The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Thursday, 25 May 2017

Life as an IP Lawyer: Singapore

The AmeriKat's professional life, be it on the Kat or sat at her desk litigating her hours away, involves a huge amount of coordination, support and opposition with lawyers from all over the world. One of the IPKat's key objectives is to bring this global IP community closer together by sharing IP decisions, legislation and practice from across the world with our readers, with the aim that by understanding our unique perspectives on the culture of IP practice we can work together to make IP a success story for innovators, creators, users and the public. With those grand aims, the AmeriKat thought it would be worthwhile to ask the next generation of global IP lawyers to illuminate IP practice in their jurisdiction, as well as to give readers some fun reading over their lunch-al-desko...


Aaron Thng
For the fifth in the series, we travel over 6,700 miles south east to Singapore where Aaron Thng at Amica Law grapples with with cross-border enforcement, a paperless law firm and the dream of taking Chief Judge Kozinski out for lunch.

What can you see from your office window right now?

Ventilation shafts, someone else’s roof garden, and if I crane my neck, a bit of the Singapore river.

When did you know that you wanted to pursue a career in IP?

It’s always been something I was interested in, because of its connection with art and design. Also, the concept of being able to own, and extract value from, something intangible is something I find fascinating.

Walk us through a typical day... 

I get up at 8, and try to get in a bit of reading before work. Once at the office, its coffee, news from NextDraft (Dave Pell’s review of the day past) and then, work proper.

What are the key differences in your system that client/other lawyers from outside the jurisdiction find surprising or strange?

Because Singapore is tiny, our courts are not divided into federal or state courts. There is the Supreme Court, which consists of a High Court and a Court of Appeal, and then the State Court, which handles most first instance cases of lower value.

That, and our long judgments. A short judgment here usually weighs in at around 50 pages.

As the IPKat's readers are likely eating their lunch while reading this, what is a typical lunch for you?  

Frog leg porridge. It’s a rice porridge with braised frogs, usually cooked in a clay pot.

What are the challenges that are facing the next generation of IP lawyers in your jurisdiction? How are those challenges different from the previous generation?

With so many businesses, especially internet start-ups, being able to operate so easily across borders, the concept of "jurisdictions" has become a lot more dynamic. A holistic enforcement of IP rights now usually requires coordination between multiple parties and multiple sets of lawyers, across jurisdictions.

What are the misnomers that people have about IP practice in your jurisdiction?

Most people don’t immediately see the value of IP until they run into problems with it. This is an oversight I try to disabuse my clients of.

If you could change one thing about IP practice in your jurisdiction, what would it be? 

I’d want to streamline the discovery process. In a lot of IP cases, parties refuse to disclose documents because they claim them to be confidential. As a result, many cases become bogged down at the discovery stage.

What advice do you give clients when they are looking to protect or enforce IP rights in your jurisdiction?

That based on how open markets have become, it is seldom sufficient to simply apply for protection in one jurisdiction, but not the next. This applies especially if your business is internet-based.

What gives you the biggest thrill in your job? 

Defending people and businesses against over-zealous enforcement of IP rights, and leaving work with nothing left in my in-tray.

View from Aaron's office
What are the top trends or cases that we should be looking out for in your jurisdiction in 2016?

Hollywood studios are starting to take action against illegal downloaders in Singapore. It started with the rights holders behind the Dallas Buyers Club movie, and now a few more studios have entered the fray. It remains to be seen how successful they will be, though.

To be successful in your jurisdiction, what are the key skills a young IP lawyer needs? 

An interest in everything. IP law percolates through every industry.

What other jurisdictions do you work with the most in your practice?

Malaysia (naturally), Japan, and the US.

Looking into your crystal ball, where do you see the profession in 10 years’ time?

Paperless law firms, with many processes automated, and with skeletal staffing. I’m curious to see how AI robots, like ROSS, will improve the profession.

If you could practice IP law anywhere else in the world for a year, where would that be and why? 

Silicon Valley, because that place, more so than anywhere else, drives innovation and disruptive technologies.

If you could have lunch with someone famous in the IP world (judge, lawyer, inventor, politician, alive or dead), who would that be?

I would want to chill with Chief Judge Alex Kozinski of the US 9th Circuit. He can choose whatever he wants for breakfast, but I’d want to pick his brain on the theory of intellectual property, and of law in general. I’d also want to pick up some writing tips.

What is the best piece of advice you have ever been given?

That litigation is actually a lot like tennis - they’re really all about angles. Also, in both, the players hold themselves to a strict codes of ethics, there is no room for brazen aggression or cheap shots, and sometimes, a delicate touch is all you need.

If our readers were to come to your city, what are the top three things you recommend they see, do and eat (in that order)?

1. Coney Island, in the north-east of Singapore, because it is the one place here that approximates ethereal beauty. Also, there are many nice birds.

2. The Singapore Zoo (one of the best rainforest zoos in the world) is always good. I visit it regularly.

3. Kway Chap, which is a dish of flat, broad rice sheets in a soup made with dark soy sauce, and served with pig offal, braised duck meat, bean-curd, salted vegetables, and hard-boiled eggs. I doubt it’s for everybody, but at just $3, there’s nothing better.

Wednesday, 24 May 2017

Big Data, products & processes: being a German patentee in the era of the Rezeptortyrosinkinase decisions

The IPKat trying to put his paw on which of the data
may or may not be infringing....
Here is a pretty uncontroversial prediction - we are going to see more infringement cases concerning products obtained directly from a patented process where the product ends up being data, for example from test results that are used as the basis for diagnosis or treatment.  But with data entering a jurisdiction from a processes occurring abroad, what is a poor patentee to do (especially when fighting with the loss of identity test in Pioneer v Warner)?

Kat friend and cross-border colleague Jérôme Kommer in the Mannheim office of Quinn Emanuel reports on the current position in Germany following recent Supreme Court decisions.  Over to Jérôme:
"No doubt about it, we are living in the era of Big Data solutions used for generating and discovering information that has been previously unavailable or prohibitively difficult to obtain.  With the merging of data analysis and other technologies, such as gene sequencing and diagnostics, where does that leave litigants, especially in cases in which the information as such may have its own, potentially considerable, value?  
Last year, the German Supreme Court had the chance to address these questions in two decisions involving the same patent, EP 0 959 132 B1.  The '132 patent covered a nucleic acid molecule encoding a receptor protein kinase (“fms-like tyrosine kinase 3” or “FLT3 gene”, in particular) and a method for detecting the claimed nucleic acid molecule. The detection can be used to diagnose leukemia, for example.
In the first decision (Rezeptortyrosinkinase I of January 19, 2016), the Supreme Court found the subject matter of the claims directed at the nucleic acid molecule patentable subject matter.  This was despite the fact that the claims did not contain any language indicating that the nucleic acid molecule needed to be isolated or created by a particular technical process. In the Supreme Court’s opinion it was sufficient that product claims necessarily (and inherently) require that the product is provided by a technical process (para. 51). In addition, it was not necessary to identify an “inventive concept” to distinguish patentable subject matter from unpatentable discoveries (para. 50, distinguishing German and European patent law from the US Supreme Court’s Mayo v. Prometheus, 566 U.S. __ (2012)). Because it referred to these product claims, the method was also patentable (para. 53).
The importance of the second decision (Rezeptortyrosinkinase II of September 27, 2016) in the parallel infringement case goes far beyond the already important issues of patentability surrounding gene sequencing and its use to diagnose diseases of the first decision.  Because the defendants practiced the protected method outside of Germany and just sent the results of the diagnosis back to their German customers, the defendants could only infringe the German part of EP 0 959 132 B1 if these results constituted a product directly produced by the protected process (“unmittelbares Verfahrenserzeugnis”, § 9 No. 3 German Patent Act).
The Supreme Court denied infringement and held that:
(1) the results, as a sequence of data, could only be a product directly produced by a protected process if the sequence of data has product-like technical characteristics provided by the process such that it could be subject to a product claim, and
(2) the presentation of the results and any findings based on the process are not a product according to § 9 No. 3 German Patent Act because it is just presentation of information that is excluded from patentable subject matter, § 1 (3) no. 4 German Patent Act, Art. 52 (2)(d) EPC.
The reference by the Supreme Court to and affirmation of its earlier decision in MPEG-2-Videosignalcodierung (a case about video images encoded by a patented encoding method that were stored on DVDs) shows that the new decision is technologically neutral.  The decision not only applies to test results obtained through genetic tests, but equally to other processes producing data and, thus, information.
The Supreme Court successfully walks the line between providing protection for a technical teaching protected by the respective process claim and not “excluding the exclusion” from patentability for the untechnical mere presentation of information. For this purpose, the Supreme Court distinguishes the data structure from the information contained within the data (para. 21 of the decision). The data structure which results from the patented process can be patentable, just like a method about how to display moving images on a TV set is patentable. On the other hand, the information itself, i.e. the specific moving image, e.g. a video of a horse race, cannot be patented because it is not technical (cf. para. 22, 24 of the decision).
Applied to the nucleic acid molecule detection method, this meant that the only “product” of the method was a biochemical result about the presence or absence of a specific mutation indicating leukemia or not (para. 19 of the decision). Only that result - presence of leukemia or not - together with some supporting information and not the original data sequence were sent to the German customers. Because there was no specific (and even a less technical) way of presenting this information or any other characteristics obtained from the information obtained form the patented method, these findings did not amount to a use of the patented invention (para. 24 of the decision). Therefore, the Supreme Court denied protection under § 9 No. 3 German Patent Act.

The two Rezeptortyrosinkinase decisions clarify the answers to the questions mentioned at the beginning, contain specific guidance for the protection of test results based on gene sequencing, and strike a balance between the accessibility of patent protection for such methods while excluding resulting mere information from patent protection.
Beyond these two decisions, it will be interesting to see the further development of the Supreme Court’s general acknowledgement of the patentability of data sequences. That data sequences need to be able to be used an arbitrary number of times just like physical products and can constitute commercial goods, which is generally the case if they can be reproduced on physical data carriers and/or transmitted via the Internet (MPEG-2-Videosignalcodierung, para. 22, 23), is not much of a hurdle. The more interesting and decisive test for the scope of product-by-process claims and patentability of data generating methods relates to the technical nature of the respective claim’s subject matter."
Is the message to patentees to patent a data sequence or structure containing the abbreviated results? Would that have saved the patentee? Jérôme responds:
"If there was a data sequence with sufficient technical characteristics that could have been made subject of a claim (e.g. with a data structure or “syntax” that at least contributes to the solution of a technical problem), that could have been a way to (also) protect the commercially valuable information contained within the data sequence. Of course, the data sequence as the protected product would have to be novel and inventive, too. However, it is unlikely that that would have been possible in the case decided by the Supreme Court. And even though the information as such might have its own (considerable) commercial value, patent protection should be limited to the novel and inventive technical teaching provided by the patentee. Here, this was the method of identifying the claimed nucleic acid molecule, which could have been protected outside Germany if the patentee had applied for patent protection in the country in which the method was practiced."
The AmeriKat also understands that there was a case heard last week before the Supreme Court in Germany about the liability for patent infringement in Germany if the infringer "only" delivers infringing products to customers outside Germany which then might end up in Germany.  The case no is X ZR 120/15.  Watch the IPKat for future updates.

Is there copyright in the taste of a cheese? Sensory copyright finally makes its way to CJEU

Readers with an interest for copyright in unusual or, rather, less conventional 'objects' [I will explain below why the word 'works' might not be appropriate] will know that for quite some time it has been disputed whether IP protection - particularly in the form of copyright - is available to, say, perfumes or culinary creations.

So far proponents of sensory copyright have not been really met with widespread approval [for the sake of a debate organised in London a while ago by IPKat founder Jeremy Phillips and BLACA, I supported the motion that there is indeed such thing as sensory copyright - my slides are available here; Jeremy's report can be read here].

Not long time ago, contrary to some lower instances' decisions, the French Supreme Court dismissed for instance the idea that copyright could subsist in a perfume [herehere for a Dutch take on the matter], and in 2015 a Dutch court (Gelderland District Court) refused to acknowledge that copyright would subsist in the taste of a cheese, Heks'nkaas [see here and here].

Speaking of cheese, the Dutch saga of Heks'nkaas is - thankfully - not over.

The case is in fact making its way to the Court of Justice of the European Union (CJEU) for guidance on whether EU law allows copyright protection in taste (in this case, the taste of a cheese). 

Despite its subject-matter this new reference is anything but cheesy. 

The content of the CJEU reference

As explained by Amsterdam-based Syb Terpstra (De Brauw Blackstone Westbroek N.V), counsel to one of the parties in the Heks'nkaas case, yesterday the Arnhem-Leeuwarden Court of Appeal issued an interim decision, in which it held that guidance from the CJEU is needed to determine:

  1. Whether EU law [read: the InfoSoc Directiveallows copyright protection in taste;
  2. If so, what requirements must be met in order to determine subsistence of copyright protection? 

The actual questions are available (in Dutch) here [thanks to @TreatyNotifier for providing the link].

Why this reference is important

This new case promises to be a very interesting and important one, if the CJEU deems it admissible. 

The reason is essentially that the CJEU will need to clarify at last what is meant by 'work', thus revisiting and elaborating further on its earlier case law, notably Infopaq and its progeny [particularly BSA and FAPL].

In that string of cases the CJEU held that under EU law copyright protection should arise any time a work is 'its author’s own intellectual creation', ie a work is sufficiently original. In FAPL, for instance, the CJEU had to determine whether football matches as such can be eligible for copyright protection. The court denied that that would be the case of football matches because they "cannot be classified as works. To be so classified, the subject-matter concerned would have to be original in the sense that it is its author’s own intellectual creation." [paras 96 and 97]

There is no legislative definition of 'work'. I argued elsewhere that CJEU case law appears to suggest that the notions of 'originality' and 'work' conflate, in the sense that the assessment of originality entails that of whether a certain 'object' is to be regarded as a 'work'. Possibly the reason for this is that in the Infopaq line of cases (and even in BSA), the focus of the questions referred to the CJEU was more on what originality means, rather than what a work is. In this sense, the Heks'nkaas case will be to some extent different [at least as long as the CJEU does stick to the text of the questions as referred, instead of re-writing them]. The focus will be primarily on defining the notion of 'work' and then perhaps re-visit the topic of originality.

Guidance as to what a 'work' is - at least in the context of the InfoSoc Directive - must be found outside the body of EU law, possibly in Article 2 of the Berne Convention. The InfoSoc Directive, in fact, implemented into the EU legal order the WIPO Internet Treaties; the WIPO Copyright Treaty mandates compliance with Articles 1 to 21 of the Berne Convention.

The Berne Convention adopts an open-ended definition of 'literary and artistic works'. Article 2(1) does not define the term ‘works’, although it clarifies that such expression “shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”. 

According to the 1978 WIPO Guide, from the general tone of the Convention it follows that “these must be intellectual creations (the words appear in paragraph (5) of Article 2).” The same Guide adds that “[f]or this reason many national laws … provide that, to enjoy protection, the works must be original in the sense that they possess creativity.” 

In general terms, it may be said that “[t]he term ‘production’ … only indicates that the protected object must have emerged from the mind of a person, left the sphere of the mind and become realized. This coincides with the term ‘expression’ also contained in the definition.” [§5.66]

Does the taste of a cheese fall within such definition of 'work'? 

'Say cheese'
Why this reference could have been is important for the UK

An additional profile of relevance of this new CJEU case is that there is the potential for the CJEU to hold - particularly, but not necessarily only, if it acknowledges the possibility of sensory copyright - that EU law envisages an open-ended subject-matter categorisation.

While this is already the case of continental copyright traditions (relevant statutes do not limit the types of works in which copyright can subsist), the same is not true for the UK.

The Copyright, Designs and Patents Act 1988, in fact, envisages a closed list of eligible copyright subject-matter [see also my guidance for students here]. As UK-based readers know, this has proved challenging for less conventional works, in the sense that not always a suitable category can be identified. This has resulted in denying copyright protection in, say, the assembly of a scene (Creation Records) or the Stormtrooper helmet (Lucasfilm).

In a piece published on GRURInt I argued that EU law - or, rather, CJEU case law - mandates the opening up of UK subject-matter list. Although 1709 Blog readers did not agree with this proposition, in his judgment in SAS v WPL, Arnold J [at para 27] held that: "In the light of a number of recent judgments of the CJEU, it may be arguable that it is not a fatal objection to a claim that copyright subsists in a particular work that the work is not one of the kinds of work listed in section 1(1)(a) of the Copyright, Designs and Patents 1988 and defined elsewhere in that Act." At the same paragraph, however, referring to Infopaq the learned judge added that: "it remains clear that the putative copyright work must be a literary or artistic work within the meaning of Article 2(1) of the Berne Convention ... While the definition of "literary and artistic works" in Article 2(1) is expansive and open-ended, it is not unlimited."

With hard Brexit [ie a situation in which the UK will be no longer bound by EU law and CJEU judgments] on the horizon, some might think that the Heks'nkaas case will have a more limited relevance for the UK. However:

  • According to latest CJEU statistics [the average duration of CJEU proceedings in the context of references for a preliminary ruling is 14.7 months: see p. 28], when the Heks'nkaas case is decided the UK will be still part of the EU;
  • As clarified by UK Government in its White Paper accompanying the Great Repeal Bill, this bill "will provide that historic CJEU case law be given the same binding, or precedent, status in [UK] courts as decisions of [UK] Supreme Court" [p. 14].

In conclusion

The Heks'nkaas case is one to watch. Not only will it determine to what extent copyright protection can be stretched [let's not forget that since Sieckmann, trade mark protection has not been really available to sensory 'signs', and things will not really change in my view with the disappearance of the graphic representation requirement], but also what system of copyright categories EU law or, rather, the CJEU envisages.

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

If the first hot and sunny days of the year have distracted you from the IP news, no problem! The 148th edition of Never Too Late is here to (re)freshen you up.

Typical late spring Kat waiting to catch...some sun
Book Review: Russell-Clarke and Howe on Industrial Designs The 9th edition of the go-to practitioner's text for design law in the UK is out. Extensively updated, it is the definitive guide to the protection of industrial designs in the UK.

Scope of review by the General Court of decisions by the EUIPO Board of Appeal: the last act in LAGUIOLE Former Guest Kat Valentina Torelli talks about the guidelines set in the LAGUIOLE case, where the Court confirmed that the GC must apply rules of national law where Article 8(4) EUTMR is invoked in proceedings before the EUIPO.

Dining out on trade marks - ZUMA - the own name defence for pets and groundless threats The case Azumi Ltd v Zuma's Choice Pet Products Ltd [2017] EWHC 609, saw the trade mark dispute between a premium dog food company and a high-end Japanese restaurant in London. A fight to the bone!

The popular China copyright monitoring website 101 On April 19, the Copyright Society of China announced the official online Copyright Monitoring Center. Kat Tian Lu discussed the highlights of the service and the emergence in China for the need of “pay for copyright”.

Where are the women? Supreme Court hosts London launch of ChIPs with call to action to advance women in tech, law and policy The AmeriKat discusses the ChIPs meeting in London, a full-house event held by the non-partisan, non-profit organisation, where the ups and downs of women in tech, law and policy were analysed.

Br*x*t and brands – out of the EU in 680 days What will happen to IP rights in a post-Brexit world? Former Guest Kat Darren Meale discerns the question in all of the IP facets, also reassuring the IP world that together any change can be solved.

In memoriam: Adolph Kiefer, Olympic gold medalist, innovator and inventor extraordinaire Adolph Kiefer, a world record holder and Olympic champion literally swam in talent, as he was not only an aquatics sport prodigy, but also an innovator, as in the 60's and 70's he filed several utility and design patents. The IPKat celebrates his polyhedral talents.

Digital copies, exhaustion, and blockchains: lack of legal clarity to be offset by technological advancement and evolving consumption patterns? Kat Eleonora Rosati talks about this particularly complex issue, by discussing the relevant case -law and by giving the latest updates, notably about the first 'disintegrating e-book'. Stay tuned.

German TV show allowed to call right wing politician 'Nazi sl*t', Hamburg court rules This interesting case deals with the concept of satire, where the court seised deemed that the use of the terms was an hyperbole and not an implication of support of the ideology. Katfriend Mirko Brüß reports.

Latest leak reveals that review of EU IP enforcement framework is currently in a deadlock The enforcement framework of the Digital Single Market Strategy seems to not have progressed in the past two years, according to a leaked Commission internal note. Will the enforcement framework be changed? To be continued...

Never Too Late 147 [week ending on Sunday 7 May] Deterrence sentencing for copyright infringement: Court of Appeal gives guidance I AIPPI Event Report: Will the Unwired Planet v Huawei FRAND judgment lead to fewer NPEs? I Unjustified Threats Bill receives royal assent I"Socialistic brand": a unique category of vintage brand I Movement afoot in the patent scene in Argentina I‘Right to be forgotten’ may potentially apply to all top-level domains, says Swedish Data Protection Authority I A General Civil Restraint Order against issuing further IP claims - Is this the end of the Perry v Brundle saga? I Monday Miscellany, Wednesday Whimsies

Never Too Late 146 [week ending on Sunday 30 April] Italian court finds Google and YouTube liable for failing to remove unlicensed content (but confirms eligibility for safe harbour protection) I Happy World IP Day! I Protecting the SOVEREIGN - The Royal Mint v The Commonwealth Mint I BGH on the freedom of the seas, ahm, panorama I ESPN: When Teflon is not enough in the face of platform disruption I BREAKING: CJEU in Filmspeler rules that the sale of a multimedia player is a ‘communication to the public’ I Filmspeler, the right of communication to the public, and unlawful streams: a landmark decision I Varsity Brands and Star Atheltica - A Closer Look I Court of Appeal dismisses Huawei's first appeal in Unwired Planet patent fight I Once upon a time: Inventive step argumentation as storytelling I Tuesday Miscellany, Around the IP Blogs, Never Too Late

Never Too Late 145 [week ending on Sunday 23 April] Should investment in innovation worry about geographic dispersion? Steve Case says "yes", but what about Pareto?|Trade mark trolls in Cuba: an update|Double-check your docketing!|Fordham 25|Unwired Planet v Huawei: Is FRAND now a competition law free zone? Not so fast…|European patent troll boom spurs Google, Adidas, Intel & Daimler backed IP2Innovate to demand Commission "get tough with US patent trolls"|AIPPI Report: Recapping 2016's most important soft IP cases

Never Too Late 144 [week ending on Sunday 16 April] Around the IP blogs |Time to celebrate, debate and have fun! Register for Fordham IP conference's 25th anniversary|Commission Roadmap: No Directive on SEPs (for now)|Author of Wall Street Charging Bull is raging over Fearless Girl, but does he have a valid moral right claim?|Launch Event: Advancing women in tech, law and policy, ChIPs comes to London on 27 April 2017|Am I covered by that UK copyright exception? Here's my checklist|Fujifilm v AbbVie: practice, procedure and policy analysis|Overturning a trade mark opposition decision - Part 2 - SOULUXE - likelihood of confusion|Overturning a trade mark opposition decision - Part 1 - IWATCH, descriptive goods and acquired distinctiveness

Tuesday, 23 May 2017

US Supreme Court uses TC Heartland to blunt key troll tool, but will California welcome the next wave of troll litigation?

The AmeriKat's view on her way to San Jose.  Will
California be the new hotbed of troll litigation?  
With the ramifications of yesterday's US Supreme Court decision in TC Heartland reverberating from coast to coast, the AmeriKat has asked her Kat friends at California-headquartered firm, Fenwick & West, to provide some more background for European readers, what this means for patent trolls and foreign defendants.  Patent litigation partner Mike Sacksteder and associate Athul Acharya report:    
"For the past 27 years, plaintiffs have been able to bring patent infringement suits against most corporations almost anywhere in the United States. So-called non-practicing entities (“NPEs”), also known as “patent trolls,” have taken advantage of that fact to make the United States District Court for the Eastern District of Texas the country’s most popular forum for patent lawsuits by a huge margin. But yesterday, in TC Heartland LLC v. Kraft Food Group Brands LLC, the United States Supreme Court changed the dynamic, simply by reinterpreting a single word in the patent venue statute. As a result of the Court’s decision, a domestic corporation not organized under Texas law and without a “regular and established place of business” in the Eastern District is no longer amenable to suit there.
Legal Framework:  Where does a corporation reside? 
The legal question in the case is relatively simple: Where does a corporation “reside”? The United States’ general venue statute provides that a defendant may be sued where it resides, and that “for all venue purposes”—“except as otherwise provided by law”—a defendant corporation “shall be deemed to reside” in any judicial district where it is “subject to the court’s personal jurisdiction.” To simplify somewhat, in practice this has meant that corporations that direct their activities throughout the States can more or less be sued throughout the States. A more specific venue statute for patent cases provides that a corporate defendant may be sued for patent infringement either in a district where it has a “regular and established place of business” and has committed alleged acts of infringement, or in the state where it “resides.” The issue before the Court, therefore, was whether the general statute supplies the definition of “resides” in the patent-specific statute, or whether the specific statute is, in the words of the general statute, an exception “otherwise provided by law.”
The evolution of the field
The Supreme Court had previously addressed this question in its 1957 decision Fourco Glass Co. v. Transmirra Products Corp., in which it canvassed the history of the statute and determined that Congress had enacted the patent venue statute specifically to limit the fora in which a corporate defendant could be sued for patent infringement. The Fourco Court accordingly held that a corporation’s residence for patent purposes was only its domicile—the state in which it was incorporated—and that the patent venue statute stood “complete, independent and alone controlling in its sphere.”
In 1988, however, Congress amended the general venue statute. Shortly thereafter, in its 1990 decision VE Holding Corp. v. Johnson Gas Appliance Co., the United States Court of Appeals for the Federal Circuit—an intermediate court that hears all patent appeals from American trial courts—held that the amendments to the general venue statute had brought the patent-specific statute within the general statute’s ambit. Absent review by the Supreme Court, that decision was binding throughout the States.
As discussed above, in the 27 years since VE Holding, patent plaintiffs—in particular, NPEs—have flocked to a single district court tucked away in Marshall, Texas, and the small cities nearby. More than 40 percent of U.S. patent cases are filed in the Eastern District of Texas, and a quarter of all patent cases nationwide are overseen by a single judge there. More than 90 percent of those cases are brought by non-practicing entities. Indeed, some see the explosion in such suits in the last decade as a driving force behind the Supreme Court’s recently renewed interest in the field of patent law.
Justices disfavor implied amendment 
The Court’s unanimous decision in TC Heartland rejected the Federal Circuit’s decision in VE Holding and restored the Fourco regime. Invoking the canon against implied repeals—here applied to implied amendment—the Court reasoned that absent a “relatively clear indication of its intent,” Congress does not alter the meaning of one statute by amending another. Here, Congress may have amended the general venue statute in 1988 and 2011, but it had left the patent venue statute untouched since the Fourco decision. The Court accordingly held that the amendment of the former did not affect the meaning of the latter. That statute therefore continues to mean what it meant in Fourco: A suit against a domestic corporation for patent infringement must be brought either where the corporation has an established place of business and commits an act of alleged infringement, or in the state in which it is incorporated. 
Takeaway:  Patent trolls no longer pick the playing field - most of the time
TC Heartland is a game-changing decision for a large majority of NPE lawsuits, but it will not end such suits, nor will it keep all of them out of the Eastern District of Texas. Although the majority of such cases will need to be filed elsewhere, venue will remain proper against any domestic defendant that maintains a “regular and established place of business” in the District and is alleged to infringe there—by making, using, selling, or offering to sell the allegedly infringing product or service. The remaining troll suits are likely to concentrate to a certain extent in Delaware, where many companies are incorporated, and in technology centers such as the Northern District of California, where many NPE targets are headquartered.
But what all this means for foreign corporate defendants is uncertain—the Supreme Court studiously avoided opining on the subject in its opinion in TC Heartland. In its last word about foreign defendants in patent lawsuits, however, the Court held that “suits against aliens are wholly outside the operation of all federal venue laws, general and special.” The statutory framework has changed since that decision, but the general principle has not: “a defendant not resident in the United States may be sued in any judicial district.” The Court’s decision this week means that the question will be subject to litigation anew—but in all likelihood, venue for patent suits against foreign corporations will continue to lie anywhere in the United States."

Shinder, Shinder, Shinder … will you ever be like Tinder?

Shinder's founder
and only available match,
Shed Simove
Move on Tinder: there is a new dating app on the market, conveniently named Shinder
Katfriend Nedim Malovic (Sandart & Partners) looks into the IP implications of this genius entrepreneurial/'romantic' idea by Shed Simove [if you are wondering who that is, here is his website].
Here’s what Nedim writes:
“Shed Simove, a British author, performer, self-proclaimed motivational speaker and entrepreneur has successfully created his own web-based dating app where you get one chance to swipe right on just one man: Shed Simove himself. 
The app specifically targets women, although men can also sign in. However, men who try to match with Mr Simove are greeted with a brief message informing them that Mr Simove prefers dating women.
The idea of a Shinder app came after using other apps. Mr Simove tried to come across as quirky as possible on other dating apps to attract better matches (this smells of too many left swipes), but had little luck.
Mr Simove employed several techniques, including: photoshopping a Tinder photo of himself bursting out of a Kinder Surprise egg (“Tinder Surprise”) [should be swiped right just for this]; and making a “Bumble pick of the month” logo (“No one cared”). 
UK IPO trade mark application for 'Shinder'
All this until he decided that he needed to adopt a different strategy: Shinder was thus born.

Shinder works in a way similar to Tinder (apparently it also employs an algorithm similar to the one of Tinder): you set up a profile and get to swipe. If users swipe left, the app tells you “You dodged a bullet there, Shed is extremely high maintenance.” If you swipe right, the app promises to notify you if it’s a match. If Mr Simove likes you back, the app opens up a dialogue between the two parties.
A blatant trade mark infringement… or not?
The first IP implication of all this is the use of Shinder as the name of the app: can something like this be tolerated in a Tinder-dominated trade mark world?
A simple trade mark search reveals that Tinder has filed and obtained an international trade mark registration for territories including the EU and the US. There is therefore a 'Tinder' trade mark registered for services in classes 9, 42 and 45 of the Nice Classification.  
As the UK IPO trade mark database promptly reveals, a while ago Mr Simove filed a domestic trade mark application – for 'Shinder' for services in classes 9, 42 and 45 of the Nice Classification.
This brings into consideration whether Tinder (arguably also a trade mark with a reputation) may successfully oppose the application on the basis of a conflict with its own registered trade mark (Tinder has indeed opposed the application).
The Tinder and Shinder signs are phonetically and graphically similar, although the sign above the letter “i” is a small flame for Tinder and a devil’s silhouette for Shinder.
Another noteworthy feature is the colour of the logos, both in not so dissimilar shades of red. In addition to the similarity of the signs, both signs are also used for identical services.
There seems to be indeed a serious likelihood that Tinder’s opposition (already filed) will succeed.

Infringement proceedings?
In addition to the opposition aspect, should Mr Simove use his ‘Shinder’ sign in the course of trade, could Tinder also succeed in an action for trade mark infringement?
Also here the answer appears to have an answer in the affirmative. 
A question that might be raised is whether Mr Simove could successfully argue that Shinder is a parody of Tinder.
At the moment there is no statutory defence for parody at the EU level, despite the timid opening made by the new Trade Mark Directive and the Trade Mark Regulation as revised in 2015.
The reason for a non-existent parody defence under trade mark law may be that a sign that distorts one that has been registered as a trade mark may take unfair advantage of its distinctive character and repute. This is at least what the German Bundesgerichthof thought in its decision of 2 April 2015 - I ZR 59/13 - Springender Pudel (see here for a summary of the decision). The eminent risk of allowing a parody defence seems to be that the defendant might profit from the similarity of his and the trade mark owner’s signs to attract a level of attention for his products that it would have otherwise not been able to have."  

Monday, 22 May 2017

BREAKING: Supreme Court limits US patentee's forum shopping capabilities

What do you mean I need to curtail my
forum shopping habit?
Hot off the presses in DC this morning is the much-awaited decision in TC Heartland LLC v Kraft Foods Group Brands LLC (2017).  In a unanimous (8-0) decision, the justices found in favor of TC Heartland in holding that 28 U.S.C. §1400(b)  - the patent venue statute - is to be interpreted narrowly.  The provision states that:
“[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” (empahsis added)
The Court held that "resides" means the State of incorporation (see Fourco Glass Co v Transmirra Products Corp 352 US 222 (1957)).  It does not extend to mere business activity.  

A broader definition of "residence" set out in the the general venue statute - 28 U.S.C. §1391(c) - had been amended twice to provide that "“[e]xcept as otherwise provided by law” and “[f]or all venue purposes,” a corporation 
“shall be deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the court’s personal jurisdiction with respect to the civil action in question.” (emphasis added)
The question for the Court was whether this definition overrode §1400(b).  The answer was "no". Delivering the opinion of the Court, Justice Thomas wrote:
"In Fourco, this Court definitively and unambiguously held that the word “reside[nce]” in §1400(b) has a particular meaning as applied to domestic corporations: It refers only to the State of incorporation. Congress has not amended §1400(b) since Fourco, and neither party asks us to reconsider our holding in that case. Accordingly, the only question we must answer is whether Congress changed the meaning of §1400(b) when it amended §1391. When Congress intends to effect a change of that kind, it ordinarily provides a relatively clear indication of its intent in the text of the amended provision. See United States v. Madigan, 300 U. S. 500, 506 (1937)
. . .
The current version of §1391 does not contain any indication that Congress intended to alter the meaning of §1400(b) as interpreted in Fourco. Although the current version of §1391(c) provides a default rule that applies “[f]or all venue purposes,” the version at issue in Fourco similarly provided a default rule that applied “for venue purposes.” 353 U. S., at 223 (internal quotation marks omitted). In this context, we do not see any material difference between the two phrasings
. . .
Fourco’s holding rests on even firmer footing now that §1391’s saving clause expressly contemplates that certain venue statutes may retain definitions of “resides” that conflict with its default definition. In short, the saving clause makes explicit the qualification that this Court previously found implicit in the statute. "  (emphasis added)
Heartland had challenged the decision by Kraft Foods to commence infringements proceedings in Delaware (where Kraft is incorporated) on the basis that Heartland shipped the allegedly infringing products into the state.  Heartland, otherwise, had no meaningful local presence in Delaware.  Heartland applied to dismiss the case or transfer venue to Indiana, where it is headquartered.  The case has now been remanded.

So will this be the blow to the much loved (by patentees, anyway) Eastern District of Texas that so many defendants have been dreaming of?  Is this a further blow to patent trolls in the US?  Will patentees look to other global venues where forum shopping presents more opportunities, for example in Europe and under Article 33 of the UPCA?  Or is this just balance returning to forum shopping in the US and it will be business as normal? What do readers think?  

Judge sounds alarm of weakened US patent system, while industry groups start amending Section 101

Is the  US patent alarm really going off or is it just
time to hit snooze ?  

The AmeriKat has been spending some time back working in her motherland recently.  No matter where she turns she hears some rhetoric about the "failing US patent system".  What is going on? While she is delving into the doomsday PR and the opposition who claim this is all tactical scaremongering, she brings news of a recent interview, for the new online IP video series Clause 8, with retired former Chief Judge of the Federal Circuit, Paul Michel.  In the interview he sounds an alarm about the condition of America’s patent system:

“I think it’s doing badly, I think it’s highly distressed, has been substantially weakened and needs serious repair, revival, and strengthening.”
His heightened sense of alarm stems from a concern that America’s patent system has been going in the wrong direction while other patent systems have been improving.  He believes that America’s system needs to be immediately improved for America to remain globally competitive.  In particular, he points out:

“While we’ve been weakening our patent system in many ways in recent years, China and other countries have been greatly upgrading their patent systems.  And patent enforcement in countries like Germany is much faster, much stronger, much cheaper, much less disruptive, and much more certain.  So, investment is shrinking here and it’s growing elsewhere because the investors follow the incentives.  If it’s too hard to get patents or defend patents or enforce patents, people who control money will invest in something other than research and development and the follow-on commercialization.  So I think the stakes are really high. We need a really a big course correction.  We need it very badly.And, we need it right now!

Judge Michel provides a stern warning
During the video interview, Judge Michel focuses on the immense uncertainty created by the U.S. Supreme Court’s patent eligibility decisions.  Because of “bad law,” he argues, “whether you get your patent or whether it’s declared ineligible” now often depends on “the luck of the draw” in America. His views echo those of previous USPTO Director David Kappos, who has repeatedly argued - and extensively documented - that it is now much easier “to get patents on software and biotechnology inventions in China and Europe than it is in the U.S.”

Watch the entire Clause 8 interview to hear Judge Michel discuss his role in the Watergate investigation, why a strong patent system is necessary for economic growth, immediate fixes that should be made by the USPTO, congressional action necessary to fix patent eligibility law in America and more.  

Patent eligibility has been a hot topic following recent US Supreme Court decisions - Mayo v Prometheus,Bilski v. KapposMyriad Genetics and Alice Corp v. CLS - so much so that AIPLA and IPO have issued legislative proposals on patent eligibility focused on pushing Section 101 into some technically neutral language.  AIPLA's legislative proposal, similar to the earlier IPO proposal, states that:
"The Supreme Court’s subjective interpretation of patent eligibility law is undermining the fundamental principles underlying the 1952 Patent Act on which our modern innovation economy rests. Section 101 of Title 35 was intended as an enabling provision, identifying particular categories of subject matter that qualified for patent protection; it was not intended to provide the standard for deciding whether a particular technical advance should receive patent protection. Sections 102, 103, and 112 set out the “conditions of patentability,” and were intended to provide a yardstick for judging novelty, non-obviousness, and the sufficiency of disclosure in the specification and claims. The Supreme Court has applied its own subjective rules of patent ineligibility that have increasingly blurred these statutory functions, causing significant uncertainty in the law and driving innovation investments abroad."
The IPO proposal (which Judge Michel expressed support for) document continues:
"After the Alice decision, the Federal Circuit quoted from Bilski that “In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” Further, the Federal Circuit has recently recognized that “[a] too restrictive test for patent eligibility under 35 U.S.C. § 101 with respect to laws of nature (reflected in some of the language in Mayo) might discourage development and disclosure of new diagnostic and therapeutic methods in the life sciences, which are often driven by discovery of new natural laws and phenomena.” “[I]t is unsound to have a rule that takes [certain] inventions…out of the realm of patent-eligibility on grounds that they only claim a natural phenomenon plus conventional steps, or that they claim abstract concepts.”"
AIPLA's proposed amendment to Section 101 is as follows:
"a) Eligible Subject Matter.—Whoever invents or discovers any new and
 useful process, machine, manufacture, composition of matter, or any useful improvement thereof, may obtain  shall be entitled to a patent therefor, subject only to the conditions and requirements of set forth in this title.
(b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.  
(c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept."
Or is Dave Kappos' suggestion of just scrapping the section to be preferred? Too many words, after all, are only there to be misinterpreted by the Courts.  But while Congress is tied up with the Russia investigation,  the IPKat cannot foresee a huge amount of legislative attention on this issue (no matter how important) in the immediate future.  Or at least until after former FBI Director Comey testifies....

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