A ) Gilead's Problem

The Drug & The Patents

Viread is a drug that is used to and (in combination with other anti-retrovirals) has also been used to . ?The Chinese patents ( & ) were each filed in 2004 and 2005 respectively and have been challenged? by Shanghai-based generic manufacturer .

The Validity Challenge

Aurisco has argued that the Viread patents lack novelty because the active ingredient () was disclosed by Czech scientist Antonin Holy when he filed for a US patent for the compound in . Thus the information contained therein is already in the public domain contravening of the . ?The Patent Review Board appears to have accepted? this argument and has cancelled the Viread patent.

?This comes as a blow to US-based Gilead.? In recent years, its Viread patent has struggled to fend off opposition in developing markets -- having been rejected in??and?, and subjected to compulsory licencing in?. ?Aurisco's chairman, Peng Zhi'en, was recently ?to have said that he expects the Chinese market to amount to?CNY 1billion even with the onset of locally produced generics sold at one-twentieth of the price of Viread.

B) Chinese Context

The Social Context

The Chinese government's push to make Viread more readily available likely reflects the .? China is home to over (one-third of the world total) with the cost of treatment breaching CNY100 billion (160 million USD) annually. The incidence of HIV/AIDS is also , causing 11,575 deaths in China in 2012. Given that ?from the last year, it is not surprising that the Chinese government is seeking out ways to lower the cost of treating these diseases.

It is worth noting however that in 2011 Gilead made Viread and other anti-retrovirals to developing economies through the ?(MPP). While China was not party to the MPP at the time -- it has since been admitted and appears to have .

The Legal Context

While SIPO¡¯s Patent Review Board (PRB) is the highest level of appeal in the Chinese patent system, like most other countries, Gilead can sue the PRB as a matter of administrative law at one of .? If this is unsuccessful, Gilead can appeal to the High People¡¯s Court for a final ruling.? This was the strategy employed by ?in 2007 to ?reinstate its patent for Viagra.

But would Gilead succeed if it challenged SIPO in the Chinese courts today?? And what does Aurisco¡¯s invalidation strategy imply about the new compulsory licensing scheme? ?I sat down with Hong Kong University¡¯s ?to discuss these and other issues.

C) Policy Discussion with Dr. Li

Beatrice Sze:? Given your research on patents and their affect on the Chinese biotech and pharma industries, in your opinion, would Gilead succeed if they sued today? Do you think it could pull a "Pfizer¡±?

Dr. Li:? Without doing a validity analysis of the Viread patents it¡¯s hard to say.? However, technical merits of the patents aside, I would say that the social, political, and economic environment is tougher today for Gilead than it was for Pfizer seven years ago.

The year before the People¡¯s High Court released its decision on Viagra, the State Council issued its . If you look at China¡¯s IP goals for the next 5 years (Beatrice: of the English version provided) you will see that --first and foremost-- the government wants to cultivate domestic IP. ?In other words, they are looking to foster Chinese innovation.

Moreover, Gilead's Viread drug faces a particularly difficult social challenge. ?However one might feel about the validity of the patent, we are talking about the treatment for a disease that¨C as you pointed out ¨C stands to cripple the Chinese healthcare system. ?Regardless of how one might feel about protecting the rights of the patent holder, when a state is responsible for providing healthcare to a third of the world¡¯s chronic Hepatitis B sufferers one can see why it might want to cultivate a steady supply of domestically controlled medicine for its people.

Beatrice Sze:? Where is compulsory licensing in this story? Why do you think Aurisco went straight for infringement-invalidation rather than design-around then compulsory licensing? ?

Dr. Li: ?The reality is the Chinese government (not even during the height of SARS outbreak in 2003). ?For Chinese generic drug manufacturers, the cost of infringement-then-invalidation is currently much lower than manufacturing and applying for a compulsory license.

Part of the problem is that the process is still very complicated and it takes about three years to go from application to approval by the state. ?Even after approval, companies will still have to pay licensing fees. ?So Aurisco probably adopted this strategy to maximize its drug's time on the market while minimizing its legal costs.

That said, Chinese language news sources indicate that Aurisco plans to apply for compulsory licensing after the patent has been invalidated. ?If it does so, it will be interesting to see how quickly the license is granted given the importance of this drug to the Chinese market and Beijing's current IP Strategy.

Beatrice Sze: What would you say to foreign innovators looking to enter China's pharmaceutical market?

Dr. Li: ?To foreign innovators looking to establish pharmaceutical IPRs in China I would say: do not be discouraged. ?You may experience more resistance from SIPO given Beijing's current IP Strategy but if the Viagra case teaches us anything, it is that the Chinese government can be persuaded to honor patents if they are well-drafted and cover truly novel and inventive subject matter.

Beatrice Sze:?So it sounds like good advocacy made on behalf of good patents can still succeed in the Chinese legal system.

Dr. Li:??Yes, I'd agree with that statement.

Beatrice Sze: Thank you for your time, Dr. Li.?

Dr. Li:? A pleasure, as always.

Dr. Yahong Li is an Associate Professor and Deputy Head at the Department of Law at HKU. She is also an Associate Director at HKU Technology Transfer Office.?? Read more of Dr. Li ¡®s research in her book ¡°¡± (Edward Elgar, 2010).

Beatrice Sze is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

With thanks to HKU's Chi Shan for her assistance in searching for primary sources at SIPO and within the Chinese court system.
Unfortunately at this time not all courts decisions or patent prosecution rulings are made publicly available by the PROC.

The post China¡¯s Bitter Medicine for Gilead: SIPO Cancels Viread Patent appeared first on IPOsgoode.

The problem? In 2001, Wujian Xili Textile Co Ltd, in Jiangsu province, ¡°Ï²Á¦¡± with the Changan Trademark office in association with ¡°sewing needles and stitches¡±. Last month Heineken accused Wujian Xili Textile Co. of pirating its trade-mark. The action was allegedly triggered by Wujian Xili's use of the name at an industry trade show in Shanghai. Cai Fuwei, Wujian Xili Textile Co.'s legal officer, has that he has never heard of Heineken beer and had never seen their branding before.

It is not yet clear whether this suit will be heard by the .


A. China¡¯s Recent Trademark Reform: Good News for Rights-Holders?

Heineken's law suit comes at an interesting time in the Chinese legal landscape because on August 30, 2013, the the (PRC Trademark Law). While most of the revisions were procedural, there were a number of substantive changes and clarifications that may be relevant to the Heineken suit. An English summary of the revisions can be found .

Applications Made in Bad Faith: Of particular interest to foreign rights holders may be the appearance of a broad new principle that ¡°all trademarks must be applied and used in accordance with the principles of honesty and integrity¡± ().

It specifically provides that if the applicant is aware of another party¡¯s mark through a prior contractual relationship, business dealings or other prior relationship, the applicant¡¯s application to register a trade-mark identical/similar to that party¡¯s mark for the same/similar goods or services will be rejected if it is opposed by the party with prior use.

Recognition of Prior Use: A registered trade-mark owner who is ¡°squatting¡± on a famous but as-of-yet unregistered trade-mark is no longer allowed to prohibit a prior user from continuing to use an identical/similar mark within the original scope of his or her use. However, the registrant may request the prior user add appropriate markings to distinguish the marks ().

¡°Use¡± under Chinese trade-mark law has been defined to appearance on products, packaging, containers and business papers, or use in advertisements, at exhibitions and for other business activities to designate the origin of the products ().

Clarification of China¡¯s Protection of Well-Known Marks: The new law expressly confirms the ¡°case-by-case¡± recognition principle for well-known marks and the channels of seeking well-known mark recognition (). Basically, it states that the recognition of well-known trade-marks shall be conducted by competent authorities at the request of the trade-mark holder.

Additionally, use of the phrase ¡°well-known trademark¡± (¡°³ÛÃûÉ̱ꡱ) is now expressly prohibited from use on goods, packaging or containers, in advertisements, exhibitions or other commercial activities. (). Any violation may be subject to injunction and a fine of 100,000 RMB (~ $16,000 USD).

Increase in Damage Awards: Before this revision, statutory damages were only about 500,000 RMB (~ $81,000 USD). This amendment has increased it to 3 million RMB (~ $490,000 USD) (). Punitive damages, up to three times the amount in other damages, are also now available when an infringement occurs in bad faith ().

The changes are scheduled to come into effect on May 1, 2014.

B.? Good News for Heineken¡¯s Case??

How might these amendments affect Heineken¡¯s suit against Wujian Xili? Certainly the protection of well-known marks and the recognition of prior use of the mark appear to weigh in Heineken¡¯s favor, given that Heineken entered the Chinese market before Wujian Xili registered for the mark. Moreover, some blogs have reported that Wujian Xili has been censured for in the past by - suggesting an opposition from Heineken may receive sympathy by the Trademark Review and Application Board.

Silence on Dilution: There is, however, one nagging problem for Heineken - the continued absence of the explicit codification of the dilution principle in Chinese law.? Protection against ¡°brand dilution,¡± is the protection from a third party who seeks to use a registered trade-mark for an unrelated product. The existence of this principle in China's civil law regime has been a matter of some among academics and practitioners.

To help shed some light on these developments, I sat down with of Hong Kong University who teaches "International Comparative Intellectual Property Law" at HKU. The following is a transcript of that interview.

C.????? Policy Discussion with Dr. Yahong Li

Beatrice Sze: Thanks for sitting down with me today, Dr. Li.

Dr. Li: My pleasure.

Beatrice Sze: Having lived and worked in the Beijing, the United States, and Hong Kong, in your opinion, why do you think China is revising its IP laws now after so many years of being the world¡¯s ¡°Copycat Center¡±?

Dr. Li: Well first, I think the PRC recognizes that many of its laws are outdated and in need of revision, if only to clean up some of the procedural inefficiencies involved in application and objection. So there is a large practical consideration here. [Editor¡¯s note: The last time there was a major overhaul of the Trademark Act was in 2001.]

Secondly, the impression I get from these amendments is that the PRC is serious about answering the call from the international community to strengthen its protection of IPRs. To me the increase of the damage awards available to rights holders and the inclusion of punitive damages is the strongest indicator of this.

Beatrice Sze: What makes you say that? What makes these revisions substantive as opposed to empty gestures?

Dr. Li: What most people need to understand about China is that, while it has been a member of WIPO for nearly 30 years, its status as a formidable global economy is a relatively recent development. For the last 30 years it has largely been a developing country. Ten years ago, when these laws were drafted, an $81,000 USD award seemed like a low award to most American and European businesses. However, the reality is that kind of award would have crippled many Chinese businesses. The fact that the PRC is revising its laws to reflect the country¡¯s economic growth indicates to me that it is serious about meeting the WTO obligations and the bilateral treaties it recently signed with other countries in Asia.

Beatrice Sze:?What do you think of Heineken¡¯s case? Does the beer company have a shot given the difference between the products and wares in question?

Dr. Li: Yes, as you mentioned in your analysis, to me this case raises the question of whether or not the dilution doctrine is alive in Chinese jurisprudence. Heineken is claiming infringement of its trademark with respect to beer and Textile Co. has been using it with respect to sewing machines.? It is worth noting that there have been some decisions in which Chinese courts have adopted the American approach [Editor's note: which protects against dilution as a matter of law].? However, because China operates under a civil law regime, these decisions are not binding upon future courts or tribunals.

Beatrice Sze:?So it seems like Chinese law has a ways to go in its growth before rights-holders can be assured of the same kind of protection they are used to receiving in the United States and EU.

Dr. Li: Yes, I'd agree with that statement. Although I would suggest that this is certainly a step in the right direction.

Beatrice Sze:?It seems like it's an exciting time to be in this field - particularly in this part of the world.? Cheers!

Dr. Li: It is indeed. ?¸É±­! [Translation: "Cheers!" Pronounced:"Gan bei!"]

Dr. Yahong Li is an Associate Professor and Deputy Head at the Department of Law at HKU. She is also an Associate Director at HKU Technology Transfer Office.?? Read more of Dr. Li 's research in her book ¡°¡± (Edward Elgar, 2010).

Beatrice Sze is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School. She is currently on exchange at Hong Kong University studying international law and the intellectual property and commercial laws of China.

The post Beer, Reform, and Policy: A Pint of Chinese Trade-mark Law appeared first on IPOsgoode.

A.????? ¡°Dude, Where Are We?¡± - A Quick Review of The European Court of Justice

The (Court of Justice) is the highest court in the European Union on matters involving European Union law (¡°Union law¡±). It is responsible for interpreting Union Law and ensuring that it is equally applied across all EU member states. While the Court of Justice is the supreme guardian of Union legality, many provisions of Treaties signed by Member States directly confer individual rights on nationals of Member States, which national courts are bound to uphold. Thus, national courts can be thought of as ¡°the first guarantors¡± of Union law.

To ensure the effective and uniform application of Union legislation and to prevent divergent interpretations, national courts may turn to the Court of Justice and ask for clarification on a point concerning the interpretation of Union law. Those national courts that receive replies are bound by the interpretation given by the Court of Justice. Other national courts facing problems of the same nature are also bound by the decision. Although requests for references may only be raised by a national court, all the parties involved may take part in proceedings before the Court of Justice.

B.????? Peter Pinckney¡¯s Problem: Keeping his Fight in France

was a British rock band that enjoyed short-lived success in the 1970s. Peter Pinckney is the author, composer and performer of 12 songs recorded by that group. In the early 2000s, he discovered that his songs had been reproduced without his authority on CDs in Austria by Mediatech and marketed by the UK company Crusoe.

In 2006, Pinckney ?(para 10) for copyright infringement in the Toulouse Regional Court. Mediatech challenged the jurisdiction of the French courts on this matter. The Regional Court of Toulouse dismissed the Austrian jurisdictional challenge on the grounds that Mr. Pinckney had been able to purchase the infringing records from a website that was widely accessible to the French public. This, the Court ruled, was sufficient to establish the substantial connection between the facts and the alleged damage to grant jurisdiction to the French courts.

The Toulouse Court of Appeal ?(para 13), ruling that the French court had no jurisdiction since the defendant was domiciled in Austria and because there was no way damage to Pinckney could have occurred in France given that the CDs were marketed in the UK.

C.????? Pinckney¡¯s Appeal and the French Court¡¯s Request for a Ruling on Article 5(3)

Pinckney brought ?(para 14) against the Toulouse judgment, relying on Article 5(3) of the which states that:

¡°A person domiciled in a Member State may, in another Member state, be sued:
(3) In matters relating to tort*, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur.¡±

In light of Pinckney¡¯s appeal, the French court of cassation decided to stay its proceedings and for a preliminary ruling on the correct interpretation of 5(3).

D.????? Court of Justice¡¯s Ruling: Reiterated Melzer, Applied eDate and Wintersteiger

The Court of Justice by restating the interpretation of Article 5(3) it outlined in (Melzer), (eDate) and (Wintersteiger).

In Melzer, the Court of Justice established that Article 5(3) should be interpreted to mean that a defendant may be sued in the place where the damage occurred (locus damni) and, if different, where the action or inaction leading to that damage occurred (locus delicti commissi).? The Court of Justice conceded however that one limitation of Melzer was that it did not cover the possibility of suing an alleged perpetrator of the alleged damage before the court seised on the basis that it is the place of the event giving rise to the damage.

In this case, it was common ground that the allegedly infringing action did not take place within France. ?The question at hand was whether or not the court had jurisdiction, given that it was the location where the alleged damage occurred.?

In eDate and Wintersteiger, the Court of Justice developed three principles for the interpretation of Article 5(3) when applied to allegations of infringement committed via the internet.? These were:

(1)?? That the place where the alleged damage occurred within the meaning of that provision may vary according to the nature of the right allegedly infringed (, paras 21 to 24);

(2)?? That the likelihood of the damage occurring in a particular Member State is subject to the requirement that the right in respect of which infringement is alleged is protected in that Member State (?at para 25); and

(3)?? In order to attribute jurisdiction to a court to hear an allegation of infringement in matters of tort, the identification of the place where the alleged damage occurred also depends on which court is in the best position to determine whether the alleged infringement is well founded ( at para 48 and at para 27).

To identify the place where damage caused by actions on the internet occurred, the Court of Justice applied these principles. ?Consequently it distinguished between the infringement of personality rights and the infringement of intellectual and industrial property rights.

The Court then reiterated that victims of personality right infringement (protected in all EU Member States) may bring his or her action in the court of the Member State where the harmful event occurred. ?Moreover, if the offending work has been placed online he or she may bring an action in the territory of any Member State where the action is accessible. However, those courts only have jurisdiction with respect to the damages caused in the territory of the court seised (?at?para 52).

The Court of Justice further specified that the allegation of an infringement of an intellectual and industrial property right (which is typically vests through registration) is limited to the territory of the Member State of registration and may only be brought before the court of that State. ?This is because the Court of Justice has deemed that these are the courts best placed to ascertain whether the right at issue has been infringed (Wintersteiger at paras 25 to 28).

Based on these principles, the Court of Justice ruled that,

In the event of alleged infringement of copyrights protected by the Member State of the court seised [in this case France], the latter has jurisdiction to hear an action to establish liability brought by the author of a work against a company established in another Member State [in this case Austria] and which has, in the latter State, reproduced that work on a material support [in this case by pressing CDs] which is subsequently sold by companies established in a third Member State [in this case the UK] through an internet site also accessible with the jurisdiction of the court seised [in this case France]. However that court has jurisdiction only to determine the damage caused in the Member State within which it is situated [in this case France].

In other words, the Court of Justice constructed a very narrow interpretation of article 5(3) to allow the Toulouse Court to hear Pinckney¡¯s suit against Mediatech while restricting its assessment of damages to those damages that would have occurred in France.

E.?????? An Unresolved Matter: Did Mediatech Actually Violate Copyright?

Of course, the question left hanging by the Court of Justice is whether or not a company in another Member State making CDs for a second Member State is in fact a violation of French copyright law.? This question will now be for the French courts to determine.

F. ? ? ??Significance?of this Decision??

This particular ruling would appear to only be of use to a copyright holder who (1) is seeking jurisdiction in his or her home state that is (2) an EU Member state which has (3) copyright protection and (4) has had his/her copyrights violated in another EU Member state (5) wherein the alleged violation involved the reproduction of the work "on a material support" (6) and was then sold by parties in another EU Member state (7) through an internet site (8) wherein that site was accessible from the author's home state.

The extremely narrow interpretation provided by the Court of Justice is understandable, given that ?in Europe,?like most places in the world, copyright vests without the requirement of formal registration (). ?A broad interpretation of article 5(3) fling national court doors open?to artists clamoring for damages against actors in other states on the broad grounds of the violation of personality rights.?However, given?the European Court of Justice's??in the Union, the Court of Justice was likely mindful of creating too wide of a doorway when crafting this decision.

As a small technical point, one could argue that the European Court of Justice relied too heavily on a trademarks case (Wintersteiger) in crafting its decision with respect to copyright. ?In so doing, it could be argued that the Court of Justice misapplied a set of principles originally crafted for a formality-based regime to a formality-free question. ?However, in light of the broader policy concerns outlined above, it is not likely that this would compel any future proceeding before the Court of Justice.

This decision then is a somewhat uninteresting legal end to an otherwise exciting news story.?Still, for non-European practitioners, this decision provides some insight into copyright protection in the European Union.

Beatrice Sze is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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(CBP) said the month-long operation was the biggest bilateral customs enforcement effort ever conducted by the United States. It focused on seizures of goods in ports as they were exported from?China?or imported into the United States.

The operation fulfilled a commitment between CBP and the (GACC) to produce tangible Intellectual Property Rights (IPR) enforcement results by the Fifth (S&ED). At the S&ED last month, CBP and GACC committed to further cooperation on IPR enforcement, including additional joint operations.

A Global Problem

China is the primary source of counterfeit and pirated goods in the United States and accounts for .?Theft of intellectual property rights is estimated to cost U.S. businesses , equivalent to the annual value of U.S. exports to Asia.

The two countries agreed in recent high-level talks that they would work together to try to stem the large quantities of counterfeit goods flowing between China and the United States.?Although the operation resulted in only?, U.S. officials said they see it as a sign that the Beijing government is finally acting on their complaints of Chinese theft of intellectual property.

¡°The theft of intellectual property is a global problem and cross-border efforts are needed to fight it. CBP looks forward to a continued partnership with the People¡¯s Republic of China General Administration of Customs in confronting this critical trade issue,¡± said CBP Acting Commissioner . ¡°Robust enforcement of intellectual property rights allows innovators and creators ¨C whether in a small start-up or an international corporation ¨C to profit from their efforts, and gives consumers confidence in the products they buy."

A Bilateral Solution

China's Vice Minister of the General Administration of China Customs, , said both countries need to work together to effectively curb the movement of counterfeit products.

"IPR infringement is a global issue involving not only the process of production and export, but also that of import and circulation," he said. "Enforcement agencies around the world should work more closely to crack down (on) these illegal activities."

The operation spanned locations in both countries. The main U.S. ports involved were Anchorage, Cincinnati, Los Angeles and Newark. Meanwhile, Beijing, Guangzhou, Shanghai and Shenzhen were the primary ports in China under the scope of the operation.

"The fight against criminal counterfeiters overseas presents a great deal of challenges to U.S. law enforcement," said , deputy director of Immigration and Customs Enforcement. "But it is a fight we are committed to, and through the international partnerships we forge with foreign customs and law enforcement agencies, we are making an impact."

The Signs of a Growing Regime

As has , with a reputation for producing counterfeits and knockoffs, Canadians have rarely looked to China for leadership in innovation and invention. Nevertheless, as an ever-growing giant on the world¡¯s economic stage, China has been taking steps to remedy this deficiency.

In 2011, the People¡¯s Republic of China (PRC) (SIPO) published its?National Patent Develop Strategy (2011-2020)?(), a document containing tactics to significantly increase the nation¡¯s patent production. The Strategy aims to reach 2 million patent filings per year by 2015 and to double both domestic and overseas applications. ?The Strategy outlined approaches to achieve this; one such suggestion was to increase patent examination and approval efficiency by cutting down wait times to as little as 3 months, doubling the number of patent examiners to over 9000, enhancing the benefits of utilizing patents, and protecting the rights of patent holders by improving patent law and regulations.

China's intellectual property system is relatively young compared to other developed countries (its first intellectual property law only coming into force in 1985). ?During the 1990s, the country's system was heavily influenced by the German approach to intellectual property protection. ?This recent bilateral operation is particularly interesting because it suggests that SIPO may begin taking cues from the USPTO as it continues to implement its ten-year strategy.

In light of?, it will be interesting to see how the next administrator will direct the relationship between the U.S. and China and how that relationship will affect the development of China's intellectual property regime.

Beatrice Sze is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School. In the fall of 2013 she will be spending a semester at Hong Kong University studying the intellectual property and commercial laws of China.

The post When Eagles & Dragons Hunt Pirates: US and China Join Forces to Crack Down on Counterfeiting appeared first on IPOsgoode.

What is a Reverse Payment Agreement (RPA)?

As has , an RPA is a settlement agreement that has come to be known as a ¡°pay-for-delay deal¡±.? In such an agreement, a patent holder pays the allegedly infringing generic drug company to delay entering the market until a particular date, thus delaying litigation on the patent. The payment is ¡°reverse¡± because the money flows in the opposite direction from a typical exchange between licensee and patent holder.

In some ways, RPAs make economic sense for all companies involved. "Brand-names" can maintain market exclusivity, while "Generics" potentially generate more revenue than if they had released the product into the market.? Consumers, however, are arguably short-changed because the prices of pharmaceuticals remain high as a result of this delayed competition.

The AndroGel ¡°Reverse Payment¡±

In 2000, Solvay¡¯s patent for a formulation of testosterone - AndroGel - was approved.? In 2003, Watson and Paddock filed their intent to manufacture generic versions of AndroGel with the FDA, alleging that Solvay¡¯s patent was invalid.? In response, Solvay sued for patent infringement.? . The settlement involved a payment from Solvay to Watson of $19-30 million annually until 2015.? During that time, Watson would not sell its version (unless another generic entered the market) and would assist Solvay in marketing AndroGel to urologists.

The FTC Argument: RPAs Illegally Allow "Brand-Name" Manufacturers to Extend Patent Monopolies

The FTC argued that these agreements had little actual value to Solvay, and that the real purpose of the settlement was to protect Solvay¡¯s patent from being challenged and delay generic entry into the market. As a result, the FTC believed that Solvay had unlawfully extended its monopoly on AndroGel through payments to its competitors.? This sort of agreement is a prima facie violation of US antitrust laws, because the agreement between Solvay and the generic manufacturers resembled a horizontal agreement to suppress competition and extend a monopoly.? Thus, the FTC argued that settlements involving RPAs should be made presumptively illegal.

The "Brand-Name" Response: A Valid Patent Should Immunize RPAs from Antitrust Scrutiny

In response, the pharmaceutical companies argued that the existence of a valid patent should immunize settlements involving RPAs from antitrust scrutiny.? Since the settlement agreement allowed Watson to enter the market 65 months?before?Solvay¡¯s patent ended, and since patents are legitimate exercises of market exclusivity, the "Brand-names" argued that RPAs are a legitimate exercise of their patent rights and there should be no concern about abuse of monopoly power.

They further argued that unless the companies took action outside the ¡°scope of the patent¡± (for example, by extending market exclusivity past the patent expiration date or expanding the scope of the exclusivity beyond the patent claims), the fact that Solvay held a valid patent should allow it to choose to exclude others from the marketplace at its discretion, including by settling cases with potential competitors using RPAs.

The Supreme Court¡¯s Decision in FTC v Actavis: The FTC Has the Right to Prove Antitrust Claim

, Justice Stephen Breyer held that a broad allowance of all RPAs under a registered patent was an improper outcome given that the patent itself may be invalid.? At the same time, Justice Breyer did not find RPAs to be so unjustifiable that they should be evaluated under the ¡°presumptively illegal¡± framework proposed by the FTC.? Instead, Breyer J struck a balance and held that the FTC has the right to be given an opportunity to ¡°prove its antitrust claim.¡±

The Dissent

In a dissenting opinion, Chief Justice John Roberts supported the "Brand-name" position.? He argued that so long as the parties held a valid patent, the patent itself?gave the owner the right to choose who could use their property. ?This right includes the use of reverse payments to settle litigation.? While Chief Justice Roberts acknowledged that antitrust laws are intended to encourage competition, he?worried that the majority opinion would discourage settlements in patent litigation.? He wondered whether the costs of protracted litigation would lead fewer "Generics" to challenge "Brand-name" patents in the first place.

The Impact of the Decision

While the majority decision seems to strike a balance between two extreme positions, one wonders if SCOTUS has not opened a new can of worms with this decision. By allowing the FTC to make an antitrust case against RPAs, courts are now faced with the difficult task of deciding which agreements are anti-competitive. Justice Breyer does provide some guidance on this assessment by stating that the anti-competitive nature of an RPA would be based on ¡°its size, its scale in relation to the payor¡¯s anticipated future litigation costs, its independence from other services for which it might represent payment, and the lack of any other convincing justification.¡± He also warned against ¡°large and unjustified¡± RPAs. It is worth noting, however, that the merits of the patent were not part of Breyer¡¯s consideration.

Only time will tell if this decision will prevent truly anti-competitive practices or if it will prevent legitimate agreements that would have allowed innovators of beneficial drugs to recoup their costs.

The post Splitting the Difference Between Antitrust and Intellectual Property: FTC v Actavis appeared first on IPOsgoode.

is YouTube¡¯s system that automatically detects uploaded videos that infringe copyright.? It works by creating an ID File for copyright protected?audio and video material and stores it in a database. When a video is uploaded, it is checked against the database and flags the video as a copyright violation if a match is found.? When this occurs, the content owner has the choice of (1) blocking the video (making it inaccessible), (2) tracking the video¡¯s viewing statistics or (3) adding advertisements to the video.

According to YouTube, Content ID is ¡°very accurate in finding uploads that look similar to reference files that are of sufficient length and quality to generate an effective ID File.¡± In its early days, however, the automated removal system drew criticism because (1) the algorithm did not account for fair use provisions and (2) there was no appeal process.? Currently, if a YouTube user disagrees with a decision by Content ID, it is possible to .

What are LPs?

¡°Let¡¯s Play¡± ("LP") videos generally provide reviews and commentary of video games. Early LPs, known as ¡°Screenshot LPs,¡± consisted of audio comments voiced-over still screenshots of games while they were being played. More recently, LPs have evolved to include full video captures of the game during the narrator¡¯s play (known as ¡°play-throughs¡±). Scott¡¯s LP of Nintendo¡¯s ¡°,¡± for example, features 14+ hours of play-through footage accompanied by good-humored commentary and critiques of the game¡¯s flow and ¡°playability.¡±

Many producers of these video reviews (or ¡°LPers¡±) make money off the advertisements on their LP channels. Zack Scott¡¯s reviews, for example, have received millions of views to date and his LP channel, , has over 200,000 subscribers. ?A conservative estimate (assuming his ad rate is at the of the YouTube monetization spectrum - $1.50 per 1,000 views) puts his earnings at about $200,000 to date.?While this may seem like loose change compared to Nintendo¡¯s , the volume of copyright material that Mr. Scott has used, combined with his channel¡¯s large audience, has attracted the attention of Nintendo¡¯s market researchers.

Copyright Analysis: Does the Use of Play-Through Footage Fall Under an Exception to Infringement?

While game developers and publishers have the right to control the use and distribution of the media in their games, LPers, like Zack Scott, have argued that the use of video footage in critical reviews should be considered fair use (the rough US equivalent to Canada's ) since LPs provide critical review. In a public posted to his Facebook page, Zack Scott supported his position with the following:

"Video games aren¡¯t like movies or TV. Each play-through is a unique audiovisual experience. When I see a film that someone else is also watching, I don¡¯t need to see it again. When I see a game that someone else is playing, I want to play that game for myself!"

While this might seem like a sensible argument to those in the gaming community, Mr. Scott should be aware that, in Canada at least, he is more likely to succeed by structuring his argument using the two part analysis set out in paras 49 to 50 of .

First, Scott could point out that he used the play-through footage for the purpose of criticism and review which does not constitute infringement under . Moreover, given that he attributes the footage to Nintendo in each LP, he is protected under s 29.1 (a) of the Act.

Second, Scott would have to argue that his dealing with the protected footage was "fair" by showing that his use of play-through footage fits the six criteria set out in paragraphs 54 to 59 .

(1) Purpose of the dealing: His role as an LPer, one could argue, is to ¡°research and review¡± games for the gaming community. Thus, objectively speaking, he must be able to use some of the copyrighted works to illustrate his critique.

(2) Character of the dealing: While his use of the protected work is widely distributed (a factor that weighs against fair dealing), the fact that it is the custom of most LPers to include some play-through footage in their reviews could swing this factor back in favor of fair dealing.

(3) Amount of the dealing: While Scott does have over 14 hours of Nintendo play-through footage on his channel, he could argue that this is actually a small fraction of the total time taken to play through games like Luigi¡¯s Mansion, weighing once again in favor of fair dealing.

(4) Alternatives to the dealing: Nintendo could point out that the existence of ¡°Screenshot LPs¡± amounts to a reasonable alternative to ¡°Video LPs¡± and weighs against fair dealing. Scott could counter this by arguing that the LP market had become crowded with LPers who use play-through footage. This resulted in a lack of alternative to his dealing.

(5) Nature of the Work: While Scott did not have permission from Nintendo to use the play-through footage in his LP, the game had certainly been ¡°published¡± as it was available for purchase by the public. This would weigh in favour of fair dealing.

(6) Effect of the dealing on the Work: It is not clear what effect LPs have on the market value of the game under review. ?Just how much influence do LPers have on sales??? would argue that LPs actually add market value to featured games because they encourage other gamers to buy them. Meanwhile, argue that LPs decrease market value of the games since passive gamers can simply watch LPers complete the game online. Without more detailed market analysis, however, .

Nintendo could just as easily argue that Scott¡¯s use of play-through footage is not fair dealing (arguments attacking factors 2, 4, 5, and 6 in particular come to mind). It is worth noting, however, that after Scott's public complaint, Nintendo lifted the blocks on his LPs and chose instead to append its own ads to the videos.

Cost-Benefit Analysis of Nintendo¡¯s LP Crackdown

Legal musings aside, the real issue is whether the LP ad revenues appropriated by Nintendo is worth the loss that could result from LPers who stop reviewing the company's products. ?In his public , Zack Scott stated:

¡°I'm a Nintendo fan. I waited in the cold overnight to get a Wii. I'm a 3DS ambassador. I got a Wii U at midnight when I already had one in the mail. I've been a Nintendo fan since the NES, and I've owned all of their systems.

¡­ I love Nintendo.... But until their [ContentID] claims are straightened out, I won't be [reviewing] their games [on my LP channel]. I won't because it jeopardizes my channel's copyright standing and the livelihood of all LPers.¡±

Given Nintendo¡¯s recent?, one would not fault the company for attempting to herd consumers towards more tightly controlled promotional channels in an effort to maintain control of its brand. However only time will tell whether this move actually results in a further dip in sales due to the loss of exposure through LPers. ?Were there gold coins in those brick blocks known as LPs? ?Nintendo seems to think not. ??

Beatrice Sze is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Mamma Mia: Nintendo Flexes Copyright Against YouTube Video Game Reviewers appeared first on IPOsgoode.

What is Megaupload?

Megaupload Limited is an online Hong Kong-based company established in 2005 by German-born Internet entrepreneur Kim Dotcom (born Kim Schmitz).? Before the??of its assets by the US Department of Justice (DOJ) a year ago, Megaupload was known as the internet¡¯s most popular cyberlocker service. It boasted over 50 million daily visitors and accounted for 4% of all internet traffic in 2011.

What is a ¡°Cyberlocker¡±?

A ¡°cyberlocker¡± is a private data storage provider. It generally describes web services that allow internet users to upload one or more files onto the host¡¯s server free of charge. Like most cyberlockers, Megaupload.com reproduces the file on at least one server it controls and provides the uploading user a unique URL for distribution.? Those who access the file via this URL can then download it.

The Issue: Service Provider or Pirate King?

This is all rather innocuous if users are only uploading their own content, however, the? question is whether or not Megupload has any criminal liability when its service is used for the illegal distribution of copyright protected materials.? According to the MPAA, the illegal sharing of copyright protected material through the Megaupload service costs Hollywood studios over $500 million per year.

The Take Down, the Hacktivist Response, and the Fight for Dotcom's Extradition

As was reported on?, on January 19, 2012 the New Zealand Police, acting upon a request from the FBI, arrested Dotcom and three other Megaupload executives in a leased $30 million mansion in Coatesville, NZ.? Over $17M of Dotcom¡¯s assets were seized including sports cars and art work in the raid.

Within twenty-four hours of the police action, the hacktivist group Anonymous??by taking down the US Department of Justice, RIAA, MPAA, and Universal Music sites.

On March 5, 2012, a formal request for the??to the United States of Kim Dotcom and three other senior Megaupload staff was filed in a New Zealand court but the decision was??by the New Zealand courts until March 2013.

The DOJ¡¯s Indictment

The??alleged that Megaupload differed from other online?file storage businesses because it engaged in criminal copyright infringement.

The indictment provided a number of instances that allegedly showed criminal behaviour on the part of Megaupload¡¯s executives and also pointed to certain aspects of Megaupload's?design as evidence of?criminal intent.? Some of these are listed below.

1. In practice, the "vast majority" of Megaupload users do not have any significant long term private storage capability. Continued storage is dependent upon regular downloads of the file occurring. Files that are infrequently accessed are rapidly removed in most cases, whereas popular downloaded files are retained.? Because access to copyright protected material is popular among Megaupload users, the DOJ argues that this business model actively encourages copyright infringement. (items 7?¨C 8 )
2. An incentive program was adopted encouraging the upload of "popular" files in return for payments to successful uploaders. (item 69)
3. A comprehensive takedown method was used by Megaupload to identify?child pornography, but was not deployed to remove copyright infringing content. (item 24)
4. Users found to have been infringing copyright did not have their accounts terminated, and the defendants "made no significant effort to identify users who were using the Mega Sites or services to infringe copyrights, to prevent the uploading of infringing copies of copyrighted materials, or to identify infringing copies of copyrighted works" (item 55¨C56)

Dotcom¡¯s Defense: ¡°I am but an online service provider.¡±

Dotcom??that his company¡¯s service operates within the bounds of the ?(DMCA) and?points to the fact that all users, including members of the MPAA, have the ability to directly delete links to any infringing material. Additionally, Dotcom maintains that Megaupload cannot police the activity of its users because of the (ECPA).

Moreover, Dotcom argues that the number of illegal files stored on Megaupload is small compared to the number of legitimate files stored on its servers.? ¡°We are a relatively small company,¡± says Dotcom, ¡°It is simply not possible for us to monitor the activities of all our users at all times... Never mind the fact that to do so would be in violation of the ECPA.¡±

Dotcom describes his service as no different from Youtube, Google Drive, or Dropbox.

Safe Harbor Provisions: Not An Impenetrable Shield

The US??provides?safe harbour for sites that promptly take down infringing content. The problem for Dotcom is that safe harbour does not exist if it can be shown that the company had?actual knowledge?of infringement and did nothing about it.

Moreover, the indictment argues that by simply removing links to infringing material and not the actual files themselves, Megaupload was circumventing the spirit of the DMCA and was in fact, not in compliance.

Crim Pro Drama: Do US Criminal Laws Apply to Companies that Have No US Presence?

In July 2012, Megaupload? Virginia Judge Justice Liam O¡¯Grady to dismiss the indictment because (in its view) the federal rules of criminal procedure provide no way to serve notice on corporations that do not have a U.S. address.? While O¡¯Grady J. dryly mused that it was not likely the intent of Congress to allow foreign corporations to ¡°be able to violate our laws indiscriminately from an island in the South Pacific,¡± he acknowledged this difficulty in the DOJ¡¯s case.

For its part, the US government suggested that it could sidestep the mailing requirement in a few ways.? For example, it argues, it could wait for Dotcom (Megaupload¡¯s representative) to be extradited to the US and then mail notice to his address in prison.? This argument was accepted by Justice O¡¯Grady, however it may not bear fruit given recent complications in Dotcom¡¯s extradition proceedings.

In August, 2012, the New Zealand High Court that the US government must show the evidence it has against Kim Dotcom and his co-executives prior to their extradition hearings in March.? High Court judge, Justice Helen Winklemann, said that any country seeking an extradition ¡°ha[s] an obligation of candor.¡±? This requires the country in question to disclose to the court any that could affect the decision of whether the threshold for extradition had been met.

The US government also mentioned the possibility of using the provisions of a Mutual Legal Assistance Treaty to send notice to Megaupload¡¯s Hong Kong address.? But Justice O¡¯Grady seemed skeptical of these arguments, noting the ¡°plain language¡± of the law required sending notice to the company¡¯s address in the United States.

Meanwhile the DOJ states that even if the indictment of Megaupload is dismissed, it can continue its indefinite freeze on the company¡¯s assets while it awaits the extradition of Dotcom and his associates.? For those who promote a free and unrestricted internet, this move has been roundly criticized as an of power by US judiciary. For those seeking damages from Megaupload¡¯s actions, this move is but the first step in what they hope to be a of aggressive prosecutions of copyright violators.

Wiretapping by the Kiwis?

Then in September of last year, the announced that an investigation had been launched into allegations that a kiwi government intelligence service, the Government Communications Security Bureau (GCSB) had illegally intercepted the communications of Dotcom and others targeted in the case. These wiretappings, apparently led to the of Dotcom¡¯s mansion and the arrest of the CEO and his senior management team.

By law, the GCSB is not allowed to intercept communications involving New Zealand citizens and residents. In limited circumstances, it may obtain warrants to intercept foreign communications outside of its authority, but this requires the minister to sign off on such warrants before conducting the surveillance. Key said he was not asked to approve warrants in this case, nor was he briefed on the GCSB operation beforehand.

Allegations of "Entrapment by Ninja"

This controversy involves Megaupload¡¯s compliance with a targeting who were running their own file-sharing service using Megaupload¡¯s infrastructure.? A year and a half before its own indictment, Megaupload complied with the warrant and turned over a database on the 39 pirated movies detailed in the warrant that linked the files to the file-sharing service NinjaVideo.? NinjaVideo was later indicted and its leader was sentenced to 22 months in prison for .

Despite Megaupload¡¯s cooperation, the 39 infringing NinjaVideo files were used as evidence to seize Megaupload.com domains and prosecute Dotcom and others connected to the site. Because Megaupload did not delete the 39 movie files from its servers, the government was able to argue that the company knew full well that its service was being used for piracy.

According to , although the FBI had already begun its own investigation of Megaupload as a potential copyright criminal, that information was not disclosed to Megaupload. In this case the government treated the company as NinjaVideo¡¯s internet service provider and asked it to keep the NinjaVideo warrant quiet. Megaupload claims it did not remove the files because they were asked to maintain the secrecy of the investigation, and removing the files may have alerted NinjaVideo that they were under investigation.

The US government allegations of entrapment.

Then Will.I.Am Records a Song

Then, in December 2011?a was released showing artists including Will.I.Am, P.Diddy, Allicia Keys, Kanye West and , endorsing Megaupload. Within a week of its release, the video was removed from Youtube by Universal Music.

In response, Megaupload published the appearance consent and release agreements signed by the stars and??Universal, claiming the label had sabotaged its viral advertising campaign.

(Are you still with us?)

So to Summarize...

We have a larger than life millionaire head of a Hong Kong based company, living in New Zealand, whose mansion was raided in an epic move to apply a US criminal charge to a company that has no legal presence in the United States.

We have a beleaguered New Zealand Prime Minister leading the charge in an investigation into his own government for the overzealous (and potentially criminal) surveillance of one of its most eccentric residents.

We have a gaggle of rogue celebrities who have thrown their personal support behind a company that the largest trade organizations in their industries are foaming at the mouth to put behind bars.

And then we have the millions of users who are now wondering now in the hands of the US government.

Really, Wagner couldn¡¯t have written a more epic operatic saga.

Mega Rises Again (And With It, An Old Debate)

Whether or not this case will?, one thing is clear: the? of??has shone?a bright light back on the liability of service providers for the actions of its users.

On the one hand, copyright owners are certainly entitled redress for the blatant and wanton theft of their?work --otherwise what is the point of having copyright laws? ?I think many would agree that one does not have a "right" to watch a movie six months before its release in the same way one has a "right" to life, liberty, and the pursuit of happiness.

On the other hand, how reasonable is it for the US government to demand extradition of a foreign person and company to answer to criminal charges within its borders?? More to the point, how reasonable is it for us to demand that service providers be wholly responsible for the activities of its users, particularly when these businesses have reached the scale and magnitude attained by Megaupload? ?To what extent should copyright law be allowed to reign in online innovation?

And what duty do these service providers have in protecting the privacy of its users?? What duty does the US government have for that matter?? Should the US government be allowed to go after individual users from all over the globe now that it has possession of Megaupload¡¯s files?

These questions and many more are likely to be hot topics of debate in the coming weeks. ?Tune in for more coverage from the IPilogue editorial team as this drama unfolds (and have your popcorn ready).

Beatrice Sze is a JD Candidate at Osgoode Hall Law School

The post Mega Rises Again appeared first on IPOsgoode.

Is there a Material Difference Between a Gene that Has Been Isolated from a Human and One that Has Not?

As previously covered by the IPilogue (,?, and?), at?issue is a pair of genes known as BRCA1 and BRCA2.? Mutations in these genes have been positively correlated with an increased risk in the development of breast and ovarian cancer in women.? The University of Utah owned the patent rights to both (1) the method of analyzing and comparing the isolated DNA sequences in order to detect mutation in the BRCA genes and (2) the composition of matter that included the genes themselves.? Myriad Genetics was the exclusive licensee of these patents and was responsible for chemically isolating that genetic sequence.? The bulk of the method patents were by the Federal Circuit Court and that decision is now final given the USSC¡¯s refusal to revisit the issue.

Instead, the Court will focus on the main point of disagreement in . In that ruling, the 2-1 majority (which consisted of Judges Lourie and Moore) upheld their that isolated DNA molecules are indeed patentable subject matter. It is a of American patent law that substances found in nature are not patentable; however the USSC¡¯s decision in ?also established that a product of nature that is ¡°markedly different from naturally occurring ones¡± with a ¡°distinctive name, character and use¡± may be patentable as it is a ¡°non-naturally occurring composition of matter¡±. ?Because the native BRCA genes are chemically bonded to other genes and histone proteins, the majority concluded that breaking those bonds to isolate the BRCA genes turned the isolated genes into materials that are markedly different from the naturally occurring genes in humans and thus eligible for patent protection.

Judge Bryson dissented with the majority on this point stating: ¡°There is no magic to a chemical bond that requires us to recognize a new product when a chemical bond is created or broken, but not when other atomic or molecular forces are altered¡±? (at 7 of Bryson¡¯s ruling). Judge Bryson then goes on to compare the isolation of human genes with the extraction of newly discovered minerals from the earth¡¯s crust.

¡°In this respect, the genes are analogous to the 'new minerals discovered in the earth' or the 'new plant found in the wild' that the SC referred to in Chakrabarty.? It may be very difficult to extract the newly found mineral or to find, extract, and propagate the newly discovered plant.? But that does not make those naturally occurring items the products of invention.¡±

Like some minerals, Bryson J argues, genes are hard to extract from their natural setting.? Also like minerals, genes can be used for purposes that would be infeasible if they remained in their natural setting.? Furthermore, the process of extracting minerals or the picking of plants, like the process of isolating genetic material, can result in some physical or chemical changes to the natural substance.? But such changes do not make extracted minerals or plant pickings patentable. Thus they should not have that effect for isolated genes.? In each case, merely isolating products of nature by extracting them from their natural location and making alterations attendant to the extraction process does not give the extractor the right to patent the products themselves.

Looks Like It¡¯s Going to Be An Interesting Summer For The American Genetic Industry

It is expected that the Supreme Court will hand down its ruling in June of 2013. By granting this appeal, the Supreme Court may finally settle the central point of dispute in a series of lengthy rulings that have wound through the Federal Circuit since . Whichever way the USSC rules, it seems the summer of 2013 will be an interesting one for the American Genetic Industry.

Beatrice Sze is a JD Candidate at Osgoode Hall Law School.

The post Staying Abreast of an Isolating Issue: USSC to Rule on Patentability of Human Genes appeared first on IPOsgoode.

Three issues were argued before Justice Koh: (1) whether the damages awarded by the jury were appropriate; (2) whether additional Samsung products should be added to the injunction order; and (3) whether the jury decision should be thrown out because of alleged misconduct from the jury foreman.

Damages: Willful Infringement v Reverse-Engineering

On the first issue, Apple is seeking to add another $770 million to the damage award based on the jury¡¯s finding of willful infringement in August. ¡°Hopefully after an injunction they will be deterred from getting this close to the line and we will not be back in front of you in the future,¡± Apple attorney Michael Jacobs told Judge Koh.? Samsung wishes to have the damages re-examined by Justice Koh given a number of calculations it found to be anomalous. ¡°You should reverse-engineer (the damages), make sure jury verdict is causally related to the evidence based on legal theory,¡± Samsung lawyer Kathleen Sullivan submitted.

Injunction: An Interesting Legal Question

On the second issue, Apple is seeking to have 26 additional Samsung products added to the original injunction ordered in August.? Apple is?arguing that?the?additional products?are not more than "colourably different" from the ones already banned. Samsung of course opposes this. ?Although only three of Samsung's products at issue in the original verdict ?are still on the market, a sweeping ban such as the one argued by Apple would substantially hurt the Korean company¡¯s image with retailers and leave open the possibility of a ban on many more of its devices that are not more than "colourably different" from?Apple's patents.

This raises?a couple of interesting legal questions: if Justice Koh accepts Apple's argument, could it mean that innovators could go after products that have been?"designed around" existing patents if they are not colourably different? ?Moreover, if a product only infringes one out of ?thousands of possible features on a device, should a court ban the entire product? Justice Koh may set an interesting legal precedent with her answer to these questions.

Re-Trial: Jury Misconduct

On the third issue, Samsung is seeking to have the original verdict thrown out and a new trial granted, arguing by jury foreman, Velvin Hogan. Hogan had failed to disclose that he was once sued by his former employer, Seagate, which has a strategic relationship with Samsung. Apple maintains that Samsung should have raised this issue at the voir dire for jury selection. Samsung responded that it did not know of Hogan¡¯s previous law suit at that time.

Justice Koh stated that she would issue separate rulings based on subject matter in the coming weeks.

Why this Matters to Canadians

Thus far, the Canadian market has been left largely untouched by Apple¡¯s legal strategy.? However, on August 7, 2012, the Canadian Intellectual Property Office issued Apple Inc. the of its infamous ¡°bounce-back¡± patent, patent no (¡°¡®381¡±). With this foothold in the Canadian patent system, Canadian companies and taxpayers may be the next to get dragged into this global dogfight.

Like its American cousin, Canadian patent no (¡°¡¯177¡±) teaches a method for ¡°intuitively¡± communicating to a touch-screen user that he or she has scrolled to the edge of an electronic document.? It allows a user to ¡°pull past¡± the edge of a document when he or she has reached its end, then snaps the displayed content back to the edge of the display area when the user releases the screen.? The specifications between these two patents are nearly identical and the first independent claims are very, very similar.?

As a commercial tool, the ¡°bounce-back¡± patent has been used in many of Apple¡¯s legal and commercial maneuvers to keep its competitors out of touchscreen markets.? For example, just this past year:

1. The ¡®381 patent was the only utility patent asserted by Apple against Samsung in its recent infringement against Samsung in California;
2. The ¡®381 patent was one of five patents Apple asserted against HTC in a to the United States International Trade Commission of tariff violations; and
3. The Australian version of the ¡®381 patent (, "'283") is currently one of the patents Apple is asserting in for a preliminary injunction against Samsung's Galaxy Tab 10.1 in that country.

According to the CIPO patent database, Apple Inc. has been since August ¨C bringing the total number of active Canadian patents owned by Apple to . While there is no guarantee that Apple will bring the next battle to Canada, with due for release and the Canadian government¡¯s recent to encourage home-grown entrepreneurship, one wonders if the Canadian market and patent office are prepared should Apple begin flexing its exclusive rights this side of the border.

For companies looking to defend themselves from possible infringement suits, it may be helpful to follow the being conducted by the USPTO on the ¡®381 patent to determine if a similar re-examination request can be filed with the Canadian patent office against the ¡®177.? For those representing Apple¡¯s interest in Canada, it may be worth considering how the absence of file-wrapper estoppel and jury trials in Canada would affect a Canadian strategy against potential infringers. For lawmakers and benchers, it may be worth considering, more broadly, whether for computer-based patents outlined in the really provide sufficient disclosure of claimed subject-matter to qualify as the patentee¡¯s ¡°quid¡± for the state¡¯s ¡°quo¡± of an exclusive monopoly as in the recent SCC decision in .

Prospect for Peace? All Eyes on San Jose

As Justice Koh urges both tech giants to work towards a settlement, one thing is clear: all eyes will be on San Jose in the coming weeks. ?The legal community will be waiting to see how Justice Koh rules on the above legal questions just as the business community will be watching to see whether or not Apple and Samsung do in fact make peace. According to statements made by ?just after the hearing-- the ball is in Apple's court.

Beatrice Sze is a JD Candidate at Osgoode Hall Law School

The post "It's Time for Global Peace": US Judge Urges Peace Between Samsung and Apple appeared first on IPOsgoode.

,?,??a??for stakeholder engagement along with his strategy and goals for what he called the ¡°new season¡± of ICANN. ?Officials?,??and??were also on hand to welcome delegates both to the conference and Toronto.

What is ICANN?

Very simply, the Internet Corporation for Assigned Names and Numbers () is part of an ¡°ecosystem¡± of organizations that collectively work to provide governance to the Internet.

Like the??itself, this ecosystem is decentralized and international.? No one person or organization governs the Internet.? Instead, governance is performed by a??network of interconnected groups which draw from civil society, the private sector, governments, academic and research communities, and national and international organizations. Other major organizations that are part of this ecosystem include?,?,?,?, the five?,?,?,?, and.

Together, these organizations aim to work cooperatively?within their respective roles to create shared policies and standards that maintain the Internet¡¯s global interoperability for .

Within this ecosystem, ICANN is responsible for coordinating the Internet's systems of unique identifiers and ¡°ensuring the systems¡¯ ¡±.? In this role, it contributes to global Internet Policies which are the shared principles, norms, rules, decision-making procedures and programmes that shape the evolution of the Internet.? It also influences global Internet Standards which enable the interoperability of systems on the Internet by defining?,?,?, and?.

Like many internet governance organizations, ICANN takes a community- and consensus-driven, multi-stakeholder approach to its??and seeks to maintain a broad representation of the global online community.

What is ICANN 45?

ICANN45 is the third of three ICANN meetings held in 2012.? ICANN has generally held three??each year since 1999.??Attendance is open to the public and free to all registrants.? The??of these meetings is to provide an opportunity for ¡°an internationally diverse group of individuals and organizations to come together and discuss and develop policies for the Internet¡¯s naming systems¡±.? Remote participation is also available and also free to the public.

Re-Cap of The ICANN 45?Welcome Ceremony

, chairman of the?,?was the first to welcome?attendees to Toronto.? In his opening remarks he praised Canada¡¯s contribution to?the evolution of?global?.? He cited Canadian innovations such as (the world¡¯s first domestic satellite), (the Internet search engine), and the (the world's first public broadcaster to go online) as examples of Canadian contribution to global communication. ?Crocker also paid homage to University of Toronto¡¯s Dr. who coined the phrases ¡°¡± and ¡°¡± in the 1960s.? Two concepts, Crocker said, that continue to shape the way the online community about the Internet.

Crocker also provided an update on the activity of the board of directors, listing the renewal of the dot com registry in Prague and the passage of the budget as some recent milestones that were passed.

,??president and CEO,?was the second to welcome attendees to Toronto.? He briefly introduced ICANN President & CEO and highlighted the importance of the items on the agenda this week.

, president of the Canadian Treasury Board, was the last to welcome the members of ICANN to Toronto.? Speaking on behalf of the Canadian government, he gave a passionate endorsement of ICANN's multi-stakeholder model. ?He also outlined some of the steps the Canadian government has done to embrace online innovation in the public sector such as the government¡¯s?, a project that aims to make large amounts of government data available online, allowing citizens and researchers to analyze and combine data for various purposes.

Re-Cap of The President¡¯s Opening Session: A Bold New Vision

, current President & CEO of ICANN, then?took the stage?to run a one-hour working session on the objectives and goals for his three year term.? With the sudden , many in the online community have been to get a sense of the man who will be taking the helm of one of the web¡¯s largest policy and standards organizations.

In his opening remarks, Chehad¨¦ drew attention to?, the Pakastani schoolgirl who was??earlier this week presumably for her? promoting education for girls in Pakistan.

¡°I ask us all to keep her in our thoughts.? I, for sure, will offer my week, my successes, my failures, everything that happens this week, for her to be better and to get well.? But let¡¯s not forget that this is why we do this.? At the end of the day this is why we do this.¡±

Chehad¨¦ then got down to business, unveiling 4 objectives of the ICANN executive team, drawing attention to ICANN¡¯s?. He then outlined 16 specific goals the executive team has set to help achieve those objectives. ?The objectives and goals are as follows:

1. To continue to affirm the purpose of ICANN
   1. Deliver core Internet functions
   2. Act as steward of?public interest
   3. Engage in the Internet Governance ecosystem
   4. Deepen partnerships with Internet-organizations
2. To Continue to improve operations of ICANN
   1. Institutionalize management disciplines
   2. Embrace mature organization support functions
   3. Optimize R&R services
   4. Plan for scale, security, and continuity
3. To Continue to Internationalize ICANN
   1. Engage all stakeholders globally
   2. Communicate clearly & locally
   3. Integrate global/regional responsibility
   4. Evolve government relationships
4. To Continue To Model Evolution
1. Optimize policy develop process
2. Increase/ improve participation
3. Evolve supporting organization/advisory committee structures
4. Promote ethics & transparency

Release of MyICANN.org

Chehad¨¦ then unveiled , a new online tool designed to provide better access to the ICANN community and its operation systems. ?will be deployed in phases. The first phase will comprise mainly of the informational portal offering personal delivery of topical and timely information. Later phases will include the new community collaboration tools for working groups and operations systems, such as trouble tickets or compliance scorecards. The next beta will be released next year at ICANN 46 in Beijing.

Canadian Significance

In this seminal work, , Dr. McLuhan wrote that ¡°each medium, independent of the content it mediates, has its own intrinsic effects which are its unique message¡± (Understanding Media, NY, 1964, p8). ? Certainly ICANN, minder of the Internet's unique identifiers,?is no stranger to this concept. As has already been pointed out by on this blog, the introduction gTLDs as a medium is as as the content of the websites that will be using them.

So as the leaves turn red in Toronto, the online community will be? to see what this new season at ICANN will bring.

Beatrice Sze is a JD Candidate at Osgoode Hall Law School.

The post "It's a New Season at ICANN": Chehad¨¦ to Focus on Public Interest, Internationalization, and Operational Efficiency appeared first on IPOsgoode.