Antitrust: Commission sends Statement of Objections to Motorola Mobility on potential misuse of mobile phone standard-essential patents, Brussels, 6 May 2013
The European Commission has informed Motorola Mobility of its preliminary view that the company's seeking and enforcing of an injunction against Apple in Germany on the basis of its mobile phone standard-essential patents ("SEPs") amounts to an abuse of a dominant position prohibited by EU antitrust rules. While recourse to injunctions is a possible remedy for patent infringements, such conduct may be abusive where SEPs are concerned and the potential licensee is willing to enter into a licence on Fair, Reasonable and Non-Discriminatory (so-called "FRAND") terms. In such a situation, the Commission considers at this stage that dominant SEP holders should not have recourse to injunctions, which generally involve a prohibition to sell the product infringing the patent, in order to distort licensing negotiations and impose unjustified licensing terms on patent licensees. Such misuse of SEPs could ultimately harm consumers. The sending of a Statement of Objections does not prejudge the final outcome of the investigation.
Easy Sanitary Solutions B.V. v. Blücher Metal A/S, District Court The Hage, The Netherlands, 24 April 2013, Case No. HA ZA 12-895, with thanks to Frank Eijsvogels and Christopher Pierce, Hoyng Monegier, for providing the decision
Easy Sanitary Solutions alleged that Blücher infringed its patent on a triangular drain. Blücher argued that the patent was invalid due to lack of novelty and inventive step and that its triangular drain products that are offered for sale in the Netherlands do not infringe the patent.
Blücher's suggestion to not apply the problem-solution approach to inventive step, but a “common-sense approach” was not followed by the Court.The Court found that Blücher’s inventive step arguments were tainted by hind-sight. The Court found that Blücher’s triangular drain products which are offered in the Netherlands infringe the patent, and ordered Blücher to pay the costs of the proceedings.
Swiss Patent Jurisprudence 2012, by Cyrill Rigamonti, Professor of Law, University of Bern
"The new Swiss Federal Patent Court, with nationwide first-instance jurisdiction over all civil patent matters, has been operating since January 1, 2012. This article reviews and contextualizes the most important patent cases published in 2012 by the Swiss Federal Patent Court and the Swiss Federal Supreme Court. More specifically, the article covers cases on issues such as the evidentiary status of party expert opinions, the formal requirements for requests for injunctive relief, the infringement and non-obviousness tests employed by the Swiss Federal Patent Court, the use of reports and statements from technical judges in lieu of expert opinions, and the procedural devices for the pre-trial taking of evidence, in particular the new patent-specific device of precise description. The author suggests that designing the Federal Patent Court to include technically trained judges may lead to a more automatic adoption of the practices and case law of the European Patent Office. The article concludes that the revamped Swiss patent litigation system has the potential of turning Switzerland into a competitive venue for the adjudication of patent matters in Europe."
Brigade (BBS-Tek) Limited v. Amber Valley Limited, Patents County Court, HH Judge Birss QC, 19 April 2013, London, UK, Case No. [2013] EWPCC 16
In this judgment, HH Judge Birss QC has found the Claimant’s (“Brigade”) UK Patent No. 2,318,662 (“the Patent”) partially valid and infringed by the Defendant’s (“Amber Valley”) vehicle reversing alarm product called Ecolarm.
The Patent relates to an alarm (or other device) that enables an individual to locate a given object and take appropriate action, and the use of such an alarm as a locating device, the core idea of the invention being an alarm in which the sound emitted is broad band noise (e.g. white noise). Tonal sounds, even complex tonal sounds, were deemed not to be broad band noise, as construed in the context of the Patent.
In the course of the proceedings, Brigade unconditionally applied to amend the Patent effectively limiting the claimed devices (and claimed use thereof) to “indicating” devices or vehicle sirens. There was no dispute as to the allowability of the amendments. Amber Valley challenged the validity of the Patent (as amended) on the grounds of added matter, anticipation and obviousness.
Merck Canada Inc and Merck Sharp & Dohme Ltd -v- Sigma Pharmaceuticals plc, Court of Appeal (Civil Division), Patten LJ, Black LJ and Kitchin LJ, London, UK, Case No. [2013] EWCA Civ 326
Following an appeal by Sigma against a decision of HH Judge Birss QC on 27 April 2012 that the Specific Mechanism (the special derogation from the normal free movement rules which was negotiated as part of the accession arrangements of Poland and a number of other Member States that acceded to the EU in 2004 and is set out in Annex IV, Chapter 2 of the Act of Accession) does not require the patent holder to demonstrate its intention to oppose importation before such activity is rendered an infringement, the UK Court of Appeal has agreed to make a reference to the Court of Justice of the European Union (“CJEU”) requesting clarification as to the proper interpretation of the Specific Mechanism.
Nestec S.A., Nestlé Nespresso S.A. and others v. Dualit and others, High Court of Justice, Patents Court, Justice Arnold, London, UK, 22 April 2013, Case No. [2013] EWHC 923 (Pat)
Nestec alleged that Dualit had infringed European Patent (UK) No. 2 103 236 (“the Patent”) by supplying coffee capsules compatible with Nestec’s Nespresso coffee machines. Dualit denied infringement and counterclaimed for revocation of the Patent.
On validity, Mr Justice Arnold held that none of the Patent's claims were entitled to priority from the Priority Document and that claims 1, 2, 7 and 8 lacked novelty over the Priority Document. The Priority Document disclosed arrangements having all the features of the relevant claims. As the claims of the Patent were broader than the disclosure of the Priority Document, the claims lacked novelty over the Priority Document even though they are not entitled to priority from it. Dulalit also contended the Patent lacked novelty over the use of "Essenza" machines during the priority interval. On the basis that (a) none of the claims were entitled to priority and (b) the Essenza machine fell within the Patent's claims, Mr Justice Arnold concluded that all the claims lacked novelty in the light of the information made available to the public by the prior uses. Dualit did not succeed on the other grounds of invalidity it relied upon.
On infringement, Mr Justice Arnold held that Dulait's NX capsules in combination with eight of the ten Nespresso machines in the case fell within claim 1. The Judge then considered whether Dualit was liable for contributory infringement under section 60(2) of the UK Patents Act based on Article 26 of the Community Patent Convention ("CPC"). Of particular interest, Mr Justice Arnold considered whether Dulait's NX capsules constituted “means relating to an essential element of the invention”. There appeared to be no English authority as to the correct approach to this requirement which is directly on point although, it has been considered by the courts of a number of other countries which have implemented Article 26 CPC, notably the Netherlands and Germany. Mr Justice Arnold favoured the German Court's approach: the fact the element was known in the prior art did not prevent it being an essential element of the claim, but if a feature was of completely subordinate importance for the technical teaching of the invention it could be regarded as a non-essential element. The NX capsule was held to constitute means relating to an essential element. Although claim 1 only requires the capsule to have a guide edge in the form of a flange, the flange played a significant role in the way the claimed invention worked.
International Stem Cell Corporation v Comptroller General of Patents, Patents Court, London, UK, 17 April 2013, Case No. [2013] EWHC 807 (Ch)
Following an appeal by International Stem Cell Corporation (“ISCC”) against a decision that the inventions disclosed in two of its patent applications relating to human stem cells were excluded from patentability, the UK High Court (Deputy Judge Carr QC) has made a reference to the Court of Justice of the European Union (“CJEU”), requesting that the term “human embryos” in Article 6(2)(c) of Directive 98/44/EC on the Legal Protection of Biotechnological Inventions (“Biotech Directive”) be clarified. In particular whether this includes unfertilised human ova whose division and further development have been stimulated by parthenogenesis, and which, in contrast to fertilised ova, contain only pluripotent cells and are incapable of developing into human beings.
This follows guidance given by the CJEU on the correct interpretation of Article 6(2)(c) in Brüstle (Case C-34/10) in which it ruled inter alia that any non-fertilised human ovum whose division and further development have been stimulated by parthenogenesis constitutes a ‘human embryo” within the meaning of Article 6(2)(c) due to it being capable of commencing the process of development of a human being just as an embryo created by fertilisation of an ovum can do so.
Resolution Chemicals Limited v H. Lundbeck A/S, High Court of Justice, Patents Court, London, UK. Case No. [2013] EWHC 739 (Pat)
Resolution sought revocation of Lundbeck’s SPC for escitalopram on the basis of the alleged invalidity of the basic European Patent (UK) No. 0 347 066 (“the Patent”). Escitalopram is the (+) enantiomer of citalopram, a selective serotonin re-uptake inhibitor used to treat depression.
On 3 January 2013 Lundbeck issued an application seeking, amongst other things: 1. Summary judgment on the ground that Resolution was precluded from bringing its claim The validity of the Patent was previously challenged unsuccessfully by Arrow, Teva UK and Teva Pharmaceutical Industries Ltd (“Teva PI”), and it was common ground that Arrow, Teva UK and Teva PI would be precluded by issue estoppel and the doctrine of abuse of process from challenging the validity of the SPC on the ground that the Patent was invalid. Lundbeck argued that Resolution was also precluded from doing so by virtue of privity of interest with Arrow, or alternatively with Teva UK or Teva PI.
Mr Justice Arnold reviewed the law on privity, confirming that what is required is “a sufficient degree of identification between the relevant persons to make it just to hold that the decision to which one is party should be binding in the proceedings to which the other is party” and that this may or may not be the case for group companies. He applied the law to the facts as follows.
Lizzanno Partitions (UK) Limited -v- Interiors Manufacturing Limited, Patents County Court, HH Judge Birss QC, London, UK, 12 February 2013, Case No. [2013] EWPCC 12
This judgment relates to an action for a declaration of non-infringement and revocation of the defendant’s United Kingdom patent GB 2 432 617 (“the Patent”) and the corresponding counterclaim for infringement. The alleged infringement concerned the claimant’s gasket for sealing between glass partition walls. The Patent was found valid and infringed.
In the judgment, the claimant is referred to as “Lizzanno” and the defendant as “Komfort” (Komfort Workspace Plc having been the original proprietor of the Patent).
Infringement
In essence, Komfort’s invention is based on a new gasket which is made of a hollow tube of non-rigid material and has a particular shape when it is not in use – namely it has a substantially rectangular cross-section, with substantially planar long edges and curved shorter edges. In contrast, Lizzanno contended that its “fan shaped” gasket did not infringe because: (i) its gasket has concave curves (rather than convex curves as shown in the figures of the Patent), (ii) the sides of the gasket are purposefully not parallel, (iii) the gasket is made using two different grades of PVC, and (iv) one of such materials is rigid.
Based on the Court’s construction of various features of the claims, in particular, the Judge’s finding that:
Spain and Italy v Council, CJEU 16 April 2013, Case Numbers C-274/11 and C-295/11
In their actions seeking annulment of the Council’s decision of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection, Italy and Spain mainly submitted that Article 118 TFEU was not a proper legal basis for the Council’s decision. Following the Attorney General’s proposal (see post dated 11 December 2012), the CJEU dismisses the actions.
In particular, the CJEU concludes that the Council’s decision was taken within the competence provided by Article 118 TFEU and that it was taken as a last resort considering the fruitless stages before the contested decision. The Court rejects the plaintiffs’ argument that creating uniform protection in one part only of the Union would undermine the internal market and states that it is inherent in the concept of enhanced cooperation that acts adopted in its framework bind only participating Member States. Rather, the Court follows the Council’s position that the fragmentation of the market is to be found, not in the contested decision, but in the present situation, in which the protection offered by European patents is national.
The decision does not finally bring legal certainty for the unitary patent since Spain filed actions against the results of the enhanced cooperation, i.e. the Regulations (EU) No 1527/2012 and No 1260/2012 on the creation of unitary patent protection and on the translation arrangements (Cases C-146/13 and C-147/13). The statements of grounds of these actions are not yet available.
Read the press release of the ECJ No 47/13 (in English) here.
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