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This week in IP: Sisvel ruling unpacked, CJEU kicks out Neurim, new PTAB opinion
Managing IP rounds up the latest patent, trademark and copyright news, including some stories you may have missed

Sisvel ruling halts ‘one-sided FRAND negotiations’ in Germany
The German Federal Court of Justice’s written justification
for its May ruling in Sisvel v Haier
is a win for both licence holders and implementers because it clarifies the
FRAND negotiation process, say German intellectual property lawyers.
Drawing from Mr Justice Colin Birss’s UK ruling in Unwired Planet v Huawei, the document
says implementers must actively engage in fair, reasonable and
non-discriminatory (FRAND) negotiations and accept a FRAND offer from a patent
holder, even if a lower FRAND rate has been offered to a competitor.
Florian Cordes, head of EU litigation for Sisvel in
Switzerland, tells Managing IP that the justification of the ruling is a
welcome clarification to some unanswered questions about how negotiations
should be conducted, and that it provides harmonisation across the across the
German legal system.
“FRAND negotiations were really one sided in the past and
several courts have mainly spoken only of the obligations of the patent owners,”
he says. “Now the Supreme Court has made it clear that if a company is aware it
is infringing, it is obliged to take all the necessary steps to obtain a
licence.”
Other Managing IP stories from the week that you might like
to read include:
- Eeva Hakoranta: my vision as InterDigital’s new CLO
- Starting in a crisis: COVID’s impact on future lawyers
- Interview: WIPO’s Gurry hits out at ‘fake news’
- Uncertainties remain for China’s trade secret guide
- 5G standards crisis: US firms need more leeway with China
CJEU abolishes Neurim: SPCs not available for new therapeutic applications
In a landmark judgment on Thursday that served as a blow to
pharmaceutical innovators, the Court of Justice of the EU ruled that
supplementary protection certificates are not available for new uses of
previously authorised products.
In its decision
in Santen (C‑673/18), the
court followed the opinion
of Advocate General Giovanni Pitruzzella from January concerning Article 3d of
the SPC Regulation, and cast aside its 2012 judgment in Neurim (C-130/11).
The Neurim decision
had left open the possibility that previously authorised veterinary medicines
could be eligible for SPCs, provided the new marketing authorisation (MA) was
for human use.
But the new decision very clearly set out that: “Article 3d must
be interpreted to mean that an MA cannot be considered to be the first MA, for
the purpose of that provision, where it covers a new therapeutic application of
an active ingredient or combination of active ingredients, and that active
ingredient or combination has already been the subject of a marketing
authorisation for a different therapeutic application.”
Gareth Duncan, partner at D Young & Co in the UK, said
that while this decision may disappoint some in the pharmaceutical industry, it
may provide much-needed clarity for others on a point of law which has been
uncertain for almost a decade.
Jules Fabre, legal director at Pinsent Masons in Paris,
noted that the judgment clarifies the application of EU legislation and
earlier case law, but that it has major implications for pharmaceutical manufacturers.
In another pending case, the CJEU will soon decide on a
similar question concerning Article 3c of the SPC Regulation, which requires
that "the product has not already been the subject of a certificate”.
PTAB can raise own unpatentability grounds, but not often
The Patent Trial and Appeal Board should only raise its own
grounds of unpatentability against proposed substitute claims in rare
circumstances, the Precedential Opinion Panel set out on Monday.
The panel, which decides matters of exceptional importance to
the PTAB, said in its precedential opinion that the board should typically stick to the claims raised by a
patent challenger.
The decision stemmed from the inter partes review (IPR) in Hunting Titan v DynaEnergetics, where DynaEnergetics
had alleged that Hunting obtained and used its confidential information
relating to the DS Trinity System, an eight-inch perforating gun used in the
oil and gas industry.
Jeff Vockrodt, partner at Culhane Meadows in New York, noted
that this opinion embraced the adversarial nature of IPRs at the PTAB, and that
it will be interesting to see whether this policy affects other issues.
“This decision further strengthens patent owners' positions in IPR, reducing the risk that the PTAB will come up with its own reasons for
denying motions to amend,” he said.
Tivo IP chief joins NPE
The former head of IP for TiVo will join non-practising
entity Intellectual Ventures as chief operating officer of its invention
investment fund in September, it was announced
yesterday.
Arvin Patel, who left his positon at TiVo as part of the
business’s merger with Xperi, will lead commercialisation strategy and
execution, business development, and partnerships across the fund’s patent
portfolio. He will report to executive vice president Mathen Ganesan.
“Intellectual Ventures is one of the most forward-thinking
innovation companies in the world. I’m honored to join this exceptional team,”
said Patel in a press statement.
“I hope to continue to build on the mission of impact
invention at IV and bring real change not only to the technology industry but
in the way that innovation is created and distributed around the world.”
Patel relinquished his position at TiVo last month with a
golden parachute of close to $1.8 million after almost three years at the
company.
He was one of several executives to depart after the Xperi
merger, including CEO Dave Shull.
Highest German court appoints new patent-specialist judge
The highest court in Germany has appointed a new judge from
the Düsseldorf Regional Court who specialises in patent law, it was announced
on Wednesday.
Tim Crummenerl, who has been a district judge since 1999, was
elected to the Federal Court of Justice (Bundesgerichtshof) by the Federal Judge Election Committee (Bundesrichterwahlausschuss)
in its session on July 2.
Crummenerl has been presiding judge of a patent litigation
chamber at the Düsseldorf court since 2009.
"The selection of the Bundesrichterwahlausschuss
underlines once again the important role that Düsseldorf plays as a patent law
location in Germany. We are pleased that with Tim Crummenerl, another highly
esteemed judge is now represented in Karlsruhe, and we wish him all the best for
his new task," said Gottfried Schüll, partner at
Cohausz & Florack in Düsseldorf.
Report: copyright enforcers can win huge damages in China
While foreign software companies do not often choose to
enforce copyright in China, those that do typically achieve high win rates and
are often awarded substantial damages, according to new research from IP firms
Rouse and Lusheng published this week.
The report suggests that the number of foreign software
companies choosing to litigate in China is small. Out of 1,303 cases recorded
between 2010 and 2019, just 285 (22%) were bought by foreign plaintiffs. By
comparison, three times as many patent infringement cases were brought by
foreign plaintiffs during the same period.
The document goes on to show that win rates and compensation
levels are both high. The win rate for foreign plaintiffs stands at 85.3%
which, though high, is actually lower than the win rate for domestic software
plaintiffs.
Analysis shows that this average was brought down by two
prolific plaintiffs who filed ‘bulk lawsuits’ and received a markedly lower win
rate. Other plaintiffs, who filed far fewer cases, enjoyed 100% success rates.
Compensation awarded by the courts is also high compared
with other types of IP cases. The average compensation totalled $70,932,
compared to patent case compensation for foreign plaintiffs of $29,037 on average.
And foreign plaintiffs have enjoyed some impressively high compensation amounts in comparison to typical awards for foreign plaintiffs. The highest award in the dataset was $2.8 million, and the top five awards all exceeded $900,000.
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