The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Wednesday, 21 February 2018

Never Too Late: if you missed the IPKat last week!

If you didn't have time last week read the IPKat, not to worry: the 183rd edition of Never Too Late is out!!


In a two-part report, the AmeriKat exfoliates the decision in L'Oreal v RN Ventures [2018] EWHC 173, in which Mr Justice Carr bristles with warnings on Actavis v Lilly claim interpretation, equivalents and prosecution history (Part I and Part II)

Can Wenzhou and cigarette lighters tell us something about why there are IP rights? Kat friend Dr Aloys Hüttermann uses the example of the system created by the Wenzhou cigarette lighters association to explain the essence of patent - and IP - protection.

Following the trend: IPKat and IPCat
Trade marks

Surveying the scene - passing off & surveys ... & the colour purple. GuestKat Rosie talks about the ins and outs and the ups and downs of the survey conducted about the distinctiveness of the Seretide combination asthma inhalers.

Guccy and Deisel - you wouldn’t think so but they are all legit as Copying the counterfeits is apparently a thing. GuestKat Rosie behind the typewriter.

2017 Canadian trademark cases: progressive and regressive through the pen of Kat friend , and inductee into the IP Hall of Fame, Dan Bereskin.


Kat Eleonora reports on two recent US decisions on the interplay between linking and copyright protection in Linking under US copyright law: green light to its inclusion in the scope of public display right comes from New York.

From erasing text to erasing problems, the hit-dispute of the Italian Summer 2017 came to an end. In Isgrò and Waters, problem erased, InternKat Cecilia makes a quick recap of the issue.

MarioKat ready for the gaming convention
Data Protection

Guest Kat Nedim tells us that the need to access personal data outweighs personal integrity in Sweden as Stockholm Administrative Court orders ISP to provide customers’ details to Swedish police

(No) privacy by default? German court finds Facebook in breach of data protection law as, when creating a profile, certain settings are activated by default and are in breach of German Data Protection Law. GuestKat Mirko reports.


Kat friends Daniel Lim, Alex Woolgar and Shohta Ueno attended the conference More than Just a Game and kindly reported on it for us. In the first instalment of the report More than Just a Game (Report 1): eSports they talk about the eSports industry and its IP implications.

In Blockchain my IP GuestKat Frantzeska explains what blockchain means and what blockchains can do for IP, especially for patents and copyright-protected work.

TechieKat Verónica has compiled a transatlantic compilation on Strategies for Combating Counterfeiting and Piracy, with The USA Perspective and The EU Perspective.


The AmeriKat reminded us of the AIPPI UK Upcoming Event: Professor Bently to debate how far the "zone of exclusivity" of registered IP rights goes. The event will be held on 27 February: don’t miss out on it!


Never Too Late 182 [week ending 11 February]  BREAKING: in his new Opinion in Louboutin AG Szpunar (confirms and) advises CJEU to rule that a trade mark combining colour and shape may be refused or declared invalid |  The new AG Opinion in Louboutin: is it really bad news for the famous red sole? | Yet another horse – The Polo/Lauren Company L.P. v Royal County of Berkshire Polo Club Ltd| When passing off is enough to successfully oppose a trade mark |  BREAKING: Sky's the limit for CJEU references in Sky v SkyKick trade mark battle |  Influencers and undisclosed sponsored activities: where do we stand? |  Brand Finance 500 … What’s the value of music IP? |  The Céline affair: what moral rights can and can’t do…even in France |  Can Nativity scene characters attract copyright protection under Italian law? | Blackcurrant, public interest and the first ever compulsory licensing application at the Community Plant Variety Office? |  Costs of intermediary injunctions: Sir Richard Arnold's review of a recent publication | Alternative ways for financing and incentivizing research: a Nobel laureate and his colleagues state their case |  Event Report: IP inclusive - Inappropriate Behaviour

Never Too Late 181 [week ending 4 February] Book review: ‘Copyright and Information Privacy: Conflicting Rights in Balance’ | A legislative initiative that merits attention: Mandatory mediation in Greece in trademark, patent and industrial designs infringement disputes | Austria refers Facebook ‘Hate-Speech’ case to the CJEU | Protection of traditional knowledge and cultural expressions: the case of 'Maasai IP' | A spectrum of specificity - Article 3(a) of SPC Regulation | Can ‘public morals’ prevent the use of religious symbols and motifs in advertising? No, says the European Court of Human Rights | BMG v Cox - when does an ISP lose its safe harbour protection? | Embrace my beloved frog, as a guardian.

Never Too Late 180 [week ending 28 January] EPO revokes CRISPR patent – a clear cut case of invalid priority?|Blocking injunctions and their costs: some details of the forthcoming Supreme Court round of Cartier | When does copyright protection arise in works of applied art and industrial models and designs? A new CJEU reference | Trial sequence in SEP litigation - time for a rejig? | Bad faith confirmed for ALEXANDER trade mark application? | Is a circular logo for coffee confusingly similar to the Starbucks’ one? Yes, says the General Court | Fine-tuning the SPC Regulation; a never-ending story?

Never Too Late 179 [week ending 21 January] Scents and trade marks - The EU reform of olfactory marks and advances in odour recognition techniques| French government claims back « » (as trade mark and domain name) | Swedish Patents and Market Court of Appeal requests CJEU to clarify notion of ‘shape, or another characteristic, which gives substantial value to the goods’| New presidency of the Council of the European Union ... new position on the EU copyright reform? | Image rights and the unauthorized use of one's own portrait on cigarette packs| Presentation of information: Is the EPO stretching the line for patentable subject-matter, again? | Prosecution history - as relevant as any inventor evidence?".

Tuesday, 20 February 2018

Around the IP Blogs!

It is time for the IPKat's tour of IP around the web! [Week 5-11 February]

Let's first focus on copyright. Can You Copyright a Pose? In the past, this question has already been dealt with in case-law but Michael Risch (Written Description Blog) analyses a case where the question is not only on the pose itself but the possibility of it occurring in nature. As Madonna would say, “Strike a pose”. 

The French Constitutional Court Rejects Challenge to Image Right in National Monuments, reports the FrenchKat for The 1709 Blog. The provisions of the French Heritage Code were challenged by Wikimedia France and La Quadrature du Net, arguing that those rights should be time-limited. The Constitutional Court did not quite agree.

Make-up: a copyright affair – Argentina says YES! Body: a canvas or not a canvas? An Argentinian Appellate court decided that makeup art should be protected as much as any painting. Reporting on the case is Patricia Covarrubia, IP Tango.

Kat make-up
Sabesh Asokan recently published a JIPLP article on the subject of Demystifying the ‘Honest’ Infringer: Reorienting Our Approach to Online Copyright Infringement using Behavioural Economics, proposing a new approach to Online Infringement.

Now onto patents, The Blog of European Patent Law reports on the RPCR Reform Project, highlighting the main points of the reform.

In a post in IP Finance, Mike Mireles discusses the interesting idea several economists put forward in the paper Who Becomes an Inventor in America? The Importance of Exposure to Innovation in Exposing Children to Innovation More Likely to Lead to Innovation than Financial Incentives? 

Philipp Rastemborski and Tobias Wuttke of EPLAW Patent Blog discuss the Judgment of the Federal Supreme Court, Germany, 24 October 2017, docket no. X ZR 55/16, ‘Drum Unit’, concerning exhaustion of patent rights and the limits of permissible use for drums of used toner cartridges. 
Not the oldest registered trade mark ever but certainly intriguing

And finally, a look on trade marks. Peter Schramm, Kluwer Trademark Blog, reports on the unsurprising outcome of a shape mark dispute in: Switzerland: A drinking bottle is a banal perfume bottle – Really?

Do you know which was the oldest trade mark registered in the world? And how trade mark protection evolved from antiquity to the present times? In an informative piece, Mikołaj Lech of the otherwise Polish language Prawna ochrona znaków towarowych, takes us on a time trip in The oldest registered trademarks in the world.

Monday, 19 February 2018

Has Europe turned into the Eastern District of Texas? New study shows NPE activity has risen 19% year-on-year

Are the rain clouds of US NPE litigation gathering
over Europe and will Brussels act?  
Does Europe have a patent troll problem? It depends on who you ask and if you think trolls, non-practicing entities (NPEs) or patent assertion entities (PAEs), or whatever you call them and however you define them, are a "problem".  No matter what side of the fence you happen to be on, there has not been any empirical evidence to prove or disprove that notion.  Anecdotal evidence has mostly been relied on, but unless you are running a political campaign in 2016, anecdotal evidence can only take you so far. That is about to change...

The AmeriKat is in Brussels this evening for the launch of a new study by Darts-IP at the European Parliament which investigates and analyzes the prevalence and trends of patent litigation by NPEs (the term deployed by the study, see below) in courts across Europe and at the European Patent Office (EPO).

Ever since the proposals about the Unified Patent Court (UPC) really started to solidify in 2012, the potential inclination of some European patent judges in some jurisdictions to grant automatic injunctions was flagged as concern. Without the ability to rely on the safeguard of eBay v MercExchange (i.e, no rule for an automatic injunction for patent infringement), there was worry from certain sectors that the granting of automatic permanent injunctions in the UPC would create a playground for NPEs. The harm being that, with the grant of an automatic injunction, the NPE would have considerable leverage to extract extremely high damages and licence fee rates – despite the NPE not even having a market for which an injunction would have been necessary to protect. With the US patent litigation environment becoming more hostile to NPEs, the concern expanded from just UPC-centric issues to the current landscape of classical patent litigation in national courts across Europe. There was thus a call to re-focus and re-emphasize the principle of proportionality and the specific circumstances of a case when tailoring remedies in patent cases, as set out in Recital 7 and Article 3 of the IP Enforcement Directive.  This was to try and push Europe towards a more eBay environment when granting injunctions.  The European Commission's IP Package published on 29 November 2017 reaffirmed the proportionality principles, but groups like IP2Innovate (see below) wanted to see more development, such as ensuring that the proportionality principle and other safeguards applied to all patents, not just standard essential patents (SEPs).

So are the concerns about Europe becoming the new patent troll playground rooted in reality? It seems so…and there seems to be an American invasion.

Annual growth rate of NPE patent infringement in Europe
Pooling data from their database of 3 million cases and focusing on actions commenced between 1 January 2007 and 31 December 2017, the study (link here) has found as follows:
  • 19% - average annual growth rate of NPE patent infringement in Europe. In 2012, there were 75 NPE actions. In 2016, there were 169 actions. 2017 is estimated to break the record for NPE related cases at 173 (although data is not complete). 
  • 60% - the proportion of cases which originate from NPE entities based in the US since 2013. 
  • According to the report on page 6, the top 5 most active entities are Intellectual Ventures (19.18%), Marathon Patent Group (14.29%), Acacia Research Group (10.20%), Unwired Planet (8.98%) and FORM Holdings (8.16%). 
  • The top 5 most sued companies by NPEs are Vodafone (7.8%), ZTE (7.5%), Huawei (6.9%), Deutsche Telekom (6.5%) and HTC (6.5%). 
  • 80% - the proportion of NPE litigation faced by the top 4 most sued companies in Europe (Vodafone, ZTE, Huawei and Deutsche Telekom), as compared to their non-NPE European patent litigation (see page 7).
  • 23% - the proportion of SMEs who are sued by NPEs. Most companies (77%) sued by NPEs in Europe are large enterprises. 
  • The steeper increase of NPE litigation in the US corresponds to recent legal changes in the US. 
  • Germany - the hotbed of NPE litigation which accounts for 20% of their patent actions. Italy takes second place with 6%, the Netherlands at 5% and the UK and France at 4% each. Germany appears to be favored because of the bifurcated system with faster infringement courts than validity courts and a relatively high infringement win-rate for NPE plaintiffs. 
  • NPEs litigating in Europe comes at a risk. An NPE’s patents are more often successfully invalidated than patents asserted or owned by non-NPEs. 
  • 52% - the likelihood of an NPE in Germany and the UK winning on infringement. The rest of the EU has an infringement win rate of 23% (although there is much less NPE litigation in those jurisdictions, so the data pool is not there to be terribly meaningful). Weirdly, for non-NPE litigation the infringement win rate in Germany is 66%, but in the UK it is less than NPE litigation at 41%. However, validity tells a different story... 
  • 60-65% - the validity loss rate for NPEs in Germany and the UK, compared to 44-45% for non-NPE litigation. 
However, the data is imperfect. This is only data held by Darts-IP and in many countries information about issued cases which settle early is impossible to maintain. Data and scrutiny of data is important. The lack of fulsome data from EU Member States' courts is important not just for this study but for analysis of all substantive and procedural IP subsistence, validity, protection and enforcement. As it is in the business of sharing IP decisions from across the world, the IPKat has been banging this drum for near 15 years now - the EU must make it a priority to ensure that all Member States court information and decisions relating to IP are made easily accessible by the public (subject to confidentiality restrictions of course).  It is noted that this issue was/is being looked at by the Commission as part of their IP Enforcement consultation.

MEP Delvaux (Luxembourg)
Swedish MEP, Max Andersson stated that the study was “just the tip of the iceberg”.  Echoing the IPKat's sentiments he called for more “transparency and more complete data” which he says are needed to find solutions to what he called “the problem of abusive patent litigation”.

MEP Mady Delvaux from Luxembourg was concerned that artificial intelligence (AI), the internet of things (IoT) and the digital economy was being put at risk:
“In order to prevent abuses, we need to make sure that Europe’s patent legal system operates effectively for both litigants and society and supports digital innovation in Europe.”
The AmeriKat expects that there will be comments about the use of the term NPE and how a company is classified as an NPE. The use of the word “troll” is emotive and often unhelpful, so the terms NPE and PAE are used instead. However, classifying whether a company is a NPE and/or a PAE is increasingly difficult as companies transform the ways in which they commercialize their R&D and IP portfolios (i.e. selling products, withdrawing from markets, licensing their IP or a mixture).  Darts-IP considers NPEs to be “independent organizations which own or benefit from patent rights but do not sell or manufacture goods or services associated with them (i.e. non-operating companies) and which have an active (offensive) assertion or litigation role as plaintiffs towards the enforcement of their patent rights).” Darts-IP states that the focus is on “assertion-focused NPEs” and that the definition takes into account the flexible nature of a company’s business.  Still, the assessment is always qualitative to some respect.

IP2Innovate, a group of 65 companies (including corporate members that include Google, Spotify and Intel) that create innovative products in Europe, issued this press release in response to the study. Kevin Prey, Chairman, stated that the study confirmed what they had all expected about the rise of PAE activity in Europe. He called on the European Commission and Member States to
“to move quickly to provide investors and innovators with greater protections, particularly in terms of increased transparency and litigation data. The patent system must support, not hinder, innovation and growth.”
However, the study does not examine the impact of the rise of NPEs/PAEs in Europe, just the frequency of litigation, in which courts and the chances of an infringement and validity success. On a case-by-case basis, patent litigators may well be able to see the commercial impact of NPE litigation, but there needs to be more exploration of and evidence on the economic impact of such activity on Europe’s innovation economy. The longer countries and the legislators wait to act of course the more difficult it will be to change the landscape in the future. But pending that next stage of analysis, it seems clear based on the evidence so far that US NPE patent litigation has crossed the Atlantic to our European shores. Whether history repeats itself is up to the parties, legislators and judges…

The full Darts-IP report can be found here.

Here we go again? Strong brands as a barrier to entry, this time from "The Economist"

It was just one line in a full- page, two-column long article that appeared in the January 6th issue of The Economist. Entitled “Schumpeter|The year of the incumbents: In 2018 conventional firms will give Silicon Valley a run for its money”, the piece argues that long-time corporate worthies, such as IBM, General Motors and Walmart, in adopting e-commerce, AI, and big data, are placed to take advantage of their incumbent position in the marketplace to give Silicon Valley upstarts a commercial run for their money. One such advantage is that the incumbents “own 80% of the commercial world’s data", all the better to exploit AI and big data. And then there are—brands. Yes- brands. In the words of the article, “[e]stablished giants also enjoy barriers to entry, such as strong brands …" [Merpel notes, but without any further explanation] This Kat mused: “Can it be”? With apologies to Michael J. Fox, are we about to experience a “back to the future” moment in our understanding of brands and trademarks?

In the 1930’s and 1940’s, particularly in the U.S., it was popular within economic circles to view trademarks in anti-competitive terms. As Jerre Swann, here, quoting Daniel McClure, has well summarized—
“[b]y successfully differentiating a standardized product from competitors’ products and achieving brand loyalty through advertising, a producer could insulate his market share from price competition … [and] create high barriers to entry.”
But this view of trademarks and brands as an anti-competitive weapon gave way in the 1970’s and 1980’s to the so-called Chicago School approach, which argued that trademarks were in a fact pro-competitive means to lower consumer search costs. A “stronger brand” was more likely to convey valuable consumer information, thereby providing a positive competitive advantage, which was reflected in being able to extract a premium price.

In this Kat's view, a watershed moment that embodied this change in approach took place in the late 1970’s, when the U.S. Federal Trade Commission (FTC), by majority vote, found that the Borden company had maintained monopoly power in the processed lemon juice industry (it products having been sold since the 1930's under the “Real Lemon” trademark), but declined to issue a compulsory license requiring Borden to license its Real Lemon trademark to competitors, stating that--
"In sum, given the competitive climate in the processed lemon juice market, we are not persuaded that a restriction on trademark rights is needed to curb the unlawfully maintained monopoly. Prohibition of abuse of the trademark that led to this case should be sufficient to encourage the entry necessary to result in a competitive market". [Merpel notes that the distinction between abuse and monopoly exploitation is worthy of a separate blogpost.]
In so doing, the FTC overruled the administrative law judge, who had ruled that other manufacturers of the lemon juice product be allowed to sell their competing products under the "Real Lemon" mark for a period of 10 years. Since then, the notion of a strong brand, on its own, as a barrier to entry, seems to have faded into the background, at least until recently. But is it so? Can a strong brand per se really function as an anti-competitive barrier to entry?

This Kat's instincts tell him that the question is more appropriately raised in connection with Silicon Valley-like companies. After all, Amazon would presumably like to be the dominant seller of a major chunk of goods and services, all under its house brand. Under such circumstances, might it not be a reasonable claim that the brand itself serves as a formidable barrier to entry? If the answer is "yes", however, the reason is fundamentally about how to treat network effects, which lies at the heart of the market power enjoyed by these companies. Sure, the strong brands identified with these companies reinforce the force of network effects, but the solution, if there are problems to competition, rest with finding a way to deal with network effects. A strong, even a super strong brand, is the symptom, not the cause, of potential anti-competitive conduct by the brand holder. In any event, traditional incumbents, such as IBM, can hardly be said to be the prime beneficiaries of network effects.

Indeed, this Kat has been exploring just how far a strong brand can take a brand holder, not from the vantage of extracting extra-competitive profits, which is detrimental to social welfare, but with respect to the extent that brands can facilitate innovation. His preliminary thoughts (which will be published later this spring) are that only strong brands might have the market ability to do so, but even there, only under uncertain circumstances. If so, there is an irony here—far from concerns over brands as a barrier to entry, strong brands may not be strong enough to do the job that society would like them to do, namely facilitate innovative activity.

By Neil Wilkof

Photo on upper right by Sn1per and is made available under the Creative Commons CCO 1.0 Universal Public Domain Dedication

Photo on lower left by Andre Karwath aka Aka and is licensed under the Creative Commons Attribution-Share Alike 2.5 Generic ( license

BREAKING: UK IPO launches technical consultation on draft regulations transposing the EU Trade Secrets Directive

The AmeriKat is focused on answering the
UK IPO's trade secrets consultation
by 16 March 2018
Today, the UK Intellectual Property Office has launched a technical consultation on the EU Trade Secrets Directive and the draft regulations to transpose the EUTSD into UK law.  The UK government is seeking stakeholders' views on the approach taken in the regulations.  The website of the consultation can be found here and the consultation document here.  The consultation closes on 16 March 2018 - so less than a month to go!

The UK IPO describes the current status of the law as follows:
"The UK has a robust and well established legal framework that allows for the effective enforcement of trade secrets. Trade secrets are governed in the most part by the common law (case law) of breach of confidence and by contract.  
There is no statutory definition of what constitutes a trade secret in UK law. However, case law has ensured principles of law have been developed that apply in this area.  
As the UK already has a well-developed system of legal protection for trade secrets, the EU Directive does not require substantial changes to be made to UK law. It is our view that the majority of the Directive’s substantive provisions already exist in UK law, either in common law, statute or by means of court rules (for example, the Civil Procedure Rules (CPR), which govern civil proceedings in the High Court and county courts in England and Wales).  
However, we have identified a number of changes that we believe need to be made to ensure that the UK, in each of its jurisdictions, complies with the Directive in a transparent manner. In the main these concern limitation or prescriptive periods, procedural issues for the courts when hearing cases on breach of confidence in relation to trade secrets, and certain remedies."
At Annex A of the consultation document are the draft Regulations which set out the Government's proposals for implementing the EUTSD.  The proposals are summarized as follows:
"The proposed Regulations provide for a statutory definition of the term ‘trade secret’ and set out rules concerning time periods for bringing proceedings. The Regulations include provisions concerning the preservation of confidentiality of trade secrets during and after proceedings have concluded, as well as measures relating to interim orders for delivery up. They also set out time limits within which a claim needs to be brought after an interim order for delivery up has been made. The proposed Regulations include provisions relating to measures which may be imposed on an infringer and set out the factors that need to be considered. The Regulations also provide for compensation to be paid under certain conditions, set out the factors that need to be taken into account when awarding damages, and include measures concerning the publication of information relating to judicial decisions in legal proceedings for breach of confidence."
The AmeriKat is pushed for time just now, but there are several interesting issues that will be subject to a follow up report in the next day.  

Sunday, 18 February 2018

Blockchain my IP

The notion of "blockchains"  seems to be all around us, including as part of discussions regarding both information technology  and  intellectual property rights (IPRs). After listening to a myriad of  different views and opinions, reading blog posts, articles (including by Guest Kat Rosie Burbidge, here)  and conference papers, one cannot fail to wonder: will blockchain  indeed revolutionise the IP world?

What is blockchain? 

The first questions have to be: What is  a "blockchain" and what are its main characteristics, benefits and weaknesses? In the language of cryptocurrency, a block is a record of new transactions (that could mean the location of cryptocurrency, medical data, or even voting records). Once a  block is completed, it is added to the chain, creating a chain of blocks: i.e.,  a blockchain. As such, blockchain is a way of organizing digital information. Although use in cryptocurrencies is its most well-known manifestation, the scope of its potential applications is much more extensive than that. What blockchain offers is a secure (and indisputable as to its traceability) chain of events. What you can see following a blockchain transaction is both the nature of the event as well as the exact order in which an event has occurred.  For example, you may see the value of bitcoins transferred and the date on which the transaction occurred.

Making changes in the blockchain records is very difficult since in order to manipulate a blockchain, you would have to such a large number of changes in the records that it would  be essentially impossible to do so. This also means that what is stored in blockchain is much more reliable than any data stored in decentralized databases. In fact, a transaction (or other information) stored in blockchain (a “ledger”), which has been accepted as “correct” may not be altered. This secured chain of transactions does not have to be available to the public; indeed, it could only be visible to holders of a special digital “key”.  As a result, some blockchains are closed, intended to be used only by certain pre-specified target groups,  while other blockchais are open.

The most well-known blockchain today, Bitcoin, is based on an entirely open database, to which anyone may add at any time. However, even in a blockchain that is open to the public, the real identity of the people behind the ledgers may not be revealed without access to their particular digital “key”. Furthermore, a public blockhain might also contain confidential information. As a result, you might be able to see the blockchain and even contribute to it, without however being able to gain access to the information that has been stored in previous ledgers.

Access to information stored in a ledger might not be granted, or be subject to first accepting pre-specified terms and conditions, such as  a  confidentiality agreement. Blockchain has the potential of providing for rather complex structures of storage and access. Taking into consideration that a blockchain database may also include search engines and key terms, the information stored is searchable by participants, should they choose to do so.

A blockchained IPKat

What may blockchain do for IP?

Against this backdrop,  this Kat wishes to venture the following guess: while it is  difficult to predict all potential IP-related applications of blockchain,  the  impact of blockchain will be most significantly felt in the field of management of IPRs. More specifically, blockchain could be used by inventors wishing to find potential investors, while at the same time safeguarding the novelty of their inventions. In this case, a ledger might consist of a short description of the character and goal of the invention, while those wishing to gain access to more information on how the invention works would then have to accept the provisions of an agreement (a so-called “smart contract”). This could even be the case for patent holders wishing to find potential licensees for related know-how and trade-secrets in addition to the patented invention. Alternatively, inventors might be interested in publishing their technological developments in order to guarantee their freedom to operate by destroying  novelty for others working in the same technological field.

The secure character of blockchain might also constitute a reliable source of prior art for patent offices worldwide. In this respect, even the requirements of the Nagoya Protocol (see here for the entire text of the Protocol) might be successfully fulfilled by means of  blockchain databases. In fact, it might be worthwhile for national governments to opt for blockchain databases, instead of having to invest in the establishment of costly Clearing House institutions.

Blockchain need not be limited to patents; it might also be used in the field of copyright-protected works. Publishing a song, text or other work, under a blockchain database may provide a solid proof of authorship or date of publication that can be used in court proceedings.  Furthermore, blockchain could provide a platform for the registration of copyright transfers  (not otherwise registered)  facilitating parties interested in entering into a licensing agreement, thereby significantly reducing transaction costs.

Based on the foregoing, a strong argument can be made  that blockchain technology will be able to facilitate the management of IPRs; as well, publications under a blockchain environment might be used as evidence in IP-related law proceedings. What more can it do for IP?  Let's wait and (presumably) see.

AIPPI UK Upcoming Event: Professor Bently to debate how far the "zone of exclusivity" of registered IP rights goes

There has been a lot of discussion and debate on the scope of IP rights lately, especially those subject to registration systems.  How do the rightsholders capture the scope of their monopoly?  How do the Courts interpret the extent of their monopoly?  Should the Courts interpret claims in a way that are favorable to the rightsholder or is the form of the registration the beginning and end of the story?  AIPPI UK will be exploring those topical questions with Professor Lionel Bently (University of Cambridge) on 27 February 2018.  Details as follows:
Event:  Registration, Notice and Property Definition in IP Law 
Who:  Professor Lionel Bently, University of Cambridge
Date:  Tuesday, 27 February 2018
Time:  5:30PM for 6PM
Where:  Bristows LLP, 100 Victoria Embankment, London EC4Y 0DH 
What:  Recent cases in the Supreme Court, such as Trunki and Actavis, as well as CJEU rulings such as Specsavers and Grupo Promer, have refocused attention on the perplexing question of the relationship between claiming and representation of intangible properties in the IP registers and the scope of protection conferred by such registration. Taking a horizontal perspective, this talk asks how far trade mark, design and patent registration systems are intended, and how far they are able, to define precisely the property or “zone of exclusivity” granted to the rightholder.
Register:  Here

Spaces are filling up quickly, so make sure you bag a space!

Saturday, 17 February 2018

Mr Justice Carr's L'Oreal v RN Ventures decision bristles with warnings on Actavis v Lilly claim interpretation, equivalents and prosecution history (Part II)

Infringement - no role for German doctrine of "deliberate selection" following Eli Lilly v Actavis, yet...

On the basis of a normal interpretation, the shear mode fell within the scope of the claims.  The judge held that the requirement of tension and compression in Integer [D] was infringed by the accused Magnitone products which deployed the shear mode.  L'Oreal also ran an alternative infringement argument based on equivalents.  Carr J stated in respect of this argument he would have concluded that the "shear variant" produced substantially the same result in the same way and obviously so as the patent states it is the preferred arrangement.  If  having discussed the "shear variant" at great length, the Patentee nonetheless chose to exclude it from the claims, then the skilled person would have assumed the patentee intended to do so (possibly in light of the prior art cited in prosecution).  Accordingly, in light of the third Actavis question, the variant would not be an equivalent.  

RN Ventures relied on the German principle of "deliberate selection" as set out in the German Federal Court of Justice case - Okklusionsvorrichtung.  This rule provides that there can be no patent infringement by equivalence if the description discloses several possibilities as to how a technical effect can be achieved, but only one of those are included within the claims of the Patent (similar to the Johnson & Johnston disclosure-dedication rule in the US).  L'Oreal argued that this rule was not adopted by the UK Supreme Court.

Readers may recall that Lord Neuberger's judgment in Actavis v Lilly stated that just because anti-folates were referred to generally and the claims were limited to pemetrexed disodium, in particular, this did not mean that the patent was intending that other pemetrexed compounds would not infringe. The UK Supreme Court stated that had the patent specification not referred to anti-folates generally, but only pemetrexed disodium, then this would have been a strong indication that the patentee was intending to limit himself to pemetrexed disodium. To argue that Lilly was in somehow limiting itself on infringement by virtue of what was disclosed in the specification:
“confuses the disclosure of the specification of a patent with the scope of protection afforded by its claims. Particularly given the facts set out in para 25 above, it seems to me very unlikely that the notional addressee would have concluded that the patentee could have intended to exclude any pemetrexed salts other than pemetrexed disodium, or indeed pemetrexed free acid, from the scope of protection.”
Mr Justice Carr noted that although the parallel Actavis v Lilly decision in Germany reached the same conclusion as the UK Supreme Court, it did so by different reasoning:  
"It is unnecessary for me to decide whether the German doctrine of “deliberate selection” should be applied generally to equivalents in the UK, and undesirable that I should do so, since in the present case I have concluded that there is infringement on a normal interpretation. My conclusion on equivalents is based upon a consideration of the specification of the Patent in this case, and does not establish any wider proposition."
Indeed, the AmeriKat thinks it will be a challenging for a lower court to apply such a doctrine in light of the Supreme Court's dicta in Actavis (as set out above).

Sufficiency, novelty/obviousness and amendment 

Applying the principles summarized by Arnold J in Sandvik v Kennametal [2012] RPC 23, Mr Justice Carr also rejected RN Ventures classic insufficiency attack.  He held that the Woog prior art did not anticipate the patent or made the patent obvious.  The amendment at Integer [F] was allowed, clear and did not add matter, despite RN Venture's contentions.  Although validity was attempted as a squeeze on infringement, there was not a lot of interest of law or application on these points to report.

So, valid and infringed.

Actavis v Lilly - the gift
that just keeps giving to patent law
They thought it was all over...the Barrell jurisdiction point

In England & Wales, the Court will disclose to the parties (normally through their representatives) a draft judgment under strict terms that the contents (or even a hint of the outcome) are not disclosed to anyone else.  To do so would be in contempt of court.  The draft is provided in order for the parties to flag any errors and typos.  Judges are entitled to alter their judgment before it is formally "handed down" or made public.  In light of Re Barrell Enterprises [1973] 1 WLR 19 CA. The Supreme Court, in In Re L (Children) (Preliminary Finding: Power to Reverse[2013] UKSC 8 confirmed that a judge has jurisdiction to change his or her mind until the order carrying the judgment into effect is drawn up and perfected.  The exercise of the power is not restricted to exceptional circumstances, but may include a plain mistake, the failure of the parties to draw the judge’s attention to a plainly relevant fact or point of law, the discovery of new facts after judgment was given.  It is the duty of the parties' representatives, to draw such issues to the attention of the Court, but also to avoid the temptation of raising fresh arguments.

After the draft judgment was provided to the parties in this case, RN Ventures requested that Mr Justice Carr reconsider his judgment on the basis of a claimed internal inconsistency that could not be reconciled.  Richard Davis, for RN Ventures, argued that throughout the case it was understood to be common ground that the accused Magnitone products were made in accordance with the embodiment where the contact elements move in unison, which Carr J held fell outside the scope of Claim 1.  Accordingly, he argued that the products should be held not to infringe.  L'Oreal's counsel, Tom Moody Stuart, said that was not common ground. Mr Justice Carr accepted this and said that Magnitone was seeking to run a new case not suggested at trial that the accused products fell outside of Integer [E], when at trial the Court was only told to be concerned about Integer [D].  He concluded: 
"The dispute at trial concerned integer D. If, having admitted integer E, RN Ventures wished to say that this action was caused by something other than integer D (and that its products therefore operated in a manner which, according to the Patent, is inferior to the embodiments which I have held fall within the claims) then it needed to establish this by evidence. It did not attempt to do so.
In conclusion, whilst I consider that Mr Davis was right to draw my attention to this issue, and I have carefully considered it, it does not cause me to change my conclusion that the Patent is infringed."
...It is now - key takeaways 
Not as greasy as some takeaways,
the IPKat boxes up the lessons
of L'Oreal v RN Ventures

On the patent side of the case, there are five key takeaways from Mr Justice Carr's decision:
  1.  Construction has been rebranded as "interpretation", thus emphasizing its more flexible  role when we get to assessing equivalence under the new Actavis questions (or Lilly questions, depending on who you ask) (see also Generics (t/a Mylan) v Yeda).  

  2. Take care when deciding whether to introduce prosecution history into your claim interpretation arguments.  The use of prosecution history must support at least one of the two instances identified by Lord Neuberger in Actavis v Lilly.  If they do not, you might be penalized on costs, as hinted by Carr J.  

  3. Be wary of any language in the specification that could be construed as disclaiming protection by the claims.  Although the German principle of deliberate selection or the US disclosure-dedication doctrine have not entered into English patent law, the Court is scrutinizing the language of the specification with renewed vigor following Actavis v Lilly. [Merpel wonders if increasingly, the Courts will accept the normal interpretation advanced by patentees so they don't have to wander into the rat nest of equivalence in Actavis v Lilly...]. Note that Carr J did not say there was no and could never be a role for a deliberate selection/disclosure-dedication doctrine in English law, but that it was inappropriate for him to get into it on the basis of his findings,  

  4. Make sure your expert's report references source material, especially where extracts from that material is said to constitute the CGK or the skilled person's understanding of technical terms used in the patent.   

  5. Flesh out all of your possible non-infringement arguments so that you don't have to rely on the Barrell jurisdiction should your claim interpretation fail.

Mr Justice Carr's L'Oreal v RN Ventures decision bristles with warnings on Actavis v Lilly claim interpretation, equivalents and prosecution history (Part I)

You too can get that youthful kitten glow
with the use of a robust grooming regime...
What keeps the AmeriKat looking youthful and kitten-esque?  A robust skin care regime of exfoliating, cleansing, brushing and, especially during these cold and dry winter months, moisturizing.  When her paw brush just doesn't cut it, a key tool of her grooming repertoire is an oscillating circular electronic skin care brush. She uses a Clarisonic, but another big brand is a device called the Magnitone.  It was the Magnitone that preoccupied three days of Patents Court time before Mr Justice Carr this past December and which was subject to the recent decision of L'Oreal v RN Ventures [2018] EWHC 173.  Of interest to readers, the case was run in the Shorter Trial Scheme (see previous Kat post here) and applied recent case law on claim interpretation, validity, infringement and the use of prosecution history following the Supreme Court in Actavis v Lilly.

L'Oreal claimed that certain products in RN Venture's range of Magnitone devices infringed its patent  - EP(UK) 1 722 699  - and Community Registered Designs - RCD Nos 000407747-001 and 001175046-001.   The AmeriKat will be focusing on the patent issues in this case.  GuestKat Rosie will be exploring the RCDs in a separate post.

The Patent, Skilled Person and CGK

The '699 Patent, entitled "Apparatus for acoustic/mechanical treatment of early stage acne", is concerned with a mechanical device suitable for the treatment of acne through the removal of sebum plugs (yum!) from skin pores.  The person skilled in the art who would be interested in the development of such a device, have a mechanical engineering background and an interest in dermatology, with such interest including the understanding of the basis properties of the skin and well known-treatment of acne (or would know which textbooks to look in).   The CGK would not include a working understanding of electronic grooming devices in other areas - such as electronic toothbrushes and pedicure brushes - as the technical considerations and mode of actions were quite different in other fields.

The Patent's disclosure 

The goal of the invention is to keep the pore openings in an "opening state" to allow the continuing exudation (fluid emission) from the sebaceous gland.  This, in turn, is said to help the maintenance of an aerobic state within the pore and will prevent the development of more severe acne conditions.  In order to keep the pores open, the device supplies energy to the skin to loosen and remove the sebum plugs.  It does this by applying tension/compression in opposite directions (i.e. differential motion), sequentially, on the skin at different frequencies.  The differential motion needs to be at a high enough amplitude to create pore opening forces, but low enough to minimize stretching of collagen in the skin.  This results in the plugs being loosened and removed from their position in the skin pores.

One way of achieving this tension, is to have one skin-contacting element staying still, while another skin-contacting element nearby moves up and down - thus creating "shear". This was called the "shear aspect" in the patent (and is referred to later as the "shear mode").  Another arrangement was described  the "tension/compression element"  - whereby two skin-contacting elements stay still, while another skin-contacting element moves right or left away from and towards the fixed elements.  It is also possible to combine these two modes to crate an elliptical motion.  Another embodiment provides that a single set of skin-contacting elements move in the same direction, relying upon the skin's inertia/elasticity to produce shear force - although this is noted not to be as effective.  Other configurations that employ bristle tufts organized in rows, but using the same general motion as above, are described in the patent.   The patent summarizes the invention as:
“[0086] Thus, the present invention provides either mechanical energy in a shear mode or tension/compression mode or a combination (elliptical) in order to loosen the adhesion between the sebaceous plug and the walls of the pore. Said motion can be produced by contact elements moving either reciprocally linearly, reciprocally arcuately or a combination thereof.”
Claim 1

As split into integers Claim 1 is set out below.  All integers, save for [D], were admitted to be possessed in the accused Magnitone products. Integer [F] was the proposed amendment.
“[A] An apparatus for treatment of acne, comprising:
[B] at least two contacting elements having end faces, wherein at least one contacting element is a moving contacting element;
a mounting assembly for holding the contacting elements substantially adjacent to each other; and
an assembly for reciprocally moving said at least one moving contacting surface;
characterised in that
[C] all of the end faces are in the same plane and the end faces of the moving contacting element move in a single plane
[D] and said assembly reciprocally moves said at least one moving contacting element bi-directionally through a neutral position relative to at least one adjacent contacting element to produce alternating tension and compression of the skin 
[E] wherein when the apparatus is positioned so that the end faces of the contacting element contact the skin, an action on the skin in the plane of a skin area to be treated for acne is produced to remove sebum plugs from skin pores, permitting ready removal thereof from the skin

[F] wherein the frequency of movement of the moving contacting element is within the range of 80-200 Hz.”
Henry loved when he was in "shear mode"
Claim "Interpretation"  - it is all about what you say and disclaim

With the old "Construction" heading now replaced with "Interpretation", Mr Justice Carr stated he would be applying
"principles concerning normal interpretation and equivalents set out by the Supreme Court in Actavis v Eli Lilly [2017] UKSC 48, [2018] and by the Patents Court in Mylan v Yeda [2017] EWHC 2629 (Pat) at [134] - [139]; Fisher & Paykel v Resmed [2017] EWHC 2748 (Pat) at [82] – [86] and Illumina v Premaitha [2017] EWHC 2930 (Pat) at [200] – [202]."
But, probably for good reason, Carr J did not set about summarizing that case law in the judgment.

There were three issues on the claim interpretation of Integer [D]:

1.  "Relative" movement - skin contacting elements

L'Oreal argued that "neutral position" refers to the neutral or relaxed position of the skin and pores between two contact elements and that the "relative movement was between the contact elements and the skin.  RN Ventures argued that "neutral position" meant the starting or rest position of the contact elements and that the relative movement was between the contact elements themselves. If the contact elements were stationary relative to each other, such an arrangement would fall outside of [D].  Carr J accepted RN Ventures interpretation on the basis that integer [D] required at least one contacting element to move relative to at least one adjacent contacting element and that the patent itself acknowledged that an arrangement where the contact elements moved in unison was not as effective.  Further "neutral position" was described in the patent as being when the movable contact element was in the rest position.  The judge noted that:
"Purposive interpretation does not allow the language of the claim to be disregarded. The Patentee’s purpose in choosing this language is, as indicated in the Patent, to exclude an arrangement which is generally not as effective as that which is claimed."
2.  "Relative" movement - bristles

RN Ventures argued that the relative movement of skin contacting elements with bristles meant that the relative movement had to be at the base of the contact elements, not at the skin-contacting end (i.e. top of the bristles).  RN Ventures argued that Integer [D] related to the mounting assembly and thus was concerned with the base of the contact elements.  Carr J rejected this on the basis that Integer [D] relates to the movement of the contact elements "so as to produce the alternating tension and compression of the skin" and no statement was made that the movement had to be at the base.  He stated:
"The tips of the contact elements, which touch the skin, are the “business end” of the claimed device. Where there is a difference in the behaviour of the base and the tip of the contacting elements, it would not be consistent with the Patentee’s purpose, nor fair to the Patentee, to disregard movement of adjacent contact elements which produces the claimed effect."
3.  "Tension and compression" 

RN Ventures argued that movement to produce "alternating tension and compression", as described by Integer [D] excludes the shear mode.  L'Oreal said that this confuses mechanical movement with the effect of a mechanical movement.  Integer [D], argued L'Oreal, plainly referred to the effect of the mechanical movement and thus did not exclude the shear mode.  The first question for the judge was what the technical meaning of "tension and compression" and "shear", as used in the patent, would have been understood by the skilled person having regard to the inventor's purpose.  The expert for RN Ventures sought to given expert evidence on this, but on cross-examination the definition he used turned out to be taken from Wikipedia (see the judge's comments at [15]-[20]).

L'Oreal's expert stated that "shear mode" would be understood to be subject to alternating tension and compression as the moving element would push the skin in front of it upwards (compression) and would pull the skin behind it (tension).  The pore in between the moving element and the stationary element would be deformed either in tension or compression.  RN Ventures' expert disagreed, but had exhibited an article to his report that stated shear forces on skin have the effect of "stretching and compressing the skin" [reminding everyone of the litigation adage - exhibit in haste, repent at leisure...].

The judge therefore accepted L'Oreal's meaning of "alternating tension and compression".  He further held that the shear mode was not excluded from the scope of claim.  In support he pointed to the fact that the patent described and preferred the shear mode embodiment to the tension and compression arrangement.  Further the effect of the shear mode arrangement described in the patent was to cause "tension and compression".  The judge also held that the inventive concept of the patent was not confined to this mode as expressed by the summary of the invention (see [86] above).  Importantly, on claim scope, the judge stated that:
"I accept that not everything in the specification necessarily falls within the claims, and I have applied this principle to the arrangement in [0060] – [0062], which the Patent states is “generally not as effective.” However, this does not mean that the Patentee’s preferred arrangement should be excluded from the claims, which would be the result of RN Ventures’ interpretation. The document must be read as a whole and exclusion of all of the preferred embodiments would not be a sensible reading. Nor would it accord with the inventor’s purpose. It would neither be fair to the Patentee, nor provide reasonable certainty to the public."
RN Ventures tried to argue that the shear mode was "an aspect" and thus, in EPO practice, this meant that the shear mode was outside of the claimed invention.  But without any authority or guideline, and without the prosecution history being admissible, the argument did not get very far.

How foggy is the patent and will the prosecution history
make it "unambiguously" clear? 
Prosecution history - the exception, not the rule 

RN Ventures tried to argue that during prosecution L'Oreal had limited Claim 1 to the tension/compression mode in order to support inventive step.  The Examiner noted the distinction between the tension/compression mode and the shear mode, requiring that subsidiary claims to the shear mode be deleted.  This, RN Ventures argued, indicated that the Examiner had gained the impression that L'Oreal was choosing to exclude the shear mode and if this was not case, L'Oreal should have explained this to the Examiner, rather than approving the text of the patent to be granted.  

Lord Neuberger in Actavis v Eli Lilly stated that the UK Court's approach to prosecution history is "skeptical but not absolutist" and that reference to the file history would only be appropriate in two instances.  First, where an issue is "truly unclear" on the reading of the patent and the file history "unambiguously resolves" the point. Secondly, where it would be contrary to the public interest for the prosecution history to be ignored (i.e. where, during prosecution, the patentee had argued the patent did not extend to a variant which the patentee then later says infringes).   

Mr Justice Carr did not consider that the first instance applied.   He did not think there was anything that was "truly unclear" and there was no statement in the file history that amounted to a clear disclaimer of the shear mode and the effect of the amendment was to the effect of the of the mode on the skin, rather than the mode itself.   Further, not all claims directed to shear mode were deleted.  The second  instance also did not apply.  The judge noted that interpretation is a matter for the national courts, not the Examiner and L'Oreal was not under a duty to correct any misunderstanding on the part of the Examiner on the scope of the claims.  The judge warned that:
"It should be emphasised that reference to the prosecution history is the exception, and not the rule. I understand why it was relied upon in the present case, although I have not accepted RN Ventures’ submissions about it. Parties should think carefully in future before incurring additional costs in arguing about the prosecution history."
Continued in Part II

Surveying the scene - passing off & surveys

Image result for the color purple
A different Color Purple
"Judges accustomed to trying cases of this nature are rightly somewhat suspicious of evidence obtained in this way [via surveys], for so much can depend upon the conditions in which surveys are conducted, the format of the questions posed and the manner in which they are asked."

The concerns noted by Lord Oliver in Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873 have remained at the forefront of the judicial mind and whilst they have come in and out of vogue over the years, they are now accepted as a necessary evil in at least some circumstances.

The survey question was recently considered in Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anor v Sandoz Ltd & Ors [2017] EWHC 3196 (Ch).  This trade mark and passing off claim concerns the colour and shape of the Seretide combination asthma inhalers.  See earlier IPKat posts here and here.  Although the case is not "hot off the press" it is nevertheless an important development to share with the IP community.

The trade mark
[the survey concerned the darker purple]
The passing off portion of the case is essentially a get up claim which focuses on the use of the colour purple for inhalers.

Two surveys regarding the primary purple Pantone (2587C) on the inhalers was admitted into UK IPO opposition proceedings (which are now stayed).  As the survey had already been carried our and considered by the parties, the question in this application was can the survey evidence be relied upon in the High Court proceedings.

The surveys were added to the opposition proceedings as evidence of acquired distinctiveness.  Likewise in the High Court, the Claimant wished to rely on them in the High Court in relation to their case on distinctiveness (and not as evidence of confusion).

It is clear from Interflora 1 (Interflora v Marks and Spencer [2012] EWCA Civ 1501) and Interflora 2 (Interflora v Marks and Spencer [2013] EWCA Civ 319) that surveys should only be permitted if they are of "real value".  This was less of an issue here as the surveys had already been carried out so as Birss J put it, this was really a case management issue.

Various additional objections were raised to the surveys being included.  In particular, the fact that they survey was based on a square of colour (rather than it in use on the product).  This was dismissed as the colour was used on the packaging and marketing materials as well.  In these circumstances, Birss J noted that "it is sensible to test it using a square of colour rather than a particular object like an inhaler or a leaflet or anything else".

Other objections included:
  1. inadequate records of how the interviewers were trained and briefed (dismissed as a minor issue in this context which could be dealt with at trial - but not an excuse for future litigants failing to maintain adequate records);
  2. the interviewees did not include patients (given the prescription nature of the products, focusing on GPs and pharmacists "was sensible");
  3. the survey answers may not be truly verbatim (a question which could be tested at trial);
  4. GPs were sampled on a per practice basis which did not consider the number of GPs at the practice (a question which could be tested at trial);
  5. the structure of the surveys was leading ("there is an element of speculation in the questions, but the essential structure is obviously intended to minimise any leading" in any event the trial judge would be able to reach their own decision);
  6. the additional cost - the total estimate of both sides was a further £500,000 ("an enormous sum" but nevertheless less than 10% of the costs of the proceedings and likely an over estimate of the amount of time required on cross examination).
All objections failed and the survey evidence was allowed.

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