-ZTE ruling, and now it’s back there again: the excuse? The Court of Justice of the European Union (Fourth Chamber) gave judgment today in Case C-580/13 Coty Germany GmbH v Stadtsparkasse Magdeburg, an October 2013 reference for a preliminary ruling from the German Bundesgerichtshof.

    In short, Coty was the exclusive licensee for the Community trade mark DAVIDOFF HOT WATER for perfumery. In January 2011, Coty bought a bottle of perfume bearing the trade mark DAVIDOFF HOT WATER from an internet auction platform, paying the purchase price into the seller’s bank with the Stadtsparkasse. Finding that it had bought a fake from a seller with a false name, Coty asked the auction platform to provide it with the seller’s real name. The person in question admitted to being the account holder but said she didn’t sell the fake product and, relying on her right not to give evidence, refused to provide any further information.

    Coty contacted the Stadtsparkasse to ask it for the name and address of the account holder. No, said the Stadtsparkasse, invoking its duty under German law to maintain banking secrecy. Coty then sought and obtained an order that the Stadtsparkasse provide the information requested. On appeal, the Higher Regional Court, Naumburg, reversed the trial court’s decision, holding that the request to be provided with that information was not legally justified: even though the current account services provided by the Stadtsparkasse had been used to carry out the infringing activity, since it was a bank it was entitled to refuse to give evidence in civil proceedings, whatever Article 8 of the Intellectual Property Enforcement Directive 2004/48 had to say on the subject.

    Coty then appealed to the Bundesgerichtshof which, entertaining doubts as the interpretation to be given to Directive 2004/48, decided to stay the proceedings and ask the Court of Justice:

    ‘Must Article 8(3)(e) of Directive 2004/48 be interpreted as precluding a national provision which, in a case such as that in the main proceedings, allows a banking institution to refuse, by invoking banking secrecy, to provide information pursuant to Article 8(1)(c) of that directive concerning the name and address of an account holder?’

    Admissibility

    Some like it Hot!

    The Stadtsparkasse argued that the request for a preliminary ruling was inadmissible, since the dispute before the referring court was governed not by Directive 2004/48 but by national law alone, since the request for information at issue in the main proceedings did not relate to proceedings concerning an infringement of an intellectual property right but rather to a case of obvious infringement of rights attached to a Community trade mark [don’t worry if you didn’t understand the difference: Merpel read this about six times before she decided that there was one, and even now she’s not sure she’s got it right …]. However, the Directive is supposed to be interpreted widely and applies just as much to infringement of Community trade marks as it does to national ones and there was no basis for arguing that the reference was inadmissible.

    The actual question 

    In principle, EU law requires that, when implementing directives into national law, Member States must take care to rely on an interpretation of them which allows a fair balance to be struck between the various fundamental rights protected by the EU legal order. Here, German law allowed a banking institution to invoke banking secrecy [itself being a fundamental right] in order to refuse to provide information concerning the name and address of an account holder, while Directive 2004/48 imposed on Member States an obligation to ensure that information about unlawful activities can be obtained by means of measures of enquiry ordered by a court.

    Taken by itself, if the German banking law allowed an unlimited refusal to supply the information requested, since its wording did not contain any condition or qualification, this would frustrate the right to information recognised in Directive 2004/48 and was therefore such as to infringe the fundamental right to an effective remedy for intellectual property infringement.  However, it was for the referring court to determine whether there were, under German law, any other means or remedies which would allow the competent judicial authorities to order that the necessary information be provided. Accordingly, the Court ruled:

    Article 8(3)(e) of Directive 2004/48 … must be interpreted as precluding a national provision, such as that at issue in the main proceedings, which allows, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide … information concerning the name and address of an account holder.

    Says the IPKat, apart from the fact that it’s good news for hard-pressed brand owners who have enough trouble finding sources of fake products without also having to watch real and alleged infringers hide behind bankers’ apron-strings, the decision is also common sense since it allows national courts the freedom to achieve the right balance between respect for privacy and secrecy on one hand and the disclosure of information necessary for the pursuit of justice on the other hand.

    Cats and hot water here, here and here 

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  • Shock ruling by top European Court: enforcing a patent is an abuse of process, except where it isn’t

    The Court of Justice of the European Union delivered its judgment today in Case C-170/13 Huawei Technologies Co. Ltd v ZTE Corp., ZTE Deutschland GmbH. a reference from the Landgericht Düsseldorf on a matter of great concern to the standard-essential patent (SEP) community. At the time of posting this item, the full judgment was still not available on the Curia website [nb: it is now: you can read it in full here], so here’s the Curia media release:

    The bringing of an action for a prohibitory injunction against an alleged infringer by the proprietor of a standard-essential patent which holds a dominant position may constitute an abuse of that dominant position in certain circumstances
    In particular, where the proprietor of the patent has undertaken in advance to grant third parties a licence on fair, reasonable and non-discriminatory terms, that proprietor must, before it brings such an action for an injunction prohibiting the infringement of its patent or for the recall of products for the manufacture of which that patent has been used, present to the alleged infringer a specific offer to conclude a licence

    EU law seeks to safeguard the exercise of exclusive rights linked to an intellectual-property right, such as a patent, while at the same time maintaining free competition. As regards the relationship between those two objectives, the Court has already clarified that the exercise of such exclusive rights (such as the right to bring an action for infringement) forms part of the rights of the proprietor, with the result that the exercise of that right, even if it is the act of an undertaking holding a dominant position, cannot in itself constitute an abuse of a dominant position. It is only in exceptional circumstances that the exercise of the exclusive right may give rise to such an abuse [citing Case C-418/01 IMS Health].

    However, the situation at issue in the present case can be distinguished from that case-law. First, it concerns a ‘patent essential to a standard’ (a ‘standard-essential patent’ or ‘SEP’), that is to say, a patent the use of which is indispensable to all competitors who envisage manufacturing products that comply with the standard to which it is linked (the standard being established by a standardisation body). Secondly, the patent obtained SEP status only because its proprietor gave an irrevocable undertaking to the standardisation body that it is prepared to grant licences to third parties on fair, reasonable and non-discriminatory terms (FRAND terms). Huawei Technologies, which is a multinational company active in the telecommunications sector, is the proprietor of a European patent, which Huawei notified to the European Telecommunications Standards Institute (ETSI) as a patent essential to the ‘Long Term Evolution’ standard. At the time of that notification, Huawei undertook to grant licences to third parties on FRAND terms.

    Huawei brought an action for infringement before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) against two companies belonging to the multinational group ZTE. That group markets products in Germany that operate on the basis of the ‘Long Term Evolution’ standard [this standard is composed of more than 4,700 essential patents: both Huawei and ZTE are holders of numerous patents essential to that standard, and have undertaken to grant licences to third parties on FRAND terms] and thus use Huawei’s patent without, however, paying Huawei a royalty. By its action, Huawei is seeking an injunction prohibiting that infringement, the recall of products, the rendering of accounts and an award of damages. Previously, Huawei and ZTE had engaged in discussions concerning the infringement and the possibility of concluding a licence on FRAND terms, without, however, reaching an agreement.

    The Landgericht has requested the Court of Justice to clarify the circumstances in which an undertaking in a dominant position such as Huawei [according to the referring court, the fact that Huawei occupies a dominant position is not in dispute, so the questions referred only concerned whether any abuse has occurred] abuses that position by bringing an action for infringement. In today’s judgment, the Court distinguishes actions seeking a prohibitory injunction or the recall of products from those seeking the rendering of accounts and an award of damages.

    With regard to the first type of actions, the Court holds that the proprietor of a patent essential to a standard established by a standardisation body, which has given an irrevocable undertaking to that body to grant a licence to third parties on FRAND terms, does not abuse its dominant position by bringing an action for infringement seeking an injunction prohibiting the infringement of its patent or seeking the recall of products for the manufacture of which that patent has been used, as long as:

    ‒ prior to bringing that action, the proprietor has, first, alerted the alleged infringer of the infringement complained about by designating the patent in question and specifying the way in which it has been infringed, and, secondly, presented to that infringer, after the alleged infringer has expressed its willingness to conclude a licensing agreement on FRAND terms, a specific, written offer for a licence on such terms, specifying, in particular, the royalty and the way in which it is to be calculated, and

    ‒ where the alleged infringer continues to use the patent in question, the alleged infringer has not diligently responded to that offer, in accordance with recognised commercial practices in the field and in good faith, this being a matter which must be established on the basis of objective factors and which implies, in particular, that there are no delaying tactics.

    The Court has held, inter alia, that the alleged infringer which has not accepted the offer made by the proprietor of the SEP may invoke the abusive nature of an action for a prohibitory injunction or for the recall of products only if it has submitted to the proprietor of the SEP, promptly and in writing, a specific counter-offer that corresponds to FRAND terms.

    A dominant position …

    With regard to the second type of actions, the Court holds that the prohibition of abuse of a dominant position does not, in circumstances such as those in the main proceedings, prevent an undertaking in a dominant position and holding a patent essential to a standard established by a standardisation body, which has given an undertaking to that body to grant licences for that patent on FRAND terms, from bringing an action for infringement against the alleged infringer of its patent with a view to obtaining the rendering of accounts in relation to past acts of use of that patent or an award of damages in respect of those acts of use. Such actions do not have a direct impact on standard-compliant products manufactured by competitors appearing or remaining on the market.

    Is this Kat alone in feeling that, so far as is indicated in this media release, we haven’t learned anything we didn’t already know: the law is what we assumed it was and the enforcement of a patent is either an abuse of a dominant position or it isn’t, depending on what the trial court finds on the facts. Or has he seriously missed something?

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