• Federal Circuit Conflicted over Whether Alice Changed the Law
    in: 未分類  | 

    Federal Circuit Conflicted over Whether Alice Changed the Law

    The Federal Circuit’s decision in Voter Verified, Inc. v. Election Systems Software, LLC __ F.3d __ (Fed.Cir. 2018) seems to be in conflict with the Federal Circuit’s earlier decision in INVENTOR HOLDINGS, LLC v. BED BATH & BEYOND, INC., __ F.3d __ (Fed. Cir. 2017).  In Voter Verified, Inc., the court proposes that Alice “did not alter […]

  • PLI Patent Fundamentals Bootcamp
    in: Conferences & CLE's  | 

    PLI Patent Fundamentals Bootcamp

    Practising Law Institute (PLI) will be holding its Patent Fundamentals Bootcamp 2018: An Introduction to Patent Drafting, Prosecution, and Litigation on May 8-10, 2018 in Chicago, IL, on June 13-15, 2018 in New York, NY, and on July 18-20, 2018 in San …

  • GW Law Symposium on Intellectual Property
    in: Conferences & CLE's  | 

    GW Law Symposium on Intellectual Property

    The George Washington University Law School (with Pillsbury, NERA Economic Consulting, and Mayer Brown) will be holding its annual Symposium on Intellectual Property on May 8, 2018 at The George Washington University Law School, 2000 H Street NW, Washington, DC. The Symposium will offer presentations on the following topics: • Keynote Address — Hon. David Ruschke, Chief Administrative Patent Judge, U.S. Patent and Trademark Office • Hot Topics at the Patent Trial and Appeal Board • Effective Appellate Advocacy at the Federal Circuit • Valuation of Patent Portfolios • Current Issues Facing In-House Patent Lawyers Additional information about the Symposium,…

  • 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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  • Knowledge is Power; Traditional Knowledge is … ?

    This Kat has frequently visited the issue of the Nagoya Protocol of access to genetic resources, and the requirement, where the provider country so specifies, to obtain prior informed consent and reach access and benefit sharing agreements with that country in order to access the resources.  He has hitherto not specifically addressed the issue of Traditional Knowledge, because it has not been necessary: under the Nagoya Protocol TK is only relevant when it is “associated with genetic resources”, so freestanding TK does not come under the Nagoya system.  He has hesitated to write on the subject of TK, because there is a grave risk of offending cultural sensibilities, and this topic is emotive for many people.

    Merpel is looking for a definition

    The problem with discussion on the topic of TK is that the groups on behalf of whom its recognition and protection are argued are usually groups that have suffered oppression, mistreatment, and economic marginalisation in the past, and in some cases still today.  It is hard to detach those issues from the discussion of what TK is and how it is appropriate to protect it.  It is therefore difficult to have an objective discussion.

    The problem is with lack of discussion is that proponents of protection of TK are advancing moves towards an international treaty to protect TK with insufficient challenge on the basic issues of what it is, and what kind of protection is appropriate.  Those who are opposed to such moves are often silent, or engage only in a general way (see the second comment).

    The result of this is that there is a very unbalanced dialogue.  It seems to this Kat that there are huge problems that do not seem to be adequately addressed.  Following on from two other recent contributions on this blog (here and here) about TK, these are this Kat’s current concerns.

    1)     There is no definition of TK
    If you want to protect something, it is indispensable to define what it is.  WIPO records “There is as yet no accepted definition of traditional knowledge (TK) at the international level.”  Astonishingly, the Nagoya Protocol, which creates legally binding obligations internationally in countries which have ratified the treaty, uses the term extensively with no definition of what it means.  This Kat suspects that this is not merely a transitory difficulty, but a symptom that there is something very amiss about the idea that TK is a genuine concept that merits special treatment.  It seems inherently unlikely that the characteristics claimed for it, for example “knowledge that has ancient roots and is often oral” (as stated here), or that it is “sacred or secret”, are likely to be shared in the hugely varying tribes and communities that apparently hold traditional knowledge.  It appears that the only proposed mechanism for arbitrating whether something is TK is that “it is if we say it is”, which is circular and non-justiciable.

    2)     Wider justification for special treatment is lacking
    Legal systems are about creating balances between the competing desires and interests of parties.  In IP law, for example, this is achieved by varying the period of protection (20 years for patents, life plus 70 years for literary copyright), whether registration is needed (yes for patents, no for copyright), what the criteria are for the right to exist (novelty and inventive step for patents, originality and recordal for literary copyright), the breadth of protection given (absolute monopoly for patents, right to prevent copying only for literary copyright), as well as the scope of the exceptions to the right.  These balances are rarely what people want or expect.  Potential clients come this Kat who are aghast that they need to spend money to protect their invention; who assume (astonishing but true) that while they are of course free to copy other people’s photographs, any picture that they take will be sacrosanct; or who suppose that they can get monopoly protection on a design that they have copied from someone else.  So this Kat takes the view that the fact that someone says that they want or need a particular type or level of protection does not justify the granting of it.  That wish has to be balanced against the wider interest.

    3)     The protections that are being sought are unprecedented
    We are told that the protections that TK requires are very extensive indeed – the right to prevent its use, whether or not it is secret or confidential, and if use is authorised, the right to control and benefit (including financially) from that use and all developments of it, apparently in perpetuity.  This seems astonishingly broad, and for such a special treatment, overwhelming need should be demonstrated, but does not seem to be there.

    4)     Whose is it anyway?

    Who holds the traditional knowledge of turmeric?

    TK is never said to be held by one person, it is by groups, by communities, or peoples.  Who then has the right of authorisation? What if (as seems very likely) more than one group “holds” the TK?  This problem of authorisation, particularly given the wide-ranging rights that are being sought, seems to illustrate that the rhetoric does not map very well onto the reality.  In relation to TK, the Indian examples of turmeric and neem are often mentioned, but their use is apparently widespread across India.  Can it be really said that any group holds it?  Is it seriously argued that it is held by India as a whole?

    This Kat is concerned that protection of TK is being offered to marginalised groups in order to atone for past, or even present, mistreatment.  But this cannot be a reason to overlook the serious flaws in the whole concept.  He wonders whether the protection that is needed is not so much legal protection (in the sense of creating new legal obligations on the rest of the world), but rather recognition and assistance.

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  • Federal Circuit reverses award of attorney fees under a patent licensing agreement – Lexology (registration)

    Federal Circuit reverses award of attorney fees under a patent licensing agreement
    Lexology (registration)
    Attorney Fees: The district court awarded attorney fees to Orbis on the basis of a patent licensing agreement (“PLA”) between plaintiff and a third party. Since Orbis was neither a party to the PLA nor an intended third-party beneficiary, the Federal

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