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%).

Continue reading “Recent developments on vexatious litigation and misuse of regulatory procedures under EU competition law”