Monday, July 9, 2012

One Step Closer to a Unified EU Patent System

On June 29, 2012, EU leaders reached agreement on the location of a new European patent court. The court will be split between three seats, with London, Paris and Munich each handling a distinct function.

London and Munich will be the main venues for litigation, while the Paris offices will handle more administrative matters.  The London seat will handle specialized patent litigation in chemistry, pharmaceuticals and "human necessities" (a category that includes consumables, agriculture and clothing). Munich will handle mechanical engineering and court administration.  Disputes involving tech-based patents will be dealt with in either London or Munich depending on the kind of technology involved: actions relating to the internet or software are likely to be heard in London, actions involving engineering technology will be heard in Munich. 
In general, litigants generally will have no choice over where their proceedings are held. However, if a defendant is not EU-domiciled, parties may choose to bring the action before the central division in Paris, irrespective of the subject matter of the action.
The new patent court forms part of the set of reforms aimed at establishing a unified EU patent system and creating uniform patent protection across Europe. At present, the European Patent Office may grant a European patent, but this must be validated by the patent holder in every Member State where protection is desired. The resulting translation and administrative costs are frequently cost prohibitive. The proposed new patent regime is aimed at significantly reducing these costs.
The EU plans to proceed by way of an "enhanced co-operation" procedure, which allows a smaller number of Member States to take a policy forward without there being unanimous consent. At present, 25 out of 27 EU Member States are understood to be in favor of the patent reforms. Spain and Italy, however, have announced that they will not participate.
Next, the European Parliament will vote on the motion for a unified patent court and regulations on the common EU patent system. Sphere: Related Content

Tuesday, January 24, 2012

Patent Titans Move to Represent Patent Trolls

I saw this article from the Wall Street Journal (dated January 23, 2012):

The article reports on two titans in the patent world moving from traditional law firms to their own outfits. Their new focus is representing clients who are so-called "patent trolls" – NPEs or non-practicing entities whose sole function is to collect patents to assert against other companies. While patent law has become more stringent in its requirements, (including limiting venue and prohibiting an NPE from requesting an injunction for sale of product against the other side), the upside for an NPE bringing a lawsuit against a producer and seller of goods is still very lucrative and the downside is relatively small. NPEs still can collect license fees at the "going rate" (to be proved in court). So, the risk is high to a potential defendant that it will have to pay the NPE something or pay their lawyers big fees to defend a lawsuit. On the other hand, the potential leverage against an NPE is low – there are very few counterclaims that can be brought against a company that doesn't make or sell anything. That means, a real company who produces product and contributes to the economy only has downside in these lawsuits. They have to slog it out to win against the other side, or pay (to settle, or in a loss).

I have been on the other side to both John Desmarais (Alcatel-Lucent v Foundry Networks), and Matt Powers, (Immersion v Sony Computer Entertainment). I found them both to be really tough, verging on mean, in their tactics. They both have an amazing reputation in the industry though. Part of me is disappointed, but I suppose I am not really surprised with their mercenary moves.

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Tuesday, January 10, 2012

Support the Fordham Securities Moot Court Competition

As a firm believer in the duty of every practicing lawyer to coach and mentor the next generation of good lawyers, I fully support practicing lawyers engaging with law students to help them advance their art and expertise. I was requested to pass this message on, soliciting practitioners to participate as judges in the Fordham University School of Law Securities Moot Court Competition. If you are so inclined, I encourage you to support this wonderful opportunity for budding lawyers.

Here is the information on the event:

Each spring, Fordham University School of Law hosts the Irving R. Kaufman Memorial Securities Law Moot Court Competition. Held in honor of Chief Judge Kaufman, a Fordham Alumnus who served on the United States Court of Appeals for the Second Circuit, the Kaufman Competition has a rich tradition of bringing together complex securities law issues, talented student advocates, and top legal minds.

The year's Kaufman Competition will take place on March 23, 2012 to March 25, 2012.

The esteemed final round panel includes Judge Paul J. Kelly, Jr., of the Tenth Circuit; Chief Judge Alex Kozinski, of the Ninth Circuit; Judge Boyce F. Martin, Jr., of the Sixth Circuit; Judge Richard A. Posner, of the Seventh Circuit; Judge Jane Richards Roth, of the Third Circuit; and Commissioner Troy A. Paredes, of the United States Securities and Exchange Commission.

The Kaufman Competition is currently soliciting practitioners and academics to judge oral argument rounds and grade competition briefs. No securities law experience is required to participate and CLE credit is available.

Information about the Kaufman Competition and an online Judge Registration Form is available on their website, Please contact Michael A. Kitson, Kaufman Editor, at or (212) 636-6882 with any questions.

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Saturday, December 3, 2011

1-Year Grace Period for “Public Disclosure” under the new U.S. Patent Legislation

Today, I had a client ask about the effect of the Leahy-Smith America Invents Act (AIA) that was recently passed into law. He wanted to know how the new "first to file" rule affected the old 1-year grace period for an inventor publicly disclosing his invention before filing a patent application.

He said: "I think I recently read, and perhaps from you, that the U.S. just changed the law regarding who gets a patent with respect to the date of invention. The old law was first-to-invent, and the new law is first-to-file. Is that true? How does that apply to public disclosure? For example, if I disclose something publicly, do I have 12 months to file and then it becomes public domain?"

My response: Regarding your question, yes the United States law as moved to a "first to file" system. In priority disputes between patent applications, priority is given to the first inventor to file an application, or to the first inventor to disclose the invention to the public, if she or he then files within a year. An inventor on a patent application can no longer swear behind a reference; she or he can no longer certify under penalty of perjury that the invention was created before the date of a particular reference.

Note that there is some uncertainty as to what the new 1-year grace period to file after 'public disclosure' means. Senate legislative history and traditional use of the term in patent cases would apply it to any form of prior art, including a public use or a sale. That is the better view. But some have argued that it covers only published disclosures.

My best advice: File early. It is possible, though unlikely, that the grace period will be lost if based on sales or public uses.

The new "first-to-file" system applies to applications with effective filing dates after March 16, 2013.

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Tuesday, October 4, 2011

ECJ Reaffirms Principle of Free Movement of Goods, Services & People With Respect to Television Broadcasts

This week, the European Court of Justice reaffirmed the core principle of the foundation of the European Union: the free movement of goods, services and people across national borders.

The ruling trumps intellectual property rights and contract rights that would otherwise have restricted the ability to receive television broadcasts only to proper licensees within a particular member state.

The case arises out of the purchase by certain pubs (restaurant/bars) in the United Kingdom of foreign decoder cards, issued by a Greek broadcaster to subscribers resident in Greece, to view Premier League football matches. But, the broadcast rights owner, the Football Association Premier League (the "FAPL") grants broadcasters an exclusive live broadcasting right for Premier League matches on a territorial basis, usually defined by national borders of a particular EU state. In the United Kingdom, the broadcast rights were granted exclusively to SKY television. The purchase of the decoders to directly access the broadcast of the football matches directly circumvented SKY's exclusivity rights under contract, and the intellectual property rights to choose licensees of the FAPL.

But, the Court of Justice decided that the core European Union principle of freedom to provide services supporting healthy competition trumped any national legislation which prohibits the import, sale or use of foreign decoder cards. They held that such a prohibition cannot be justified either in light of the objective of protecting intellectual property rights or by the objective of encouraging the public to attend football stadiums.

Judgment in Cases C-403/08 and C-429/08

Football Association Premier League and Others v QC Leisure and Others

Karen Murphy v Media Protection Services Ltd

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Friday, September 23, 2011

Multi-Defendant Patent Cases - Passé

On September 8, 2011, the Senate approved the America Invents Act. The legislation contains many important changes that affect the rights of inventors. Some of the changes affect patent litigation strategy.

Of interest is the new prohibition on joining multiple defendants in a single lawsuit, unless there are common issues of fact or the cases arise out of the same transaction or occurrence. That the plaintiff alleges that the defendants infringe the same patent is not enough to allow them to be joined in the same lawsuit. The new prohibition applies to all lawsuits filed on or after September 16, 2011.

If multi-defendant patent litigation becomes a thing of the past, it is likely that the number of patent cases filed will increase significantly. So, too, will the costs incurred by plaintiffs. One tactic by so-called "patent trolls" has been to sweep in many defendants into a single lawsuit, banking on the hope that most will settle before trial, and before substantial costs are incurred zeroing in on a particular defendant's facts.

The new legislation will require many different lawsuits to be filed, each against a single (probably) defendant, where getting "lost in the crowd" in settling will be less appealing. Also, patentees suing multiple defendants will face separate challenges to the patent's validity and scope, each with potential collateral estoppel effect that could determine the outcome of all the other cases with respect to that patent.

And, with the cost to plaintiff "patent trolls" being increased, what happens to all those new plaintiffs' patent troll law firms out there? No doubt the number of lawsuits will increase with the litigation, but will it increase enough to support all those new firms? Maybe not. Sphere: Related Content

Thursday, June 9, 2011

Victory for Inventors!: Supreme Court of the United States Upholds the Higher Burden of Proof for Patent Invalidity

Today the Supreme Court of the United States handed down its decision in the Microsoft v. i4i case. There, Microsoft challenged the long-standing standard of proof for patent invalidity requiring "clear and convincing" evidence to invalidate a patent, in favor of a lower "preponderance of evidence" standard. There, Microsoft argues that the heightened standard insulated "bad patents" from invalidity challenges and stifled competition.

The Court rejected the arguments and upheld the higher standard deferring to Congress' role to write and mandate laws. The Supreme Court opinion also noted that Congress had made many changes to the patent laws recently, but chose not to change the standard of proof." Congress specified the applicable standard of proof in 1952 when it codified the common-law presumption of patent validity," Justice Sonia Sotomayor wrote for the Court. "Since then, it has allowed the Federal Circuit's correct interpretation of §282 to stand. Any recalibration of the standard of proof remains in its hands."

At last, the Supreme Court has empowered "the little guy" a bit with this decision, after years of eroding patent rights. As powerful companies flouted the patent rights of small inventors often believing they take their technology because they can out-spend them in court, at least now, the "little guy" has a fighting chance, helping creative inventors realize value out of their inventions and stop wholesale stealing of their property.

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