Global IP Matters

Coordinated patent strategy for multi-national companies

ITC Judge Essex Adds His Voice to the SEP-FRAND Debate

Posted in International Trade Commission (ITC) litigation, Patent litigation, Standard Essential Patents

Administrative Law Judge Essex of the International Trade Commission (“ITC”) recently issued the public version of his decision in ITC investigation No. 337-TA-868.  In it, he holds that the respondents should be precluded from relying on the FRAND defense—the defense that the patents-in-suit are subject to being licensed on fair, reasonable, and non-discriminatory (“FRAND”) terms, and therefore that an exclusion order should not issue—because they failed to see a license to practice the patents before implementing the standard to which they now claim the patents are essential.  In so holding, Judge Essex responds to a number of influential bodies, including the Justice Department, the U.S. Patent Office, and the Federal Trade Commission, who have taken the position that injunctive relief should not be available to holders of standards-essential patents.

Our attorneys present a comprehensive discussion of the decision in this client alert.

Supreme Court Says Computer Implementation Not Enough

Posted in Computer-implemented inventions, IP strategy, Patent litigation, US patent prosecution

On June 19, the Supreme Court of the United States (SCOTUS) handed down another unanimous opinion in a closely watched patent case.  Alice Corporation v. CLS Bank International addresses patent eligibility of computer-implemented inventions.  This is the third patent case issued by the Court in as many weeks.  (See Mintz Levin’s recent alert on the Limelight and Nautilus decisions.)

In Alice, the Court affirmed the Federal Circuit’s holding that all the patent claims at issue, which include method, system, and media claims, are invalid under 35 U.S.C. §101.  In reaching its decision, the Court applied a two-step framework: first, determining whether the claims at issue are directed to one of the patent-ineligible categories (laws of nature, natural phenomena, or abstract ideas); and second, if so, determining whether the elements of each claim contain an “inventive concept” sufficient to transform the unpatentable category into a patent-eligible application.

Our attorneys present a comprehensive discussion of the decision and its impact on you in this client alert.

UK High Court confirms jurisdiction to grant cross-border declaration of non-infringement

Posted in European patent prosecution, IP strategy, Patent litigation

In Actavis Group HF v. Eli Lilly & Co. the UK High Court has granted a declaration of non-infringement in the UK, France, Italy and Spain. A jurisdictional challenge in relation to the French, Italian and Spanish jurisdictions was rejected.  In granting the declaration, the judge considered and applied the law of four different countries. Whilst in separate national proceedings in Germany the German Court came to the opposite view, and found that the claims were infringed, the German reasoning was criticized by Justice Arnold. In coming to the finding of non-infringement, the UK High Court took into account the prosecution history leading to the grant of the patent, and held that the granted claims could not be considered to cover subject matter which had been excluded from the claims by amendments made during examination.

Eli Lilly’s patent, EP 1313508 covers the cancer drug permetrexed disodium in combination with vitamin B12 or pharmaceutical derivatives thereof. Actavis intend to launch a generic pemetrexed product, the active ingredient of which will be pemetrexed diacid, pemetrexed dipotassium or pemetrexed ditromethamine, and sought a declaration of non-infringement prior to launch.

The key question was whether the claims to permetrexed disodium extend to pemetrexed diacid, dipotassium and ditromethamine. Both sides accepted that there was no literal infringement of the claims, however Lilly argued that in addition to pemetrexed disodium, other forms (alternative salts) of pemetrexed may fall within the scope of the claims. Considering the Protocol on Article 69 EPC and applying the Improver questions, Justice Arnold concluded that  these other forms of pemetrexed were outside the scope of the claims and that therefore there would be no infringement.

Taking into consideration amendments made during prosecution of the Patent, Arnold found that Lilly had deliberately limited the claims to pemetrexed disodium and that other pharmaceutically acceptable and sufficiently soluble salts were not covered. Justice Arnold considered this to be a “clear example” of the “patentee regretting a decision taken during the course of prosecution … and … trying to avoid the consequences of that decision”. Justice Arnold stated that in such a case “there is no reason why the law should be sympathetic to the patentee”, particularly where decisions as to claim scope made by the applicant during prosecution would be effectively reversed by decisions on claim construction. He stated that where prosecution history is “short, simple and shows clearly why the claims are expressed in the manner in which they are to be found in the granted patent and not in some broader manner” then there is “no good reason why the court should shut its eyes” to the prosecution history.

Arnold commented specifically on the judgment of the German Court: “in finding infringement by reason of equivalence alone, … the Dusseldorf Regional Court has not given proper effect to the Protocol but rather has treated the claims as a mere guideline”. In relation to France, Italy and Spain, based on reports by foreign law experts for each country, Arnold found, as for the UK,  that dealings in pemetrexed diacid, dipotassium and ditromethamine by Actavis will not constitute direct infringement. Arnold also concluded that there will be no indirect infringement in the UK and that – based on reports by experts in French, Spanish and Italian national law – as the law on indirect infringement is broadly similar to the UK in France, Italy and Spain, there will be no infringement of the French, Italian or Spanish designations either. This judgment therefore confirms that the UK courts will hear non-infringement actions in relation to multiple European jurisdictions in a single court Action.

What Do The Supreme Court Decisions in Limelight and Nautilus Mean For You?

Posted in IP strategy, Patent litigation, US patent prosecution

The Justices of the Supreme Court of the United States have rarely reached consensus on any issues this term.  However, they achieved unanimity in two patents cases recently, which may have a significant impact on you and your patent portfolio.

By deciding to hear several patent cases this term, the Court has sent a clear message that it has a continued interest in clarifying the law governing critical patent doctrines.  In Limelight Networks v. Akamai Technologies, the Court ruled on matters of induced infringement and in Nautilus v. Biosig Instruments, the primary issue at hand was indefiniteness.

The Limelight decision reduces the scope of protection afforded to patented methods when different steps of those methods are performed by different parties.

The Nautilus decision rejected the Federal Circuit’s standard for indefiniteness, namely that a claim is indefinite only when it is “not amenable to construction” or is “insolubly ambiguous,” in favor of requiring “that a patent’s claims viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”  The Court then remanded the case back to the Federal Circuit to determine whether the claims are sufficiently definite under this new standard.

Our attorneys provide more discussion and insight into how these cases may impact you in this alert.

What Are The Keys to Attracting Investors to Your Clean Tech Start-Up?

Posted in IP strategy

On Wednesday June 18th, Mintz Levin is hosting a pitch-training event in our London Office for companies and individuals operating in the cleantech arena.  “Cleantech Bootcamp“ is being run by ecoConnect, a UK-based organization which aims to better connect players in the cleantech industry.  The aim of “Cleantech Bootcamp” is to assist those who will need to pitch for investment, by providing them with the skills required for success.

Sophisticated investors understand the value of intellectual property and as part of their due diligence will make inquiry into the quality of patent protection already in place.  Developing a patent strategy is critical for early stage and start-up companies.  Mintz Levin patent attorneys Anne Campbell and David Wraige will be on hand during this event to advise participants on incorporating protection of their intellectual property into business strategies and pitches for funding.

There is a 20% discount for our blog readers.  Quote “ecco2233″ where prompted on the event registration page.

Are Your Trade Secrets Effectively Protected by Non-compete Agreements?

Posted in Uncategorized

Our colleagues in the Employment, Labor & Benefits practice are hosting a free webinar on May 28th about drafting effective non-compete agreements and other restrictive employment covenants. Topics will include common pitfalls and oversights in drafting these critical documents, concerns about enforceability, and the impact of non-compete agreements in the context of a severance agreement. We invite you to click here for more information and to register for this valuable event.

Could Federal Circuit Decision Weaken FRAND Defense?

Posted in Patent litigation

On Monday, May 5, 2014, the Court of Appeals for the Federal Circuit, by transferring the Microsoft v. Motorola case to the Court of Appeals for the Ninth Circuit, issued an order which may significantly impact the ability of participants in standard-setting organizations (“SSOs”) to obtain relief for patent infringement.

The Microsoft v. Motorola case, first filed in the W.D. Washington, has been closely observed by the patent community for some time.  Microsoft and Motorola had been engaged in licensing discussions when Microsoft sued Motorola, alleging that Motorola broke its promise as a member of the ITU and IEEE SSOs by refusing to offer Microsoft a license to its standard-essential patents on what Microsoft considered fair, reasonable, and non-discriminatory (“FRAND”) terms. Motorola, a unit of Google, Inc., then countered by suing Microsoft for patent infringement, and the two cases were consolidated.

While these cases were pending, in a related proceeding between Microsoft and Motorola, a German court enjoined the sale of Microsoft’s Xbox and certain Windows products in Germany.  The Western District of Washington preliminarily enjoined Motorola from enforcing the German court’s injunction on the basis that Microsoft’s contract action would resolve whether injunctive relief is an appropriate remedy for infringement of Motorola’s standard essential patents. Motorola appealed the preliminary injunction to the Ninth Circuit which found that Microsoft’s complaint was based on contract, therefore giving the Ninth Circuit jurisdiction. Continue Reading

Will Trade Secrets Finally Get Federal Civil Protection?

Posted in Trade Secrets

On April 29, 2014, Senators Christopher Coons (D-Del.) and Orrin Hatch (R-Utah), both members of the Senate Judiciary Committee, introduced the Defend Trade Secrets Act (S. 2267), a proposed amendment to the Economic Espionage Act of 1996, which made trade secret theft a federal crime.  This bipartisan legislation would enhance trade secret protection by creating a federal private right of action for the misappropriation of trade secrets related to products or services used in interstate or international commerce.

Trade secrets constitute a critical form of intellectual property.  They include confidential and proprietary formulas, designs, instruments, business practices, manufacturing processes, industrial techniques, advertising strategies, and compilations of information in the form of customer lists and customer profiles.  Patents, trademarks, and copyrights are all protected by federal civil law, but there is currently no federal civil remedy for trade secret misappropriation. The Defend Trade Secrets Act would create such a remedy.

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Enlarged Board of Appeal referral – Challenging clarity of post-grant amendments

Posted in European Patent Office (EPO), European patent prosecution

Authored by Jacqueline Ireland

Lack of clarity is not a ground for opposition before the EPO, but can be raised against amendments filed during the opposition proceedings.  In accordance with Article 101(3) EPC, any amendments made to a granted patent during opposition proceedings must meet the requirements of the European Patent Convention.

A new Enlarged Board of Appeal (EBA) referral asks whether an amendment made during EPO opposition proceedings can be challenged for lack of clarity if the amendment simply involves incorporating the feature of a granted dependent claim into the granted independent claim from which it depends.

Previously in T1855/07, the Board of Appeal declined to refer a question on this matter and held that a mere syntactical incorporation of a dependent claim into an independent claim cannot trigger a lack of clarity objection.

However, a few subsequent decisions, e.g., T459/09, have held that a substantial amendment, i.e., an amendment consisting of the incorporation of a technically meaningful feature into an independent claim, in principle, justifies an unrestricted exercise of the examination power derivable from A.101(3) EPC, irrespective of whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.

In the light of these conflicting decisions, in T0373/12 (concerning EP05851833.3) the Opponent requested a stay of proceedings to seek guidance from the EBA on this matter and submitted the following question:

“Does an amendment of an independent claim during opposition proceedings hinder the examination with regard to clarity (A.84EPC), if the amended claim is a combination of an independent claim as granted with the elements of a dependent claim as granted? (Contrary to the decisions T 459/09 and T 409/10).”

The Board of Appeal has allowed the referral.   However, the exact form of the referral question may be revised by the Technical Board of Appeal.

How Will ITC Confirmation That It Has Jurisdiction Over Digital Imports Impact Software and Media Industries?

Posted in International Trade Commission (ITC) litigation, Patent litigation

Authored by Aarti Shah, Member of IP Section and former Senior Investigative Attorney, ITC.

The International Trade Commission (ITC) issued its much-awaited decision in Certain Digital Models on April 3, 2014, affirming in a decision with important implications for the software and media industries that digital importation is within the jurisdiction of the Commission.  Though some commentators have characterized this decision as an expansion of the ITC’s powers, the decision actually affirms powers the ITC has always had and previously exercised. However, the decision is important because it highlights the Commission’s jurisdiction over such imports, is an example of how the Commission adapts its remedies to account for the realities of trade today, and because it may indicate that that the recent trend towards limiting ITC jurisdiction is halting.

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