|All that Vorsprung durch|
Technik -- but still Grumpy
Thursday, 29 January 2015
This Kat was delighted to receive from Katfriend Rutger M. Kleemans (Freshfields Bruckhaus Deringer LLP, Amsterdam) the following news:
On 27 January the Hague Court of Appeal (judges Kalden, Brinkman and Van Nispen) ruled in summary proceedings in a case between Novartis AG and Sun Pharmaceutical Industries BV. The case is about indirect infringement by a so-called skinny label. Novartis’s patent EP 689 is of the Swiss type and discloses the use of zoledronic acid for the treatment of osteoporosis, administered intravenously in a unit dosage form of 2-10 mg where the period of administration is about once a year. Sun was marketing zoledronic acid in an identical dosage form but approved only for use in Paget’s disease, which indication is not covered by EP 689. The Court of Appeal granted Novartis an injunction (4.38)
“given the justified interest of Novartis to act against indirect infringement of its patent rights” which amongst others”
forbids Sun to commit indirect infringement” on pain of an immediately eligible penalty sum. The same patent was previously held invalid by the UK Courts for lack of novelty as a result an invalid priority right in Novartis v Hospira (see [2013 EWCA 516 (Pat.) and  EWCA Civ 1663). Concerning the UK decisions, the Hague Court of Appeal states (4.3):
Now this is jolly interesting, thinks this moggy. First, as mentioned above, the Dutch Court has disagreed with the Courts of England and Wales on the matter of priority entitlement and hence validity (for which see Katpost here for the first instance and here and here for the appeal judgment). But also, the judgment appears in stark contrast to the case last week where Arnold J permitted Actavis to launch a product (pregabalin) with a skinny label without requiring further measures such as overpackaging that were demanded by Pfizer; whereas here the Dutch court finds Sun Pharmaceutical guilty of indirect infringement despite the skinny label referring only to Paget's disease and not osteoporosis.“Departing from the said criterion the Court of Appeal, other than the judge in summary proceedings and the English High Court and Court of Appeal, partly because of different insights (more in particular after reading of the priority document) and partly because of other arguments of parties…”.
You can read the Hague Court of Appeal decision here (in English) and here (in Dutch).
In a decision of 26 January 2015, the Antwerp Court of Appeal decided to refer some preliminary questions to the Court of Justice of the European Union (CJEU) in a patent infringement action brought by United Video Properties (UVP) against Telenet.Says the IPKat, it's plain from the wording of the questions that the referring court, omitting the word "patent", contemplates a ruling that encompasses all forms of IP litigation and not merely patent suits. The CJEU, however, has a track record of not giving answers that run wider than the facts of the underlying national litigation. While it is important to take account of considerations of procedural economy and of not extending a ruling beyond points on which the parties are prepared to argue, it seems immediately apparent to this Kat that there is a more important reason for answering the Antwerp court's broad questions quite narrowly. The words "reasonable and proportional legal costs" are likely to measured by quite different yardsticks in patent litigation than in cases involving trade marks, copyright or designs and the relatively short life of the patent and the impact of technological obsolescence may justify additional expenditure. While it is always annoying to have to keep returning to the CJEU to get it to amplify or fine-tune earlier rulings, that may still be more desirable than giving a broad ruling that causes subsequent injustice or inconvenience to national trial courts.
[and thankfully not 2002, as an earlier version of this blogpost erroneously stated] the President of the Antwerp Commercial Court revoked the Belgian part of United Video Properties' patent for lack of novelty. UVP appealed to the Antwerp Court of Appeal but, after a negative decision in the United Kingdom on the UK part of the same patent (in proceedings against Virgin Media), UVP withdrew its appeal. This meant that the only issue that remained to be decided was the costs.
Telenet argued that, if Belgian law as it stands today were to be applied,
* it would only recover a small part of its attorney fees. The Belgian Act of 21 April 2007 and a Royal Decree of 26 October 2007 indeed provide that only small capped amounts can be recovered from the losing party as compensation for the attorney fees of the successful party.Accordingly, argued Telenet, Belgian law violates Article 14 of IP Enforcement Directive 2004/48 ["Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this"] and asked the Antwerp Court of Appeal to refer preliminary questions to the CJEU. On 26 January 2015 the Antwerp Court of Appeal in essence asked the CJEU whether Article 14 may be interpreted as authorising
* it would not recover the fees it paid to its patent attorney as Belgian case law only provides for the possibility to recover this type of costs where the unsuccessful party acted wrongfully and the fees were incurred in consequence of that wrongdoing.
* a system of small capped amounts as provided for by the Belgian Act of 21 April 2007 and a Royal Decree of 26 October 2007,We believe this case potentially has a huge European impact, as Belgium is not the only Member State to have a system under which only a small part of the real attorney fees can be recovered from the losing party in a IP dispute.
* case law that holds that the successful party can recover the fees it paid to a technical expert only when the losing party acted wrongfully.
|Every successful IP|
litigant's costs dream ...
Wednesday, 28 January 2015
|The typical successful patent practitioner|
of the mid-2030s: technically savvy multi-
tasking female, working from home ...
|The unified patent court: newly|
hatched, but misconceived?
|Group therapy plus refreshments and net-|
working: the ideal mix for a patent conference
Managing Intellectual Property magazine's International Patent Forum 2015 will soon be with us, running on 10 and 11 March. This year's must be the third, since he was pleased to announce the second last year. This Kat -- who has a soft spot for the magazine since he founded it in 1990 and was its first editor -- is pleased to see that admission is free for in-house corporate and patent counsel, academics and R&D professionals and that it is once again offering a £300 discount to readers of this weblog who register for it [to claim this discount, private practitioners should email firstname.lastname@example.org, quoting "IPKAT"]. The venue is once again London's Waldorf Hilton Hotel, which is not 100 miles from his base in Holborn, so he may well be popping in to enjoy the ambience, say hello to his friends and pick up a little inspiration.
[noted on this blog by Darren here], but what is the reality on the ground so far as patents examined and granted before and after Alice are concerned, and for examiners, businesses and investors? Likewise he has received mixed messages concerning China's patent grant and protection policies. These are great topics to talk through and to see how much consensus can be reached when patent owners and practitioners can get put their heads together.
The Forum's website can be accessed here. See you there?
All litigation takes a toll of litigants, whether in terms of money expended, time consumed, emotions drained or blood pressure sent racing. The following guest piece, by long-standing Katfriend, IP practitioner, blogger and Old Nick devotee Barbara Cookson, reflects on an example of a case that yielded the injured party a good deal less and cost considerably more than he originally expected. Yet with an adjustment of his own expectations and a little tweaking of the procedural issues, things could have been so different ...
Snatching defeat from the jaws of victory
When litigating in the Intellectual Property Enterprise Court (IPEC), England and Wales, there are often times when the costs are in danger of becoming significantly greater than the damages in issue. While the costs cap allows those with smaller value claims to have access to justice, costs can become equally contentious.
On 22 January 2015 Judge Hacon gave a written costs judgment in Haiss v Ball  EWHC 74 (IPEC). The costs judgment is suitable for children whereas the principal liability case at  EWPCC 35 may need to be treated with caution as it concerns frames for use during sexual activities involving bondage. At trial in July 2013, Mr Ball was found by Miss Recorder Amanda Michaels to have made infringing products. Damages could not be agreed and were eventually assessed on inquiry on the now almost inevitable user principle [on which see Barbara's earlier guest Katpost here] at 10% in December 2014 at  EWHC 4019 (IPEC). This resulted in the sum due being a paltry £2,859.20 plus interest. Once that judgment was handed down, there remained the usual argument on costs. The idea in the IPEC is that costs should be determined quickly from pre-prepared schedules and that the costs decision be delivered immediately so that it can be recorded in the order prepared by the advocates. This means that both counsel and solicitors -- if present (which they may well not be) -- try to listen while simultaneously scribbling down the judge’s words. The term for this is "taking a note". You cannot use a tape recorder or other instrument for recording sound. It is contempt of court if done without leave of the court. You can of course pay for the official court recording to be transcribed, assuming that there were no faults in the recording process [This Kat can see no good reason for banning the use of recording instruments in the digital age, in which the art of short-hand writing is all but obsolete and grown-up adults can be trusted not to abuse the facility].
One of the claimant's frames --
or a machine for extracting costs?
The problem comes when there have been offers and it is not a simple matter of assessing this costs incurred by the winning party.
In this case, since Haiss and Ball already had their two IPEC hearing dates, there was no time left to determine costs when judgment was handed down so it had to be done on the basis of written submissions. The good side of this is that we get the benefit of the written analysis. However, Judge Hacon doesn’t like it and makes the point that “the parties should ensure that sufficient time is set aside by the court for the hearing following judgment”. This, naturally, is all done in private so anyone interested in the costs may find themselves staring at an empty court room -- as happened to me when I attended the handing down in the Marrubi inquiry as to damages (here). At a later date, on 16 January, a good two hours were spent by the parties in sorting out the question of costs following a Calderbank offer [an offer of payment in settlement of a claim which is made without prejudice, save as to costs] that turned out not to have been beaten. Judge Hacon also gave an extempore judgment on that occasion which, had his predecessor (Mr Justice Birss) known at the pre-trial case management conference what he knew at trial, he would have transferred the case to the small claims track. This had the result that there was no costs order at all for the whole of the inquiry. But I digress ...
Short-hand? No way!
In Haiss v Ball, the offers to settle were Civil Procedure Rules (CPR), Part 36 offers. Judge Hacon begins his judgment by making a general observation encouraging IPEC litigants to take a realistic view as to the likely outcome. In his court, by the time of the case management conference, or completion of pleadings, the parties should be sufficiently informed to make a well-judged offer under CPR Part 36. Part 36 is not the simplest part of the CPR for an inexperienced litigators to navigate (but inexperience gives you no concessions) and it is also scheduled to be updated from 6 April 2015 (there's a useful post on that from McDaniel & Co, here). Nevertheless, Mr Ball -- then acting as a litigant in person -- had made a £15,000 Part 36 offer in August 2013. As is normal for a Part 36 offer, it did not include costs. The relevant period for Haiss to accept it expired without acceptance. The offer remained open under the current rule (from 6 April an offer can be made such that it is automatically revoked at the end of the acceptance period).
Mr Ball did eventually revoke this offer on 30 December 2013. In retrospect this turned out to be a mistake because Mr Haiss did not beat it (though it would not have been a mistake had Mr Haiss seen the light and taken the £15,000 later in the day). His counsel (subsequently appointed presumably under direct access) pleaded that his status as a litigant in person meant that he should be given more indulgence than would be accorded to a company awash with high-powered legal advice. The judge preferred to accept the submission that “litigants in person, like all litigants, must live with the consequence of ill-advised procedural decisions”. The first offer was not totally pointless though, as a result of CPR 44.2(4)(c), which allowed the judge to decide in his discretion that Mr Haiss was unable to claim his costs after the expiry in September 2013 of the relevant period for the offer which he clearly should have accepted. Mr Ball, however, only received his costs from the expiry of the relevant period in March 2014 on a second Part 36 offer on the same terms.Thanks, Barbara, says the IPKat, it's good to see how the admirable intention of the law to deal with litigation costs in a clear and simple manner can work out in practice, when the facts or the litigants are unfavourable. Merpel, who is a bit cross-eyed from reading backwards and forwards through the CPR costs rules, wonders if there isn't an easier way of doing things. Do any of our continental cousins in Europe and our friends from more distant parts have better ways of doing things, she asks.
At this point I feel we should stop for a round of applause for the subtlety of a Haconian judgment ['Haconian' being defined as "sensible because it avoids going into those places that will only get you into trouble if you go there"]. The reasoning is scrupulous. The litigant in person is not allowed any indulgence. Mr Haiss is spared any criticism for the sequence of offers which are spelled out purely factually in the judgment but which suggest to the reader, who knows that the final judgement was for £2,859.20 plus interest, that Mr Haiss conducted his case with some degree of disproportionate oppression. For example it is stated that Mr Haiss’ solicitors wrote to Mr Ball suggesting that he may wish to mortgage or sell property in order to raise the sums Mr Haiss was seeking.
Another useful pointer for the litigator in this judgment is the treatment of Mr Ball’s refusal to mediate. Mr Ball said that, due to the high cost of mediation and the low value (sic) of any settlement, mediation would not be cost-effective. The judge agreed with Mr Ball that, bearing in mind Mr Haiss’ stance with regard to the sum he felt was due by way of damages, he doubted that mediation would have been successful. The refusal to mediate therefore had no effect on the costs assessment.
For the litigator making an offer it may not always be possible, desirable or proportionate to give a detailed analysis of the computation used in this dispute. Judge Hacon confirms that there was no obligation on a party making a Part 36 offer to spell out his reasons -- he is entitled to pluck a figure from the air.
While this began as a case where the costs of the inquiry greatly outweighed the damages, it transpired that the payment ordered still resulted in a sum (£9,710) that significantly exceeded the damages and it was paid by the winner to the loser. It should however be noted that the costs of the liability trial had been paid by Mr Ball since, at that time, he had not learnt about the subtleties of Part 36 or the desirability of representation in court. Therefore, overall proportionate justice probably has been done in purely financial terms. The impact of this case, which began in 2011, on the blood pressure of the participants is unknown to the writer but, we suspect it was not beneficial to either party.
An IPEC litigant works
on reducing his blood pressure
first is his 2014 year in review post for the Law Society of Upper Canada; the second is a set of slides that summarise nearly 60 cases that feature in his review. There are two fresh posts on the jiplp weblog that list intellectual property books which are available for review. Remember: review the book and you get to keep it. The books on offer are listed here and here. Class 99 carries a handy post by Krystian Maciaszek on a recent OHIM Board of Appeal ruling on registered Community designs and how to establish on the evidence that such a design would infringe an earlier copyright work. Over on the 1709 Blog, Ben Challis waxes lyrical on the theme of "where there's a hit, there's a writ".
this link to "Royce Rizzy Hit With Trademark Infringement Lawsuit from Rolls-Royce" was the ever-vigilant Chris Torrero (katpat!), but we thank other readers for doing likewise. This Kat has also received a plethora of links to the BBC piece "Sam Smith: Tom Petty given writing credit for Stay With Me" -- a curious tale if ever there was one. According to the Beeb, "Tom Petty has been given a song writing credit on Sam Smith's hit Stay With Me, because of the similarities to his 1989 track I Won't Back Down". This is the result of an amicably-agreed out-of-court settlement and it's not known whether any money is changing hands [apart, presumably, from Smith and Petty to their respective legal teams, thinks Merpel].
|Patent attorneys seem to be|
getting younger these days
Kicking off the events this year is a social, giving the opportunity to mix with fellow members on 12 February -- to which it is not too late to sign up. Hot on its tail is a great educational which is a must for every fashionable Kat: an update on "Victoria’s Secret, Rihanna and the Future of the Law of Trade Marks and Passing Off" by Charlotte May QC on 4 March. This event is only open to fully paid-up members so, if you aren’t a member, now is the time to join. For more information on IPSoc and on how to become a member please visit its website or email email@example.com.
esterday's Katpost by Merpel,"Life as a patent examiner according to the EPO: paid-for article in the New Scientist", recorded, without criticism or comment, the fact that the European Patent Office had paid a highly respected journal to carry an interview with someone who, it now seems, may not actually be an examiner on life as an EPO examiner. This blogpost encouraged many of our contributors to fire off their salvos against or in defence of the beleaguered body -- but also inspired the following parody of that great ABBA hit and earworm par excellence Money Money Money.
|Copyright infringement |
does not trump
data protection in Greece
|Washington scandals? |
A walk in the park compared to
|Be specific, please!|
In a recent judgment, Case C‑631/13, Arne Forsgren v Österreichisches Patentamt, the Court of Justice of the European Union (CJEU) had to again consider a referral about a Supplementary Protection Certificate (SPC). The judgment was about
* whether an SPC could be obtained to a product per se in ‘separate’ form when the marketing authorisation was for a medicine in which the product is covalently bonded to other ingredients
* whether the SPC could rely on a marketing authorisation which only described the product as a ‘carrier protein’ and did not provide any information about an independent therapeutic effect (such as the one described in the patent on which the SPC was based).What are SPCs?
|Using someone else's marketing |
authorisation can cause trouble
Previous SPC referrals to the CJEU
There have been a surprising number of referrals to the CJEU which concern clarification of the SPC Regulation (see Katpost here). The Regulation is very short and has little description of how the active ingredient, the claims of the basic patent, the marketing authorisation and the product protected by the SPC need to relate to each other. Some of the issues that have arisen have been due to combination products, such as whether a patent to product A can support an SPC to product A+B (see discussion of that here and a Katpost about whether that can be fixed by post grant amendment of the claims here). Essentially the case law is strict on the relationship between the claims of the patent and the definition of the product in the SPC, but there is more flexibility concerning how these relate to the specific medicine that was tested and described in the marketing authorisation. For example, a marketing authorisation which describes a combination product can support an SPC that relates to a single medicinal product which is part of the combination product. The marketing authorisation does not have to be your own. It can be any that relates to your product.
The CJEU has previously decided that an ‘adjuvant’ which enhances the therapeutic of another substance, but which does not have its own therapeutic activity, cannot be an ‘active ingredient’ as defined by the Regulation and therefore cannot be the subject of an SPC (see SPC Blog post here). However in the field of SPCs for plant protection products the CJEU has also decided that a ‘safener’ which protects a plant from the harmful effects of a herbicide can be the subject of an SPC (see Katpost here).
The facts of the present case
|Perhaps the CJEU simply enjoyed|
having lots of SPC referrals
Mr Forsgren argued that Protein D present in Synflorix would have two effects:
* as a vaccine against Haemophilus influenza, and
*as an adjuvant for the pneumococcal polysaccharides.For the first effect he argued there is nothing in the Regulation that requires the marketing authorisation to refer to the therapeutic effect. For the second effect he referred to the CJEU’s previous ruling that an SPC could be granted for a ‘safener’.
The referring Court argued that the covalently bound form of a substance would have different properties, and thus an SPC could only be granted for the covalently bound form of Protein D. It also argued against the granting of the SPC based on the fact the marketing authorisation did not refer to the independent activity of Protein D against Haemophilus influenzae.
The European Commission also made submissions, arguing that the SPC system needed simplicity and transparency, which would not be achieved if there was a need to look beyond the marketing authorisation to establish whether a substance was an active ingredient.
The CJEU’s response
The CJEU found that the ‘covalent bonding’ issue should not prevent the granting of an SPC.
|Independent action is needed |
before an SPC can be granted
This Kat notes that the judgment does not require the marketing authorisation to ‘disclose’ the independent ‘actions’ required for a substance to be considered an active ingredient, but only that they must be ‘covered’ by the therapeutic indications the marketing authorisations refer to. That seems to give some leniency in the information which the marketing authorisation needs to provide, but presumably also leaves the door open for future referrals on the issue!
The specific questions that were referred to the CJEU together with the CJEU’s formal answers can be found in this SPC Blog post.