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 its multi-lingual update, dated September 2018, on notable recent patent developments across these two countries. This update can be accessed by clicking on one of the following languages: English; Japanese; and Korean.
For the September update, the spotlight article is on a recent German patent decision by the Higher Regional Court of Düsseldorf in “Razor Blades II.” The court in this decision affirmed that an injunction does not include an obligation to recall infringing product.
The September update also covers nine additional developments across the two countries. These developments include the following:
- Tribal Sovereign Immunity Cannot Shield Patents from IPR Challenges – St. Regis Mohawk Tribe v. Mylan Pharma., Inc.
- PTO Updates: PTAB Trial Practice Guide
- Dismissed Lawsuits Still Trigger One-Year PTAB Time Bar – Click-to-Call Techs. v. Ingenio, Inc.
- PTAB Instructed to View “Printed Publications” More Liberally – Various Cases, Federal Circuit
- Federal Circuit Cracks Down on Identifying Real Parties in Interest – Applications in Internet Time, LLC v. RPX Corp.
- Still No Hearing Date for German UPCA complaint, While UK Announces Intention to Stay in UPC System After Leaving EU
- “Catching Up” With FRAND-Obligations During Infringement Proceedings Only Possible if SEP Owner Requests Stay of Proceedings – “Wireless Station,” Regional Court Mannheim 7 O 28/16
- Higher Regional Court of Dusseldorf Rules on the Scope of a Private Right of Prior Use – “Protective Covering for Radio Systems,” Higher Regional Court Dusseldorf, I-15 U 49/16
- German Federal Patent Court on Reimbursement of Costs for Legal Representatives in Utility Model Cancellation Proceedings – “Double Representation and Travel Expenses in Utility Model Cancellation Proceedings,” Federal Patent Court of Germany, 35 W (pat) 3/15
For more information, please click on a link with the detailed newsletter (English; Japanese; and Korean) or contact partners Joe Raffetto and Steffen Steininger.
A Swedish preliminary ruling procedure is currently pending before the European Court of Justice (CJEU) and represents the latest in a run of rulings on the scope of the distribution right under Article 4 of the InfoSoc Directive. It focuses on the question of whether distribution can also be assumed if the infringing goods are located in a warehouse and the identical goods are offered for sale in an actual shop (C-572/17 – Syed). In his Opinion (German) published on 3 October, Advocate General Sánchez-Bordona affirms this question with regard to the previous case law of the CJEU.
The reference for a preliminary ruling is based on criminal proceedings against Mr. Syed, the owner of a shop in Stockholm. His shop offered goods including, clothing and accessories with rock music motifs which infringe both trade mark and copyright rights. However, the goods at issue were in identical form also in a warehouse adjacent to the shop and another warehouse in another part of the city. The offering of goods in the shop was regularly supplemented by stocks in the warehouse.
Mr. Syed was indicted by the Swedish public prosecutor’s office for the violations and sentenced in the first instance to imprisonment (suspended on probation) and a fine. It is clear that the offering and selling of the goods in the shop infringed the distribution right under Article 4 of the InfoSoc Directive 2001/29. In the context of the copyright infringements, the court also took into account a total of 599 items of clothing that were in the warehouses and identical to those in the shop.
The Svea hovrätt (Svea Court of Appeal) took a different view at second instance and acquitted Mr. Syed of the alleged copyright infringement in respect of the additional 599 items. Their storage did not yet constitute a distribution of the goods to the public.
The Swedish Public Prosecutor’s Office appealed against the decision of the Court of Appeal. Now, the Högsta domstol, the Supreme Court, refers the following questions in dispute to the European Court of Justice:
- If goods with protected motifs are unlawfully offered for sale in a shop, can there also be an infringement of the exclusive right of the author under Article 4(1) of Directive 2001/29 to authorise or prohibit the distribution of goods as regards goods with identical motifs which are located in a warehouse of the person offering those goods?
- Does it matter whether the goods are stored in a storage room connected to the shop or in another place?
For those operating in the TMT sector, the pace of change in technology and in business models seems only to be matched by the pace with which regulators rush to keep up. It can sometimes feel like decisions in Beijing, Brussels, London and Washington, to name but a few, are creating unbeatable headwinds for those looking at cross-border M&A in the sector.
Deal Dynamics, the new Hogan Lovells analytical tool looking at cross-border M&A, presents little clear evidence to support that concern.
There may be some signs of a slight softening in an overall cross-border M&A market which continues to show significant activity. However, the statistics provide little indication that cross-border TMT M&A is being hit hard by specific regulatory challenges. Indeed, the figures suggest that strong fundamentals (innovation, convergence and consolidation) continue to carry significantly more weight than the regulatory headwinds.
Those are themes we explore further in the market insights accompanying those figures.
Of course, whether those trends continue remains to be seen. Will the fundamental business deal drivers remain as “hot” as they have over recent years? Will regulators across the world see M&A as a positive driver, or negative influence, on the development of domestic TMT sectors? Will deal makers and their advisors continue to navigate regulatory challenges?
Those are questions Deal Dynamics will be monitoring over the coming months.
For more analysis, visit Deal Dynamics our powerful interactive data tool with exclusive editorial content providing analysis and insights on cross-border M&A
Hogan Lovells has just launched a powerful new global cross-border M&A tool, in partnership with Mergermarket. Deal Dynamics combines interactive deal data by markets and sectors with exclusive editorial content to provide insights on cross-border M&A.
Diversified Industrials, Energy, Real Estate, and TMT sectors drive the M&A market in Q3 2018, according to new data from Hogan Lovells and Mergermarket.
The Deal Dynamics tool allows users to mine cross-border data set by date range, geography, sector, value and volume to create market snapshots, compare activity levels and assess cross-border and domestic deal flows. The data reaches back to Q1 2010 and offers global market trends across ten industries and seven regions.
Read the full press alert on HL.com here
The United States Patent and Trademark Office (“USPTO”) has published its new Final Rule on the standard of review used in construing challenged patent claims in the Patent Trial and Appeal Board (“PTAB”). Currently, the PTAB relies on the “broadest reasonable interpretation” (“BRI”) standard in construing challenged patent claims. However, the new rule directs the PTAB to rely on the person of ordinary skill in the art (“POSITA”) standard announced in the Federal Circuit’s landmark decision Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). This standard will be used in Inter Partes Review (“IPR”), Covered Business Method Review (“CBM”), and Post-Grant Review (“PGR”) proceedings before the PTAB. The new rule also allows the PTAB “to consider” prior claim construction opinions by the courts and the United States International Trade Commission (“USITC”).
These changes apply to petitions filed on or after November 13, 2018. Thus, the new claim construction standard will not apply to cases already pending at the PTAB or those filed before that date. Therefore, parties seeking to file petitions using the current BRI standard must do so before November 13. It is sometimes thought that the BRI standard creates a broader claim construction that may be easier to invalidate. Consequently, there may be an uptick in the number of petitions filed with the PTAB in the next month to avoid the application of the POSITA standard.
The new rule received 374 mostly positive comments in response to its proposal in the USPTO’s May 9, 2018, Notice of Proposed Rulemaking. While some observers note that the POSITA standard is a more searching standard of review than the BRI standard, studies have indicated that the PTAB’s implementation of the BRI standard is no broader than the POSITA standard. Nonetheless, the new rule may lead to greater harmonization between the courts and the PTAB, creating greater consistency in decisions concerning challenged patent claims. Indeed, this change may reduce inconsistency between the courts and the PTO. This could increase predictability and certainty for parties, and may also result in district court judges granting more stays of litigation since the same standard of review will now apply in both proceedings. Of course, it remains to be seen whether courts and the PTAB will follow each other’s claim construction decisions.
On 9 August and 28 September 2018, the new Cyberspace Courts in Beijing and Guangzhou were officially opened. These new specialised courts, along with their equivalent one that was formed in Hangzhou in August 2017, are meant to tackle the quickly swelling stream of internet-related court procedures in China. The establishment of these specialised courts is an encouraging step for the Chinese internet sector as well as for IP owners: it promises a more flexible procedure, less bureaucracy in obtaining evidence and higher quality judgments, handed down by specialist judges.
The establishment of the two new cyberspace courts fits in with the government’s policy of encouraging and regulating China’s burgeoning e-commerce sector, and comes in the wake of the promulgation of China’s first E-Commerce Law, which will soon enter into force.
The rules on the operation of the Cyberspace Courts are enshrined in the Supreme People’s Court’s Provisions on Several Issues Concerning the Trial of Cases by the Cyberspace Courts, issued on 7 September 2018.
As to territorial jurisdiction, the cyberspace courts have cross-regional jurisdiction over all ‘cyberspace cases’ (see categories below) that have a “genuine connection” (e.g. location of contract, location of damage etc.) with respectively Beijing, Hangzhou and Guangzhou.
As to material jurisdiction, the cyberspace courts will handle a broad variety of cases mainly including:
- E-commerce disputes (including purchase contract disputes, product liability disputes, service contract disputes)
- Online copyright disputes (including the unlawful dissemination of films, music and other copyrighted works);
- Online defamation disputes;
- Domain name disputes; and
- Online loan contract disputes.
- The Higher People’s Courts have the power to further broaden these categories for the cyberspace courts within their jurisdiction.
The cyberspace courts act as Basic People’s Courts. This means that appeals against judgments from the Cyberspace Courts can be brought before the IP Courts, for IP cases such as copyright infringements, or before the Intermediate People’s Courts, for all other cases.
“…the Cyberspace Courts will make use of blockchain technology”
Procedure Continue Reading
The European Copyright Directive seeks to strike the right balance between the remuneration received by authors and performers, and the profits made by internet platforms when they make their works accessible. This difference is known as the value gap. Our 4 minute video summary covers the following points:
- What is it?
- What’s the issue?
- What about liability?
- What’s the challenge?
- Why does it matter?
- Where do the European Council and Parliament stand on this?
- Next steps?
Watch the summary here
For more information visit our DSM website www.dsmwatch.com.
We are excited to be holding the “Going Global” cross-practice, multi-track seminar again this year, 26 November in Osaka and 28 November in Tokyo. Our IP speakers will guide participants through the following issues:
- Advanced trademark issues: What Japanese companies need to know about prosecution and enforcement in the U.S. and the EU
This year, we are delighted to present an advanced level program that will provide an in-depth review of current trends and case law impacting Japanese companies with businesses in the U.S. and the EU. The program brings together an experienced team of practitioners who have represented some of the top name brands in the world, who will walk you through the most recent developments in their respective jurisdictions. Please join us to keep abreast of the current trends and the future of developing and protecting your brands.
Click here for more details (English and Japanese)
- Global patent updates for technology companies: Venues and issues of increasing importance for Japanese companies wishing to avoid or resolve disputes on the global stage
This year, we will share insights from our recent international and multi-jurisdictional matters (including patent-related licences, settlements and other agreements) to provide strategic advice for Japanese companies involved in patent matters. In addition to discussing recent and planned reforms to venues and patent practice, and will provide an update on key patent issues with a particular focus on standard essential patents (‘SEPs’) in the U.S., the UK, Europe, China, and Japan.
The session will be presented by an international and multi-cultural group of intellectual property partners who are qualified in the U.S., the UK, Europe, China and Japan, and also features a session presented by Theodore (Ted) Essex. Ted Essex is a former judge at the U.S. International Trade Commission (ITC)—one of the most prominent patent litigation fora in the U.S. – and will share his unique insights as a former judge.
Click here for more details (English and Japanese)
- Life Sciences Summit: Emerging issues and legal trends impacting the life sciences sphere from a both a corporate and IP law perspective.
Our U.S., Europe, and Japan-based members of our global Life Sciences team will hold a series of short, practical, and strategic talks to keep ahead of regional and international developments that will affect Japanese companies.
Please click here for details (English and Japanese)
The multi-track event also includes a session covering practical insights on global M&A transactions, as well as a Tokyo seminar dedicated to outbound energy investments.
Following the seminars, we will also be hosting a networking reception and hope that you will be able to attend both the seminar(s) and the reception.
To register, please choose the topic of your choice from the registration page.
We live in a visual society. And the business world is no different. As competition continues to increase across the globe, it’s unsurprising that we are beginning to see the revival of color in corporate branding.
The selection of a core color is a process that should not be taken half-heartedly as colors can communicate a deeper meaning about your identity. For example, red triggers emotions of passion, energy and danger, whereas blue can evoke feelings of calm and trust. Blue and red are the two most used corporate colors, so building a monopoly with one of those can be challenging, although not impossible. Like lime green in the legal sector, picking a color that is unusual for your industry will help you prove distinctiveness – and help you stand out in a crowded marketplace.
In Episode Eight of our Total Brand Care series, Burkhart Goebel (Global Head of Intellectual Property, Media & Technology) speaks with James Nurton about the importance of color in corporate branding; the steps that businesses should take in order to protect their color and create a monopoly; and the complex differences in approaches and confusing case law across countries in the European Union and beyond.
Watch the full interview on HoganLovels.com here
This will be the last episode in our first series of Total Brand Care interviews. We look forward to continuing this series next year after our Total Brand Care events in the United States. If you’ve found this series interesting, and would like more information about the upcoming events, please email: email@example.com
On 9 October we held the fifth in our LimeGreen Live webinar series. This instalment explored how the US and EU member states are handling trade secret protection: what the differences are, where you might face challenges and how best to proceed in securing adequate protection and enforcing your rights throughout the US and the EU.
If you missed the webinar, you can now watch the recording here.
You can also download the slides here.
The recent EU Trade Secrets Directive impacts on the way that businesses protect valuable proprietary information. The new rules being implemented in each EU country aim to create a minimum level of trade secrets protection across the EU. Certain countries will still offer stronger protection than others and challenges remain in implementing the Directive in each jurisdiction.
The US Defend Trade Secrets Act was introduced in 2016 with the aim of improving the rights of claimants to sue for trade secret infringement in federal court. Since its introduction, there have been several high profile examples of the DTSA enabling claimants to defend sensitive information and prevent its misuse.
LimeGreen Live – Our LimeGreen Live series of webinars provide further insight into some of the topics covered in our Global Intellectual Property Outlook 2018. Please register your interest in further LimeGreen Live webinars here.