No exhaustion doctrine for “method-of-use” patents – Iwncomm v. Sony decision in China

Earlier this year, the Beijing IP Court issued a landmark decision in the Iwncomm v. Sony case, which clarified a number of interesting issues relating to standard essential patents (SEP). The court ruled that Sony had infringed an SEP held by the Chinese company Iwncomm and granted, besides damages for past infringement, the first injunction based on an SEP in China. In the same decision, the court addressed another important question concerning the applicability of the exhaustion doctrine. Under the doctrine, once an authorized sale of a patented product or a product obtained by using a patented manufacturing method occurs, the patent holder’s exclusive rights to control the use and sale of that product are said to be “exhausted,” and the purchaser is free to use or resell that product without further restraint from the relevant product patent or method-of-manufacture patent. It was nevertheless unclear from the existing case law, whether the exhaustion doctrine shall also be applied to a method patent that protects a method of using an existing product(s) (method-of-use patent), until the Sony decision now answered this question clearly in negative. This decision may thus provide an important guidance for future cases. However, when compared with more balanced approaches in other jurisdictions, which I will briefly discuss in this post, this guidance does not appear unquestionable. Continue reading “No exhaustion doctrine for “method-of-use” patents – Iwncomm v. Sony decision in China”

Recent developments on vexatious litigation and misuse of regulatory procedures under EU competition law

There are some forms of abuse of dominant position which raise significant issues in terms of compliance with the principle of legal certainty. Among such behaviours we can surely include conducts like “vexatious litigation” and “misuse of regulatory procedures” , categories developed by courts and not explicitly found in statutes. When competition authorities launch an investigation based on these conducts, companies have good reasons to get worried.

A new investigation in Italy – ICA v. Telecom Italia

Over the past years, the number of cases based on the “abuse of law” concept have risen, and last week the Italian Competition Authority (ICA) opened a new investigation based on this concept. According to the ICA, Telecom Italia would have abused its dominant position under article 102 TFEU by means of vexatious litigation, misuse of regulatory procedures, margin squeeze and lock-in strategies on the national wholesale market for the access to the ultra-broadband network and on the retail market for the supply of ultra-broadband telecommunication services. The ICA considered Telecom Italia dominant both at wholesale (it owns around 95% of the facilities) and retail level (with a market share of 45,9%).

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Reverse burden of proof and trade secrets in patent litigation – Part two

 

In my previous post (here), I discussed the reverse burden of proof on an international level and the potential tension which could emerge between the patent and trade secrets regimes in this context. In this post, I will turn the focus to Europe and discuss the regional provisions as well as the relevant provisions of the UPC Agreement.

The Enforcement Directive and the Trade Secrets Directive

There are a few provisions in the Enforcement Directive on confidentiality in court proceedings. The need to preserve confidentiality in intellectual property litigation is recognized in the recital of the directive (Recital 20). In addition, a few provisions (Arts. 6 (2), 7 (1) and 8 (2) (e)) of the directive deal with the protection of confidential information in IP litigation.

The drafters of the directive have recognized the need to protect the confidential information of the adverse party. But what is to be noted is that the Enforcement Directive does not contain any provision on the reverse burden of proof in patent litigation, or the protection of trade secrets in these situations.

The Trade Secrets Directive includes a specific provision (Art. 9) on the protection of trade secrets in litigation concerning the unlawful use or disclosure of a secret (See my post on trade secret litigation here). Ergo, said provision is not applicable in patent litigation. However, Art. 9 of the Trade Secrets Directive could provide for certain general examples of how trade secrets could be protected in patent litigation. These include restricting access to documents, restricting access to hearings, and providing non-confidential versions of judgments. There should for example be no immediate obstacle for a national legislator to include similar provisions in national laws.

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High Court rules in favour of the SEP holder and narrows the scope of competition law defence in Unwired Planet vs. Huawei

On 5 April 2017 the High Court of Justice of England and Wales (Hon. Justice Birss) issued its long awaited judgment in the patent dispute between Unwired Planet and Huawei. The ruling is of high relevance, as it is the first decision adopted by a judge in the UK after the CJEU’s judgment in Huawei.

The facts

The trial began in March 2014 when Unwired Planet sued Google, Huawei and Samsung for infringement of five SEPs (and one non-essential patent). Later, Unwired Planet settled with Google and Samsung. Continue reading “High Court rules in favour of the SEP holder and narrows the scope of competition law defence in Unwired Planet vs. Huawei”

The U.S. Supreme Court judgment on forum shopping; TC Heartland LLC v. Kraft Food Brands LLC

Historically, defendants in patent infringement litigation lawsuits in the U.S. have often been sued in so-called “plaintiff-friendly” courts such as the Eastern District of Texas even when there is little or no connection between the legal issue and the jurisdiction in which they are to be litigated. This issue is known as forum shopping. Regarding this issue, the U.S. Supreme Court handed down a very important judgment on 22nd May, 2017. The judgment could make it more difficult for a patent holder to file a lawsuit in plaintiff-friendly courts.  Continue reading “The U.S. Supreme Court judgment on forum shopping; TC Heartland LLC v. Kraft Food Brands LLC”

Pills of competition law: Aspen, Uber and e-commerce

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These are busy days for EU competition law.

Today, the European Commission has come back to the old good pharmaceutical market and opened an investigation against Aspen for having charged excessive prices on its “off-patent” drugs (the same case has already been decided in Italy by the Italian Competition Authority in 2016, see here). This may be seen as a follow up to Margrethe Vestager’s recent speeches against excessive prices (here and here). However, even more recently, Advocate General Wahl delivered an opinion where he stated that excessive pricing may occur only in regulated markets with high barriers to entry, since in a free and competitive market high prices would attract new entrants and would not give rise to competitive issues (§ 48, see here for further remarks). Therefore, a question arises: where are the barriers to entry in the Aspen case, insofar as Aspen does not own any patent (already expired for years) and third parties are free to access the market? Continue reading “Pills of competition law: Aspen, Uber and e-commerce”

Protective letters in the UPC

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At least if the current plan holds, the Unified Patent Court will quite soon be up and running. Businesses express concerns on possible misuse of the UPC’s powerful measures for patent enforcement such as pan-European injunctions and Saisie, i.e., an order to compulsorily preserve evidence on alleged infringers’ premises. Along with these measures, however, the UPC will also provide tools aimed exactly at preventing the misuse of such orders. A so called “protective letter” will be one of the tools to that end. This tool may be unfamiliar to many readers from outside Germany, since it is mainly a German peculiarity and although available in several other European jurisdictions, such as Switzerland, the Netherlands and Belgium, it has limited practical importance there. Now, being introduced by the UPC agreement, the protective letter is expected to gain its influence throughout Europe. This post briefly introduces what a protective letter is, and discusses some special features of a UPC protective letter and some considerations for preparing protective letters. Continue reading “Protective letters in the UPC”

Recent development in Japanese patent case law; the doctrine of equivalents and the Supreme Court judgment in the Maxacalcitol case

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In my previous post, I wrote about an IP High Court judgment (the Maxacalcitol case) regarding doctrine of equivalents in patent infringements in Japan. The defendants appealed against the IP High Court judgment and the Supreme Court handed down the final judgment on 24th March, 2017.  Continue reading “Recent development in Japanese patent case law; the doctrine of equivalents and the Supreme Court judgment in the Maxacalcitol case”

Peruvian patent litigation on infringement and invalidation: A sui generis case of bifurcation

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Guest post by Diego F. Ortega*

The Andean Community is the result of the seeking of the balanced and harmonious development of Bolivia, Colombia, Ecuador and Peru, which in May 26, 1969 signed the Cartagena Agreement, laying the groundwork for the creation of a subregional community initially known as Andean Pact and later renamed as Andean Community. In order to achieve the said objective, the Andean Community promotes a continuous process of integration and economic and social cooperation. In particular, this process of integration involves the need of having common rules as to matters that foster the unification of the market, such as industrial property rights.

The industrial property system within the Andean Community was established by the “Decision 486”, which aims to guarantee a rigorous scrutiny as to the fulfillment of the requirements needed for the granting of a patent. Thus, Andean Community does not provide only for the mandatory performance of a substantive examination carried out by the national patent authorities of its Member Countries, but also for mechanisms which allow third parties to prove that an invention does not meet the legal requirements, seeking the denial of the patent (through a pre-grant opposition request) or, if the patent is granted, its revocation (through an invalidation request). Continue reading “Peruvian patent litigation on infringement and invalidation: A sui generis case of bifurcation”

Why did Japanese electronics companies surpass rivals in technologies and number of patents, but lose in business?

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Car navigation systems, DVD players, liquid crystal displays, solar panels, DRAM memory and lithium ion batteries are products that have been invented and developed mainly by Japanese companies. The companies created new markets and got high market shares with many patents to exclude rival companies. Then the world’s markets expanded several times larger in scale. They kept investing high amounts in R&D for higher functionalities. Their world’s market shares recorded once more than 80% in all above-mentioned products except for DRAM memory (more than 40%). However, even though the market expanded, their shares have been drastically decreasing although they had developed cutting edge technologies with many patents related thereto. There is one report (Masahiro Samejima et al., Encouragement of IP Strategy, February, 2016), which analyzed the reason of their defeat in business and introduced a new interesting point of view. I would like to briefly discuss it here.

Continue reading “Why did Japanese electronics companies surpass rivals in technologies and number of patents, but lose in business?”