The evolution of patent drafting and litigation
Lily Lim, a partner and litigator with Finnegan Henderson Farabow Garrett & Dunner, led the first panel in a review of the Alice Corp v CLS Bank decision, one year on. The panel of lawyers, which included attorneys from Microsoft, Cadence Design Systems and GoPro, unanimously identified an increase in patent rejections in the wake of the Alice case.
The Alice Corp v CLS Bank decision
· In-house practitioners identify an increase in time and money spent on rejections
· Advice for defendants: get in-house counsel to evaluate for claim construction
· Strong focus on securing claims that are patent eligible on examination
· Congress making efforts to combat abusive patent practice, targeting those creating bad patents and using them to make money
Practical advice for handling post-grant challenges: Lessons learned from PTAB
· Considerations for whether a patent is for a technological invention, decided on a case-by-case basis include: (1) whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; AND (2) solves a technical problem using a technical solution
· Some statistics: in IPR proceedings, 83.2% of all instituted claims cancelled
· In CBM proceedings, 96.1% of all instituted claims cancelled
IP in arbitration
· Arbitrators decide both on the factual and legal factors submitted
· If arbitrators issue a final award, assume limited discovery and ability to appeal
· IP arbitration can involve multiple forms of IP and IP from multiple jurisdictions
· Mediation is good way to get to the core issues and move on
· Arbitration an alternative to litigation: under the right conditions, arbitration can be a faster and more flexible option particularly if awards are readily enforceable in most countries
Challenges to online enforcement and potential pitfalls
· Increased invention in wearable technology and online content means copies will be more difficult to identify
· Tips to avoid online advertising pitfalls: guide clients to make intention obvious and follow advertising regulations closely
· When enforcing, ask: if the claim is valid, if you truly own the content, if indemnification is available
· During the UPC transitional period (set at seven years), they will be the option to opt out classic European patents or back in to enforce in the UPC. Plan ahead!
Trends in licensing
· Consider the objectives of your party and adversary, possible tactics of the opposition and your reactions, timing and cost constraints
· Patent portfolio owners advised to work closely with litigation team to prepare claims
· Be accurate, know the rules
From pay-for-delay to SEPs – Where does Canada stand on IP and competition law?
· Not considered an anti-competitive act: Copyright Act, Industrial Design Act, Integrated Circuit Topography Act, Patent Act, Trade-marks Act nor any other Act of Parliament pertaining to intellectual or industrial property
· Subsequent entry manufacturer (SEM) must address patents listed on Patent Register in order to obtain Health Canada regulatory approval
· If innovator unsuccessful, may be liable to SEM for damages resulting from the patent held
· Patented Medicine Prices Review Board (PMPRB) monitors which patented medicines are sold in Canada
Patent reform in Europe
· Implementation of the UPC due to occur following ratification of 13 signatories (must include France, Germany and UK)
· To obtain a Unitary Patent, file request to the EPO within a month of grant of European patent
· Each division in the UPC will have combination of legal and technically qualified judges, originating from various locations across the EU
· Fee adjustments available: 25% (fixed + value-based) fees reimbursed if action heard by single judge and if fees are likely to threaten economic existence (special measures applicable for SMEs, non-profit organisations and universities)
Recent developments in copyright and trade mark law
· As seen in Intel v CPM, Case 252/07, the CJEU considers the status of an existing trade mark based in terms of risk presented to the reputation of another trade mark and evidence of taking unfair advantage of the distinctive character or the repute of the earlier trade mark
· Evidence of the above is sufficient – actual harm need not be demonstrated
· Trade dress can be registered if it is distinctive and not functional
The importance of leadership in developing your career
· Panel on what makes a good leader: confidence, endurance, embracing and learning from your mistakes, authenticity
· Contrary to common perception: a leader does not have to be bullish, loud or male
· Develop leadership skills around your best attributes. Embrace your individuality
· You could be hurting your career by shutting yourself off from your professional surrounding and becoming the “faceless person on email”
· Make time to network and build relationships in the field
· Learn to give yourself a break!
In-house lawyers expressed woes over increased proportions of time and money spent on rejections. It was clear that despite the good intentions of the Supreme Court to disarm ‘patent trolls’, securing patent eligibility has become considerably harder due to the obscure nature of the Court’s ruling. Eve Saltman, deputy general counsel at GoPro said that this had an impact on litigation strategy and placed greater focus on the need for in-house counsel to be scrupulous in claim construction.
Dori Hines from Finnegan Henderson Farabow Garrett & Dunner highlighted that while the Court announced intentions to ‘tread lightly’ in issuing rulings on patent ineligibility “lest it swallow all of patent law” this has not been the case.
The following panel moderated by Lori Gordon, director at Sterne Kessler Goldstein & Fox, focused on the strategy of patent owners. Michelle Holoubek of Sterne Kessler credited the IPR process with forcing the patentee to “get serious” about what the patent is about. In reference to PTAB trials, USPTO’s Judge Tina Hulse said that judges had underestimated the popularity of these proceedings.
Attendees were presented with statistics reflecting the efforts of Congress to curb abusive patent practice, said to be particularly harmful for SMEs. It was announced that 96% of all CMB instituted claims were cancelled, while this applied to 83.2% of IPR proceedings. Panellists observed that patentees often opted for IPRs as a cheaper and faster alternative to litigation.
Moving forward: challenges in IP litigation and arbitration
In a session focusing on the advantages and limitations of arbitration as an alternative to litigation, lawyers laid out the difference between the two practices. Partner at King & Spalding Silvia Marchili identified limited discovery and right of appeal as drawbacks of IP arbitration. Marchili told delegates: “You have to assume that you will only have one bit at the apple.” In judging whether to litigate or arbitrate, lawyers were asked to consider the measure of significance they attribute to giving up the right to appeal in an IP-related matter, in conjunction with cost and efficiency. Another key factor was judiciary culture; in cases where rulings tend to be less sophisticated and unfair, arbitration tends appeals as a good alternative to litigation.
Online trade marks, copyright and advertising
It was predicted that with the increasing popularity of wearable technology and 3D printing, it would become harder to distinguish copies from originals. One panellist asked: “Is a digital scan a copy of the original object?”
Can wearable technology be protected as artistic work? Moderator Pamela Church of Baker & McKenzie stated that such a copyright matter would consider, but certainly not be limited to, the physical appearance of a product. Church quoted the late Apple innovator Steve Jobs who said: “Design is not just what it looks like and feels like. Design is how it works.”
Emily Burns, senior trade mark counsel from Google, shared some experiences on creator-driven formats such as YouTube and stressed the importance of balancing IP law enforcement with the rights of the creator. While sites such as YouTube and eBay have established internal systems for monitoring the abuse of trade mark and copyright regulations, this remains a grey area. As delegates discovered, the law continues to evolve. Recent interpretation of the F12 Copyright and DMCA Policy has left many web hosts wondering if they may be liable for wrongful removals in the future.
On the topic of online advertising pitfalls, lawyers were advised to guide their clients away from unnecessary legal action by remaining completely transparent in their conduct.
Trends and patent reform in Europe
The International Women’s Leadership Forum also allowed for a discussion of trends in licensing with panellists identifying an increased interest in standard essential patents since the Samsung v Apple case.
Attendees were briefed on the Unitary Patent, related fees and plans for the Unified Patent Court, which will be implemented four months after the ratification of 13 signatories. These signatories must include France, Germany and the UK. They were told that the local and regional divisions of the UPC would mostly deal with infringement actions while the central division will concentrate on revocations.
Penny Gilbert from Powell Gilbert emphasised the fact that the Unitary Patent will give patentees access to a unitary right, and not a bundle of rights. Gilbert warned that under the new system, it would no longer be possible to opt out from single jurisdictions and keep the patent in others. For this reason, among many others, it was queried whether investors would perceive Unitary Patents to be as valuable as European patents.
Sonia Cooper, senior patent attorney for the Skype division of Microsoft, responded: “I think the litigation budgets for Europe are going to be substantially less, because there’s going to be a strong incentive on both parts to settle the case. I think investors, especially with start-ups, they are not going to distinguish between the UPC versus the other version – they’re just happy to have European rights.”
Cooper continued: “I think the other attractive feature of the system is, because it’s the one place where you are either going to be able to have a validated patent or your patent’s going to be opposed or defeated, litigation is much more risky for both sides.”
During the session, members of the panel described opting out of the UPC as a means of lending the patentee certainty over which court will handle the patent dispute.
Leadership and moving up the IP ladder
The last session linked back nicely to the title of the forum, taking up the topic of leadership in IP. Moderator Susan Heller of Greenberg Traurig posed to the panel the question of what attributes make a good leader and how do you acquire them. Answers included authenticity, crediting others for their ideas, strong listening skills, learning from your mistakes and taking ownership for them.
Danielle Johnston Holmes of Microsoft alluded to the stereotype of a leader; “I think we tend to think of a middle-aged male, probably a ‘type A’ personality, really loud and extroverted”.
“That’s the leadership we are exposed to a lot. We can fall into the trap of thinking we have to emulate that to be a good leader. In fact, you can’t be a good leader if you’re trying to me something that you’re not,” Holmes said.
The panel cited establishing a healthy work-life balance, networking and mentorship as essential steps to sustainable career progression in IP. It was assuaging to see that panellists were able to point to at least one person who had helped them along their way. Several members of the audience also raised their hands to indicate that they had been mentored during the course of their career, while a considerable proportion said they had benefited from the support of a female mentee.
The next International Women’s Leadership Forum will take place in London on February 23 2016. For more information, click here.
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