"The Committee reaffirmed that the non-exhaustive list of issues identified at its June 2008 meeting would remain open for further elaboration and discussion at its next session scheduled for November 9 to 13, 2009. ...The Chair’s summary of the meeting is available here
SCP members agreed that the four preliminary studies on standards and patents, exclusions from patentable subject matter and exceptions and limitations to the rights, the client-attorney privilege and dissemination of patent information which had been the subject of the week’s discussions, would remain open for further comments at its next meeting. In summarizing the work of the Committee, the Chair said that the SCP agreed to ask the Secretariat to:
(a) commission external experts to prepare a study on exclusions, exceptions and limitations focused on, but not limited to, issues suggested by members, such as public health, education, research and experimentation and patentability of life forms, including from a public policy, socio-economic developmental perspective bearing in mind the level of economic development;
(c) expand the preliminary study on the client-attorney privilege to reflect the current state of play taking into account the perspective of various stakeholders and using external experts, if necessary; and
It was also agreed that the Secretariat would present the studies to Member States at the beginning of the SCP’s November 2009 session.
Tuesday, 31 March 2009
Monday, 30 March 2009
It is significant that proposals for reform of patent litigation tend to assume that the appointment of partisan experts is a good thing. Certainly the fact that a party has a 'tame' expert who views its position sympathetically is a comfort -- but where the other party has the same comfort the gain is arguably illusory. If each side were to nominate an expert, and the two experts were between them to nominate a single, neutral expert, much time, effort, cost and indeed potential damage to the credibility of the experts might be saved. It is time for those who advocate the maintenance of the present system of witnesses taking sides to offer some firm justification, in theory or in practice, if they wish to convince others that there is a case for retaining what looks to some like a wasteful duplication of efforts and resources.
Friday, 27 March 2009
Thursday, 26 March 2009
This exchange of views is unlikely to be the end of the discussion as to what form a revised patent litigation forum might take. Further developments are keenly awaited.
PatLit would like to thank Patent World for kindly agreeing to make these articles available to its readers.
"The Supreme Court does not usually take into account new facts once the appellate court has ruled on a matter. However, in its 6 March 2009 decision in Boston Scientific v Medinol, the Supreme Court allowed new facts to be introduced and took the opportunity to do away with a doctrine on the partial validity of patents which has come under substantial criticism for not conforming to the European Patent Convention.
Scimed Life Systems (now Boston Scientific Scimed) sued Medinol on the basis of its European patent EP 0 591 199 (also referred to as the "Keith patent") for a balloon catheter with distal guidewire lumen. In the first instance, the Keith patent was invalidated for obviousness. On appeal, Boston Scientific changed its position and argued that a particular combination of three elements constituted a novel and inventive step, while in the first instance it had argued that the inventiveness of the Keith patent lay in the inclusion of a semi-rigid centre portion in the catheter
(which has a flexible tube-in-tube distal part and a rigid metal proximal part). In support of its position, Boston Scientific proposed including limitations in the main claim.
The court of appeal upheld the lower court's ruling (i.e. that the patent was invalid) but took a different approach. The appellate court held that the particular combination of three features which Boston Scientific regarded as inventive did not have a single inventive concept ("unity") and thus constituted separate inventions. The court of appeal went on to state - although its reasoning on this point is rather unclear - that part of the alleged invention would form part of a divisional application and therefore the patentee was effectively trying to reintroduce subject matter it had abandoned in the context of the patent application at issue.
The Supreme Court rightly overturned this portion of the decision as lack of unity is not a ground for invalidating a patent. The Court held that, without further explanation by the court of appeal, it was (a) unclear how an alleged lack of unity relates to the claimed invalidity and (b) it was unclear why a skilled person would not independently conclude that the Keith patent should have been granted in the amended form proposed in the proceedings.
With respect to the second point, the Supreme Court referred to its Spiro/Flamco decision on partial validity, in which it held that an amended claim is only allowed if a skilled person could independently conclude that the patent could only have been awarded in a certain manner, which may be directly derived from the patent description. This test was generally perceived to be stricter than the criteria in Article 123(2) and (3) EPC, i.e. extension of the subject matter or post-grant
broadening of the scope of protection.
After the court of appeal rendered its decision, Boston Scientific used the EPO's central limitation procedure provided for in the revised EPC and changed the Keith patents claims. The Supreme Court held that this fact should be taken into account and that the case should thus be remanded to the appellate court for further review. The Supreme Court also held that for this further review, its former doctrine on partial validity no longer applies and only the EPC criteria should be applied.
The risk of invalidation of an entire patent in the Netherlands is now somewhat reduced (especially if the patentee prepares a limitation proposal, where appropriate), and the Netherlands is now even more aligned with the other key patent-litigation jurisdictions in Europe".
Tuesday, 24 March 2009
* The recommendation from the Commission that it be authorised to open negotiations for the adoption of an Agreement creating a Unified Patent Litigation System andThere is no public online access to the relevant documentation, but you can click here and follow the links to fill in your online application.
* The Draft Agreement on the European and Community Patents Court: examination of a revised text.
[Hat-tip to blogger Axel Horns, who tweeted this information earlier this morning]
Monday, 23 March 2009
Actavis sought to revoke Novartis's patent on the grounds of insufficiency and lack of inventive step, while Novartis counterclaimed for infringement. In January 2009 the court upheld Actavis's attack on four claims for obviousness succeeded, but that the challenge based on insufficiency failed. The court also let Novartis amend its patent. In a subsequent application for costs Novartis accepted that Actavis was entitled to its general costs of the action, i.e. those costs which could not be allocated to a particular issue. There were however some issues on which the parties could not agree:
* Actavis submitted that a costs order should be made in its favour on the basis that it had won the action by establishing that the patent was invalid. Novartis disagreed: such an order would not reflect fairly the time and costs incurred in relation to issues on which it was successful; better would be an issue-based award, having regard to the fact that Actavis only succeeded on one narrow point concerning technical obviousness, and Novartis should recover 45 per cent of its overall costs rather than a strictly issue-based order (the obviousness arguments having been divided into 'Notional Task' obviousness and technical obviousness),
* Actavis asked for its costs in Euros, since its solicitors had conducted the case with the intention of submitting bills stated in Euros. If not, the sterling costs should reflect the exchange rate applicable at that point in time, so that Actavis would received an amount in sterling equivalent to the amount in Euros which it had actually paid. Novartis argued that the bills paid in Euros should be converted into a sterling equivalent at the time of payment, it being unfair for it to be penalised by reason of sterling's current weakness against the Euro.
Warren J ruled as follows:
(i) In considering whether to make an issue-based costs order, the court had to identify the overall winner of the proceedings. The overall winner was almost always likely to be entitled to payment of all his costs which were not or could not be allocated to a particular issue ("the general costs of the action").
(ii) as to costs which could properly be allocated to issues upon which the party who was successful had nevertheless lost, there were two questions. Should that party recover his costs of that issue, and should he pay the otherwise unsuccessful party's costs incurred in respect of that issue? Here, subject to the point relating to the conversion of Euros into sterling, Actavis's overall costs would be disallowed by 50 per cent to reflect the results in relation to the notional task issue and two of the pleaded prior art publications taken together. Another 5 per cent would be disallowed in respect of infringement and Kabadi (a publication that Actavis originally relied on as a piece of prior art, but abandoned a few days before exchange of expert evidence), the disallowance being pitched at a level to reflect, on a pure-based approach, the decision that Actavis should not only be deprived of its own costs, but should also meet those of Novartis. Accordingly, Novartis must pay 45 per cent of Actavis's costs of the action, to be assessed on the standard basis if not agreed.
(iii) Conventionally, costs judges only made sterling awards and converted foreign currency disbursements or fees into sterling at the rate prevailing at the time of payment, where payment had been made before the assessment had been completed; any outstanding amounts would be converted at the rate prevailing when the assessment was carried out. Here, the practice of the costs judges was correct. This was proceeding in an English court, the subject matter being a UK patent and the infringement relating to activities in the UK. Both sides conducted business in the UK. This being so, the case did not concern any foreign element and Actavis was not entitled to have those items of recoverable costs payable by it in Euros or the sterling equivalent of the total Euro amount converted into sterling at the date of the assessment or enforcement.
(iv) It was a matter for a costs judge in conduct of the assessment to determine how Euro bills were to be dealt with.
Friday, 20 March 2009
Robert Gomulkiewicz of the University of Washington School of Law then shifted to free and open source software (FOSS) and the movements' fear of patents. After a quick overview of FOSS and the open source movement, Bob proposed 10 reasons for FOSS not to fear patents, which opened the floor to some heated discussion.
Christopher Wadlow, a professor at the University of East Anglia, ventured into the underworld of patentability by measuring against the yardstick of Chakrabarty and US jurisprudence the position of the 'undead', especially in the context of the patentability of 'living' organisms under American law. Taking a structured approach, he sought to determine whether such terrifying creatures as Vampires, Zombies, Werewolves and Golems were patentable.
Returning to the more earthly fear of the costs of patent litigation, Michael Burdon made a strong plea for the Alternative Simplified System (Burdon's ASS, a.k.a. the Burdon Plan) for patent litigation in England. ASS is a 10-point plan comprising the capping of recoverable costs at £100k, standard pleadings, limiting the number of invalidity attacks to three, PPD, no disclosure or experiments, fixing the trial period at the close of pleadings within 4-6 months, limited statements of case and evidence, a 4 day trial period and trial, plus cost recovery where the costs are allocated in judgment and the winner recovers 100% of the allocation. There's a lot of interest in this streamlined and rigorous procedure but, in order to make it a reality, industrial and professional bodies need to give it a vigorous push.
Monday, 16 March 2009
"In March 2009, proposed legislation was introduced (as the Patent Reform Act of 2009) in the United States Senate and House of Representatives that, among other things, intends to enforce by statute the manner in which damages are to be calculated in patent infringement lawsuits. In this brief comment on the proposed legislation, [the authors] argue that this proposed legislation would not improve the standard for calculating damages. The authors previously published a paper in November 2007 that provides a discussion on the patent reform legislation then being considered by Congress. The issues and concerns they raised in 2007 are still pertinent and are summarized here".You can read the paper here.
Friday, 13 March 2009
Floyd J held the patent valid and infringed. He also held the sixth defendant -- a former employee, director and shareholder of MMI who became an independent consultant to other infringing companies -- to be jointly liable for their infringements. On this Floyd J said (at  and ):
"I was not addressed on the principles applicable to holding an individual jointly liable with a company for acts of the company. For present purposes I take the principle to be that an individual will be so liable if, sharing a common design with the company, he intends and procures that the acts complained of by way of infringement take place.While instances of a company director of an infringing defendant being held jointly liable are not uncommon, a finding that an independent consultant is jointly liable for patent infringement is a far rarer occurrence. PatLit wonders whether non-UK readers of this blog would like to share the experiences relating to their own jurisdictions.
I think it is clear on the facts of this case that Mr Timson shared a common design with the CellXion companies to market the DX918, and intended and procured the sales which are the subject of the allegation of infringement. He actively participated in the sales effort. Above all others he knew exactly how the device operated, and that, at least some of the time, it would operate so that real power caused the device to re-select the DX918. He is jointly liable with the CellXion companies".
Thursday, 12 March 2009
2 Over the past day or so PatLit has started receiving rather nice emails from readers through the weblog's Google Group. I circulated the first two, not realising that they would encourage more. Believing that it would not be wise to clog readers' emails with even the most welcome of valedictory messages concerning the blog, I have taken an executive decision not to circulate any more of them. Nonetheless on behalf of the PatLit team I'd just like to say "thanks" to those of you have taken the trouble to put in writing your expressions of encouragement and support -- they make all the effort worthwhile.
Wednesday, 11 March 2009
PatLit appreciates the sentiments expressed here and hopes that they will govern the approach taken by parties to protracted parallel litigation in future.
"1. In this matter I called the parties before me about what normally would be an entirely mundane matter, namely the date of hearing of an appeal. It does in fact raise important questions of procedure. It illustrates the need for parties to co-operate amongst themselves and to invoke the cooperation of the Opposition Division and/or the Boards of Appeal of the European Patent Office (EPO) so as to promote efficient and rational allocation of work between the EPO and national courts.
2. The dispute between the parties began with an opposition filed in the EPO on 16 May 2006. On 5 July 2006 the opponents ... also started proceedings in this country for revocation of the UK patent. Proceedings in both the Opposition Division and in the High Court here proceeded with reasonable expedition given the above average complexity of the matters involved. The Opposition Division held its oral proceedings on 3 June 2008. As is its practice, it indicated at the end of the hearing what its conclusion was. It was that the patent would be revoked. On 31 July Kitchin J handed down judgment, also revoking the patent.
3. ... after the long vacation, permission to appeal was granted. The case entered the normal procedure for listing of appeals. The appeal date was fixed to be heard in late July. Neither side had told this court what was going on in the EPO. Neither side asked the EPO to speed up the proceedings. The Opposition Division took nearly six months to give its written decision which it did on 3 December 2008. I have little doubt it would have done so earlier if it had been told the matters were of commercial importance and reasons were needed earlier so as to bring forward the date for an appeal (time for which only runs from the giving of reasons). I have the general impression that those who were conducting the opposition were doing it in their own time.
4. When I found out about the parallel proceedings and the fact that there was an appeal being launched in the EPO I called Counsel for the parties before me ... to see whether it was possible for the appeal to be heard by the Board of Appeal of the EPO at an early date: if the decision were that the patent is to be revoked the whole appeal in this national court would be a waste of time.
5. The EPO ... extended the hand of cooperation gladly and warmly. It offered a date in June if the parties were willing to co-operate in speeding things up. But the patentee says it is unable to cooperate to make that practical. I have a note from the patentee’s patent agent ... who explains that he is too busy to be able to get the appeal documents in any earlier than shortly before 13 April at best, leaving the opponents only a few weeks to reply. There is unfortunately no procedure in the EPO for truncating time.
6. [The patentee's agent] has had, since he knew the result on 3 June 2008, nearly nine months to get his documents and material in - in a case which is said to be of immense commercial importance to his clients and to the other side. He has had, or the mans of having, full access to all the material before the High Court here. Yet he says he cannot be ready until the last minute and cannot speed things up.
7. I do not regard that as an acceptable way to conduct serious litigation. There is nothing within my power to speed [him] up ... There is nothing the EPO can do to speed [him] up ... All that can be done has been done, and all that can be done in the future is to ensure that no time indulgences are granted to him thereafter without very weighty cause.
8. Those who conduct serious litigation of important commercial matters, whether in the patent office or in the courts, must do so with all due expedition. For if they fail to do so, the commercial uncertainty produced itself is quite, quite unfair, unjust and contrary to the public interest. Although [the patentee's agent] says he cannot possibly manage to do any better, no alternative suggestion by using different counsel or patent agents has been offered by the patentees, even though they have in London some of the most experienced and able lawyers in Europe. I am afraid that I have the distinct impression that they are content with the commercial uncertainty. ... If early determination really, really mattered to the patentees, an earlier date would have proved possible.
9. The question then comes as to what I am to do. Should I keep the July date or should I move it? The EPO Board of Appeal which will be hearing this case sent me an e-mail. I asked them what would happen if the June date, which they are currently keeping open, was lost. I asked them for their best estimate for what they could do. This is their reply:
“…the short answer is early September. Let me explain that.
As always it depends on the parties. If they insist on the four months they are each entitled to for their written case, that takes us to the end of August and if we then prioritise the case, we could almost certainly ensure a hearing by the end of October and a decision by the end of November.
Alternatively, for each month of written case time each party agrees to forego, we can bring the hearing forward by two months but then it has to fit in with other hearings already fixed which for the three of us means, apart from the June dates we are holding open, early September would be the earliest.”
10. I would add the Boards’s postscript:
“On the first approach, we work faster but the parties don’t. On the second approach, we all work faster. Fast work, like hard work, never hurt anyone.”
I would agree with that.
11. It follows from that, being practical, one cannot be certain that there will be a decision of the Board before the end of the November. That reduces itself to the question before me: should I move the case from July to December? ... the opponents/claimants frankly accepted that that, which would mean a delay in the result in this court ... until probably January, would not be too significant ...
12. Given that both Kitchin J and the Opposition Division had held the patent invalid, there must be a real prospect that by moving the case to December it would never be heard here. It is currently set down in this court for five days, which is a lot of Court of Appeal working time which might be saved. In my judgment, given all those circumstances, the appropriate thing is for this case to be moved from the end of July to December.
13. In future parties who are litigating before the EPO and the courts here should inform both the EPO and our court of the position as early as possible – and should where possible ask the appropriate tribunal (either the EPO or the English court) to speed things up so as to avoid duplication of proceedings.
14. The parties are to liaise with the listing office as soon as possible for the date to be fixed, and I would suggest that they also cooperate with the EPO Board of Appeal about the fixing of a date as soon as possible.
Order: Directions given".
Sunday, 8 March 2009
PatLit is running a competition, for which the prize is complimentary registration for this seminar (regular fee £190 + VAT). The competition, for which the closing date is midnight on Sunday 5 April 2009, requires entrants to describe, in 100 words or fewer, "My nightmare patent litigation scenario". Please email your entries to PatLit here, with the subject line "Nightmare Scenario". The best entries will be published (please indicate if you require anonymity if your entry is published!) If you don't want to enter the competition, or you aren't lucky enough to be the winner, you can still book to attend it by clicking here.
Friday, 6 March 2009
"When patent legislation was first introduced in 2005, advocates argued that the patent system was out of balance. They said too many bad patents were being issued and the remedies for patent infringement were too tough, giving patent speculators too much bargaining power.Judicial Patent Reform at Work, an 11-page report, can be read here. A four-page summary can be read here. PatLit would like to receive comments from any interested readers as to whether the IA's claims are correct.
Since then, a series of US Supreme Court and Federal Circuit decisions have shifted the balance of power away from patent holders and towards patent users, tightening standards and narrowing patent rights and remedies.
• These judicial decisions have addressed virtually all of the substantive issues that originally prompted calls for patent legislation, including remedies, venue and patentability standards.
• These judicial decisions bring about the most comprehensive package of patent reforms in decades, eliminating the need for sweeping legislative changes.
The Innovation Alliance urges Congress and the Administration to consider carefully the impact of these decisions before rushing to enact patent legislation that may further weaken our knowledge-based economy".
Tuesday, 3 March 2009
One point to note here is that the judge rejected the defendant's construction as being
"flawed because it is based on linguistic analysis rather than consideration of the technical purpose of the elements of the claim".The skilled reader, he added,
"would not disregard the patentee's use of the word phase or the statement that the hydrophilic and lipophilic phases are non-miscible, but [would read] that statement in the context of the specification and having regard to the inventor's purpose he would understand that non-miscibility was required in the microemulsion but not in the pre-concentrate".This would seem to be the correct approach: the skilled reader should not be regarded as embarking on a dry, linguistic interpretational exercise since that would not be the context in which he would ever come to read the patent in the first place.
*Patents and InnovationThere's a strong team of speakers too. For the complete programme and registration, click here.
* Trivial Patents, Laxity of Patent Offices
* IP Licensing in the context of SSOs
* IP Enforcement
* Abuse of Patents
* The Problem of Uncertainty in Patent Law
Monday, 2 March 2009
* "Halting the plague: peaks and troughs in equitable conduct defences", by the three-man team of Joseph O'Malley Jr, Bruce Wexler and Jason T. Christiansen (from US law firm Paul, Hastings, Janovsky & Walker LLP),Full details of Patent World are available here.
* "Disputed claim constructions" by Kilpatrick Stockton's Geoffrey Gavin and Matthew Warenzak", which looks at the impact of suggested reforms providing for direct interlocutory appeals of claim construction decisions where the district court so certifies.