English  

Remco de Ranitz (De Ranitz Advocatuur) and Otto Swens (Vondst Advocaten)

“And so yesterday, a bit sudden, there was the ‘Opinions’ decision  of the House of Lords in Conor v. Angiotech which the patent world so anxiously awaited . The well-known English IP weblog www.ipkat.com immediately headed “Breaking news: Angiotech appeal allowed”. Indeed: breaking news, for in the first and second instance Conor was found to be in the right and the patent of Angiotech was invalidated for lack of inventive step. The House of Lords, however, applied a different criterion and subsequently considered the patent valid.

(…) The House of Lords, the highest court in the UK undeniably brings English patent law further in line with ‘European’ patent law, in particular regarding inventive step. Amongst others, they criticise (certain applications of ) the ‘obvious to try’ test. Further, for our Dutch readers, it is pleasant to see that the Lords explicitly concur with several of the considerations on inventive step in the judgment of January 17, 2007 by the The Hague District Court in the Dutch case Angiotech v. Conor case, in particular because the English appeal court precisely criticized the inventive step approach of ‘our’ District Court.

(…) Lord Walker in the end, however, does not draw a distinct conclusion from these considerations, and the other Lords do not discuss the ‘obvious to try’ test further. The Lords in particular do not discuss the European criterion for examination of inventive step, the ‘problem solution’ approach. Therefore, this decision can hardly (yet?) contains an explicit choice for the European inventive step approach. Nonetheless, it is crystal clear that the strong emphasis that the Lords place on the ‘expectation of success’ and their criticism on the ‘obvious to try’ test moves UK patent law closer again to the EPO and ‘the continent’.”

Read the article here. (The authors represent Angiotech in Dutch patentprocedures).

Prof.mr. W.A. Hoyng (Howrey): After Primus-Roche and GAT-LUK.A few remarks about the consequences of these decisions in daily practice.

"(…) We think that GAT-LUK and also the Dutch Supreme Court decision have to be interpreted in such a way that the court can deal with infringement questions as long as it does not rule on the validity. We conclude this from the fact that the court is competent to hear the infringement case and does not need to rule on validity in order to make a decision. This may certainly be the case where a defendant denies that he has committed infringement acts in certain or all countries. Furthermore, many technical non infringement arguments do not necessitate a ruling on validity.

It will be clear that as soon as the infringement question touches upon questions of validity the court could not deal with it. As far as the Gillette or Formstein defense is concerned, this is in our view (in fact) based on invalidity arguments and can therefore not be dealt with by the court.

(…) We therefore conclude the following:

1. Even after GAT-LUK and Primus-Roche, cross-border injunctions remain possible.
2. Such injunctions may be prevented by careful organisation of the sale and distribution of products in Europe;
3. The law in Europe on whether or not a court can grant a pan European injunction in preliminary injunction proceedings has not yet been settled. The position of the Dutch courts that this is possible seems to be correct;
4. It is still not clear what would happen in Europe if an alleged infringer raised invalidity arguments in a case on the merits. A balanced solution as suggested above seems a desirable outcome.”

District Court of The Hague, 12 March 2008, Case number / Cause-list number: 269923 / HA ZA 06-2495, The European Central Bank versus Document Security Systems, Inc.

By means of a judgment having immediate effect, ECB requests the annulment of European patent 0 455 750 B1, pertaining to a Method of making a nonreplicable document", for the Netherlands, ordering DSS to pay the procedural costs, including the translation costs. 3.2. The underlying reason for ECBs claim is that, in its opinion, the patent is null and void as the subject of the patent is not covered by the content of the original application, the invention is not new, and in addition there is a lack of inventive step.

The District Court of The Hague concludes that EP 750 is valid so that its nullification claimed by ECB must be dismissed.

Read the entire judgement here.

District Court of The Hague, 12 March 2008, Case number / Cause-list number: 269923 / HA ZA 06-2495, The European Central Bank versus Document Security Systems, Inc. 

By means of a judgment having immediate effect, ECB requests the annulment of European patent 0 455 750 B1, pertaining to a “Method of making a nonreplicable document", for the Netherlands, ordering DSS to pay the procedural costs, including the translation costs. 3.2. The underlying reason for ECB’s claim is that, in its opinion, the patent is null and void as the subject of the patent is not covered by the content of the original application, the invention is not new, and in addition there is a lack of inventive step. 

The District Court of The Hague concludes that EP 750 is valid so that its nullification claimed by ECB must be dismissed.

Read the entire judgement here. IEFenglish

Amsterdam District Court, Judgement in the Interlocutory Proceedings of 24 January 2008, Case Number / Cause-List Number: 384773 / KG ZA 07-2249 P/TF, (the Foundation) Stichting Bescherming Rechten Entertainment Industrie Nederland (Brein) versus M.

M. is the proprietor and administrator of the website www.ShareConnector.com. Visitors to ShareConnector could download the works referred to under 2.3. onto their computer in digital form through the website, using the eDonkey network.

“4.3 ShareConnector itself does not have any files at its disposal and also, therefore, cannot offer these files. M. – be this by himself or with other people – selects and indexes the files which are made available through the eDonkey network and then makes these selected files accessible through the eDonkey peer-to-peer network. It follows that M. does not publish these files himself. The fact that he facilitates third-party publication through ShareConnector does nothing to alter this. Any infringement of the Copyright Act and/or the Neighbouring Rights Act by M. has consequently not been proven.

(…) 4.5. The following circumstances are relevant here. The sole purpose of the website is to select files, from the cluttered range of unauthorised publications on the net, whose content has been confirmed as being correct and virus free. The users are then offered the possibility of downloading the files thus selected – conveniently subdivided into categories – by using the eDonkey network. M. is aware that approx. 95% of the files selected by him and his colleagues were published without the permission of the entitled parties. His website, therefore, systematically and structurally facilitates the downloading of files which have only been made available by infringing the rights of others. M. does not generate any revenue with this. It is only a hobby. It is, for the time being, sufficiently plausible that the interested parties are suffering damage because of the availability of unauthorised files on the Internet. Being of structural and systematic assistance to the practise of infringement – purely as a hobby and without regard for the interests of the entitled parties – is contrary to the due care which M. should exercise in his social and economic life and is consequently wrongful vis-à-vis the entitled parties whose interests are represented by BREIN.”

Read the entire judgement here (translation made available by Stichting Brein).

Distric Court of The Hague, 14th november 2007, Nokia vs. Qualcomm, Case number: 287058/HA ZA 07-1470

Patent case. No exhaustion of rights. Nokia demands a declaration in law. The court only has jurisdiction for as far as the claims relating to the Dutch claims.

Nokia and Qualcomm signed a licensing agreement (the SULA) in which Qualcomm gave Nokia a licence relating to patents owned by Qualcomm for the use of WCDMA-technology. After the SULA expired Nokia continued use of the rights pertained in the SULA without remunerating Qualcomm. Qualcomm also has an agreement with Texas Instruments in which it is stipulated that parties won’t litigate against each other on matters concerning the production and sale of chips and chipsets. The grounds for this agreement lie in their patent rights. Nokia and Qualcomm also have disputes in Germany and Italy.

In short Nokia claims a statement to declare it to be law that all Qualcomm’s patent rights relating to chips and chipsets have been exhausted for the Dutch market. Furthermore it claims that because of the exhaustion in the Netherlands the patents should also be considered  exhausted in the EU and the whole EEC. The foundation for this claim is that the chips or chipsets bought by Nokia from Texas Instruments with Qualcomm’s permission have been put onto the European market. Qualcomm replied to this with motivation and invokes that the court has no jurisdiction regarding Nokia’s claims.

First of all Qualcomm invokes invalidity the of the writ of summons because it views it to be unclear and too unspecific. The invalidity defence does not succeed. The court considers:

“4.2 This plea does not succeed. Even though Qualcomm is correct that the writ of summons has a quite broad tenor, the claim and the grounds have been included sufficiently clear. Therefore, the writ of summons meets the requirements of article 111 paragraph 2 of Dutch Civil Code of Civil Procedure. Qualcomm unsuccessfully pleaded that it was not able to put up a decent defence and therefore is harmed in its interest. As appears from its defence in the Statement of Defence and during the hearing, Qualcomm on the contrary has understood the essence of the plea of Nokia apparently very well. The (possibly) broad tenor of the claim of Nokia is a question which should be answered within the framework of the discussion of the awardness of the claims, which is dealt with hereinafter.”

As regard to the jurisdiction of the court the court rules firstly that Nokia’s claims are a request based on article 53 ROW 1995 (Dutch patent law of 1995):

“4.5 () This declaration is, against the background of Nokia’s statements, substantively equivalent to and can be put into line with a declaration that certain acts, namely selling mobile phones containing TI chips, are not infringing Qualcomm’s patents rights valid in the Netherlands.”

Furthermore the court rules that a request for a declaration for it to be law of non-infringement is not the same as an injunction request (see consideration 4.5)

The court rules that it only has international jurisdiction for so far as the request is relevant for the Netherlands and this jurisdiction is not international by nature. Nokia’s claim taht exhaustion in the Netherlands causes exhaustion in the EU and EEC is not followed by the court:

“4.10 ()From the provisions of the EC Treaty or Article 94 of the Constitution no international (cross-border) jurisdiction can be derived. As considered in the above, the jurisdiction of the Dutch court is restricted to an assessment of whether Nokia’s acts are infringing the Dutch patents or the Dutch parts of the European patents from Qualcomm.  The assessment as to whether other than the aforementioned patent rights are exhausted must – in the absence of other reference points  – take place by the

court of the country of the foreign patent right (where the damage occurs). The Dutch court has in this respect no jurisdiction.”

Qualcomm’s second jurisdiction defence based on article 27 EEX-Vo also fails as the foreign procedures (in Germany and Italy) are based on different patents or on different claims or causes.

The court rules that the request for a declaration of exhaustion for the Netherlands is too broad and not specified sufficiently:

“4.15 ()the claim, has been formulated too broad and insufficiently specific. From the used formulation (“patents of Qualcomm that are realised through this chip”, see ground 3.2 under d of this decision) it cannot be determined whether the exhaustion has taken place.”

()

okia has refrained form specifying the patents of Qualcomm and the relevant claims thereof. Nokia has solely submitted one example, which furthermore solely regards an application (EP 1 239 465 A2). In addition it has not specified which specific products would be brought within the free movement of goods and what the exact configuration of these products would be, nor where it regards the chips of Texas Instruments, nor where it would regard Nokia’s own mobile phones.

()

Nokia has refrained form specifying the patents of Qualcomm and the relevant claims thereof. Nokia has solely submitted one example, which furthermore solely regards an application (EP 1 239 465 A2). In addition it has not specified which specific products would be brought within the free movement of goods and what the exact configuration of these products would be, nor where it regards the chips of Texas Instruments, nor where it would regard Nokia’s own mobile phones.

()

Nokia has also not specified which features of which patent(s)(claims) would read on which parts of the chips of the mobile phones. In view of the different types of possible claims – Nokia itself mentions apparative claims, process claims and system claims -  it is thinkable that there are many permutations. In view of the foregoing it is

unclear which type of claims in relation to which products may possibly be exhausted. Another thing is that it also depends on the type of claim whether or not (implicit) consent has been given by the patentee for the placing of the products within the free movement of goods, for so far the TI patent portfolio agreement would contain such consent, that which Qualcomm has contested. Therefore, the by Nokia chosen general formulation of the claims are not allowable.”

Finally, the matter of compensation of procedural costs. Even though Nokia is ordered to pay the costs of the procedure as the losing party, cost are calculated at the standard rate, as Qualcomm did not fully justify its claimed costs. Qualcomm did not provide a specified account of its incurred costs.

Read the entire judgement here.

District Court of The Hague, 7 september 2007, KG ZA 07-731, Danziger Dan Flower Farm vs. Biological Industries Plant Propagation Ltd. c.s.

Plant breeder’s rights. Lie detectors and mutants. Partially because there is a high genetic resemblance between Bambino and Million Stars (a resemblance which is remarkably bigger than between the other non-mutated gypsum herb species), this indicates a devolved species and thus infringement. Procedural cost compensation is reduced.

Read then entire judgement here.

District Court of The Hague, 22nd August 2007, HA ZA 06-2131. Ajinomoto Co. Inc. c.s. vs. Global Bio-Chem Technology Group Company Ltd c.s

Short summary of a biochemical patent case with several interesting legal aspects.

Because the bacteria’s complete DNA-sequence was not present in the used end product it was difficult for the claimant to prove infringement of it’s patent. That proof was given through gene sequencing analyses of the DNA fragments which were present in the L-Lysine. The Court dismisses GBT’s defence, as it did not definitely conclude that what was claimed was a completely modified gene-sequence. The evidence, which was offered, makes the claimed highly likely and a apposing explanation has not been offered.

Read the entire judgement here.