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U.S. + Germany Patent Update – November 2018

The U.S. and Germany are two of the most important fora in the world for patent litigation. The U.S. has long been one of the largest markets for patent litigation, and Germany has constantly attracted more than 50% of all European patent litigation. Hogan Lovells offers this multi-lingual update on notable recent patent developments across these two countries.

  • 日本語 – Japanese language translation available here

Spotlight

German Federal Patent Court on Filing Auxiliary Requests With Narrower Claims in Patent Nullity Proceedings – “Satellite Based Paging System with Location Transmission,” Federal Patent Court of Germany, 6 NI 69/16 (EP)

…This decision shows that the parties are generally obligated to present all facts, prior art, and auxiliary requests relevant to the proceedings in a complete and timely manner. In particular, when submitting new auxiliary requests, the patent owner should not rely on the GFPC’s preliminary opinion, but should protect its patent by submitting new auxiliary requests within the time limit set by the GFPC—not during the oral hearing. Read more


U.S.

PTAB Denies Institution as Duplicative Due to Earlier IPR Challenge by Different Petitioner – Shenzhen Silver Star Intelligent Tech. v. iRobot Corp. (5 September 2018)

In the past, the PTAB has denied what it has deemed to be duplicative petitions filed by the same petitioner, but this case presented a more unique circumstance of denying a second IPR file by a different petitioner. In a concurring opinion, one of the PTAB judges suggested that co-defendants in a litigation should file IPR petitions around the same time. That judge went so far as to say there should even be a rebuttable presumption that the later-filed petition will be denied if filed after patent owner files its preliminary response to the first-filed IPR. In view of this, it is important, if in a multiple-defendant litigation, to consider coordinating IPR strategy with other defendants. Or, at the very least, it is important to stay apprised of co-defendant IPR activity and timing of any filings. Read more

USPTO Announces Proposal to Change System for Seeking Amendments in PTAB Proceedings (25 October 2018)

The United States Patent and Trademark Office (PTO) published a “Request for Comments” on its new proposed procedure for motions to amend claims in PTAB proceedings. The PTO has proposed a 2-phase procedure for making claim amendments. In the first phase, the PTAB would issue a preliminary ruling on whether proposed amended claims are valid prior to the final decision, and, in a second phase, patent owners could revise their motion in response. Read more

USPTO Begins Using Same Claim Construction Standard as District Courts (13 November 2018)

The PTO recently published the final rule changing the claim construction standard to be applied in PTAB proceedings on 10 October 2018. The new rule took effect on 13 November 2018. The new rule requires the PTAB to adopt the Phillips standard for claim construction in all PTAB proceedings, discarding the old “broadest reasonable interpretation” (BRI) standard that has been used since the creation of PTAB proceedings in 2012. The Phillips standard is the same standard used in district court litigation, so there is thought that this new rule will harmonize PTAB and district court litigation. Read more

Judge Takes Broad View of New Foreign Lost Profits Standard – Power Integrations, Inc. v. Fairchild Semiconductor (4 October 2018)

In Power Integrations, the judge allowed Power Integrations to seek foreign lost profits for any type of infringement. The judge reasoned that while WesternGeco concerned only a specific type of infringement (one where the infringing act actually occurs outside of the U.S.), the decision nonetheless has “equal applicability” to the direct infringement allegations at-issue in Power Integrations. The judge in Power Integrations immediately certified the issue for appeal, which gives the Federal Circuit the chance to rule on the scope of WesternGeco’s damages standard. Practitioners should take note of this decision, as it arguably expands that standard. If the judge’s ruling is upheld, it could result in a significant increase in damages awards because it would allow patent owners to seek worldwide damages regardless of the type of infringement. Read more

No Personal Jurisdiction Over Foreign Defendant Based on Ownership of U.S. Subsidiary and U.S.-Based Development of Accused Products – Univ. of Mass. Medical Sch. v. L’Oréal S.A. (13 November 2018)

A magistrate judge in Delaware recommended dismissal of a patent infringement case for lack of personal jurisdiction over a foreign defendant. Patent owner University of Massachusetts Medical School and its exclusive licensee sued L’Oréal S.A., a French corporation headquartered in France, and its wholly-owned U.S. subsidiary, L’Oréal USA, for infringement of skin treatment patents. Read more


Germany

Federal Supreme Court on Enforcing a Claim of Information and Rendering of Account in Preparation of Damages Claims – “Tool Handle,” Federal Supreme Court, X ZR 76/18 (25 September 2018)

The Federal Supreme Court has issued a decision (X ZR 76/18, 25 September 2018– “Tool handle”) on the enforcement of a claim of information and rendering of account according to Sec. 140b German Patent Act. In its decision, the Court emphasized an overriding interest of the patent holder in the enforcement of the claim for information and rendering of accounts over the threat of irreparable harm to the patent infringer. Read more

Decision of German Federal Constitutional Court on German UPCA Complaint Coming Soon?

While the German Federal Court (FCC) has still not officially announced when it will issue a decision regarding the constitutional complaint against the German law that ratified the Unified Patent Court Agreement (UPCA), rumors about a possible decision in December are circulating the German patent community. The FCC, however, officially has not acknowledged a decision date at this point. Across the channel, in the meantime, two UK patent practitioners argued before the House of Lord’s EU Justice Sub-Committee in favor of a UK participation in the Unitary Patent system during the transitional period agreed upon in a withdrawal agreement following Brexit and beyond that period. Read more

No Deal Brexit and Exhaustion of Rights

On 28 November 2018, the UK government published a draft version of a statutory instrument (Exhaustion of Rights SI), and explanatory memorandum, which together explain the changes which will be made to UK intellectual property law relating to exhaustion of rights, in the event of a no-deal Brexit. The purpose of the SI is to correct any deficiencies in the retained EU law relating to exhaustion of rights, arising as a result of Brexit.

The UK is currently part of the EEA intellectual property rights exhaustion of rights scheme. This means that once goods bearing a registered trade mark or which are otherwise protected by certain intellectual property rights have been sold (with the rights-holder’s consent) anywhere in the EEA the rights-holder cannot prevent those goods from being resold anywhere within the EEA. The government’s stated aim with the Exhaustion of Rights SI is to ensure that, post-Brexit, once a product has been legitimately placed on the market in the EEA that product can continue to be re-sold into the UK without being prevented by the rights-holder. However, unless the UK comes to an agreement with the EU on a reciprocal exhaustion regime, the UK will be left with a one-way exhaustion regime. This means the EU may allow rights-holders to restrict the importation of certain goods from the UK into the EEA that have not been previously put on sale in the EEA from Brexit day.

Whilst the government’s draft SI, if it comes into force, will ensure continuity in relation to goods being imported into the UK from the EU, as we said in our earlier blog on the government’s no-deal notice on intellectual property, what is not clear is what will happen in relation to the UK’s relationship with the rest of the world. As with the no-deal notice, the Exhaustion of Rights SI is silent on the rules that will apply in relation to non-EEA countries. The impact of the SI could be that, for goods first placed on the market outside the EEA, the UK reverts to an ‘international exhaustion’ regime which applied prior to the UK joining the EU. Under the old regime, a first sale in a third country could result in a right-holder not being able to prevent parallel imports of genuine goods into the UK.

The Exhaustion of Rights SI will come into force on Brexit day if approved by both Houses of Parliament. There is some uncertainty as to whether an international exhaustion regime will apply to trade in goods originating outside the EEA after Brexit. The consequences for businesses of such a fundamental change will be difficult to predict.


Follow LimeGreenIP News for further comment on the impact of Brexit on intellectual property rights and visit our Brexit Hub for the big picture… in detail.

Germany: Influencers, distinctiveness and reputation. A translation round-up

The following short posts covering competition issues in influencer advertising, trademark distinctiveness for media services and limitations to the power of reputation are translated from our German language blog. We will publish futher English translations from this blog periodically:

Berlin: Influencer must identify presented products as advertising

In an attention-grabbing decision (case ref. 52 O 101/18), the District Court [Landgericht] of Berlin ruled that, even in cases where products bought by influencers are presented by the latter on Instagram, such presentation must be identified as advertising if the image description includes a link to the Instagram account of the manufacturer.

Comment: With this judgment, the District Court of Berlin triggered an outcry in the influencer scene. In reaction to it, some influencers are now identifying every post of theirs as advertising. Irrespective of these phenomena, however, the actual problems associated with the judgment are also being discussed: how is the law going to deal with the fact that, in the work of the influencer, private and business life are one and the same? Can those who take up this profession therefore no longer act as private persons on social media? Must special attention be paid where links – part of the established communication on social media – are concerned? These questions will now have to be answered by the Berlin Court of Appeals [Kammergericht].

Continue reading

Author: Sabrina Dücker


Hamburg: “Tagesschau” is sufficiently distinctive as a work title

(3 U 167/15) The Hanseatic Court of Appeals [Hanseatisches Oberlandesgericht – HansOLG] of Hamburg prohibited the use of the sign “Tagesumschau” for an online news portal. The German public broadcaster Norddeutscher Rundfunk (NDR) took legal action in the Hamburg courts against a competing digital news portal called “Tagesumschau.de”, invoking the word mark “Tagesschau”. The District Court [Landgericht] of Hamburg found in favour of NDR at first instance.

Comment: Ultimately, the decision is unlikely to come as a surprise. The “Tagesschau” is an institution of German evening television and has bucked all the digitalisation trends by still attracting millions of viewers every day. Depending on the individual case, clients that are not based in Germany and want to use a similar sign must be informed about this special status.

Continue reading

Author: Yvonne Draheim


Hamburg: Distinctiveness of Plaintiff’s sign not increased by reputation of Defendant’s

 (327 O 325/15) The District Court [Landgericht] of Hamburg stated that there is no risk of confusion between two signs of which the sign with the more recent priority has an extremely well-established reputation. The Plaintiff was the proprietor of a combined word/figurative mark conferring protection for computer software, which has since been cancelled due to non-use. The trade mark consisted of four squares put together to form a square, and a constituent word. Three of the squares are blue, one is grey. The Defendant is an extremely well-known software manufacturer; its logo in dispute is no less well known. It also consists of four squares put together, and the Defendant’s company name. The squares are different colours. The Plaintiff believed that this logo infringed its trade mark rights and, after a partial withdrawal of the complaint, asserted auxiliary claims against the Defendant for the provision of information and for damages.

Comment: Even though the Plaintiff was unsuccessful, the court had to deal with a very interesting line of argument. In its grounds, the court highlights the significance of the distinctiveness that designates the ability of a sign to be perceived as an indication of a certain company. Against this background, the line of argument cannot succeed, as the ability of the Plaintiff’s sign to refer to the trade mark proprietor is not increased but rather decreased by the sign with a well-established reputation that has more recent priority. Ultimately, the relevant public are more likely to erroneously attribute the trade mark proprietor’s sign to the well-known infringer than vice versa.

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Author: Patrick Fromlowitz

2018 – The year the pharma industry felt AI’s impact and potential

Artificial Intelligence (AI)  is not new… but this year its impact, and the potential for change, was felt across the pharma industry in areas such as drug discovery, tech collaboration, regulation and patentability.

When considering the reasons for this, the answer is not that AI is new. ‘AI’ is an umbrella term covering a spectrum of technologies, from smart algorithms to machine learning. In recent years, advances in AI have accelerated. Yet, for some time now, AI has been used across a wide variety of industries. This includes the pharma industry, where humans have been assisted by computer programs capable of modelling compounds or simulating reactions, for example. Continue Reading

China’s highest court slams trademark squatter, confirming that hoarding trademarks is unlawful

In a recent judgment, China’s highest court, the Supreme People’s Court (“SPC”), dealt a significant blow to trademark squatters. The case is noteworthy for several reasons:

  • First of all, the case was likely selected as a landmark case by the SPC, since the Court accepted to hear the retrial procedure, even though it fully maintained all the previous decisions. This suggests that the SPC earmarked this case to set the record straight on invalidations on the catch-all basis of obtaining a mark through “illegitimate means” provided in Article 44 of China’s Trademark Law.
  • Secondly, the case now confirms, at the highest level, that hoarding and registering trademarks without the intention to put them to genuine commercial use may lead to the invalidation of such hoarded marks.
  • Finally, the SPC further clarified the application of the catch-all article 44 by stating that it is generally applicable to acts that pursue illegal interests by jeopardizing the public interest, unreasonably occupying public resources etc.

It is expected that this case will become a useful precedent in the fight against trademark squatters in China.

Background Continue Reading

IP in the mix: European Parliament adopts resolution on DLTs & blockchains

The European Parliament has adopted a non-legislative resolution on distributed ledger technologies (DLTs) and blockchains. In the resolution, which was adopted last month, the Parliament emphasised that the EU has an opportunity to become “the global leader” in the field of DLT and to be a “credible actor” in shaping its development and markets globally. The resolution discusses potential benefits of DLT/blockchain in a range of sectors, including copyright, patent and data protection (alongside financial services, healthcare, transport, supply chain, education and energy).

Creative industries and copyright

22.  Underlines that for ‘digitalised’ creative content, DLT can enable the tracking and management of intellectual property and facilitate copyright and patent protection; emphasises that DLT can enable greater ownership and creative development by artists through an open public ledger that can also clearly identify ownership and copyright; highlights that DLT could help link creators to their work, thus enhancing safety and functionality in the context of a collaborative and open innovation ecosystem, especially in areas such as additive manufacturing and 3D printing;

23.  Notes that DLT might benefit authors by bringing more transparency and traceability to the use of their creative content, as well as cutting down on intermediaries, with regard to them receiving payment for their creative content;

While recognising that “the risks and problems of [DLT] technology are not yet completely known”, the resolution lists some of the DLT-based applications that could affect sectors of the economy and makes various recommendations. The resolution will now be considered by the European Commission.

Please read our full article on Hogan Lovells Engage


If you want to take advantage of blockchain’s huge potential and disruptive impact, while avoiding falling foul of ever-developing regulatory and legal requirements, visit our Hogan Lovells Engage Blockchain Toolkit.

No deal Brexit and Copyright – Part 1: Broadcasting and online content services

On 26 October 2018, the UK government published a draft version of a statutory instrument (Copyright SI) and explanatory note together with guidance issued by the UK Intellectual Property Office (IPO) which explain the changes which will be made to UK copyright law in the event of a ‘no deal’ Brexit. The purpose of the Copyright SI is to correct any deficiencies in the UK Copyright, Designs and Patents Act 1988 (CDPA) arising as a result of Brexit and to manage the impact of a ‘no deal’ Brexit on any cross-border copyright mechanisms (such as the ‘country of origin’ principle for clearing copyright works in satellite broadcasts). The government’s approach is to preserve the status quo where possible and give continued effect to cross-border mechanisms (even where there is no guarantee of reciprocity from the EU). Unless the UK and the EU reach a deal on these issues (these issues not being covered by the draft Withdrawal Agreement published on 14 November) the Copyright SI will come into force on exit day.

Unilateral application of the “country of origin” principle for satellite broadcasting

The Satellite and Cable Directive (“SatCab Directive”) introduced the “country of origin” principle to satellite broadcasts transmitted within the EEA. This means satellite broadcasters only have to clear rights in the Member State where the signal is introduced into an uninterrupted chain of communication (including the chain leading to the satellite and down to earth). The UK currently applies the “country of origin” principle to all broadcasts originating outside the UK, whether from the EEA or otherwise, subject to an exception set out in Section 6A of the CDPA. Under Section 6A CDPA, rights must be cleared in the UK if the broadcast originated in a non-EEA country which has lower protection for copyright works and the broadcast has been commissioned or uplinked in the EEA. The rationale for this is that it prevents EEA-based broadcasters from circumventing the level of copyright protection in the EEA by commissioning a broadcast from a country with weaker copyright protection.

The effect of the government’s proposed amendments to the CDPA is that the UK will continue to apply the country of origin principle – on a unilateral basis – to broadcasts from any country outside the UK. (There is an exception for broadcasts originating from countries outside the UK which have a lower protection for copyright and which have been commissioned or uplinked in the UK). This will provide continuity for EEA broadcasters transmitting into the UK. However, unless the EU agrees otherwise, post-Brexit, there will no longer be any reciprocity in relation to broadcasts from the UK into EEA Member States and it will be up to Member States to decide whether to treat those broadcasts as infringing or not.

Unilateral application of the Cable Retransmission Right Continue Reading

DSM Copyright Directive: a new leak reveals there is still a long way to go

The provisions of the Copyright Directive (COM(2016)593) are currently being discussed between the Council, the Parliament and the Commission in order to reach a compromise wording. Though these talks are generally strictly confidential, some working documents occasionally find their way out. Here is a summary of the lessons we can learn from the latest document that has leaked.

The story so far

After months of tense debates, both the Council and the Parliament could each find a majority on the wording of the draft directive (read our blog posts here and here). The current stage of the process, as we reported, is the interinstitutional negotiations or so-called trilogue, which takes place behind closed doors between representatives of the Parliament and the Council, with the Commission intervening in a mediating role.

The first trilogue sessions took place on 2 and 25 October 2018, where some uncontroversial issues could be agreed upon, following the well-known “step-by-step strategy“. Articles 11 and 13, however, were left untouched at this initial stage.

The time has now come to make some progress on Articles 11 and 13, and the (Austrian) Council Presidency therefore drafted this working document as a compromise proposal between the positions of the Parliament and the Council. Continue Reading

Germany: Federal Constitutional Court declares preliminary injunction without cease and desist letter and hearing unconstitutional

In its decision of 30 September 2018 (1 BvR 1783/17), the German Federal Constitutional Court [Bundesverfassungsgericht – BVerfG] ruled that a preliminary injunction issued in a press-law dispute by the District Court [Landgericht – LG] of Cologne without the appellant previously having received a cease and desist letter or been heard violates the appellant’s right to procedural equality of arms [prozessuale Waffengleichheit] as set out in art. 3 para. 1 in conjunction with art. 20 para. 3 of the German Basic Law [Grundgesetz – GG], which is equivalent to a basic right.

Background

The appellant, a journalistic-editorial research network, published on its website an article reporting on corruption allegations against a company, in places citing from spoken comments at a supervisory board meeting. In response, without previously sending a cease and desist letter to the appellant, the company applied to the District Court of Cologne for a preliminary injunction to be issued to the appellant. The application was to prohibit publication of the minutes of the supervisory board meeting, be it as literal citations or summaries providing the gist.

The District Court granted the application – without giving reasons or hearing the appellant beforehand – in line with its customary practice. The appellant lodged a constitutional complaint against the decision, citing as grounds the fact that the District Court of Cologne intentionally disregarded the appellant’s rights under procedural law. The appellant stated that the District Court’s preliminary injunction – issued without an oral hearing and without a cease and desist letter having been sent beforehand – infringes its rights to due legal process, to procedural equality of arms, and to a fair trial, as well as breaching the rights to freedom of speech and of the press.

German Federal Constitutional Court Decision

In its decision, the Constitutional Court confirmed that there had been an infringement of the appellant’s right to procedural equality of arms as set out under art. 3 para 1 in conjunction with art. 20 para. 3 GG, which is equivalent to a basic right.

The principle of procedural equality of arms ensures that the parties have an equal procedural position before the judge. The Court states that the judge is obliged to ensure the equality of the parties by conducting the proceedings in an objective, fair manner:

  • by unbiased readiness to use and assess the parties’ submissions,
  • by the impartial application of law,
  • and by the correct fulfilment of his/her other procedural obligations to the parties.

Continue Reading

When 3D-printing challenges IP rights

3D-printing changes the way we develop products: an idea can be transformed into a tangible product faster than ever and it is not even expensive anymore!

But what is 3D-printing? Simply put, it is a machine that builds an object out of base materials by successively stacking thin layers of the material in accordance with a Computer-Aided Design (CAD). The major advantage over conventional moulding processes is its adaptability: one 3D-printer can print any template and does not require prefabricated moulds. The template can be created by using a CAD program or by using special 3D-scanners if the object already exists.

The first patent application in connection with 3D-printing was filed in the 1980s, but it took decades for 3D-printing to become as viable as it is nowadays. Today, 3D-printing offers various printing methods and can print almost anything from medicine, weapons, to organs and even food (Bioprinting). This versatility allows 3D printing to revolutionize almost every industry sector.

Since the prices have fallen, 3D-printers are no longer just a product for the industry but for everyone. On the Internet, templates can be exchanged on online forums (both legally and illegally).

Businesses need to take note

Entrepreneurs should acknowledge the potential of this technology and should not be lagging behind developments in this area. However, despite its benefits, 3D-printing also poses risks with regard to IP rights:

  • For example, the question of liability is raised where print shops create products from originals provided by third parties and from online file-sharing networks for 3D-print templates.
  • Also, users of 3D-printers have to make sure that no IP rights, e.g. patents, designs and trademarks, will be infringed.
  • If you commission another company to create templates for your own 3D-printers, or if you delegate the entire print job to them, it should be ensured that you will have full legal access to the result.
  • Finally, if 3D-printed products impair your IP rights, you should be well prepared to request the destruction of the products and assert claims for injunctive relief and damages against the infringer. Also, the circulation of the CAD in online forums should be stopped by requesting the operators to remove the template and to prevent a re-upload.

Want to know more? For futher information on the impact of 3D printing across industry sectors and legal fields, please visit our HL.com topic center and read our related posts.