Lunch with the FT: Thomas Piketty
A picnic in the sun on the lawn of the Paris School of Economics would have been better, but it’s too late. We are at Les Jardins de Paul Ha, a bakery turned deli in the 14th arrondissement, and Thomas Piketty is already biting into a hard-boiled egg.
InsideCounselEli Lilly wins European patent case
The court sided with Eli Lilly against a challenger, Actavis, which had planned to sell alternative salt forms of Alimta when the drug’s basic patent expires at the end of this year. The court ruled that Actavis could not sell the generics known as …
Tech TimesCourt Sides With Eli Lilly In Alimta Drug Patent Suit
According to the appeals court in London, Actavis’ plan of marketing certain salt forms as alternatives to Alimta once the basic patent for the drug expires at the end of the year will indirectly infringe another patent from Lilly. This other patent is …
Lilly gets favourable UK court ruling in Alimta vitamin regimen patent lawsuitpharmabiz.com
British court ruling backs patent protecting Lilly’s Alimtawlfi.com
Greenpeace and the patent system
share the same objective — world change
A week and a half ago, the IPKat’s Tuesday Tiddlywinks feature contained a reader’s request to know what actually has happened to the controversial human embryonic stem-cell patent that was the subject of a referral to the Court of Justice of the European Union (CJEU) in Case C-34/10 Brüstle v Greenpeace. We have subsequently received the following helpful clarification from Kilburn & Strode partner Nick Bassil (Katpat!). Writes Nick:
The CJEU proceedings in Case C-34/10 concerned the German national patent. This is quite separate from the proceedings at the EPO on the corresponding EP patent. The EP patent was revoked in opposition proceedings, but this was appealed. The Technical Board of Appeal has issued its decision T 1808/13. A copy can be downloaded from the file history here or viewed here. The Board has remitted the patent to the Opposition Division for further examination on the basis of the Sixth Auxiliary Request filed on 21 January 2015. The language of proceedings at the EPO was German, so all the papers on the EP patent are in German too.
Other nations blow their
own trumpets about their IP
Can Scotland go it alone? This question has been frequently debated in recent times and, since the campaigners who lost the referendum on Scottish independence predictably refused to accept “no” for an answer, it will doubtless continue to be posed until such time as speculation gives way to empirical data. Meanwhile, a recent press release from patent and trade mark practitioners Marks & Clerk (whose Clerk — Sir Dugald Clerk, inventor of the first successful two-stroke engine — was himself Scottish) gives some facts and figures concerning IP generated in Scotland last year. A total of 851 applications were filed from Scotland and 103 patents granted in 2014, down from 902 and 142 in 2013, although the overall figures for the UK showed an increase in applications – up to 15,187 from 14,946, with the number of granted patents slipping to 2,315 from 2,437. Better news came from the trade mark side of things, with filings rising from 2,191 to 2,219 and registrations up to 1,900 from 1,892 [this Kat suspects increased activity in the Scotch whisky sector, where the number of sub-brands appears to be rising almost as fast as the prices in the airport durt-free shops].
In a few short years, the Global Forum on Intellectual Property, under the auspices of the IP Academy of Singapore, has become a leading IP event, attracting a global audience. This year’s Forum, under the theme “Simple Past, Present Continuous … Future Perfect”, takes place on 25 and 26 August at the Marina Bay Sands Convention Centre, Singapore. The Forum brings together senior policy makers, officials from international IP organisations, members of the judiciary internationally, academics, business leaders and IP practitioners from around the world. Forum participants will share insights and strategies through a series of highly focused discussions on the latest trends and issues in the ever-evolving global IP and economic landscapes, both in plenary sessions and break-out tracks. For more details about the Forum and to register, just click here. Early bird registration closes on Tuesday 30 June. Register today and you may be able to enjoy up to 50% off registration fees.
The Minister (left) with Isabel Davies
The Baroness speaks. On Monday this Kat reported that the Law Society for England and Wales ate its first ever Intellectual Property Law Committee (IPLC) Dinner, at which IP Minister Baroness Neville-Rolfe was the special guest. Thanks to Katfriend Isabel Davies we have procured the Baroness’s very own speech notes, which we are pleased to offer you for your reflection, cogitation and delectation (just click here). The speech makes mention of many positive aspects of the British government’s commitments both at home and abroad to improve the legal environment for IP owners, and warns of the dangers of counterfeit vodka made from automotive screen-wash. In case you were wondering, there is no mention of the European Patent Office …
Around the weblogs. PatLit features a guest post from Richard Kempner, Brian Whitehead and Stuart Jackson on the brace of recent Court of Appeals patent decisions (ConvaTec and Actavis v Lilly) which are currently preoccupying those good souls who spend their lives seeking to extract meaning from patent claims and descriptions. This Kat has also posted an item there on British Gas v VanClare, an instructive extempore decision of Arnold J on whether and when bifurcation is possible in England and Wales. Over on Class 46, Tiina Komppa reports on the registrability of “SUOMEN PAKASTETUIN JÄÄTELÖ” as a trade mark for ice cream: apart from some subtle word-play, there is a discussion of whether consumers choose ice cream on the basis of how frozen it is. The SPC Blog carries a fascinating post from Gian Paolo di Santo on the quetiapine patent litigation in Turin, which has seen a court taking the unusual step of rejecting the guidance of the court-appointed expert. Finally, on the 1709 Blog, Andy Johnstone relates the content of this year’s Sir Hugh Laddie Lecture, delivered by Judge Alex Kozinski.Continue Reading ...
China’s State Intellectual Property Office (SIPO) last week rejected a patent application related to the hepatitis C drug Sovaldi, which is produced by Gilead Sciences. The US company already owns a Chinese patent on the drug’s main ingredient sofosbuvir, the patent rejected here was for a ‘prodrug’, which activates the compound once it is in the patient’s body.
Sovaldi enjoys a 90% success rate in treating hepatitis C patients, of which there are 29 million in China. But the price of the drug – $84,000 for a 12-month treatment in the United States – has generated protests and patent challenges. Back in…Continue Reading ...
Pierre Yves le Borgn’ [the apostrophe is not a typo — it belongs to his name], a French Representative in the Parliamentary Assembly of the Council of Europe, has initiated a Declaration concerning recent developments in Eponia that has been signed by 82 MPs/senators, including four or the five main political group leaders. The Declaration reads as follows:
On 17 February 2015, the Hague Court of Appeal condemned the European Patent Office (EPO) [noted on this blog here], arguing that its internal dispute settlement system led to a rollback of fundamental rights enshrined in the European Convention of Human Rights and the European Social Charter. The Court considered that the EPO could not invoke its immunity when a trade union is deprived of any means to challenge violations of the personnel’s rights, for want of any legal remedy before the International Labour Organisation Administrative Tribunal or via any other internal procedure.
An international organisation cannot become a place of lesser law, sheltered by its jurisdictional immunity. Restraining the right of association, reducing the right to go on strike, preventing the personnel from being entitled to collective bargaining, depriving all organisations from any effective remedy and failing to carry out a court decision are all unacceptable developments. We call on the 38 member States of the EPO, all members of the Council of Europe, to bring this situation to an end and urge the EPO’s management to comply with the decision of the Hague Court of Appeal [which it refused to do so, here].
You can see the original Declaration document, together with the names of all 82 signatories, here. Pierre Yves has also posed a question to the Ministers’ Committee today in Strasbourg, which you can view on YouTube here.
This moggy applauds this French parliamentarian, together with another French MP, Philip Cordery, for delivering a public statement, endorsed by other MPs, Senators and Members of the European Parliament, which deplores the chaos at the EPO over the past three years [a surprise for this moggy, who until today did not realise that the Huffington Post had a French edition].
But that’s not all: Miguel Viegas, a Portuguese MEP, has asked the EU Commission the following written question:
The European Patent Office (EPO) was set up forty years ago. It currently employs about seven thousand highly qualified people, most of whom work at its offices in Germany (Munich) and the Netherlands (Ryswick). In 2014 alone, it received 274 000 patent applications from companies all over the world. Its budget of EUR 2 000 million makes it the second largest European institution after the Commission.
There have been a huge number of complaints about the EPO. Cases of staff suffering from depression (including four suicides since 2012), a climate of intimidation caused by the creation of an internal investigation unit, and restrictions on the right to strike have been reported by the trade union, SUEPO, which is now banned from EPO premises. Among other things, the union is complaining about management’s plan to lower the cost of registering patents at the price of employees’ health.
Is the Commission aware of this situation and what is being done to investigate it? Also, what are the grounds for the immunity granted to the European Patent Office, which allegedly derives from the fact that it is extraterritorial, thus making it impossible for any legal action to be taken to protect workers’ rights?
Altogether more than 100 parliamentarians from 32 countries have now expressed their anxieties and concerns regarding the persistent erosion of fundamental rights experienced by EPO staff over the past year and a half at the hands of the current regime, which presumably still enjoys the substantial support of the Administrative Council which has notional control of the organisation.Continue Reading ...
This moggy notes that there are still plenty of parliamentarians at national and local level who are not yet concerned about the continuing and unabated deterioration of the situation. If your elected representatives are in that category, do take this opportunity to educate them as to what is happening. There is no soil in Europe that is so infertile as to be barren of inventive talent and innovative enterprise, and the protection of a great deal of human creativity depends on the efficiency and well-being of the European Patent Office
This Kat blogged last year about the masterful and erudite judgment of Mr Justice Arnold in the case of Actavis v Lilly (judgment on BAILII here), concerning pemetrexed. A judgment that was Arnoldian even by Arnoldian standards was necessitated by the fact that the case required consideration of the law in four different jurisdictions. Actavis appeared to have won comprehensively – their pemetrexed dipotassium product did not infringe Lilly’s patent directed to pemetrexed disodium either under direct infringement, or under indirect infringement; the law applicable to whether Actavis was entitled to a Declaration of Non-Infringement was English law, under which Actavis prevailed; but even if French, Italian and Spanish law is the applicable law respectively, Actavis were entitled to a DNI in respect of the French, Italian and Spanish designations of the Patent. So what could possibly go wrong for Actavis? Well, quite a lot, as it turns out. In the admirably brief Court of Appeal decision just out - Actavis UK Ltd & Others v Eli Lilly & Company  EWCA Civ 555 (25 June 2015) , Lord Justice Floyd (Lord Justice Kitchin and Lord Justice Longmore concurring) disagreed with Arnold J on two main issues – one on which nothing turns in the end (although it has important wider significance), and one which has the result that this case seems set to run and run.
But let’s recap a bit. The main claim at issue is a Swiss form claim, and although this is significant for the present case, much less turns on it than in the other saga ongoing at the moment of Warner Lambert v Actavis (latest instalment here). The claim was as follows:
Use of pemetrexed disodium in the manufacture of a medicament for use in combination therapy for inhibiting tumor growth in mammals wherein said medicament is to be administered in combination with vitamin B12 or a pharmaceutical derivative thereof, said pharmaceutical derivative of vitamin B12 being hydroxocobalamin, cyano-10-chlorocobalamin, aquocobalamin perchlorate, aquo-10-chlorocobalamin perchlorate, azidocobalamin, chlorocobalamin or cobalamin.
The main issue was whether this could be infringed by a different pemetrexed salt such as pemetrexed dipotassium, or by the free acid, notwithstanding that the claim said “pemetrexed disodium”.
Issue 1 – Prosecution history as an aid to construction
In the first instance judgment, Arnold J drew significant support from the prosecution history of the patent when considering how broadly the claim could be construed. Floyd LJ has roundly rejected Arnold J’s reasoning, stating:
58.The difficulty I feel with endorsing this reasoning is as follows. Firstly it assumes that the skilled reader will always read the prosecution history. I do not see why this should be so, given the limited value which, at least before the judgment in this case, it was generally recognised to have. Secondly, and more importantly, it suggests that the story told by the prosecution history of how the claims came to be drafted as they were will assist the court in preventing abuse of the system. To my mind this will be a very rare case indeed. Unless the acceptance of a restriction in a claim is to operate as some kind of estoppel against the patentee arguing for wider claims (a proposition for which neither side contended and which Jacob J rejected, at least on the basis of domestic estoppel, in Bristol Myers), there will always remain an issue as to whether the applicant needed to accept the restriction notwithstanding that he did so. In those circumstances, the light which the prosecution history sheds on the ultimate question of construction is likely to be extremely limited.
59.I therefore do not regard it as useful to go to the prosecution history in order to discover that the patentee accepted a restriction to his claim against an objection of lack of support in the specification. It is always open to a party attacking the patent to argue that the claims as sought to be construed by the patentee lack support in the specification: see for example American Home Products v Novartis  RPC 8 at . What purpose does it serve to illustrate this point by showing that the patentee was faced with an official objection to that effect and amended his claims in the light of it? It is still open to the patentee to say that he need not have done so, and the apparent concession he made in prosecution was wrongly made. If it is not open to the patentee so to contend, then the prosecution history is indeed creating a form of estoppel.
60.In any event, patent offices are usually concerned with patentability, not scope of protection. If an applicant were to conclude every letter by saying that he did not accept that by accepting this or that limitation he was necessarily restricting the scope of protection, no inference could be drawn from his conduct in accepting it. I would be reluctant to put the patent attorneys’ profession to this unnecessary trouble.He also quoted a lovely passage from Lord Hoffmann’s speech in Kirin-Amgen:
The courts of the United Kingdom, the Netherlands and Germany certainly discourage, if they do not actually prohibit, use of the patent office file in aid of construction. There are good reasons: the meaning of the patent should not change according to whether or not the person skilled in the art has access to the file and in any case life is too short for the limited assistance which it can provide.So the interesting prospect that prosecution history might become important in UK patent litigation has been firmly quashed by the Court of Appeal. Actually, Mr Justice Arnold had himself moved away from the idea already – he distinguished his decision in the later case of Idenix Pharmaceutical, Inc v Gilead Sciences, Inc (reported by IPKat here) in which he declined to construe a claim narrowly on the basis of the prosecution history.This did not however have any effect on the outcome – Floyd LJ otherwise endorsed Arnold J’s application of the Protocol questions to likewise find that there was no direct infringement of the claim by pemetrexed dipotassium. This Kat would have wept if the outcome had been otherwise, and indeed in the meantime the decision of the Landgericht Düsseldorf finding infringement had been overturned by the Oberlandesgericht Düsseldorf (referring, ironically, to Arnold J’s decision).Issue 2 – indirect infringement and the issue of solutions
Where Actavis came unstuck was in the matter of indirect infringement. The issue is that the pemetrexed (whether free acid or any of its salts) is generally reconstituted in saline – that would be sodium chloride solution – before administration by injection. Floyd LJ considered that the resulting solution could certainly be regarded as “pemetrexed disodium”, even if the solid going in to make it was another salt or the free acid. On that basis, supply of, for example, pemetrexed dipotassium to be made up in this way, would be “supply … of the means, relating to an essential element of the invention”, and thus indirect infringement under Section 60(2) of the Patents Act.Arnold J had considered that the essential element had to be the sodium salt, and that the potassium salt could not be it. Floyd LJ deduced from the wording of the first instance decision that it had overlooked that the solution could be “pemetrexed disodium” even if the salt going into it was not, and thus had (wrongly according to Court of Appeal) assumed that the pemetrexed disodium has to be in the solid form.Continue Reading ...
So Lilly was saved by the fact that the compound was to be made up in saline solution, and this fact was critical to the finding of indirect infringement by the Court of Appeal. On little facts do big cases turn.
Outcome and next steps
As a result of the finding of indirect infringement, even if not direct infringement, Floyd LJ ruled that Actavis were not entitled to a declaration (so all the issues relating to the non-UK designations of the patent became irrelevant, although in fact Floyd LJ would have agreed with Arnold J on these). Despite a flurry of post-appeal submissions, which delayed the handing down of the decision, he declined to issue a declaration in respect of direct infringement only, or a declaration that specified that Actavis would infringe if the product was to be made up (more specifically, if Actavis knows, or it is obvious in the circumstances, that the product is suitable and intended for being reconstituted) in saline in appropriate amounts to equate to a disodium salt. He declined even more strongly to issue a declaration that specified that Actavis would infringe if and only if the product was to be made up in saline in appropriate amounts to equate to a disodium salt. Any such declaration was open to being misconstrued.
However, in the meantime, Actavis had come up with a plan to specify that their product should be made up in dextrose solution rather than saline solution. They contended as a further point in their post-appeal submissions that this would require remittal to the first instance to consider whether this proposal would be sufficient to circumvent the claim, since it was possible that, notwithstanding their directions, a user might use saline instead.
On this point, the Court of Appeal granted remittal, so the case is off back to the Patents Court. So there will be more volumes of the saga to come, it seems.
The RegisterApple wants to patent iBeacon stalking
The fruit of Apple’s 2013 acquisition of indoor mapper WiFiSlam seems to have fallen from the tree and landed at the patent office, with Cupertino filing for a find-my-friends feature. Back when the acquisition happened it was speculated that Apple …
Last week Apple had added four videos to their "Shot on iPhone 6" World Gallery archive of films and last night Apple added …Continue Reading ...
PYMNTS.comReading The Apple Patent Tea Leaves
The information ninjas at AppleInsider surfaced two new Apple patent applications — one focused on geofencing and the other describing a form of indoor request-and-answer location notifications. That follows a patent Apple was granted last week for a …
Apple seeks to patent new tracking softwareTelegraph.co.uk
Apple patent reveals iPhones could get better at tracking your friendsMashable
Apple Inc. Could Provide Advanced Location Tracking With Geofencing PatentBidness ETC
uSwitch.com (Tech) -Cult of Mac -Ubergizmo (blog)
all 31 news articles »
Freedom of panorama in Europe
(red is no-no countries)As IPKat readers will be well aware of, debate is currently being undertaken at the EU level as regards possible reforms of the legislative framework in the area of copyright.Both the Commission [here] and the Parliament [here] are involved in this process. With particular regard to the latter, a few days ago the Legal Committee of the European Parliament voted on an amended version of the draft Report prepared by MEP and Pirate Party member Julia Reda on the implementation of the InfoSoc Directive.Whilst the final vote in the plenary of the Parliament is due to take place in early July, among the amendments made to the original draft Report (and approved by the Legal Committee), there is one that concerns what is perhaps a little-known area of copyright which nonetheless is attracting a good deal of attention even outside traditional IP-focused media outlets, eg The Times, The Telegraph, and Forbes, and is at the centre of an ongoing campaign organised by Wikimedia.It is the so called freedom of panorama, which of course has its roots in a beloved piece of EU legislation, the InfoSoc Directive, more specifically its Article 5(3(h). This provision allows Member States to introduce into their own national copyright laws an exception to the rights of reproduction, communication/making available to the public and distribution to allow “use of works, such as works of architecture or sculpture, made to be located permanently in public places“.Member States like the UK took advantage of this exception under EU law [it is s62 of the Copyright, Designs and Patents Act 1988], but other Member States, eg France [check out the now famous example of pictures of the Tour Eiffel taken at day time as opposed to night time here], Belgium and this Kat’s native land (Italy), decided not to implement such exception into their own national legal systems [see this helpful freedom of panorama map here].While this is perfectly possible under the InfoSoc Directive because all exceptions and limitations in Article 5 [with the sole exclusion of the exemption for temporary copies in Article 5(1)] are optional for Member States to adopt, the relevant amendment to the Reda Report on this very point and which was approved by the Legal Committee appears a bit puzzling.
Is lack of freedom of panorama
an extra-source of frustration
on top of the impossibility for Kats
to make a duckface?The original version of the Report contained a recommendation that – similarly to a number of other exceptions and limitations in Article 5 – freedom of panorama be made mandatory (rather than merely optional) for Member States to implement into their own legal regimes.The amended version of the Report, which has received the approval of the Legal Committee, currently includes a recommendation that “the commercial use of photographs, video footage or other images of works which are permanently located in physical public places should always be subject to prior authorisation from the authors or any proxy acting for them“.Besides noting that it is usually the relevant copyright owner(s), rather than the author(s), who is actually empowered to authorise certain uses of a work and thus grant licences, what does this mean?
Possibly not just that the approach to freedom of panorama at the level of the European Parliament may now appear rather different, but also that to translate this proposal to reality, then the InfoSoc Directive should be amended first.
But is this something likely to happen? Debate around reform of this piece of EU legislation has gone on for
evera while. Despite hints from the Commission itself in the past [a review of the directive had been announced in the 2011 IPR blueprint as something due to take place in 2012 … but nothing happened in the end], this does not currently appear to be something that will feature in the policy agenda any time soon.The Digital Single Market (DSM) Strategy in fact does not contain much copyright-wise, and at the moment the only possible intervention in the realm of the InfoSoc Directive appears to be text and data mining. Even lacking EU freedom of panorama,
Stonehenge would possibly remain out-of-copyrightHowever, let’s imagine that the approach now included in the amended Reda Report was to become law at the level of all EU Member States. What would that imply?From a legal standpoint, to give effect to the recommendation approved by the Legal Committee it would be necessary to amend Article 5 of the InfoSoc Directive. The possible outcome of all this could be that freedom of panorama would become only possible for non-commercial reasons, while text and data mining – at least considering the intention expressed in the DSM Strategy – is likely to become possible for commercial and non-commercial reasons alike. Would this double-standard approach make sense?From a practical standpoint, for instance, if you went to Milan and wished to take a photograph of Maurizio Cattelan’s L.O.V.E. scultpure [Merpel bets that only a few people would miss such an opportunity], due to remain permanently located in Piazza Affari just outside the Italian Stock Exchange, then you would have to make sure to use your work – no matter whether selfie or other type of photograph – only for non-commercial purposes or only after obtaining a licence.What “non-commercial” means has proved controversial to define. If you uploaded the photograph you took of your mamma with L.O.V.E. in the background on Facebook, your use would be probably non-commercial. However, Facebook Terms of Service state that “you grant [Facebook] a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook“. Does this means that you should also make sure that Facebook does not use your photograph for commercial reasons then?Let’s now wait to see what happens in the Parliament plenary and, above all, whether the Commission tables any proposals re a reform of freedom of panorama. Merpel again would bet that nothing of this sort would happen, which would be good news for selfie & other types of photographs aficionados. But of course you never know …
Federal Circuit Review – June 26, 2015
Microsoft challenged the validity of a patent owned by Proxyconn in an Inter Partes Review (IPR). The Patent Trial & Appeal Board held that all claims of U.S. Patent No. 6,757,717 were unpatentable, except claim 24. The ‘717 Patent claimed systems and …
Federal Circuit overturns Patent Trial and Appeal Board decision on claim …Lexology (registration)
Federal Circuit Court Of Appeals Reverses For First Time PTAB IPR Claim …The National Law Review
Federal Circuit Reverses Unreasonable Ptab Claim Construction, Upholds Idle …Mondaq News Alerts (registration)
JD Supra (press release)
all 25 news articles »
Global dossier now extended to include USPTO dataEuropean Patent Office… June with European and Chinese dossier content the service was extended to Espacenet in October 2014. Data from Japan and Korea was added in April this year. The information is …Continue Reading ...
Appeal Number: 15-1112Continue Reading ...
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