From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Tuesday, 26 July 2016

Filed your Article 28 declarations? You may have to do them all over again…

Former Guest Kat, Darren Meale, of Simmons & Simmons, London, provides another update to the ever-changing landscape of Article 28 declarations. Previous instalments can be found here, here and here.

I can only apologise in having to write again on this subject, but the EUIPO has recently moved the goalposts on Article 28 and everyone who has reviewed portfolios and filed Article 28 declarations may need to redo the job because the EUIPO has, nearly four out of six months into the window for declarations, released a new list of “orphan” goods and services.

The EUIPO, at it again...
The problem is this. Article 28 declarations may only feature goods and services not covered by the literal meaning of the Nice class heading to which they relate. When it released its Communication back in February, the EUIPO took an approach designed (in my view) to minimise the number of declarations it would receive. Its approach was to make clear that it would not accept declarations for goods and services which were covered by the literal meaning of the class heading, so one would need to be specific. To assist, it published a list of goods and services it considered were “not covered” – what I’ve been calling “orphans”. To come up with that list, it would have had to review 45 lists of alphabetical goods and services across five versions of Nice, so a hefty job. The list of orphans was only stated to be examples, but the implication was clearly this: we, the EUIPO, have decided what we think the orphans are, so if you file for something else, be prepared to argue with us over it.

In its FAQ, published along with the Communication, the EUIPO softened its approach and said it would accept goods and services where there is “reasonable doubt”. Nevertheless, I don’t expect many practitioners wanted to plod through the lists trying to find suitable candidates when the EUIPO had, ostensibly at least, already done the job.

I expect that many of you went away and advised clients on this rather technical and time-consuming exercise that where the EUIPO haven’t identified any orphans, it might not be worth the time and effort to review the Nice alphabetical lists and try to argue that they have missed something (nearly 1,500 orphans have now been spotted buried within many thousands more non-orphans). You may also have taken the list of orphans and used it as a guide to help you and clients decide what to file for (and what not to file for) in your declarations.

The EUIPO has now lobbed a grenade. On 4 July, it issued a Notice detailing a new list of orphans. This list does not mention the original list and it is presented in a completely different format. It is stated to provide “Examples of terms either clearly not covered, or not clearly covered” by the literal meaning of the class headings. It has apparently been created by the Office “Following feedback from its user community”.

There are a significant number of changes. In the original list, there were no orphans in classes 6, 17, 23, 27, 32, 34, 36, 38, 42, 43 and 45. One might sensibly have concluded that if your portfolio primarily covers these classes, you need not bother filing declarations. In the new list, there are orphans in every class apart from classes 23 and 32. There were previously three orphans in class 35, there are now 30. And so on.

If you have relied upon the EUIPO’s original list of examples, you may need to look again. If you have already filed declarations, you may need to file new ones – or supplemental ones. Given the work involved in manual review, this may be an expensive and frustrating task. We have been doing this using our own automation software and can re-run our analysis using the new list – but this list, coming more than half of the way through the six month window, is likely to be hugely unwelcome to all.

We have sought comment from the EUIPO, who tell us that no further lists are planned. They also confirm that several declarations may be filed for the same mark, or any declarations already filed can be withdrawn and then re-filed.

Beware that this change will not to lead to an extension of the time limit, which is in the new EUTM Regulation, and not a matter in which the EUIPO has any discretion. It is very unlikely indeed that an amendment to the EUTM Regulation could be passed prior to the deadline.

So practitioners should get cracking with the new list to ensure that declarations are filed by 24 September 2016, or rights will be lost forever.

Monday, 25 July 2016

Never Too Late: If you missed the IPKat this week

IPKat keeps it cool
Were you away and missed the last week of the IPKat? Never Too Late 106 is here to bring you what you missed.

Internkat looks back on Heythrop v CAPS. Should animals be able to own copyright?

Eleonora Rosati presents the latest decision concerning ISP liability from the Rome Court of First Instance, ruling that Megavideo can be regarded as a hosting provider.

Amerikat Annesley Merelle Ward explains why Mr Justice Arnold rejected a claim to consider infringement of a German designation in Rhodia v Molycorp. To maintain English courts' jurisdiction, claimants need to let go of foreign validity challenges.

Katfriend Amy Crouch brings us the two decisions and developments in the Napp v Dr Reddy's and Sandoz litigation. 

Mark Schweizer presents Germany's Federal Court of Justice (BGH) decision to uphold a contourless red colour mark, overruling the German Federal Patent Court's decision to cancel the registration.

The Tribunal de Grande Instance (TGI) rules that it is not possible to filter all search results for certain keywords.. "torrent" for instance. This would amount to a general surveillance measure and therefore not be an acceptable measure.

Katonomist Nicola Searle is impressed by this book edited by Kung-Chung Liu and Uday S. Racherla., particularly the empirical analyis modelling innovation and IPRs, and the use of diagrams and figures.


Never too late 105 [week ending on Sunday 17 July] High Court rejects Seretide combination colour mark in Glaxo v Sandos | Conference report: Should you arbitrate FRAND terms? | Friday Foghorn, including UK IPO invitation for IP valuation research bids

Never too late 104 [week ending on Sunday 10 July] e-Sport in the French Digital Republic Bill | Aspartame is back -- and is Pepsi playing by a new branding playbook| The USPTO moves to clear "Trademark Deadwood" | Court of Appeal of England and Wales confirms availability of blocking injunctions in online trade mark cases  An opportunity for IP scholars seeking future careers | CJEU says that operators of physical marketplaces may be forced to stop trade mark infringements of market-traders | Book review: the law and practice of trade mark transactions | Own name defence in Singapore| Cartier rapid response event | AG Wathelet on out of print books | Maccoffee: McDonalds not loving it

Never too late 103 [week ending on Sunday 3 July] | Publicity Rights v First Amendment EU Trade marks Article 28 Declarations | Non-EU UK in the UPC? | Book review: IP Strategy, Valuation and Damages | Brexit and Copyright | In memoriam of David Goldring | Openness, innovation and patents

Never too late 102 [week ending on Sunday 26 June]  | Neighbouring rights for publishers | US Supreme Court makes it easier to obtain patent enhanced damages | US Supreme Court in Halo and Kirtsaeng makes IP victory sweeter for successful parties | Enlarged Board publishes decision: EPO President violated judicial independence | Dear Europe... UK leaves the EU | Dear UK... 

Never too late 101 [week ending on Sunday 19 June] Procedure to remove EPO Board Member ends abruptly | Trade mark "bully" | EU Trade Secrets Directive | Cannibalism, Branding and Market Segmentation | A-G Szpunar declares Rubik's Cube shape mark invalid | Apple and the podcast industry | IP Inclusive | Coke defends opposition to 'ZERO' marks

Friday, 22 July 2016

Book Review: Innovation & IPRs in China & India

The summer temperatures may send London into meltdown, but that doesn't mean that publications have stopped. Hot off the presses is, "Innovation and IPRS in China and India: Myths, Realities and Opportunities," edited by Kung-Chung Liu and Uday S. Racherla.  The book is a collection of essays from IP experts around the world.  Part I of the book looks at doctrinal and empirical analysis, and Part II looks at China and India separately.

Naturally this Kat was drawn to the empirical analysis.  A chapter by Racherla investigates the relationship between IPR and innovation.  Racherla performs a literature review of studies by the USPTO, the EU IPO and case studies of technological and business model innovations in the U.S. and India. Asking, "Do IPRs Promote Innovation?," he answers, "it depends."

Racherla's Is and the IPRs Model
Racherla develops what he calls the, "Is and IPRs model."  He argues that innovations (Is) and IPRs can be divided along a main axis ranging from the Science and Technology (S&T) space to the Business and Commercialization (B&C) space. "Inventions" are concentrated in the S&T space where patents are the preferred method of protection, whereas business models, commercialisation strategies etc. inhabit the B&C space and prefer trade marks and copyright. He argues that in both of these spaces, the evidence that IP promotes innovation is weak; in S&T, "the percentage of conversion of patents into commercial products/services as a measure of the IPR promotability of innovation," and in B&C, "the impact of these trademarks and copyrights on breakthrough or disruptive innovations," both provide unconvincing arguments for a direct innovation-IPR link.  However, he argues that his Is-IPR model leads to two conclusions: 1) not all IPR promote innovation and, 2) "only IPRs protecting sustainable innovations – which possess economic, social, and/or environmental value – promote innovation." As is often the case in policy and innovation, it depends.

A second empirical paper asks, "Does Patent Strategy shape the Long-Run Supply of Public Knowledge?: Evidence from Human Generics," by Kenneth Huang and Fiona Murray.  The authors collect data on, "patent-paper pairs" which are when the same, "piece of knowledge is contributed to both public and private knowledge streams through its disclosure in both publication and patent." They argue that studying these pairs allow for assessment of patents, public and private knowledge, and policy. Focusing on human genetics, the article uses 1,300 of these patent-paper pairs to find, "patent strategies - patent scope, patent ownership, patent landscape complexities, and the commercial relevance of patented private knowledge - negatively impact the long-run production of public knowledge." It's quite a long chapter, running 40 pages.

The book covers an eclectic mix of topics. One very nice aspect of this book was its use of colour in images and artwork, which is fairly rare these days.  Liu, Kongzhong, and Uday S. Racherla. Innovation and IPRs in China and India: Myths, Realities and Opportunities. 2016 is available for £82 e-book and £86 hardcover.  Rupture factor: low, 224 pages.

Thursday, 21 July 2016

Paris Tribunal de Grande Instance rejects request to filter 'torrent' searches on Bing

... possibly true
Can search engines be ordered to filter all results containing certain keywords or a combination of certain keywords?

In a nutshell, this was the issue that the Tribunal de Grande Instance de Paris (TGI) addressed in the context of litigation between SNEP [the French Syndicate of Phonographic Publishing] and Microsoft. In its decision on 8 July 2016 [this post has been written relying on the original French version of the judgment] the TGI answered the question above in the negative.


Claiming that through Microsoft’s search engine Bing users could access infringing copies of phonograms or video recordings, SNEP sought an injunction against Microsoft to implement filters on Bing (under all top level domains) to prevent – for a period of 12 months – the display of results containing in their domain name the word ‘torrent’ and provided when conducting the following queries: Kendji Girac/Shy’m/Christopher Willem [these being among the most popular French artists of the moment] + torrent. 

According to SNEP, in fact, in relation to these artists, among the first 20 results displayed further to a query of this kind on, the vast majority (70%) related to unlicensed sources.

SNEP’s action was based on Article L336-2 of the French Intellectual Property Code (IPC), by which France transposed Article 8(3) of the InfoSoc Directive into its own national law. This provision of EU law mandates upon Member States to “ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.”

Microsoft claimed that SNEP’s action should be dismissed on grounds that – among other things -  SNEP, instead of seeking a filtering injunction of this kind, should have first used Bing’s free reporting and removal tool and requested to have relevant results (identified by means of appropriate URLs) [for a different approach to the need for URLs, see here and here] de-indexed.  

Kendji Girac:
not much to celebrate this time
The decision

Injunctions are independent from a finding of intermediary liability

The TGI noted at the outset how injunctions pursuant to Article L336-2 IPC/Article 8(3) InfoSoc Directive can be sought independently from a finding of liability of the online intermediary at hand [this conclusion is not surprising also in light of the Ecommerce Directive and has been recently confirmed by Advocate General Szpunar at para 83 of his Opinion in Mc Fadden, on which see here].

No need for notice-and-takedown first

This said, the court rejected Microsoft’s argument that SNEP should have first reverted to the submission of notice-and-takedown requests. There is nothing in Article L336-2 ICP that suggests the contrary.

Yet, one cannot seek to de-index all ‘torrent’ queries

However, the TGI dismissed SNEP’s action, on grounds that injunctions pursuant to Article L336-2 ICP can be granted in relation to specific, identifiable contents, and the measures sought must be determined, proportionate, efficient and specific in relation to each listed site. This was not the case of SNEP’s request.

'torrent' is not just 
a copyright-related term though
According to the court, SNEP’s request was:
  • Indeterminate, in that it was not limited to the existing phonograms of Kendji Girac, Shy’m, and Christopher Willem, but also future works yet to be created and released;
  • General (as opposed to specific) in that it did not concern an identified site, but rather all sites made available through Bing in response to users’ queries for [artist’s name] + torrent;
  • Ineffective and not strictly necessary, since it would obtain a limited result and it could be easily circumvented by users.
According to the TGI, ‘torrent’ is not necessarily associated with infringing content [indeed, 'torrent' also mean "a strong and fast-moving stream of water or other liquid", although Urban Dictionary defines it as "The RIAA's worst Nightmare"], but is rather a neutral term referring to a communication protocol developed by BitTorrent. 

According to the TGI, the measure sought by SNEP, ie de-indexing of queries for artists associated with ‘torrent’, would amount to a general surveillance measure and could unduly cause the blocking of legitimate sites.

Federal Court of Justice greenlights colour mark red

In the ongoing dispute between the Sparkassen Group and Banco Santander, which led to the CJEU's decision in cases C‑217/13 and C‑218/13, the German Federal Court of Justice (BGH) has annulled the decision of the Federal Patent Court which invalidated Sparkassen's contourless colour mark "red" and held that the mark had acquired distinctiveness at the time of the Federal Patent Court's decision in 2015.

Sparkassen Group has been using the colour red in connection with financial services, namely retail banking, in Germany since the 1960s. In 2002, it filed a trade mark application for the contourless colour "red" (HSK 13) for financial services, namely retail banking, which was granted - after an initial rejection - sometime in 2007. Banco Santander and Oberbank, two new entrants to the German retail banking market that also used the colour red in their home markets, filed for invalidity. In 2009, the German IPO (DPMA) dismissed the actions. On appeal, the Federal Patent Court referred several questions to the CJEU, which the CJEU answered in joined cases C-217/13 and C-218/13 in 2014.

Yep, that's also red
The CJEU namely held that it European law precluded an interpretation of national law according to which, in the context of proceedings raising the question whether a contourless colour mark has acquired a distinctive character through use, it is necessary in every case [Merpel's emphasis] that a consumer survey indicate a degree of recognition of at least 70% (see IPKat post here).

Subsequently, the German Federal Patent Court nonetheless sided with Santander and Oberbank and cancelled the registration of the mark at issue because acquired distinctiveness had not been proven, neither at the time of filing (2002) nor at the time of the decision (2015). Acquired distinctiveness at the time of the decision would have been enough because Germany exercised the option under Article 3(3) second sentence Directive 2008/95. Under German law, proof of acquired distinctiveness either at the time of filing or at the time of decision leads to validity of the mark (§ 8(3) German Trade Mark Act).

On appeal, the BGH held that contourless colour marks were generally lacking distinctiveness ab initio, as consumers would perceive colours primarily as decorative and not as indications of source. However,  contourless colour marks - as any other marks - had acquired distinctiveness if a majority ("überwiegender Teil") of the relevant public recognized [or relied upon...?] the mark as indicating a single source for the goods or services for which protection was sought. According to the Federal Court of Justice, the many surveys submitted by the applicant failed to prove acquired distinctiveness at the time of filing in 2002, but supported a finding of acquired distinctiveness in 2015, at the time of the judgment.

Since the full reasoning of the BGH decision is not yet published - I am relying on the press release - it is not yet possible to see what convinced the BGH that the Federal Patent Court got it wrong. It seems the assessment of the survey evidence played an important role, which is interesting because the BGH is in principle bound by the fact finding of the lower court.

Quia timet, de minimis and Novartis v Hospira: Mr Justice Arnold speeds through Napp v Dr Reddy pain dispute

The IPKat is ready for a busy end of term
After a generally slow start to 2016 in terms of reported decisions emanating from the Patents Court, things have started to pick up in recent weeks.  Mr Justice Arnold has been particularly busy.  At the end of last month Mr Justice Arnold handed down not one, but two decisions in the Napp v Dr Reddy's and Sandoz dispute (see previous Kat report here).  In the first decision  -  [2016] EWHC 1517  - the judge held that there was no threat to infringe Napp's patent on the basis of the de minimis principle.  In the second decision - [2016] EWHC 1581 (Pat) (not yet on Bailii) -  he granted Napp an injunction pending appeal.

Talented Kat friend Amy Crouch (Simmons & Simmons) brings readers up to speed:

"First Judgment – No Threat to Infringe 


Napp commenced infringement proceedings against both Sandoz and Dr Reddy’s in February 2016 for threatening to infringe its patent by preparing to launch generic buprenorphine transdermal patches. Buprenorphine is an opioid indicated for the treatment of non-malignant pain,  Napp’s buprenorphine transdermal patch, “BuTrans” is its most important product.  At the same time as commencing its actions, Napp applied for a preliminary injunction against Sandoz who had already obtained a marketing authorisation for its product. As a result, Sandoz provided undertakings not to launch pending the first instance decision.  Arnold J ordered an expedited trial for early June 2016. Validity was not challenged by either Defendant.

The Patent

The invention lay in the use of certain penetration-enhancing excipients which are solid at room temperature and were therefore thought to be of limited use in assisting diffusion out of the matrix into the skin. The patent disclosed that on melting and cooling, these excipients formed so called “supercooled melts”, which have a melting point above room temperature, but remain liquid after cooling to room temperature.

It was only necessary to consider claim 1:
“A buprenorphine transdermal delivery device comprising a polymer matrix layer containing buprenorphine or a pharmaceutically acceptable salt thereof, for use in treating pain in humans for a dosing interval of at least 7 days, wherein the transdermal delivery device comprises 10 %-wt buprenorphine base, 10 to 15 %-wt levulinic acid, about 10 %-wt oleyloleate, 55 to 70 %-wt polyacrylate, and 0 to 10 %-wt polyvinylpyrrolidone.”


The main issues on construction were (i) whether the percentage values in the claim related to input or output values and (ii) the correct interpretation of the numerical ranges.

Arnold J preferred the Defendants’ arguments on both issues, finding that the skilled person would have understood the claim to mean (i) output values and (ii) values to be expressed in terms of whole numbers applying the conventional rounding approach e.g. to extend “10 %-wt” to ≥9.5 to < 10 .5 % wt. The word "about" should be taken to mean "a small degree of permitted imprecision over and above that implied by the usual rounding convention", although in Arnold J's view the inclusion of this word mean that the claim lacked clarity and he would have been tempted to find such a claim insufficient.

 Infringement - The de minimis principle in quia timet actions

The de minimis principle has been considered in previous patent authorities (Hoechst v BP [1998], Monsanto v Cargill [2007], Napp v Ratiopharm [2009], Lundbeck v Norpharma [2011]). In the present case Arnold J commented that the court was forced, as a matter of practical reality, to draw a line somewhere and referred to a hypothetical scenario in which only 0.01% of products fall within a claim as “precisely the kind of situation covered by the de minimis principle”.

In relation to quia timet actions, it was clear that if what the defendant threatens to do would only involve infringement on a de minimis scale, then that threat does not justify the commencement of proceedings by the patentee (whether to seek an injunction or a financial remedy). However, if there is a clear threat to do acts which fall within the claim sufficiently often that they cannot be discounted as de minimis then that is sufficient to justify bringing quia timet proceedings. In this case (i.e. where any infringement would be on a very small scale – see below), he concluded that even if the level of infringement cannot be discounted as de minimis, an injunction would be “both disproportionate and a barrier to legitimate trade”.

Both Defendants had served confidential PPDs which provided results of testing samples of their products. Uncertainty stemmed from the fact that the manufacturing processes for transdermal products are inherently variable and for this reason, it is not known how representative the tested samples are of future products.

Statistical evidence was put forward by experts by all parties and evaluated by Arnold J on the basis of his findings on construction. In relation to Sandoz’s product, even on Napp’s evidence, both of their figures of “1 in 69 million patches” (which was based on a confidence interval of 50%, which was accepted by Arnold J to be the correct interval for the balance of probabilities standard of proof) and “1 in 25,600 patches” (based on Napp’s argued confidence interval of 95%) would be de minimis and accordingly there was no threat by Sandoz to infringe.

Dr Reddy’s had provided a less detailed PPD but stated that to avoid infringement they would implement a testing regime based on a statistical protocol devised by its expert which would incorporate the Court’s findings as to what proportion of infringing patches amounts to de minimis. The protocol to be used by Dr Reddy’s was dependent upon the Court’s construction of the claims and required a finding of (i) the correct confidence interval and (ii) the threshold for the de minimis principle, which Arnold J found to be no more than 1 in 10,000 products falling within the claim. Arnold J concluded that Dr Reddy’s testing regime was sufficient to ensure its products would not fall within the claim other than to a de minimis extent. Accordingly, there was no threat by Dr Reddy’s to infringe either.

Second Judgment – Injunction Pending Appeal Granted 

The findings of no threat of infringement were dependent upon the findings on construction and permission to appeal was granted on construction alone.

Napp applied for an injunction pending the Court of Appeal decision. Arnold J considered the criteria set down by the Court of Appeal in Novartis v Hospira [2013], but noted that it was of concern that Lord Hoffman’s judgment in the Privy Council case National Commercial Bank Jamaica v Olint [2009] had not been cited. Whilst the Novartis guidelines state that “it will not usually be useful to attempt to form a view” on the prospects of the appeal, Lord Hoffman had stressed in Olint the need to consider “the relative strength of the parties’ cases” on appeal. Whilst this factor troubled Arnold J, and he considered Napp to have a weak case on appeal, based on Novartis this factor could not outweigh others.

The Novartis factors that persuaded Arnold J to grant an injunction in this case where:

The test for a preliminary injunction in life sciences...
i) Length of time before the appeal was likely to be heard:  

Dr Reddy’s solicitors had made enquiries to the effect that the Court of Appeal could, if it granted expedition, hear a one day appeal before the end of July 2016. On this basis, Arnold J decided to only grant an injunction until 16 August 2016. It is of note that, if such an expedited appeal does happen within this timeframe, then these proceedings will have progressed from Claim Form to Court of Appeal judgment in only 6 months!

ii) Balance of hardship to each party. 

Damages would not be an adequate remedy for Napp in respect of either Sandoz or Dr Reddy’s. This is a market where a price war is inevitable which will lead to significant price depression for Napp. Further, Sandoz had already effectively lost its first mover advantage due to the undertakings it had provided (in relation to which the correct remedy was a claim on the cross undertaking in damages).

Overall granting the injunction was the “lesser of two evils” and in such circumstances it is prudent to preserve the status quo. Echoing the Court of Appeal’s additional comments in Novartis, Arnold J provided a further warning to generic manufacturers by including in his reasoning the fact that the
 “Defendants could have avoided the problem if they had cleared the path for their products”.

Wednesday, 20 July 2016

Mr Justice Arnold rejects bid to hear infringement of German designation in Rhodia v Molycorp patent jurisdiction tussle

The AmeriKat on  a sleepless summer night
musing on the future of patent litigation
The late night witching hours have begun again for the AmeriKat.  It is during the quiet, warm summer nights without the ding of incoming emails or calls, that she can muse on the state of patent law.  One of the issues that has been preoccupying her time lately has been the future of harmonization for European patent and SPC law, especially in a post-Brexit landscape.  With the ultimate fate of the Unified Patent Court unlikely to be determined any time soon, her attention is returning back to a national court's ability to land grab an other EU Member State's designation for the purposes of patent infringement actions.   The extent of how long the English court's arm is in this respect was a question posed in various guises in last week's interim decision of Mr Justice Arnold in Anan Kasei Co., Ltd & Rhodia Operations S.A.S. v Molycorp Chemicals & Oxides (Europe) [2016] EWHC 1722 .  The IPKat's ever insightful friend, Eibhlin Vardy, picks up the tale:


Rhodia is the exclusive licensee of the UK and German designations of a European patent entitled "Ceric Oxide and method for production thereof, and catalyst for exhaust gas clarification". Rhodia commenced infringement proceedings in the English High Court alleging that the English domiciled Defendant, Molycorp, had infringed the UK and German designations of the patent.

Molycorp's solicitors filed an acknowledgment of service, indicating that the Defendant intended to defend the claim, but did not intend to challenge jurisdiction. However, on the same day, Molycorp's solicitors wrote to the Claimant giving notice of Molycorp's intention to challenge jurisdiction of the German designation of the patent in Germany, and asserting that in that situation, the English Courts would not have jurisdiction over infringement of the German designation of the patent.

 Rhodia then issued an application for an order for the provision by Molycorp of samples of its ceric oxide products for testing by an independent laboratory instructed on behalf of Rhodia for the purposes of infringement of both the UK and German designations of the patent. Shortly thereafter, Molycorp issued nullity proceedings in the Bundespatentgericht (Federal Patent Court) challenging the validity of the German designation of the patent on the usual grounds (lack of novelty/inventive step, and insufficiency). It was common ground between the parties that the German validity proceedings were due to take approximately two years.

Issues before the Court

There were two issues before the Court:

Ceric Oxide, not to be confused
with cornmeal....
(1) Does the English Patents Court have jurisdiction over the infringement claim in respect of the German designation of the patent?

Rhodia sought to amend its Particulars of Claim and Particulars of Infringement in order to try and bolster its case on jurisdiction in respect of infringement of the German designation of the patent.  The essence of its proposed Amended Particulars of Claim and Particulars of Infringement can be seen from the following excerpts:
"4. The Defendant has infringed the UK and German designations of the Patent as set out in the Particulars of Infringement served herewith. In respect of the German designation of the Patent, if German designation is not invalid (which is to be determined by the German courts) the Defendant's conduct has infringed, and/or would fall within the scope of the claims of, the German designation of the Patent. 
(1) A declaration that each of the UK and German designations of the Patent has been infringed by the Defendant. 
(1A) A declaration that, if German designation is not invalid (which is to be determined by the German courts) the Defendant's conduct has infringed the German designation of the Patent. Alternatively, a declaration that the Defendant's conduct falls within the scope of the claims of the German designation of the Patent (if not found invalid, which is to be determined by the German courts)."
As things stand, the UK remains a member state of the EU, and the issue of jurisdiction falls under Articles 24(4) and 27 of the Recast Brussels I Regulation, which provide as follows:
"Article 24 
The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: 
(4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place. 
Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State; 
Article 27 
Where a court of a Member State is seised of a claim which is principally concerned with a matter over which the courts of another Member State have exclusive jurisdiction by virtue of Article 24, it shall declare of its own motion that it has no jurisdiction." (emphasis added)
It was common ground between the parties that the German Courts have exclusive jurisdiction over the validity of the German designation of the patent. The issue in dispute was whether the reformed allegations of infringement in the proposed Amended Particulars of Claim/Infringement were "concerned with" the validity of the German designation of the patent within Article 24(4), or "principally concerned with" the validity of the German designation within Article 27.

Rhodia contended that they were not, because the claim had been framed to exclude any question on the validity of the German designation. Molycorp contended that they did fall within these provisions of the Recast Brussels I Regulation, because the question of infringement is inseparable from that of validity.

As a vocal objector to tentacles ::shudder::, the AmeriKat is pleased
that the English court's long arm is cut short by
Recast Brussels I Regulation ...
Following a review of relevant case law (including GAT v LuK  and Solvay v Honeywell), Arnold J concluded that Rhodia's claim fell under article 24(4), or was at least "principally concerned with" the validity of the German designation of the patent under Article 27. The proposed amendments to Rhodia's Particulars of Claim did not assist - the matter in dispute was simply whether "Molycorp has infringed a valid claim" of the patent, and Rhodia could not separate the inseparable through some careful drafting. The reasoning of the CJEU in GAT v LuK was equally applicable here.  Mr Justice Arnold held that:
"First, Rhodia's amendments are a transparent attempt "simply by the way it formulates its claims, to circumvent the mandatory nature of the rule of jurisdiction laid down in that article". Secondly, to allow Rhodia's claim to proceed "would have the effect of multiplying the heads of jurisdiction and would be liable to undermine the predictability of the rules of jurisdiction laid down by the Convention". Thirdly, it would "multiply the risk of conflicting decisions which the Convention seeks specifically to avoid".
Arnold J elaborated on the third point, by reiterating that the same claim construction must be used for both infringement and validity. If Courts in different jurisdictions adjudicate these issues separately, this would allow litigants to overcome the pressure of an infringement/validity squeeze, and could result in conflicting decisions on claim construction (the judge noted that a similar potential issue raised by a bifurcated claim in Germany is avoided because only one claim construction will be adopted by the Court on appeal for both infringement and validity).

In response to an issue raised by counsel for Rhodia, Arnold J noted that the fact that Rhodia had not challenged jurisdiction in the usual way under Part 11 of the Civil Procedure Rules (CPR) was misconceived for at least three reasons: First, the CPR cannot override the mandatory effect of a Regulation, and the timing of the challenge to validity in the German Courts was irrelevant. Secondly, CPR Part 11 does not apply where it is triggered by the defence to the claim, and Molycorp's solicitor's letter giving notice of intention to challenge jurisdiction in Germany was sufficient to raise the issue. Thirdly, Article 27 requires the Patents Court to decline jurisdiction of its own motion, regardless of Molycorp's omission to issue a formal jurisdiction challenge under CPR Part 11.

In summary, this issue of jurisdiction was a matter of substance, not form, and the Patents Court had no jurisdiction over Rhodia's infringement claim in respect of the German designation of the patent.

(2) Should an order be made by the English Court for the provision of samples in aid of a claim by Rhodia in the German Courts?

Mr Justice Arnold  - "principally
concerned  with" being a Patents Judge
or just "concerned with"?
Rhodia undertook to bring an infringement claim in Germany in the event that jurisdiction was declined by the English Court. On this basis, Rhodia maintained its application for an order for the provision of Molycorp's samples for testing for the purposes of the German infringement claim. Molycorp opposed the application on the basis that the Court has no jurisdiction to make the order, and that it would be inexpedient to do so.

Section 25 of the Civil Jurisdiction and Judgments Act 1982 provides as follows:
"(1) The High Court in England and Wales or Northern Ireland shall have power to grant interim relief where –

(a) proceedings have been or are to be commenced in … a Regulation State other than the United Kingdom …; 

(2) On an application for any interim relief under subsection (1) the court may refuse to grant that relief if, in the opinion of the court, the fact that the court has no jurisdiction apart from this section in relation to the subject matter of the proceedings in question makes it inexpedient for the court to grant it. 
(7) In this section 'interim relief', in relation to the High Court in England and Wales or Northern Ireland, means interim relief of any kind which that court has power to grant in proceedings relating to matters within its jurisdiction, other than— 
(b) provision for obtaining evidence."

Arnold J sided with Molycorp. Rhodia's application was for the sole purpose of obtaining evidence to support its infringement claim in Germany, and therefore fell under the exclusion identified in s25 (7) (b) above. It was common ground that this exclusion was included because the proper means for obtaining evidence in aid of proceedings in the EU is now governed by Council Regulation No 1206/2001/EC. Rhodia also submitted that the Court alternatively had jurisdiction to make the order through its general power of injunctive relief under s37(1) of the Senior Courts Act 1981. The Court again disagreed - to rely upon this general provision for interim relief would circumvent the specific restriction which Parliament has placed upon s25 of the 1982 Act.


Let go and be free....a lesson of Rhodia v Molycorp
In previous cases, the English Court has not shied away from adjudicating on patent infringement actions involving designations of a patent from another EU Member State, where the validity of those designations has not been challenged (see for example the Actavis v Lilly saga, reported previously on the IPKat here -  with one chapter of the saga pending before the Supreme Court). In the present case, Rhodia attempted to further extend the reach of the English Patents Court, by slicing and dicing the issues of infringement and validity of the German designation of the patent in its pleadings. However, the issue of jurisdiction over such patent infringement actions is ultimately a matter of substance, not form. By analogy, an alleged infringer wishing to establish jurisdiction for a declaration of non-infringement of a European designation of a patent in the English Courts must relinquish a challenge to validity of that designation to maintain jurisdiction in the English Courts."

Monday, 18 July 2016

Never Too Late: If you missed the IPKat last week

If you missed the IP headlines last week, don't worry. The 105th edition of Never Too Late is to bring you up to date with the short but select handful of stories from last week.

High Court summarily dismisses Seretide combination colour mark
The IPKat, feeling like a basket case

For those readers who fancy a change from Brexit and UPC-fate related news, preferring instead a reminder of good, old fashioned IP cases, you are in luck. A couple of weeks ago, His Honour Judge Hacon (sitting in the High Court) handed down his decision in Glaxo v Sandoz [2016] EWHC 1537 in which he was asked by Sandoz to determine, on a summary judgment application, whether Glaxo's EU Trade Mark No 3890126 was invalid. The answer - yes. Luke Maunder (Bristows LLP) reports on the decision which will be interest to anyone who loves color combination trade marks or trying to figure out how to precisely and clearly ring fence the scope of trade mark protection

What is the best forum for resolving patent and FRAND/SEP disputes? It depends on who you ask... On the last day of June, the London offices of Allen & Overy LLP hosted the First Joint Seminar on SEP/FRAND Mediation and Arbitration, co-organised by Queen Mary University of London’s School of International Arbitration (SIA) and the WIPO Arbitration and Mediation Center. For those who were unable to make it to Bishop's Square, some Kat friends who had less distance to travel - in the form of Elettra Bietti and Taly Dvorkis (both of A&O) - report on the event. 

InternKat brings you a blast of hot IP news/events that you may have missed:

- UK IPO invites bids by early September for research into the IP valuation market. 
- Andrea Brewster asks what we can do to promote inclusivity in IP 
- Trump looks to brush off Aquaazzura copycat claims 
- Open Call for Speakers at the 5th International CopyCamp Conference (October 27-28, 2016 in Warsaw). 
- Keeping up with the Jones’s taken to a whole new level? 
- We’ve come a long, long way together. Through the hard times and the good... Join the International Confederation of Societies of Authors and Composers (CISAC) in ongoing celebrations of their 90 year anniversary. 


Never too late 104 [week ending on Sunday 10 July] e-Sport in the French Digital Republic Bill | Aspartame is back -- and is Pepsi playing by a new branding playbook| The USPTO moves to clear "Trademark Deadwood" | Court of Appeal of England and Wales confirms availability of blocking injunctions in online trade mark cases  An opportunity for IP scholars seeking future careers | CJEU says that operators of physical marketplaces may be forced to stop trade mark infringements of market-traders | Book review: the law and practice of trade mark transactions | Own name defence in Singapore| Cartier rapid response event | AG Wathelet on out of print books | Maccoffee: McDonalds not loving it

Never too late 103 [week ending on Sunday 3 July] | Publicity Rights v First Amendment EU Trade marks Article 28 Declarations | Non-EU UK in the UPC? | Book review: IP Strategy, Valuation and Damages | Brexit and Copyright | In memoriam of David Goldring | Openness, innovation and patents

Never too late 102 [week ending on Sunday 26 June]  | Neighbouring rights for publishers | US Supreme Court makes it easier to obtain patent enhanced damages | US Supreme Court in Halo and Kirtsaeng makes IP victory sweeter for successful parties | Enlarged Board publishes decision: EPO President violated judicial independence | Dear Europe... UK leaves the EU | Dear UK... 

Never too late 101 [week ending on Sunday 19 June] Procedure to remove EPO Board Member ends abruptly | Trade mark "bully" | EU Trade Secrets Directive | Cannibalism, Branding and Market Segmentation | A-G Szpunar declares Rubik's Cube shape mark invalid | Apple and the podcast industry | IP Inclusive | Coke defends opposition to 'ZERO' marks

Rome Court of First instance confirms once again that takedown requests do not need to include URLs

Puzzling level of aggressiveness
in guy's expression
The Tribunale di Roma (Rome Court of First Instance) is back with yet another decision on the liability of online intermediaries (ISPs) for third-party copyright infringements.

After the decisions against video sharing platforms Break [noted here] and Kewego [noted here], this time it was the turn of streaming platform Megavideo [shut down in Italy since 2012] to be found ineligible for safe harbour protection pursuant to Article 16 of Decreto Legislativo 70/2003 [by which Italy implemented Article 14 of the Ecommerce Directive into its own national law]

The case is: Tribunale di Roma, Reti Televisive Italiane spa v Megavideo Ltd, decision 14279/2016, published 15/07/2016.


In a decision published last Friday and made available and commented on very useful Italian IP resource Marchi&Brevetti, the Rome Court of First Instance put the word 'end' [at least for the time being] to yet another set of proceedings brought by RTI - Reti Televisive Italiane (owned by broadcasting company Mediaset) against a number of online intermediaries over the unauthorised making available of TV programmes it produces.

RTI had sued Megavideo before the Rome court seeking among other things: (1) a declaration that the latter, by allowing third parties to make available its own TV programmes, had infringed its broadcasting rights and committed acts of unfair competition [the latter claim was eventually dismissed]; (2) an order to remove and disable access to all TV programmes made available without its authorisation; (3) and damages for at least EUR 100m.

The defendant decided not to take part in the proceedings.

Why Megavideo is not a passive host

Further to a number of preliminary remarks, the court considered whether Megavideo's activity could be regarded as akin to that of a hosting provider within Article 16 of Decreto Legislativo 70/2003, so to benefit from the exemption from liability envisaged therein. 

The court ruled out that Megavideo could enjoy such protection, and did so for a number of reasons:

  • The files available on its platform could be streamed by an indeterminate and potentially high number of persons;
  • The contents available on its platform were organised in categories;
  • Megavideo engaged in an intensive advertising activity through banners of different types and formats, available within the home page and internal pages alike;
  • The advertising content varied depending on the geographic location of the user of the platform;
  • The platform allowed a limited viewing of the various contents: limitations could be however overcome by purchasing subscriptions advertised on the platform itself.
In particular [WARNING: Kat-translation from Italian and, yes, sentences in the judgment are this long]:

"It is clear, therefore, that the market of users, partly paid-for, and the market of advertising were a source of conspicuous revenues, which were closely connected to the content of the videos made available, as these served to attract clients with the intention of selling subscriptions and generating revenues through advertising and, ultimately, ensure the economic success of the platform. 
Hence, not a mere sharing platform, but rather a portal that allows easy and diversified choices, thanks to a simple consultation, of several videos and/or extracts of videos that are not casually uploaded by users, but are rather categorised and organised and linked to advertising messages, and are regulated by a series of rules through the "Terms of Service" [these made it clear that only users are responsible for the content they make available on its streaming platform].

The court concluded that Megavideo's activities could not be considered that of a passive host, but rather those of a "complex organisation of advertising and economic exploitation of [third-party] contents".

Nonetheless, no general monitoring obligation

This said, the court observed that even 'active' hosts are not subject to a general monitoring obligation. According to the court, this is in line with the decision of the Court of Justice of the European Union (CJEU) in Scarlet. Holding otherwise would result in an unacceptable restriction of freedom of information and expression and would prejudice the necessary balance that must subsist between copyright protection and freedom to conduct a business within Article 16 of the Charter of Fundamental Rights of the European Union.

Too shy to include URLs?
The (lack of) content of takedown requests

RTI submitted a number of takedown requests to Megavideo in July 2010 [apparently only indicating the titles of the TV programmes to be removed, but not also the relevant URLs]

According to the court, that moment signalled the beginning of the unlawful behaviour of Megavideo, "considering that the information included in those takedown requests was sufficient [really?] to allow the defendant to take action to prevent the continuation of the infringement of [RTI's] rights and also considering that, even without those takedowns, the defendant could easily and independently acquire knoweldge of such infringements, both because of the notoriety of the TV programmes in question and the relevant broadcasting chanels and, in particular, the presence RTI's distinctive signs on all TV programmes' extracts." 

After a thorough discussion of damages and their determination, the court found Megavideo liable of infringing RTI's rights (but not of unfair competition), and ordered it to pay damages for EUR 12.1m [slightly lower amount than what the claimant had requested].
There is not much new in this judgment of the Rome Court of First Instance: the court appears to have reinforced its approach to defining and determining ISP liability.
With regard to the absence of a duty of rightholders to indicate relevant URLs in their takedown, in its previous judgment in, the Rome court had gone as far as suggesting that envisaging such requirement would mean going beyond the requirements set under EU law. 
While it may be true that the Ecommerce Directive is silent in this respect, one may wonder whether the same is true with regard to CJEU case law. In its seminal decision in L'Oréal, in fact, that the CJEU suggested [para 122] that safe harbour protections cannot be trumped by "notifications of allegedly illegal activities or information [that are] insufficiently precise or inadequately substantiated". 
It is therefore questionable whether a request to remove 'all' TV programmes could be considered sufficiently precise and adequately substantiated. 
But what do readers think?

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