The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Saturday, 31 March 2018

Never Too Late: If you missed the IPKat last week!

Take the opportunity provided by the holiday break to catch-up on all you may have missed on IPKat! Never Too Late 188 (week ending 25th March) is here with your Easter weekend summary. 


Keep up to speed with Chinese telecom litigation: Shenzhen court issues written judgment in Huawei v Samsung caseRichard Vary of Bird & Bird summarises the take home messages from the Shenzhen Intermediate court's written judgments in two standard-essential patent (SEP) infringement cases, filed by Huawei against Samsung. The court particularly addressed the issue of whether fair, reasonable, and non-discriminatory (FRAND) commitments bind affiliates in a group of companies. In their reasoning, the court at least partly followed the German approach by basing their decision to grant an injunction on the conduct of the parties during negotiations. 

The results of the preliminary examination (pre-EQE) for European Patent trainees were released last week. Even before release of the official mark scheme, the claim analysis section was the subject of considerable debate: Controversy looming for this year's pre-EQEThis Kat is aware that her reference to the exam as "multiple choice" has itself proved a point of contention: is a choice between true and false, multiple choice? Perhaps we can all agree that the paper is "binary choice", the question remaining whether binary is itself "multiple" (but surely there are in fact 3 choices, T, F and no answer..?). Perhaps an illustrative example of the complexities that can arise in the interpretation of words, and the consequent problems with reducing such analysis to a simple binary (or even multiple) choice exam format!

Easter Kat
Trade Marks

GuestKat Frantzeska looks into the recent Frank Industries vs Nike case concerning the alleged unauthorised use by Nike UK of the registered trademark LNDR (UK and EU mark) owned by Frank Industries (FI): Courts continue to struggle to find appropriate forms of injunctive relief when social media is involved: Frank Industries versus Nike. The case highlights the difficult task faced by the courts presented with a request for an interim injunction relating to use on social media: balancing protection of a registered trademark and the irreparable damage that might result from erasing social media threads in connection with the alleged infringer.  

Kat friend Simon Klopschinski, of rospatt osten pross, provides an in-depth analysis of a recent IP related arbitration case in the US, in which trademarks and licenses were sufficient to constitute an “investment” under Article 25 of the ICSID ConventionBridgestone v. PanamaInvestment disputes, trademarks and licenses, and ICSID tribunals-"Bridgestone v. Panama"

GuestKat Mathilde explores the potential issues of trade mark law in Marine Le Pen's recent announcement of the re-branding of the National Front (‘Front National’), including renaming of the party to ‘Rassemblement national’ (National Rally)Will trade mark law stop Marine Le Pen’s new campaign?


Kat friend Natasha Rao (Allen & Overy) provides an Event Report on this year's INTA Designs conference: Event Report: INTA Designs Conference 2018. Topics discussed included Harmonisation and Brexit, Global enforcement and anti-counterfeiting, Filing strategies, Global enforcement and anti-counterfeiting and Technology and the future of designs. 


Kat Eleonora reports the recent French court (Versailles Court of Appeal) decision relating to whether the unauthorized 'appropriation' of a substantial part of a photograph for use in a painting amounted to copyright infringement: French court finds appropriation of photograph not sufficiently 'transformative' and therefore infringingThe outcome of the case was in striking contrast to that of a recent Swedish case with a similar factual background, as also reported by IPKat last week: Swedish Supreme Court says that painting based on photograph is new and independent creation and hence … non-infringing.

GuestKat Mathlide reports on the 5 Pointz case over in the US: The 5 Pointz case: a response (on the risk of cultural gatekeeping in copyright), regarding the right to object to any intentional or grossly negligent destruction of works of ‘recognized stature’ (US Code, Title 17, §106). 

Following on from the introduction into Irish law of a copyright exception for text and data mining (TDM) (IPKat post), Kat Eleonora analyses the new law from an EU perspective, and particularly whether and to what extent national TDM exceptions having a different scope from an EU one, would survive the introduction of an EU exception: National and EU text and data mining exceptions: room for coexistence?

Holiday reading

For the copyright enthusiast, Booker reviewer Kat Hayleigh reviews two research handbooks on copyright law: Book Reviews: Research Handbooks on Copyright Law and History of Copyright Law

Katfriend Alex Mogyoros, a doctoral student at the University of Oxford, provides IPKat with a review of Jeffrey Belson's Certification and Collective Marks: Law and Practice: Book Review: Certification and Collective Marks.

Finally, don't miss IPKat's weekly tour of the IP blogosphere: Around the blogs!.


Never Too Late 187 [week ending 18 March] Irish Government proposes introduction of Irish text and data mining exception | Infighting at Nigeria’s main collecting society – Powers of the sector regulator | Unlawful street art used in a promotional campaign: H&M withdraws its complaint | General Court confirms that ‘La Mafia se sienta a la mesa’ cannot be a trade mark on public policy grounds | Nando's v Fernando's: Food for thought | Spanish Supreme Court puts an end to a “sui generis” case concerning database “sui generis” right |  The protection of genetic resources, traditional resources and folklore 35 meetings later… | Book review: ‘Rethinking Intellectual Property – Balancing Conflicts of Interest in the Constitutional Paradigm’ | Friday Fantasies

Never Too Late 186 [week ending 11 March] The best and the brightest: key UK and EU design decisions from 2017 | German design law on the brink of change following yesterday's CJEU decision in DOCERAM v CeramTec | Greece: new notice and take down administrative mechanism for online copyright cases now in force | A new type of authors' organization: an exclusive interview with the Executive Director of Authors Alliance | Can Mattel be prevented from making its own Frida Kahlo Barbie doll? | The 5 Pointz case: Should works of art be protected from destruction? | 9th Circuit ‘slam-dunks’ claim of copyright infringement by Nike photograph of Michael Jordan and ‘Jumpman’ logo | loses to German publisher and is found liable for damages | AIPPI UK Event Report: Registration, notice and infringement - is certainty an illusion? | L'Oréal v RN Ventures: exclusive licence registration and costs recovery | Eighth Granted Petition for Review | In Memoriam Trevor Baylis: the life-saving wind-up radio and the precarious lot of the sole inventor

Never Too Late 185 [week ending 4 March] Exclusive interview with Johanne Bélisle, Chief Executive Officer of the Canadian Intellectual Property Office| Patents and the Fourth Industrial Revolution. What indications for the future on the basis of patent activity? | GuestPost: Is there really a problem with NPE litigation in Europe? |  Do patents and literature have something in common? | The 1st specialized IP Tribunal of Northwest China unveiled in Xi'an |  Sweet! (or not?): cookie-shaped cushions without trade mark owner's permission |  Sieckmann kicks in once again: when is a representation of a sign an acceptable representation for the sake of registration? | GUCCI as a well-known mark, with special attention to evidence, surveys, and unfair advantage | Book Review: Copyright User Rights, Contracts and The Erosion of Property

Never Too Late 184 [week ending 25 February] BREAKING: UK IPO launches technical consultation on draft regulations transposing the EU Trade Secrets Directive | Here we go again? Strong brands as a barrier to entry, this time from "The Economist" | UK IPO publishes consultation on implementing Trade Mark Directive 2015 into UK law | Top 10 issues from submissions before UK Supreme Court in Warner-Lambert v Actavis second medical use battle | EPO looking for new legally qualified members of the Boards of Appeal | Repair or reconstruction: Where do you draw the line for exhaustion under patent law? | L'Oreal v RN Ventures - The Registered Design Perspective | More than Just a Game: Music, video games, GDPR & technical protective measures” (Report 2 and Report 3) | German FCJ: doctors can have their profile deleted from rating site - but can they?

Regeneron v Kymab - Part I: Sufficiency

As recently reported on IPKat, the UK Court of Appeal has reversed Mr Justice Carr's finding in the High Court that Regeneron's patent EP1360287, and its divisional EP2264163, were insufficient. 

The main interest of the case is its conclusions on sufficiency. Infringement was also considered, but given the complexity of the issues, sufficiency is here awarded its own IPKat post. Infringement will be considered separately. 

The technology

The Regeneron patent EP1360287 relate to methods of producing transgenic mice possessing human antibody genes. The divisional patent EP2264163 claims the mouse itself. Historically, the development of therapeutic antibodies relied on the cloning of specific human antibody genes into a mouse. The Regeneron transgenic mice (VelocImmune) produce antibodies having a human variable region and a mouse constant region, which respond naturally to antigenic challenge and thus mirror the normal immune reaction. This facilitates production of a diverse spectrum of antibodies against the same target within a single mouse. 

Did someone say mice?
[Need a crash course on antibodies? see here for an explanatory video]

The Regeneron patents particularly relate to a method for genetically modifying the antibody variable regions of a mouse cell by replacement of the mouse antibody variable genes with the equivalent human genes. The resulting mouse cells contain a human antibody light chain (VJ) or heavy chain (VDJ) variable region that undergoes natural homologous recombination during B-cell development. The method involves cloning a large (>20 kb) genomic fragment, containing one or more human V, J, (and optionally D) regions, into a targeting vector (LTVEC), introducing this vector into a mouse cell and screening for successful insertion of the human V, D and/or J, using a modification of allele (MOA) assay. The specification includes an example (Example 3) describing in situ replacement of the mouse variable region (VDJ/VJ) genes with their human counterparts. 

The VelocImmune mouse has proved exceedingly commercially valuable to Regeneron over the past few decades. Regeneron has brought a number of therapeutic antibodies to market using the platform and have many others currently undergoing clinical trial. In 2007, Regeneron agreed a six-year US$120 million non-exclusive licence with AstraZenca for use of the technology, under which Regeneron receives royalties on the sale of any products produced using the platform. Astellas Pharma, one of the largest pharmaceutical companies in Japan, has also agreed a non-exclusive license for use of the VelocImmune technology until 2023.

UK High Court

In the UK, Regeneron brought infringement proceedings against Kymab and Novo, for infringement of the EP(UK) patents. The defendants counterclaimed that the patents were invalid on the grounds that the claimed invention was not sufficiently disclosed and lacked novelty and inventive step. Mr Justice Carr rejected the novelty and inventive step objections, but agreed with the defendants regarding the lack of sufficiency, on the basis of which he revoked the patents (IPKat post).

Mr Justice Carr found that the claims were insufficient in view of expert evidence that the method provided in Example 3 of the specification would not have worked in the hands of the skilled person at the priority date (Regeneron's own work after the priority date confirmed this). The method claim specifies "in situ replacement of V, D and J gene segments of the endogenous locus with orthologous human V, D and J gene segments". Mr Justice Carr interpreted this as covering the deletion of mouse sequences of at least one V segment and all the D and J segments (>100 kb) and the insertion of the equivalent human regions (>75kb)On the basis of expert evidence that the insertion and deletion of such large pieces of DNA was not possible at the time of the invention, Mr Justice Carr thus concluded that the claimed method and mouse were insufficiently disclosed. 

The Court of Appeal - Insufficiency

In their appeal, Regeneron did not challenge the finding that a skilled person would not have been able to delete 100kb and insert 75kb of DNA. Instead they argued that a skilled team would have made adjustments to the method of Example 3, so as to reduce the size of the inserts to a manageable length, by reducing the number of V, D and J regions and removing unnecessary intergenic regions of sequence, the "minigene" approach. The deletion of the mouse regions could be carried out in a single step, and additional human V regions (10kb) added as necessary. 
minigene strategy
Kymab argued that Regeneron had not previously raised the minigene argument and that it was now too late for it be submitted. The Court of Appeal did allow submission of Regeneron's arguments on the basis that Regneron had, in fact, previously contended that the claims did not necessitate insertion of the entire human locus or deletion of the entire mouse locus, and that shorter sequences in the form of minigenes could be used. Despite this, Mr Justice Carr did not deal with the issue of minigenes in his judgement. It was of "considerable concern" to the Court of Appeal that Regeneron did not raise this when the draft judgement was issued. The Court of Appeal nevertheless allowed Regeneron's submissions, given that the evidence was not extensive and was primarily given by Kymab's experts. 

In contrast to Mr Justice Carr, the Court of Appeal found that the concept of the minigene was common general knowledge at the priority date, and that a skilled team would have appreciated that the claimed method could be achieved by producing a VDJ minigene without undue effort. This conclusion was based on the previous testimony of Kymab's expert witnesses Professor Stewart and Professor Howard.

In the context of a discussion of the prior art, Professor Stewart stated that a skilled person would have appreciated at the priority date that the largest replacement that could be made by homologous recombination would be less than 20 kb and that replacement of the mouse locus with the human locus would therefore have required more than 100 rounds of homologous recombination and taken years to complete, representing undue effort. However, Professor Stewart also stated that "the only way it would have been feasible to create [the mouse] would be to use a small minigene construct up to approximately 20 kb in length containing a subset of the...gene segments". Professor Howard similarly stated that the skilled person could have engineered a minigene construct including rearranged V, D and J segments. 

The Court of Appeal did not disagree with the trial judge that Example 3 would not have worked, or that at the priority date a skilled person would not have known how to delete 100 kb of mouse sequence and insert 200-300kb of human sequence. However, the Court of Appeal noted that the skilled person is not bound to carry out the invention precisely as described, and can use common general knowledge to make obvious changes. Furthermore, the expert testimony indicated that a skilled person would have recognized Example 3 to be considerably challenging, and would have considered it obvious to shorten the inserts. Finally, the court of appeal pointed out that "a patent does not cease to be sufficient simply because the specification promises too much". 

US case?

Given that the VelocImmune patent, if enabled, does not apparently describe the best way for performing the claimed method, this Kat wondered how the VelocImmune patent was faring in the US. Had it perhaps fallen foul of the best mode requirement? It turns out the US case is interesting for entirely different reasons. 

In July 2017, US Court of Appeals for the Federal Circuit upheld the decision that the US patent was unenforceable (full judgement here). The decision affirmed the patent could not be enforced because of "Regeneron’s inequitable conduct" during prosecution, by intentionally withholding references from the USPTO.


The Court of Appeal brings the UK courts in line with the EPO for this case. It is worth noting however, that the UK courts had the benefit of more expert evidence than the EPO. Interestingly, the evidence on which the Court of Appeal based their decision was that provided by Kymab's experts for the purpose of novelty. A reminder of the trap to be avoided between demonstrating that a prior art document is enabling and thus destroys the novelty of a claim, and subsequently attempting to prove that the same claim is insufficient. 

Stay tuned to IPKat for Part II. Infringement. 

Thursday, 29 March 2018

Copyright, exceptions and cultural institutions: Australia is listening!

Whilst the 2016 Copyright Directive proposal might have lost some momentum since its introduction, the appetite for the modernisation of copyright law is still in the cards in other parts of the world – not the least Down Under.

Last week, the Australian government published a public consultation call to gather views on how to adapt copyright law to the ‘changing interests’ of the ‘digital world’ (here). This public consultation follows a report (the ‘Productivity Report’) by the Commission published in December 2016 (see, here and here). The government had published a response to the Productivity report in August 2017 (August 2017 Report, here). (See as well as the exclusive IPKat interview with Patricia Kelly, the Director General of IP Australia, here.)

As promised in its response to the ‘Productivity Report’ published in August 2017, the Australian government is focusing this public consultation on copyright exceptions and how to best negotiate copyright in the cultural sector. On this last point, the call for consultation points specifically to the orphan work scheme currently enforced by the 1968 Australian Copyright Act (here).

Recommendation 6.2 of the Report advised the Australian government to ‘limit liability for the use of orphan works, where a user has undertaken a diligent search to locate the relevant rights holder’. This recommendation has declared its support of the recommendation as they recognise ‘the difficulties both creators and cultural and collecting institutions face in utilising orphan works’, and the risk of ‘[stifling] the ability for knowledge to be shared and new content to be created’ (August 2017 report, p. 7).
Orphan CopyrightKat

This is not the first time ‘orphan work schemes’ have come under criticism or put on the reform agenda (e.g., the EU harmonised national regulations on this point in 2012 – here). Indeed, the difficulty and impracticality of performing ‘diligent searches’ to clear rights has been noted by lawyers and practitioners in the GLAM sector for quite some time now (GLAM sector standing for ‘gallery, library archive and museum’ sector). See here and here for examples of studies and best practice guidelines published on this question.

Now the Australian government’s question for you Kat readers is: how should such liability be limited? What should be ‘the most appropriate way to limit liability for use of orphan works’ under Australian copyright law?

Do feel free to share views and thoughts below – this Kat will happily survey and recap responses in a subsequent post on further discussion on this point.

Do note that you have until 4 June 2018 (17h00 AEST) to submit your contribution to the Australian government!

How do you protect patents from judicial and expert hindsight?

The Hindsight Glasses gave Merpel the
power to see that all inventions
were obvious
Oh, hindsight...a wonderful thing.  Unless, of course, you are patentee.  A couple of Tuesday evenings ago, when it was still brutally cold in London, Dr Siva Thambisetty, Associate Professor of Law at the LSE, hosted a seminar which was cryptically titled “Inventive Step in the UK and Use of Experts in Patent Litigation”.  Rachel Mumby (Bristows) reports on the event:  
"All that attendees knew before the event was that the intention was to “explore the cognitive burden and mechanics of litigation strategies on inventive step”.  
After a mad dash from the office, several attendees could be found wandering the halls of the LSE searching for the correct room, because all they could find was a room with large numbers of people seemingly doing an exam. In fact, that room was the correct place to be, because the evening started with all participants being handed some papers to read, including a patent litigation scenario and short expert report (prepared by Alan Johnson of Bristows). Participants were then asked to answer a series of online questions, including what they thought the likelihood was of the patent in suit being held to be obvious. Participants were also warned not to confer with their comrades as not everyone had the same information. So, after a certain amount of huffing and puffing about being required to think, participants settled down to the task in hand. 
After the survey had been completed, Dr Thambisetty explained that the survey was part of research being done in relation to hindsight bias and blinding in the assessment of obviousness, for example looking into the probative value of blinding and whether it can affect litigation outcomes. She also introduced Prof Christopher Robertson of the University of Arizona who is leading this study. 
Prof Robertson then took to the floor and gave a fascinating presentation on hindsight bias, noting that over 800 papers have been published on the topic (across many different fields, not just patents). The audience learned that hindsight bias is very much part of human nature. Further, this issue is not restricted to mere mortals, but experts and judges have the same problems (and sometimes worse). It has been psychologically proven that once we know that a particular event has happened (e.g. an invention has been made), the facts which previously pointed away from that event happening become harder to remember. What’s more, there is no strong evidence to suggest that any of us can reliably channel our mind to avoid hindsight bias – we cannot help ourselves. This is why blinding (and particularly double-blinding) is so important in clinical trials and also, for example, police line-ups. 
Next Dominic Adair (Bristows LLP) complained very politely about the steps which, following MedImmune v Novartis, patent litigators take to try to minimise hindsight bias when working with experts. He discussed the great time and cost which is incurred in discussing the CGK and then the prior art, often with multiple prospective experts, before they can be shown the patent and it can be determined whether they will be suitable for that case. In particular, he noted that for a party surprised by receiving an infringement action it is almost impossible to complete this process in the 6 weeks between being sued and needing to file Grounds of Invalidity citing particular pieces of prior art. Further, in some cases experts are needed to assist with assessing a potential infringement, and this work has to be carried out before the other side has cited any prior art. In other cases it may be clear from the outset what the patented technology will be, making the staged approach something of a farce. Indeed, in circumstances where the invention exists in identifying that there is a problem, it can be incredibly difficult to frame the discussion without discussing the shortcomings in the state of the art. What happens if new prior art is cited during the proceedings? Can solicitors and barristers not be trusted to educate experts on the dangers of hindsight bias and seek to avoid this?

Anna Edwards-Stuart (11 South Square) then took up the microphone and provided the alternative view. She reminded the audience that patent law, in particular the concept of the person skilled in the art, is inherently artificial. Experts rarely personify the person skilled in the art and can only test their views against their own experience. This means that without steps, such as sequential unmasking, being taken to try to avoid hindsight bias, the expert becomes vulnerable on cross-examination.

Citing Arnold J’s comments in American Science v Rapiscan, Anna also noted that care still needs to taken with sequential unmasking. Further, bias does not only crop up when documents are read in a particular order, hindsight bias can also arise if experts are instructed to focus on one passage of the prior art to the exclusion of others, or where elements of the CGK are cherry-picked to form a CGK attack. She concluded that the most important thing is that it is made clear in expert evidence how the expert has been instructed, what opinions he/she gave when, and that the basis for any opinions given are carefully explained.

Next came the analysis of the results of the survey. The audience were told that half of the room had read expert reports which made it clear the steps that had been taken by the expert to avoid hindsight bias (for example the order that documents had been read in) and half had not. Interestingly, the results were the opposite of those expected, but this may be down to the small sample size and slightly rushed nature of the exercise. Interestingly, one clear message was that participants thought that blinding is valuable but not practical in patent litigation. 
The evening concluded with comments from Arnold J and Dr. Matthias Zigann (presiding judge of the Munich Regional Court), and also some emailed observations from Birss J (who was unable to attend).

Arnold J noted that the literature is conclusive that experts are no better than lay people at avoiding hindsight bias, and that telling someone to avoid hindsight does not work. He suggested that experts being blinded as to which party is instructing them is one way of avoiding some bias, but that does not avoid hindsight bias. He went on to observe that there is a breadth of literature which shows that linear unblinding, and reaching conclusions at each stage of the process is helpful. However, he stated categorically that this is not compulsory when instructing experts, and accepted that it can be costly and can in certain circumstances be an impossible approach. Having said that, he also observed that in the Courts of England and Wales we place considerable weight on expert evidence, and if we are to continue to do so, we need that evidence to be as high quality as possible, which should make the parties want to ameliorate potential weaknesses such as hindsight bias. (In other words, you don’t have to do it, but on your head be it if you don’t and could reasonably have done so.) 
He also observed that as Judges are not immune to hindsight bias either, it is helpful to know that experts have been instructed linearly. Further, as hindsight bias produces an asymmetric effect, tending to favour the party seeking to invalidate a patent, Judges should lean the other way to try to compensate for this. 
He concluded by picking up on a point raised by Anna Edwards-Stuart, that patent law is grounded in hindsight – it is legally routine for prior art to be selected with hindsight, but this does not mean that nothing should be done about bias when assessing obviousness. 
Although unable to attend, Birss J had already provided some views on the subject (which he knew to be at odds with those of Arnold J). In an email which was read out by Dr Thambisetty, Birss J opined that: 
  1. The concept of blinding in patent litigation is fundamentally flawed.
  2. The role of experts is to educate the Court, not to come to conclusions on obvious, or be used like an experiment to test whether or not something is obvious. Therefore, blinding of experts is unnecessary.
  3. If blinding is to be used, single blinding is not sufficient – to be effective double blinding is required (i.e. legal teams mustn’t know which side they are on). Indeed, in his view lawyers sometimes knowingly or subconsciously lead their experts towards particular conclusions by the nature of the questions they ask.
  4. If experts are to be blinded, then judges also need to be blinded and to read documents in a particular order, giving their opinions along the way.
  5. Experts are almost always more skilled than the “person skilled in the art” so does analysis also need to be done on how much more skilled they are in order to assess their blinded opinion? 
Dr. Zigann then provided a German viewpoint, which appeared to be that experts, and more particularly party experts, are unnecessary. He argued that experts are not needed to determine obviousness as this is a matter of law. Further, if the only thing the expert contributes is an explanation of the technology, then this can be done by lawyers, or if necessary, with a court appointed expert (court appointed experts have some of the same hindsight bias issues as party experts, but they may not be exposed to other types of bias).

The evening concluded with an acknowledgement of the fact that at least hindsight is not as inherent in the English system as it is at the EPO where hindsight is an inevitable part of identifying the closest prior art, and where the problem to be solved is formulated from that closest prior art.

The broad consensus was that it was a captivating and thought provoking evening. It is clear there is no ideal solution, but those present enjoyed the opportunity to learn a little more about this topic which is so fundamental to the way many cases are run."

Does the InfoSoc Directive envisage digital exhaustion? Questions in the Tom Kabinet CJEU reference finalized (at last)

Several months ago this blog reported that the longstanding litigation in The Netherlands against second-hand ebook e-book trader Tom Kabinet would result in a reference for a preliminary ruling to the Court of Justice of the European Union (CJEU) asking whether the InfoSoc Directive allows 'digital exhaustion'.

In a 2017 decision the Rechtbank Den Haag (Court of The Hague) held that Tom Kabinet is not liable for unauthorized acts of communication to the public under the Dutch equivalent of Article 3(1) of the InfoSoc Directive. However, that court deemed it unclear whether the defendant could invoke the digital exhaustion of the right of distribution in relation to its e-book business.

Now, The IPKat has learned (again, thanks to @TreatyNotifier) that - at last - the questions for the CJEU have been finalized.

Here they are [WARNING: the translation from Dutch is mine … thanks to Google Translate]:

1. Is Article 4(1) of the InfoSoc Directive to be interpreted as meaning that "any form of distribution to the public of the original of a work or a copy thereof by sale or otherwise" includes the making available remotely by means of downloading for use for an unlimited period of time of an e-book (ie a digital copy of a copyright book) by paying a price that the copyright holder receives as remuneration and which corresponds to the economic value of that copy of the work?

2. If Question 1 is to be answered in the affirmative, is the right of distribution in relation to the original or copies of a work as referred to in Article 4(2) of the InfoSoc Directive exhausted in the Union with the first sale or other transfer of the original or a copy thereof, including the remote downloading of an e-book (ie a digital copy of a copyright book) for use for an unlimited period by paying a price which the copyright holder receives as remuneration and which corresponds to the economic value of that copy of a work, within the Union by the rightholder or with his permission?

3. Is Article 2 of the InfoSoc Directive to be interpreted as meaning that any transfer between subsequent purchasers of a legally obtained copy in respect of which the right of distribution has been exhausted is tantamount to consenting to the acts of reproduction referred to therein, in so far as those acts of reproduction are necessary for the lawful use of that copy and, if so, what conditions would apply?

4. Is Article 5 of the InfoSoc Directive to be interpreted as meaning that the copyright owner cannot oppose the acts of reproduction in relation to a lawfully obtained copy in respect of transfers between subsequent purchasers and in relation to which the right of distribution has been exhausted and, if so, what conditions would apply?

We now have to wait for the assignment of a number to this case and publication of details (as well as an official translation of the questions) on the Curia website: stay tuned!

Del Toro and The Shape of a Lawsuit

On 4 March 2018, the Mexican film director Guillermo del Toro won the Academy Award both for Best Director and Best Picture for the movie “The Shape of Water”. Together with these two Academy Awards (and 13 nominations in all), the movie has also been involved in several claims of infringement due to an alleged resemblance with other films, such as the Dutch short film “The Space Between Us” (already dismissed by the creators and the Netherlands Film Academy), the French movies “Amelie” and “Delicatessen” (here), and the 1984 movie “Splash”. Thus far, the only claim to reach the courts was brought by David Zindel, son of the Pulitzer prize winner Paul Zindel.

Zindel v. Fox Searchlight Pictures, Inc. et al, case number 2:18-cv-01435 was filed in the United States District Court Central District of California against Guillermo del Toro (the director, producer, and writer), Daniel Kraus (associate producer), Fox Searchlight Pictures Inc.(production company and distributor of the film) and other involved parties, claiming direct, as well as contributory and vicarious copyright infringement, of Paul Zindel’s play, “Let Me Hear You Whisper”. More on this lawsuit by this Kat. If you haven’t watched the movie, though, spoilers alert!

The Shape of Water

The story takes place in the 1960s during the Cold War and is a love story between a mute cleaning lady (Elisa), who works at a military research facility, and an aquatic god from the Amazon (“The Asset”), who had been captured by the US government. When Elisa finds out that his US captors and the Russians are planning to kill “The Asset”, she puts into motion a plan for setting him free and releasing him into the sea, with the help of her neighbor Giles (painter) and a chatty co-worker Zelda.

The Shape of Water” was released in December 2017. However, del Toro and Kraus had stated several times that they discussed the idea of the movie already in 2011 and, one year later, they started working on the script. Moreover, Guillermo said he collaborated over a period of three years with two designers and one visual effects supervisor to create the appearance of “the Asset”, including his gleaming eyes, Greek-like nose, fierce claws, agile legs and artful gills. In addition, del Toro has stated several times that the movie was influenced by the film, “The Creature from the Black Lagoon”. Having watched that movie at the age of 6, del Toro had wanted ever since that the creature ends up with the girl.

The movie has been praised by critics and the audience. Also, it has been prominently noted that the film deals with issues of discrimination (such as sexual preference and skin color). Del Toro revealed that it carries a message of love and unity: “The movie is called ‘The Shape of Water’ because love is like the shape of water, it doesn’t have a form. When there is love, it might be in the form of someone of the same genre, or with a big age difference or in various forms but you recognize it, immediately [This Kat's translation from Spanish]”. “Water takes the shape of whatever is holding it at the time and although water can be so gentle, it’s also the most powerful and malleable force in the universe. That’s also love, isn’t? It doesn’t matter what shape we put love into, it becomes that, whether it’s a man, woman or creature”.

The novelization of the movie, co-authored by del Toro and Kraus, was published by Macmillan on 6 March 2018.

The Lawsuit

On 21 February 2018, David Zindel filed the lawsuit, alleging that the movie is an unauthorized derivative work that “copies the story, elements, characters, and themes … even minor overlapping elements, such as unusual words, phrases, or images” from Zindel’s play, “Let Me Hear You Whisper”. He is seeking both injunctive and monetary relief.

Zindel’s play is a story about a lonely cleaning lady (Helen), who works at a “scientific laboratory facility that performs animal experiments for military use”, where she “forms a deep, loving bond” with a dolphin. Helen decides to rescue the dolphin when she becomes aware that the animal is “slated for brain dissection” in the play, and for vivisection in the TV show. The play was written in 1969 and adapted for TV by the National Education Television Network (NET) in the same year and in 1990 by the A&E Network.

In the lawsuit, sixty-one similarities were pointed out between Zindel’s play and del Toro’s movie, such as that:

1. Both stories take place in a secret research laboratory during the Cold War (the 1960´s), where “an aquatic creature of advance intelligence confined to a glass tank” is experimented on for military reasons.

2. Both protagonists are quiet, unmarried, lonely cleaning ladies, wearing green coats, who communicate with the creature.

3. Both protagonists bond with the creature by bringing him food and both dance with a mop in front of the creature while romantic vintage music is played in the background.

4. Both protagonists have chatty co-workers (Dan and Zelda).

5. Both creatures are planned to be killed by vivisection; both protagonists decide to save the creature in a laundry cart with the goal of releasing him into the sea.

It was also argued that Zindel’s play “is a beloved work of fantasy/science fiction” that has been repeatedly published and the TV shows have been often rebroadcasted. The claim is that Kraus “came up with the idea for the picture the same year that the A&E TV show was on air,” and that he was already familiar with Zindel’s work, given that the book “The Pigman”, written by Zindel, was included in Kraus’ 2017 article “Booklist’s 50 Best YA [Young Adult] Books of All Time”.


Snorky, a talkative dolphin
Fox Searchlight Pictures Inc., one of the co-defendants, published a statement, maintaining that Zindel’s claims are baseless and the timing of the lawsuit was intended to coincide with the voting schedule of the Members of the Academy (it was filed one day after voting commenced) with the aim to reach a quick settlement. Meanwhile, Guillermo also denied the accusations and remarked that, during his 25 years in the industry, he has never been involved in such a controversy and he always has been totally up front regarding the “influences” on his movies.

Furthermore, Del Toro affirmed that he has neither read nor seen Zindel’s play and none of his collaborators mentioned it to him, which, if true, would support a claim of independent creation. He also highlighted that “[t]he trope of an animal being liberated could be found in anything from Project X to Splash, to Born Free and Free Willy, to Starman, to an episode of Hey Arnold or The Simpsons… You could also include The Day of the Dolphin, which in fact was written two years before the play”. However, his “story and the layers are completely and entirely complex … [and] are completely original”.

In view of the above, the lawsuit does implicate basic principles of copyright law. Both Zindel's play and the movie involve a lonely cleaning lady who wants to release a captive creature from a research facility. Is this protectable expression or unprotectable idea? That said there are some notable differences in the respective story lines: the protagonist and the god from the Amazon fall in love in the movie, while the protagonist only bonds with the dolphin in the play.

Consider also that stories involving research facilities in which captive creatures are released have been addressed in various films, such as the movies mentioned by del Toro (“Free Willy”, “Project X”, “Splash”), as well as “The Plague Dogs” (1984), “The Fly” (1986), “The Fifth Element” (1997), “Paulie” (1998), “The Shaggy Dog” (2006), the “Rise of the Planet of the Apes” (2011), and “Maximum Ride” (2016 and book series 2005-2015).

Further consider that at least some of the central elements in the movie might fall under the scènes à faire doctrine, since the story takes place during the Cold War in a research facility, with Russian spies, scientists, and supervisors; a suitable container (water tank) for the creature to be examined (“The Asset”); facility procedures for experimentation (such as vivisection); and the use of the color green on clothing and other visual elements (green was the color of the 60s, see here, here, here and here).

This Kat (and presumably Kat readers as well) will eagerly follow this case, beginning from the motion to dismiss filed by the defendants.

Stay tuned!

“The Shape of Water” pictures are from the official website and Facebook page.
“The Creature from the Black Lagoon” picture is from Ben Chapman website.
“Let Me Hear You Whisper” cover picture is from Paul Zindel website.
Comparison pictures are from the Hollywood Nerd website which states that it “expresses the point of view of the Zindel family”.
Snorky picture is from the episode 1, season 12 “Treehouse of Horror XI”, from the official website of The Simpsons.

Wednesday, 28 March 2018

Court of Appeal, following EPO, reverses Carr J in Regeneron v Kymab dispute

After five years, Regeneron has
finally captured its transgenic mouse
The AmeriKat has had very little time to digest this morning's Court of Appeal decision in Regeneron v Kymab & Novo Nordisk [2018] EWCA Civ 671 which reversed Mr Justice Carr's finding that Regeneron's patents were insufficient.  The Court also accepted Regeneron's argument on construction.  But for those who would like a teach-in on the English law of sufficiency, the Court of Appeal, led by Lord Justice Kitchin, provides a helpful summary of the English case law on sufficiency.   Some of the key sufficiency extracts (on the law) are set out below.  

At [238]:
"We draw the following points from [Biogen v Medeva [1997] RPC 1]: 
i) The extent of the patent monopoly, as defined by the claims, must correspond to the technical contribution to the art its disclosure has made in order for it to be justified.  
ii) The specification must enable the invention to be performed to the full extent of the monopoly claimed. But if the invention discloses a principle capable of general application, the claims may be in correspondingly general terms.  
iii) If the patentee has found a new product which has a beneficial effect but cannot demonstrate there is a common principle by which that effect will be shared by other products of the same class, he will be entitled to a patent for that product but not for the class. But if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all the products of that class even though he has not himself made more than one or two of them.  
iv) There is more than one way in which the breadth of the claim may exceed the technical contribution to the art embodied in the invention. The patent may claim results which it does not enable, such as making a wide class of products when it enables only one of those products and discloses no principle which would enable others to be made. Or it may claim every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention."
At [245]:
"We believe the following further points of relevance to this appeal can be taken from the decision of the House of Lords in Kirin-Amgen and the decisions of the Court of Appeal and the House of Lords in Lundbeck
i) a principle of general application is simply an element of a claim which is stated in general terms;  
ii) a claim containing such an element is sufficiently enabled if the skilled person can reasonably expect the invention to work with anything which falls within the general term; and  
iii) a particular form of an element of a claim may improve the way the invention works and be inventive. However, the patent is not insufficient simply because the specification does not enable that improvement. It is still a way (albeit an improved way) of working the original invention."
And then, at [247], addressing Regeneron v Genentech [2013] EWCA Civ 93:
"In discussing the general legal principles applicable to the insufficiency attack, Kitchin LJ (with whom Longmore and Moses LJJ agreed) said this at [100]-[101]: 
"It must therefore be possible to make a reasonable prediction the invention will work with substantially everything falling within the scope of the claim or, put another way, the assertion that the invention will work across the scope of the claim must be plausible or credible. The products and methods within the claim are then tied together by a unifying characteristic or a common principle. If it is possible to make such a prediction then it cannot be said the claim is insufficient simply because the patentee has not demonstrated the invention works in every case 
On the other hand, if it is not possible to make such a prediction or if it is shown the prediction is wrong and the invention does not work with substantially all the products or methods falling within the scope of the claim then the scope of the monopoly will exceed the technical contribution the patentee has made to the art and the claim will be insufficient. It may also be invalid for obviousness, there being no invention in simply providing a class of products or methods which have no technically useful properties or purpose."
Applying these principles, the court found no reason to interfere with the judge's findings rejecting the broad insufficiency attacks. The court then turned to the infringement - insufficiency squeeze, upheld the judge's finding that VEGF-Trap fell within the scope of the claims and rejected the contention that this rendered the claims insufficient:
This does not, however, mean the patent is insufficient. A claim for an invention of broad application may properly encompass embodiments which may be provided or invented in the future and which have particularly advantageous properties, provided such embodiments embody the technical contribution made by the invention. VEGF-Trap does indeed embody the technical contribution made by the patent; it has a therapeutic effect in patients suffering from ARMD by treating the angiogenesis associated with that condition, and it does so by binding to VEGF and inhibiting its biological activity. VEGF-Trap is therefore one of those improvements which Lord Hoffmann had in mind in Kirin-Amgen [2004] UKHL 46, [2005] RPC 9 at [117]."
This exposition is, we believe, entirely consistent with the principles we have identified. A claim is not insufficient simply because it encompasses inventive improvements provided they embody the technical contribution the disclosure of the invention has made to the art."
Applying these principles to the facts, the Court of Appeal concluded that the claims were adequately enabled across their scope (consistent with the Board of Appeal with respect of the 287 patent - T 220/14 of 9 November 2015).  On an initial reading, despite the reversal, the AmeriKat does not believe the law on sufficiency has changed at all (or to any material degree).  As the the Court themselves stated:
"We are conscious that in so deciding we are arriving at a conclusion which is different from that of an experienced patent judge. However, we have had the benefit of hearing fully developed argument upon aspects of the evidence which did not receive the same degree of attention at trial; we have come to the conclusion that the judge erred in his approach to the interpretation of claim 1 of the 287 patent; and we are satisfied that, in assessing the sufficiency of the disclosure of the patents, he did not attach sufficient weight to the character of the invention as claimed in each of the claims in issue, the contribution that its disclosure has made to the art and the need to confer a fair degree of protection on the patentee."
The IPKat Team will be back to report on the details of the decision and application to the technology, separately.

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