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|MIP: food for thought|
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|His Account is Not Likely Overdrawn|
"Police placing anti-piracy warning ads on illegal sites", by Dave Lee, appears on the BBC website here. This piece reads, in relevant part, as follows:
"The City of London police has started placing banner advertisements on websites believed to be offering pirated content illegally. The messages, which will appear instead of paid-for ads, will ask users to close their web browsers. The move comes as part of a continuing effort to stop piracy sites from earning money through advertising. Police said the ads would make it harder for piracy site owners to make their pages look authentic.
"When adverts from well known brands appear on illegal websites, they lend them a look of legitimacy and inadvertently fool consumers into thinking the site is authentic. [said Detective Chief Inspector Andy Fyfe from the City of London Police Intellectual Property Crime Unit , PIPCU]. This new initiative is another step forward for the unit in tackling IP crime and disrupting criminal profits. Copyright infringing websites are making huge sums of money though advert placement, therefore disrupting advertising on these sites is crucial and this is why it is an integral part of Operation Creative."
The initiative will make use of technology provided by Project Sunblock [whose domain name projectsunblock.com, Merpel notes, can be also be read as "projects unblock"] -- a firm used by major brands to stop adverts appearing alongside questionable content such as pirated material or pornography. ...
In the past, some have raised concerns about Pipcu's process in adding a website to the IWL [that's "Infringing Website List"]. Ernesto Van Der Sar is the editor of TorrentFreak, a news site that covers issues around online piracy. When Pipcu announced its intentions in March this year, Mr Van Der Sar said he worried about the implications.
"As with all blocklists there is a serious risk of overblocking. Without proper oversight, perfectly legal sites may end up losing good advertising opportunities if they are wrongfully included."
Says the IPKat, this seems a novel and imaginative way to alert consumers that they may be about to purchase counterfeit or otherwise infringing goods. He's not too familiar with the technology, but he recalls that those who run offending sites often have whole sequences of pages that link to one another, sometimes from those that offer genuine goods and services but which click through to more dubious delights. How easy is it for target websites to circumvent this initiative? Do readers know?
The battle against online piracy has seen content creators attempt many different strategies in order to stem the flow of illegal downloading. In the UK, the courts have ordered internet service providers to block almost 50 different websites offering pirated content, either by direct download or through peer-to-peer sharing. While effective in lowering the traffic of these sites, filtering is a flawed prevention method - many internet users are adept in using different technologies to circumvent the court-imposed restrictions. This latest attempt looks to hit the owners of these websites in a more painful way - by stopping advertising revenues from coming in".
Sunblock? I grow my own, says Stanford
This guest blogpost comes courtesy of Katfriend and occasional contributor Suleman Ali (Holly IP), a patent attorney whose interest lies mainly in the biotech and medical fields --an interest that is quite germane to the case he writes about here about a patent for a collapsible device for filling holes in the heart and how a trial judge and an EPO Opposition Division could reach quite different conclusions when confronted with essentially the same evidence:
AGA Medical Corporation v Occlutech (UK) Limited  EWHC 2506 (Pat) is a decision by Mr Justice Roth in the Patents Court, England and Wales. AGA Medical claimed that Occlutech had infringed its patent EP (UK) No. 0,957,773 to a medical device for occluding defects in the atrial septum of the heart. Occlutech responded that the patent was invalid on the basis of a prior disclosure in a clinical trial and on other grounds. An EPO Opposition Division had revoked the same patent last year, and is in appeal from that decision.
Issues of Interest
This judgment has the following interesting points:* a discussion of the case law on confidentiality.* a finding that a clinical trial did constitute novelty-destroying disclosure. The EPO Opposition Division found the same clinical trial to be confidential and thus not novelty-destroying.* a discussion of when an ‘intermediate generalisation’ adds matter, in particular where features which are not presented as ‘inventively distinct’ and are disclosed in a particular context are used as the basis of amendment. In the present case Mr Justice Roth held that the amendments did not add matter, but the EPO opposition division held that they did.
The patent concerns a device which can be used to fill a ‘hole in the heart’, i.e. a hole in the wall (the septum) between the two parts of the heart. The device is collapsible and in its collapsed form can be passed to the heart through a blood vessel using a catheter, thus avoiding the need for open heart surgery. The device is shown in the adjoining figure in the form it adopts to seal the hole in the septum. It is formed of two discs joined by a thinner cylindrical waist and is made of woven strands of a ‘memory metal’ which resumes its shape after being compressed. When inserted into the hole the discs occupy a position on either side of the wall keeping it in place. At least one of the discs is ‘cupped’ (rather than flat) which means only the perimeter of the disc contacts the septum, and this allows a tight join.
Claim 1 of the patent as presented in the decision is as follows:"A collapsible medical device, comprising
(1) a plurality of metal strands forming a tubular braided metal fabric having an expanded preset configuration,
(2) the ends of the strands of the tubular braid being secured in order to prevent the strands from unravelling,
(3) wherein said medical device is shaped to create an occlusion of an abnormal opening in a cardiac septal wall,
(4) whereby said expanded preset configuration is deformable to a lesser cross-sectional dimension for delivery through a channel in a patient's body,
(5) the woven metal fabric having a memory property such that the medical device tends to return to said expanded preset configuration when unconstrained,
(6) the expanded preset configuration comprising first and second expanded diameter portions respectively at distal and proximal ends of the device and a reduced diameter portion disposed between the two expanded diameter portions, said reduced diameter portion having a length dimension which approximates a thickness of the septal wall at the abnormal opening,
(7) wherein at least one of said first and second expanded diameter portions is cupped towards the other of the expanded diameter portions causing, in use, the perimeter edge of the cupped expanded diameter portion to fully engage the sidewall of the septum,
(8) the collapsible medical device further including an occluding fiber retained within said tubular woven fabric."Other Proceedings
The parties have been in litigation before in the UK over an earlier patent (see Occlutech GmbH v AGA Medical Corporation  EWHC 2013(Ch), upheld on appeal  EWCA Civ 702, reported by the IPKat [see here and here]. The IPKat has also previously reported litigation between the parties in Sweden [see guest post by Peter Kenamets, here]. In the case of the present patent there is ongoing litigation between the parties in a number of jurisdictions, including the Netherlands. As mentioned above, the patent is in appeal at the EPO from a decision of the Opposition Division.
Prior Use In A Clinical Trial
Before the priority date a clinical trial was carried out using AGA devices in three children in the Bratislava Children’s University Hospital. Two important issues arose from this:* did the devices that were used have at least one or two ‘cupped’ discs (rather than flat discs)?
* was the trial confidential?The doctors that had taken part in the trial gave evidence. Dr Gougen’s evidence indicated none of the devices was cupped, though he admitted this was something he might not have noticed. Professor Masura's recollection was clearer: he said that two of the devices had cupped discs. Mr Justice Roth found him to be ‘a very clear witness’ and ‘found his evidence convincing’. Dr Gavora said all three of the devices had cupped discs. However his evidence was less convincing and it was noted that he had previously given contradictory answers on the same issue before a Dutch Court. Clearly there were significant discrepancies between the evidence of the witnesses, but Mr Justice Roth came the conclusion that ‘at least some of the three devices’ used in the trial had cupped discs.
The Opposition Division was much more critical of the evidence given by the same witnesses and decided that it was ‘not convinced’ that any of the devices used in the clinical trial had a cupped disc.
Were the Trials Confidential?
Mr Justice Roth gave emphasis to the following paragraph from Coco v AN Clark (Engineers) Ltd  RPC 41 on the circumstances in which confidentiality is imposed:"It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence. In particular, where information of commercial or industrial value is given on a business-like basis and with some avowed common object in mind, such as a joint venture or the manufacture of articles by one party for the other, I would regard the recipient as carrying a heavy burden if he seeks to repel a contention that he was bound by an obligation of confidence"He noted that none of the doctors involved in the clinical trial had been asked to sign a confidentiality or non-disclosure agreement. They gave evidence that they had never been given the impression that the devices were confidential. In addition he felt that ‘there is no presumption of confidentiality simply because this was a clinical trial. Everything depends on the facts’. Professor Masura had spoken about the devices in briefing sessions to other doctors at the hospital and had described the device and clinical trials at a presentation at a conference. He had acted in a way that he did not seem to perceive himself to be under a duty of confidence. It was also clear that the doctors were not embarking on a commercial venture, so the disclosure of the devices was not done in a ‘business-like’ way that may have led to an assumption of confidentiality.
Mr Justice Roth also considered Carflow Products (UK) Ltd v Linwood Securities (B’ham) Ltd  FSR 447 as to the circumstances in which an equitable obligation of confidence arose. In that case Jacob had said that, on an objective basis, an obligation of confidence is not imposed merely because a prototype is being offered for sale.
Mr Justice Roth concluded the clinical trial had not been confidential and that it therefore destroyed the novelty of the patent. However he added that the EPO's Opposition Division had reached the opposite conclusion: the fact it was a clinical trial gave rise to a prima facie assumption of confidentiality which had not been rebutted. The Opposition Division had based its view on decisions T906/01, T152/03 and T229/06. However, I believe there are EPO decisions that would have supported Mr Justice Roth’s position on whether a clinical trial per se is confidential, such as T158/96 and T7/07.
Obviousness Over an Earlier Prototype
Dr Gu of AGA had disclosed an earlier prototype of the device in a presentation at a medical congress before the priority date. That device had two flat discs, i.e. no cupped discs. In the present case the obviousness analysis was essentially to determine whether a device with one or two cupped discs was obvious from the disclosure of the earlier prototype by Gu. On this question Mr Justice Roth accepted the view of one of the expert witnesses, Professor Gewillig, that the skilled person presented with the earlier prototype would know that a flat disc device would lead to a serious risk of clotting due to thrombus formation in areas where the flat disc did not fully contact the septum. The skilled person would seek ways to avoid this risk, and adapting the earlier prototype to introduce cupped discs was an obvious modification that could be derived from prior art devices. One of AGA’s expert witnesses had argued that the alternative solution of shortening the waist would be adopted instead. In response Mr Justice Roth pointed out that the fact there may be a number of other obvious modifications did not mean the modification at issue (introducing cupped discs) was not obvious.
Occlutech’s argument on insufficiency was based on the fact that claim 1 required the disc edge to ‘fully engage with the sidewall of the septum’. They submitted this meant there could be no gaps all the way round the disc edge. That was difficult to achieve and impossible to measure. Mr Justice Roth said the skilled person would not read this feature literally, realising that the septum is not completely flat and there will be points of no contact. Thus ‘full engagement’ does not require ‘perfect engagement’ and any gaps would be ‘insignificant and unintentional’. Construing the feature in this way led to the insufficiency attack failing.
Two of the four added matter attacks are discussed here. The first attack alleged that claim 1 added matter because the requirement of each end being ‘contained by means for securing each end’ had been deleted from the claim as filed. The arguments were lengthy and complex on this point, but ultimately Mr Justice Roth found the amendment did not add matter because the application taught a method which could be used to produce a device a device according to claim 1 where one end was not secured.
The EPO Opposition Division had taken the opposite view. It applied the 3-part test described in the Guidelines at Part H, Chapter V-3.1:
‘The replacement or removal of a feature from a claim does not violate Art. 123(2) if the skilled person would directly and unambiguously recognise that:
(i) the feature was not explained as essential in the disclosure; (ii) the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and (iii) the replacement or removal requires no real modification of other features to compensate for the change.’
The EPO found the amendment to fall foul of all 3 limbs of the test and therefore to add matter.
The second added matter attack of interest was based on introduction of the feature of one or both discs being ‘cupped’. While this feature became important in determination of novelty and inventive step it was not in the claims of the application as filed and is essentially only disclosed as part of specific embodiments shown in the Figures.
Adding the feature to claim 1 was an ‘intermediate generalisation’. Mr Justice Roth noted from Palmaz’s European Patents (UK)  RPC 47 that:"If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called 'intermediate generalisation'."The application did have some discussion of the cupped feature, describing how it ensured complete contact with the septum and the fact that this would reduce the chance of bacterial endocarditis. Mr Justice Roth felt this made it clear to the skilled person that the feature was not tied to other features of the specific embodiments, and so could be added to claim 1 without adding matter.
Again the EPO Opposition Division had taken the opposite view, holding that the feature of the discs being cupped was tied to the feature of the discs being of different sizes, and therefore generalising the feature to the device of claim 1 added matter.
It was decided that, if the patent were valid, Occlutech’s devices would have infringed.
Occultech had also asked for a declaration of non-infringement for a specific device which did not have fabric within the hollows of the disc. Mr Justice Roth indicated that such a declaration would have been given if the patent had been found to be valid.
Thanks so much, Suleman! Readers: could more have been done to achieve harmony between national courts and the EPO?Conclusions
It is striking that Mr Justice Roth and an EPO Opposition Division managed to reach such different conclusions on every point that was being decided on this case, though they had substantially the same evidence in front of them. It is not unexpected that the Opposition Division was stricter on evidence relating to a prior use disclosure and on added matter. However it does lead one to question whether more could be done to achieve harmony between national courts and the EPO.
|Beats By Dre|
* Italian court says that YouTube’s Content ID should be used to block allegedly infringing contentsSome weeks ago this weblog reported the first episode of the legal battle between YouTube and Delta TV, which owns copyright over a number of South American soap operas that were uploaded on the popular video platform without its authorisation. The First Court of Turin’s interim decision dismissed Delta TV’s claims. Here Eleonora tells how the interim appeal went, with the Italian court discussing the relationship between Enforcement and E-Commerce Directives, shields from liability available for new generation providers (once known as “active”) and, most importantly, a rather innovative approach to ISPs’ filtering duties under the E-Commerce Directive regime.A modest celebration after the IPKat's page-view counter reached the stunning figure of 10,000,000. Merpel, Jeremy and all the present and past bloggers have a deep respect and affection for their readers -- and how sweet it is when their affection is reciprocated.This is the third and perhaps final episode of Darren’s series on the role of “precedent” in the European Patent Office (‘EPO’) [the previous two posts are here and here]. This time Darren focuses on the issue of res judicata and how it differs from precedent, both from a common and civil law perspective. If you have not yet taken a look at this essential trilogy, here's your chance to do so.* AG Villalón's parthenotes Opinion in IMC could provide stem cell research certainty (at least for now...)Last week Jeremy broke the news of AG Cruz Villalon providing his Opinion in Case C‑364/13, International Stem Cell Corporation v Comptroller General of Patents, concerning the concept of “human embryos” under Article 6(2)(c) of Directive 98/44 on the legal protection of biotechnological inventions and, in particular, of whether “unfertilised human ova whose division and further development have been stimulated by parthenogenesis” fall into that category. In this post Annsley leaves the floor to the in-depth analysis of Shohta Ueno, an Associate in Allen & Overy's IP Litigation team in London, who helpfully summarizes the key points of the AG's Opinion and place his bets on whether the CJEU will follow suit.Should the US have resale royalty (droit de suit) and generalised moral rights? Starting from the hearing held on 15 July in the U.S. House of Representatives Subcommittee on Courts, IP and the Internet, Marie Andrée portrays the colourful state of law and case-law concerning these two typically French non-economic rights -- the right of artists to profit financially from the subsequent resale of their work and “moral rights”, by which is meant here the rights of attribution and right of integrity for all works protected under US copyright law.Eleonora covers a recent decision by the District Court of Rome, considering Wikimedia’s nature as hosting provider and its liability for alleged defamatory content appearing on the world's most famous open encyclopaedia.This is a hard-to-believe story about some Belize-based company attempting to register trade marks for the flight numbers of the two ill-fated Malaysian Airlines jets -- the recent MH17 downed in Ukraine and MH370, which mysteriously disappeared somewhere in the Pacific Ocean on 8 March. Jeremy considers this difficult story in light of the EU TM Directive and US Lanham Act’s provisions dealing with trade marks contrary to public morality. This post also concerns the very role of the IP professional when asked to deal with clients’ requests. Would you file an application for those unlucky flights’ numbers? And for “Titanic”? Do participate in this discussion, which has already attracted a significant number of comments.After the Directorate General (DG) for Internal Market and Services of the European Commission released its much-awaited Report on the 9,500 responses to the Public Consultation on the Review of EU Copyright Rules, Eleonora launches a series of posts delving into what the respondents said. This first episode explains who participated to the consultation and their takes upon cross-border access to online content and the ‘making available’ and the ‘reproduction’ rights within the context of digital transmission.The second episode of Eleonora’s series on Public Consultation on the Review of EU Copyright Rules’ addresses respondents’ takes on browsing and linking, particularly in the field of news. Eleonora explores the relation between the Consultation’s outcome and the CJEU’s landmark decisions in Svensson and PRCA, as well of ancillary rights over on-line news that is being discussed a bit all over Europe.Here’s another ruling in the famous saga of Comic Enterprises Ltd v Twentieth Century Fox Film Corporation  EWHC 2286 (Ch), concerning the alleged infringement of the UK club-operator Comic’s “The Glee Club” trade mark by the producers of the “glee” TV series [previous episodes here and here]. Earlier decision held TCF’s infringement of Comic’s trade marks, and Roger Wyand QC is now called to decide whether and how the claimant's requests for injunction, destruction of infringing materials, account of profits, disclosure of information, publicity order, and interim payment should be granted. He did so in a very proportional way, Jeremy thinks.Rebecca writes about a professional YouTuber, Ms Phan, using other people’s songs in her videos and being sued by a label owning copyright on those works. Some time later, one of the artists who composed the allegedly infringed song pops up and endorsed Ms Phan’s activity against his own label, calling copyright a “dinosaur”. That’s evolution, baby.Katfriend Aaron Wood (Swindell & Pearson) reports a recent decision in Enterprise Holdings v Europcar Group UK Limited & Another  EWHC 2498 (Ch), where the Community Trade Mark Court, England and Wales, addressed the long-debated issue of surveys in IP proceedings of a trade mark.Blackberry’s past misfortunes and Microsoft’s intention to eliminate 18,000 employment positions have diverging effects on brand image. This is not only as the vast majority of laptops have Microsoft’s operating system installed, but also because the company formerly led by Bill Gates justifies the lay-off with promises to expand into new business fields. What if those promises are not delivered, Neil wonders?Merpel is a kitten that everybody in the IP Community knows, but this familiarity does not in any sense lessen her ability to spring a surprise. This time, she shows this weblog’s readers a bit of her knowledge of modern and medieval geo-politics, penning a most learned article on the curious little fiefdom of Eponia. with blurred borders and a buoyant economy based on IP tourism, Eponia is populated by restless inhabitants linked to their Leader through vows of stability and obedience. More or less like Game of Thrones, but without mass murders. So far.
The IPKat and Merpel regularly receive vast quantities of marketing literature. Much of it is plainly irrelevant to the content of an IP weblog and some of it, while relevant to the subject, is of insufficient interest or significance to mention to our readership. However, the following piece of marketing literature is not only relevant but a little cheeky, if not perhaps a bit offensive. In relevant part it runs like this:
Daylight Robbery: the hidden fees charged for annual patent renewals
This is how the usual patent
renewal businesses are portrayed
Over eight million patents are held worldwide by many thousands of businesses. All have to pay regular renewal fees, usually every year, to the Patent Office for each country to keep their patents in force.RenewalsDesk.com is run by RenewalsDesk Ltd, a company based in London. The website does not lead visitors in the direction of any particular named individual, but the email received by this Kat offers an interview with Katherine Hedley, with whom this Kat thinks he has yet to be acquainted.
The amount payable is usually modest (£100 or so) – varying from country to country and with the age of the patent. But you can be charged up to 4 times the actual cost to make these payments! [Goodness! Merpel exclaims: but where does this assertion come from?] This extra cost quickly mounts up when multiple patents are involved in many countries.
How does this happen? Initially patent agents (or the specialist renewals companies like CPA Global, Dennemeyer and Patrafee that they appoint) assume responsibility for making these payments – often without explaining what they are about.
But making renewal payments is essentially a straight forward and recurring exercise and does not justify the charges currently being levied.
Why do most businesses put up with this situation? For two reasons, firstly because it is difficult to find out exactly how much is payable and secondly because they do not trust themselves to make this important payment on time each year.
So RenewalsDesk.com has come up with a simple solution. It has collated all of the information about these renewal costs on a freely accessible website.
And if you wish, you can set up an auto-pay arrangement to ensure the payments are made every year until you decide to stop them. The charges levied for this service are a fraction of the current costs and are clearly shown.
You would not normally accept paying up to 4 times the true cost of your bills. Why put up with it any longer for your patent renewal charges? ...
"In the UK, businesses hold onto their patents for less time than in almost any other part of the world (according to research by the WIPO) and that may be due to these fees which are plagued with hidden fees often resulting in patent holders paying 4x more than they need to for each patent they hold".She suspects that there may be other, more cogent reasons and, again, would love to hear from readers on this issue.
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