Recent IP decisions reinforce the view that outside the US, IP decisions more often favor patent and trademark holders.
China: One on the patent side, one on the trademark
Before 1985, China had no patent system, and many people have been skeptical of what system there is since then. But China recognizes the importance of protecting IP rights, and has even created an IP court in Beijing.
A patent holder, Iwncomm, is the owner of a standards essential patent (SEP), which means that it holds a patent for a technology that is required by any mobile operator that uses one of the essential standards (like 3G, 4G LTE for example). In a recent holding, an IP court ordered Sony to pay Iwncomm $1.3 million in damages and stop selling certain mobile devices that infringe Iwncomm’s patent.
Iwncomm’s injunction applies not just to products sold in China but also to exports of goods made in that country. Erick Robinson, the director of patent litigation at Beijing East IP Ltd., summed up the holding’s broader implications. “Enforcement of standard-essential patents is an important issue throughout the world, specifically whether injunctions should be available in such cases…In China, the answer to this question is a definitive ‘yes.’”
A trademark ruling in favor of Under Armour ordered a knock off clothing maker called Uncle Martian (!) to pay $300,000 in damages, destroy its products, and cease infringing manufacture. The interesting thing to note here is that this result issued from the People’s Higher Court of Fujian Province, which a local provincial court. This gives rise to a growing belief that IP owners may find support to enforce their IP rights in Chinese courts, even outside the specialty ones.
UK: Easier to find equivalence infringement
To find infringement, an accused product must fall within the scope of the patent claims. The infringement can be literal, meaning the claims literally read on the accused product, or equivalent, meaning the claims don’t literally read on an accused product but the difference between the accused product and claims is insubstantial (this last word being the US test). In the UK, proof of equivalents, until recently, required that a patent owner overcome the Improver inquiry.
The variant will not infringe if any of the following are true:
- The variant has a material effect on the way the invention works.
- The fact that the variant has no material effect on the way the invention works would not have been obvious to an expert in the field.
- That an expert in the field would have taken from the language used in the patent that strict compliance with the primary meaning was an essential requirement of the invention.
The UK Supreme Court struck down this decision in Activis UK Ltd. v. Eli Lilly and Company. In an interesting decision that explores how other countries approach equivalents, the UK Supreme Court fount that “The second Improver question is more problematic. In my view, it imposes too high a burden on the patentee to ask whether it would have been obvious to the notional addressee that the variant would have no material effect on the way in which the invention works, given that it requires the addressee to figure out for himself whether the variant would work.” In taking this position, the Court strengthened the perception that the EU in general and UK in particular, is a patent-holder friendly venue.
No Laches in Patent Infringement Cases
The Supreme Court addressed the distinction between laches and statutes of limitations in patent cases. Its 7-1 SCA Hygeine Products AKT vs. First Quality Products, LLC (S. Ct. 2017) considered whether laches could be used as a defense by defendant First Quality when 7 years had passed from when it first received notice of potential infringement in 2003 and the date that SCA filed an infringement complaint in 2010. Considering the Congress-passed statute for damages recovery in 35 USC 286 and the laches defense, the Court followed its 2014 Petrella decision in a similar case under copyright law, “Laches is a gap-filling doctrine, and where there is a statute of limitations, there is no gap to fill.”
Eligibility: Get Technical or Get Denied
Dennis Crouch summarized a nonprecendential opinion well with the above maxim to apply to subject matter eligibility questions. The Federal Circuit’s conclusion provides some guidance for future applicants and practitioners, “In contrast to Diehr, claim 1 recites a method that changes the way electronic information is displayed via an unknown and unclaimed process. Absent any limitation to how the data are changed, there is little, if any, transformative effect. Data are still data.” According to the court, the patent failed to show an inventive “technical manner” in which “data is gathered, analyzed, or output.”
 The machine or transformation test lives. See Older Supreme Court Cases Provide Guidance for Determining Patentable Subject Matter Post Alice
Assignment of Patent Alone May Not Extend to Child Applications
The Federal Circuit held that a party that had been assigned a parent patent lacked standing to sue for child patents issued from the parent patent. The assignment in question did not assign rights related to continuations, technical know how, or general IP rights.
Equity aids the vigilant, not those who slumber on their rights. This is a legal maxim that speaks to fairness, and in the courts, the maxim finds its roots in the equitable defense of laches. Laches differs from a statute of limitations, which applies to particular situations.
The Supreme Court recently addressed the distinction between laches and statutes of limitations in patent cases. Its 7-1 SCA Hygeine Products AKT vs. First Quality Products, LLC (S. Ct. 2017) considered whether laches could be used as a defense by defendant First Quality when 7 years had passed from when it first received notice of potential infringement in 2003 and the date that SCA filed an infringement complaint in 2010. Returning to the maxim, the question before the Court was whether SCA slumbered on its rights by not bringing suit until 7 years after it knew of First Quality Products’ potential infringement.
The US Code provides a statute for damages recovery in patent infringement cases. “Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.”
Considering this Congress-passed statute for damages recovery and the laches defense, the Court followed its 2014 Petrella decision in a similar case under copyright law, “Laches is a gap-filling doctrine, and where there is a statute of limitations, there is no gap to fill.” It went on to point out that there is not “a single federal statute that provides such dual protection against untimely claims.” It bolstered its reasoning with guidance from some older case law: Holmberg v. Armbrecht, 327 U. S. 392, 395 (1946) (“If Congress explicitly puts a limit upon the time for enforcing a right which it created, there is an end of the matter”); United States v. Mack, 295 U. S. 480, 489 (1935) (“Laches within the term of the statute of limitations is no defense at law”); Wehrman v. Conklin, 155 U. S. 314, 326 (1894).
It reached its conclusion that “Laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by §286” in spite of Justice Breyer’s warning that the decision may set up this scenario.
[A] patentee might wait for a decade or more while the infringer (who perhaps does not know or believe he is an infringer) invests heavily in the development of the infringing product (of which the patentee’s invention could be only a small component), while evidence that the infringer might use to, say, show the patent is invalid disappears with time. Then, if the product is a success, the patentee can bring his lawsuit, hoping to collect a significant recovery. And if business-related circumstances make it difficult or impossible for the infringer to abandon its use of the patented invention (i.e., if the infringer is “locked in”), then the patentee can keep bringing lawsuits, say, in year 10 (collecting damages from years 4 through 10), in year 16 (collecting damages from years 10 through 16), and in year 20 (collecting any remaining damages). The possibility of this type of outcome reveals a “gap.” Laches works to fill the gap by barring recovery when the patentee unreasonably and prejudicially delays suit.
Justice Breyer’s warning may be prescient and something to watch for in coming years.
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