Michelle Mao is an incoming 2L JD student at Osgoode Hall Law school and an IPilogue Writer.

Litigation is almost always , whether because of the sheer amount of time needed to get a court date, the expensive costs for the client and law firm, or the risks associated with receiving an unfavorable judgement. So why do entitiesĚý (NPEs) act as the exception to the rule? Furthermore, how is litigation a viable option for them to make a profit when litigation seems burdensome for most other types of entities?Ěý

are a special type of entity that specifically purchases patents or patent rights but does not commodify the patent. There are typically academic institutions and private individuals/companies. The first kind, academic institutions, acquire patents to protect the research work of their faculty and researchers while licensing others to use the results of the research produced without commodifying the patent. The second kind, private parties, often use the patents they acquire for profit through damage or settlement awards, or royalties and licensing rights.

NPEs who acquire patents solely for profit (and not commercialization) are also called or ".” They from collecting royalties, licensing transfer patent rights, or resorting to court proceedings to enforce patent rights against infringers. They do not practice, develop, manufacture, or otherwise commercialize the patent. Furthermore, because they do not practice or develop their manufacture, they experience no risk of patent infringement litigation themselves.Ěý

From this description alone, it seems that an NPE’s core business model infringes on the where innovation is simultaneously protected and encouraged. So why are they still allowed to operate?

Despite the obvious tension between the business models of NPEs and IP law, NPEs can exist for the following two reasons. First, it is legal to profit from acquiring patents. Second, NPEs have a functional role in the corporate world— an inventory for .Ěý

Due to the ongoing problem of strategic patent litigation, technology companies have now begun to even at times utilizing the actions of NPEs to evaluate the strength or profitability of their patents should they choose to develop them. For example, a patent that is rejected by an NPE for purchase may implicitly tell companies that their patent is not strong or not seen to be in line with market trends. This, however, can still permanently shift and alter the values in which patents are developed. Previously, patents were developed due to a new technological innovation or to address a technological need. While profit was still a factor for developers when registering their patents, decisions around profitability were made by technology companies and experts. With the rising market influence of NPEs, the voices of technology companies and experts have diminished. Their unique market expertise and knowledge of consumer demand may be pushed aside in favour of “evaluations” by NPEs, based solely on their self-interested criteria of how profitable a patent is, based on their typical avenues of income: royalties, licensing, and litigation.Ěý

With huge technological strides being made in the tech sector in the present day, the conflict between NPE patent trolls and developers will become increasingly contentious. Moving forward, Canadian government authorities should consider becoming involved in balancing the tensions between NPE patent trolls and technological innovation. Public institutions have a direct interest in fostering technological development and innovation for the betterment of communities and the national economy. Currently, aggressive NPEs who increase the time and difficulty of obtaining a patent solely due to profit are a direct obstacle to that interest.Ěý

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Ericsson Inc. and Telefonaktiebolaget LM Ericsson ("Ericsson") against Apple Inc. ("Apple") in a federal court of the United States on October 4, 2021. Ericsson requests for a declaration that the license rate ($5 per handset or $2.5 per low priced handset) of its 5G patent meets the fair, reasonable, and non-discriminatory ("FRAND") commitment, together with an award of costs and legal fees.

The FRAND commitment is a voluntary agreement between the standard-setting organization and the holder of a standard-essential patent ("SEP"). ĚýSEP is as a patented invention that is essential to the use of an industry standard. Ericsson's 5G patent in this dispute is an example of SEP that can be used by anyone else as long as they pay a reasonable price for licensing. Meanwhile, Ericsson has committed itself to the European Telecommunications Standards Institute to grantlicenses on its SEPs on FRAND terms.

In the , Ericsson argues that Apple has strategically devalued SEPs and reduced royalty payments. Based on the announced by Apple in 2019, Ericsson alleges that Apple publicly requests patent owners to prove their patents are essential, infringed, valid, and enforceable under Apple's discretion. Ericsson also claims that Apple has artificially increased the transaction cost of licensing by requiring the option to examine, value, and license each essential patent, so that patent owners will be forced to agree on royalty rates lower than FRAND rates. Additionally, Apple has tactically asserted that the SEP owners should base their royalty rates on the smallest salable unit ("SSPPU"), which has been rejected in practice.

As one of the world's biggest manufacturers of smartphones, Apple has been frequently involved in negotiation and litigation regarding the patent licensing of cellular technology. Back in 2015, Apple sued Ericsson during a patent licensing negotiation, but in which Apple agreed to pay a portion of its iPhone revenue to Ericsson. In April 2019, to settle their litigation disputes with a payment from Apple to Qualcomm.

With a leading position in cellular technology, Ericsson is also an active player in the patent wars. In May 2021, and ended their disputes on 5G patent licensing under FRAND. Moreover, in , the U.S. Court of Appeals for the Fifth Circuit affirmed that Ericsson's 4G SEPs complied with its contractual commitment to FRAND terms. The court also confirmed that the FRAND commitment does not require a royalty rate based on the SSPPU.

Following the legal action against Apple, that the company had made a significant early investment in research and development, and the fair royalty rate from patent licensing was crucial to ensure its innovation investment and the continuous success of standardization. This statement echoes the , which is utilizing its patent portfolio in support of business objectives to safeguard and monetize research and development investment.

As a promising mobile network technology and standard, 5G brings . Global patent negotiations and litigations follow the growth and commercialization of 5G. For instance, and the Chinese smart device company Oppo have actively brought many legal claims against each other over 5G patents in different jurisdictions. Aside from disputes regarding cellular technology, that the patent litigation over 5G would cover other technologies such as the internet of things.

In terms of SEP enforcement, the European Union has taken the to create a fair and balanced framework for licencing SEPs, planned to take effect in the fourth quarter of 2022. In the United States, President Biden signed an this July, calling for consideration on whether the policy statement on remedies for SEPs needs revision. However, given the uncertainty surrounding FRAND policies in various jurisdictions, whether courts will favour SEP owners over license holders Ěýis unpredictable.

Litigation costs may cause Ericsson and Apple to follow their previous approach and settle their legal disputes by agreement. If not, Apple may have difficulty prevailing in its lawsuit because of the persuasive precedent set in the litigation between HTC and Ericsson. Meanwhile we may expect that 5G patent disputes among major competitors in this field will continue to increase worldwide.

Shuang Ren is a 3L J.D. Candidate at Osgoode Hall Law School, enrolled in Professor David Vaver’s 2021-2022 Intellectual Property Law & Technology Intensive Program. As part of the course requirements, students were asked to write a blog on a topic of their choice.

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Ashley Moniz is the Managing Editor of the IPilogue and the Assistant Director of IP Osgoode.

Ěý

On October 15, 2008, at the Four Seasons Hotel in Toronto, IP Osgoode was officially launched. Known as Osgoode Hall Law School’s Intellectual Property Law and Technology Program, Prof. Pina D’Agostino set out to create a program that would lead IP law discourse, foster a vibrant community whose members are welcome to share broad perspectives, and diversify the IP innovation ecosystem. Now, 13 years later, IP Osgoode and the IP Innovation Clinic are still forging new paths and relationships in the IP community.

Here are a few noteworthy accomplishments from the past year:

IP Osgoode

• Runners-Up at the Oxford IP Moot: in March 2021, for the first time. Under Prof. D’Agostino and Prof. David Vaver’s academic supervision and expert coaching from lawyers at Cassels Brock & Blackwell LLP and Deeth Williams Wall LLP, our team placed second after an incredible showing and very close competition, winning the Kirkland & Ellis Runner-Up Prize for Oral Proceedings in the process.
• Leading Legal Disruption Published: in May 2021, . The book, titled Leading Legal Disruption: Artificial Intelligence and a Toolkit for Lawyers and the Law, was co-edited by Dr. Aviv Gaon of IDC Herzliya and Carole Piovesan of INQ Law.
• Two Bracing for Impact Webinars: IP Osgoode collaborated with the Harry Radzyner Law School at the IDC Herzliya and Microsoft Canada to present two new webinars in our Bracing for Impact Event Series: “” in and “” in , the latter being also in collaboration with Alectra’s GRE&T Centre. The webinars featured speakers from around the world and drew in almost 250 spectators between them.
• First Virtual Trademark Hearing: thanks to the Honourable Justice Michael Manson of the Federal Court of Canada, over 70 Osgoode students and faculty members virtually attended the .
• IPilogue’s Return to Daily Publishing: under a new structure, the has returned to publishing daily blog articles written by our dedicated team of IPilogue Writers. Almost 270 articles have been published over the past year alone, more than 120 more than the previous year. We continue to receive and publish guest submissions from students, academics, lawyers, and members of our as well.

IP Innovation Clinic

• IP Innovation ChatBot Launched: The IP Innovation Clinic officially launched its through a . Developed with assistance and support from Norton Rose Fulbright Canada LLP, CIPO, and ISED Canada, the AI-backed ChatBot provides accurate and reliable IP law information for free on our website. Thanks to further funding from ISED through the National IP Strategy, we look forward to continuing to expand the breadth of the ChatBot’s impact and better reach and assist members of underrepresented communities in the IP Innovation ecosystem.
• Mitacs-funded Business Strategy Internships: in March 2021, . The IP Innovation Clinic placed 3 Clinic Fellows with businesses pivoting their operations in response to the COVID-19 pandemic. Prof. D’Agostino was also featured in the marking the official launch of the program.
• Clinic Clients Secured Millions in Funding: two IP Innovation Clinic clients leveraged IP information from our Clinic Fellows to massive expansions of their business. to develop their drone technology and for their sustainable clothing brand.
• First LPP Candidate: during the Winter 2021 Term, under the supervision of IP Osgoode alumnus Reshika Dhir of Bereskin & Parr LLP, the IP Innovation Clinic . We look forward to welcoming two new LPP candidates in Winter 2022.
• The IP Lunch Club Continues: for the second year in a row, and in collaboration with the City of Barrie Sandbox Centre, Prof. D’Agostino’s Directed Reading: IP Innovation Program students presented , educating local entrepreneurs and innovators about registering and commercializing IP rights. Many attendees from these webinars go on to engage the IP Innovation Clinic for IP and commercialization assistance.

As always, we are grateful to all of the students, faculty, partners, and our Advisory Board for making this past year as great a success as it was. None of the above accomplishments would have happened if not for their passion, dedication, and hard work. As we welcome new students and continue to seek out more involvement, we look forward to another wonderful year and welcome new students and partnerships who can help us grow to even greater heights.

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At the beginning of 2020, when the team was first scheduled to compete, compulsory licensing seemed like a fun thought experiment and a great theoretical moot problem about balancing IP rights and public health. It quickly became an eerily relevant issue as the world rapidly shut down and essential medical items like masks, gloves, and ventilators became precious commodities. Doors stayed shut, Wi-Fi capacity limits got tested, and in the wake of the initial disbelief that the world was collectively at war with the most covert of enemies, there was little room to feel disappointment about the cancellation of the competition. As the months wore on, and a new normalcy crystallized, the team got word that the competition was back on, and that the 2020 competitors were invited to return. Two of the team members came back, and a third joined ranks in January of 2021.

The moot organizers pivoted to a Zoom format and accommodated its largest set of teams to date, with 32 schools battling for the title. The first day entailed a virtual welcome ceremony. Moments after the team’s alarm clocks screamed to life at 6:30 am, each member logged into Zoom, sleepy-eyed and afflicted with the most serious cases of bed head. As the organizer scrolled through the competing teams’ slides, it slowly became apparent that Osgoode had miscalculated. Slide after slide passed through the platform, with many a suit and rarely a smile. Then Osgoode’s slide came roaring in with a beaver, a moose, and what appeared to be a team member drinking maple syrup straight from the bottle. Whatever impression they made, the Ozzies quickly made it clear that they meant business.Ěý

The preliminaries were also no laughing matter, as the competition was fierce. Thankfully, Osgoode was blessed with the platinum package for coaching and the preliminaries were passed through with a breeze. As the team advanced on, excitement in the Osgoode community rose. The team entered the final match, buttressed with support from all angles in the Oz community, the IP space, and from their collective friends and family. The online format uniquely allowed all supporters to watch their team in action, and we felt the love. While Osgoode ultimately lost out in the grand final, the opportunity to experience this competition was a big “W”.

To our 2020 team member, Julianna Felendzer, we hope we did you proud. Thanks for helping us secure the invite to the oral rounds!

To our coaches Jennifer Davidson, Stephen Selznick, Any Obando and Giuseppina D’Agostino, we are forever grateful for your dedication and your support, especially when it was just a “hair toss, check your nails” kind of day!

Co-written by Anna Morrish, Alex Dumais, and Karin Kazakevich, 2021 Oxford International Intellectual Property Law Moot Runners Up

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The claimant, Response Clothing, designs and markets various pieces of clothing. The defendant, Edinburgh Woollen, is a major clothing retailer with about 400 stores in the UK. Between December 2009 and 2012, Response Clothing provided Edinburgh Woollen with various women’s tops made of a jacquard fabric. This jacquard material consists of wave-like designs that are woven into the fabric. When Response Clothing increased the price of the tops sold to the defendant in 2012, Edinburgh Woollen decided to change suppliers. The defendant provided the new supplier a sample of Response Clothing’s top and has changed suppliers various times throughout the last five years while maintaining the same wave-like jacquard design. As a result, Response Clothing claims that copyright subsists in its fabric’s design, either as a graphic work or as a work of artistic craftsmanship as per section 4 of the (the CPDA). Given the nature of Response Clothing’s relationship with Edinburgh Woollen between 2009 to 2012, Response Clothing further claims that it is the owner of that copyright and that all other supplier designs of the wave-like jacquard design are both primary and secondary acts of infringement.Ěý Ěý

Though the Court concluded that the definition of a graphic work could not be extended to include a fabric design, it was established that the creation of the wave-like jacquard design qualified as a work of artistic craftsmanship. The Court concluded that the wave-like design required skillful workmanship and produced aesthetic appeal. Additionally, at paragraph 64 of the decision, the Court provided the following guidance with respect to the definition of artistic craftsmanship in the UK:

[…] (i) it is possible for an author to make a work of artistic craftsmanship using a machine, (ii) aesthetic appeal can be of a nature which causes the work to appeal to potential customers and (iii) a work is not precluded from being a work of artistic craftmanship solely because multiple copies of it are subsequently made and marketed.

Having concluded that copyright existed in the wave-like fabric design, the Court determined that the garments sold by Edinburgh after 2012 copied a substantial part of Response Clothing’s design, amounting to secondary infringement contrary to section 23 of the CPDA.

Written by Alessia Monastero, IPilogue editor and articling student at Deeth Williams Wall LLP.

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You’re aĚýcelebrity and had a threesome. Your partner wasn’t one of them. You want the affair to remain private. You go to a court in England where your family resides and get an interim injunction. It prevents the English press from publishing the tawdry details to protect your privacy and the privacy of your family. The affair becomes widely known in other countries including the US, Canada, and Scotland. TheĚýEnglish public finds out about it through foreign web sites. They also find the story when using search engines, even when not looking for it. TheĚýEnglish public is incitedĚýto access websites where details about the encounter can be found by the tabloids which thrive on selling papers filled with salacious details of sexual encounters. The tabloids create a frenzy working up the public claiming they are being censored when their foreign counterparts are not, then move to set aside the injunction.

After scuffles before the lower courts the case gets to England’s highest court. Upholding the rule of law and demonstrating it takes privacy rights seriously, last week the UK Supreme Court ordered the interim injunction continued until trial, stating also that search engines should geo-block links to foreign websites from which the story can be accessed to protect the applicant’s privacy rights.

The reasons of the Supreme Court in [2016] UKSC 26 (19 May 2016) to maintain the injunction in place despite the tsunami of public pressure to rescind it were delivered in 4 sets of reasons, each of which (except for the dissent) was concurred in by the three other judges making up the 4:1 majority. Central to the decision were the following reasons concurred in by all of the justices writing to maintain the injunction.

• The ground on which the court acted was to preserve the privacy interests at stake in the case. (In this case, that of the appellant, his partner and their young children in England and Wales.)
• Unlike causes of action based on breach of confidence, claims to protect privacy can be maintained even when private information is already widely known. Even the repetition of known facts about an individual may amount to an unjustified interference with the private lives not only of that person but also of those who are involved with him.
• Claims based on respect for privacy and family life (underĚýEnglish law) are based on the two core components of the rights to privacy: unwanted access to private information and unwanted access to or intrusion into one’s personal space.
• The English/EU courts give very little weight to claims for “free expression” when the expression purely concerns private sexual encounters. Any such disclosure or publication will on the face of it constitute the tort of invasion of privacy, the repetition of which is capable of constituting a further tort of invasion of privacy, even in relation to persons to whom disclosure or publication was previously made – especially if it occurs in a different medium.
• Injunctive relief to protect privacy can be granted to protect privacy interests even if the information is widely known (including significant internet and social media coverage) if the injunction can prevent extensive and qualitatively different privacy breaches. (That was the situation in the PJS case.)
• Exemplary or punitive damages and an account of profits may be recoverable at common law for misuse of private information in order to deter flagrant breaches of privacy and to provide adequate protection for the person concerned. (The court left this question open.)

Lord Mance (with whom Lord Neuberger, Lady Hale and Lord Reed agreed) concluded his judgement summarizing the rationale for maintaining the injunction as follows:

The circumstances of this case present the Supreme Court with a difficult choice. As in the Court of Appeal, so before the Supreme Court the case falls to be approached on the basis that the appellant is likely at trial to establish that the proposed disclosure and publication is likely to involve further tortious invasion of privacy rights of the appellant and his partner as well as of their children, who have of course no conceivable involvement in the conduct in question. The invasion would, on present evidence, be clear, serious and injurious. On the other hand, those interested in a prurient story can, if they try, probably read about the identities of those involved and in some cases about the detail of the conduct, according to where they may find it on the internet. The Court will be criticised for giving undue protection to a tawdry story by continuing the injunction to trial. There is undoubtedly also some risk of further internet, social media or other activity aimed at making the Court’s injunction seem vain, whether or not encouraged in any way by any persons prevented from publishing themselves. On the other hand, the legal position, which the Court is obliged to respect, is clear. There is on present evidence no public interest in any legal sense in the story, however much the respondents may hope that one may emerge on further investigation and/or in evidence at trial, and it would involve significant additional intrusion into the privacy of the appellant, his partner and their children.

At the end of the day, the only consideration militating in favour of discharging the injunction is the incongruity of the parallel – and in probability significantly uncontrollable – world of the internet and social media, which may make further inroads into the protection intended by the injunction. Against that, however, the media storm which discharge of the injunction would unleash would add a different and in some respects more enduring dimension to the existing invasions of privacy being perpetrated on the internet. At the risk of appearing irredentist, the Supreme Court has come to the conclusion that, on a trial in the light of the present evidence, a permanent injunction would be likely to be granted in the interests of the appellant, his partner and especially their children. The appeal should therefore be allowed, and the Court will order the continuation of the interim injunction to trial or further order accordingly.

Enjoining the tabloids from publishing the salacious details of sexual encounters would not have prevented members of theĚýEnglish public from accessing stories about the affair published on foreign sites. This was amply demonstrated by the privacy breaches suffered by Max Mosley who waged precedent setting legal battles against media sites and Google in several jurisdictions to get stories about his private life removed from web sites and de-indexed by Google. See, .

The Court recognized that to protect the applicant’s privacy interests it was necessary not only to enjoin the tabloids, but also for search engines to geo-block links to the story to prevent access in England, something Ěýwas reportedly doing. Lord Neuberger (the President of the Court with whom Lady Hale, Lord Mance and Lord Reed agreed) dealt with this issue stating the following:

It also seems to me that if there was no injunction in this case, there would be greater intrusion on the lives of PJS and YMA through the internet. There may well be room for different views as to whether the lifting of the injunction would lead to an increase or a decrease in tweets and other electronic communications relating to the story. However, if the identity of PJS and the story could be communicated within England and Wales, then it would be likely that anyone in this jurisdiction who was searching for PJS (or indeed YMA) through a search engine, for reasons wholly unconnected with the story, would find prominent links to that story. But if search engines serving England and Wales are geo-blocked from mentioning PJS, or indeed YMA, in connection with the story, as they should be so long as an injunction is in place, this would not happen. It might be said that PJS and YMA could ask the search engine operators to remove any links to the story pursuant to the decision of the Court of Justice inĚýGoogle Spain SL v Agencia Española de ProtecciĂłn de DatosĚý(Case C-131/12)Ěý[2014] QB 1022, but it seems unlikely that the reasoning in that case could apply to a story which has only recently become public and is being currently covered in the newspapers…

It is one thing for what should be private information to be unlawfully disseminated; it is quite another for that information to be recorded in eye-catching headlines and sensational terms in a national newspaper, or to be freely available on search engines in this jurisdiction to anyone searching for PJS or YMA, or indeed AB, by name in a different connection. If, as seems to me likely on the present state of the evidence and the current state of the law, PJS will succeed in obtaining such an injunction at trial, then it follows that he ought to be granted an injunction to restrain publication of the story in the meantime. (emphasis added)

The PJS case has been the subject of considerable commentary. A good roundup can be found here, .

Comments

Canadian common law courts are still struggling to develop the contours of the emerging tort of intrusion upon seclusion first recognized in Ontario in the , 2012 ONCA 32 case. Some provinces have recognized it, British Columbia (which has a statutory tort of invasion of privacy) does not. See, , 2015 BCCA 468. A Federal Court decision rendered earlier this year has suggested that the Canadian common law courts may also recognize another US privacy tort that provides a remedy against the wrongful disclosure of private information that would be highly offensive to a reasonable person and not of legitimate concern to the public. See, , 2015 FC 916.

However, Canadian common law courts are still far behind theĚýEnglish courts which have developed a much more flexible tort of misuse of private information, as well as remedies for breach that include damages to compensate for the loss or diminution of a right to control private information, and now following the PJS case, perhaps also exemplary or punitive damages and an accounting of profits. See, [2015] EWCA Civ 1291 (17 December 2015). The damages recoverable inĚýEngland for the tort are more extensive than those recognized as being recoverable in Canada so far.

Surprisingly, Canadian courts have not had to canvass recently whether theĚýEnglish common law tort of misuse of private information should be adopted in Canada. The courts have also not had to tackle whether the torts that have been recognized so far would enable a claimant to obtain interim or final injunctive relief to protect disclosure of private information that is widely available in other countries.

is an IP Osgoode Advisory Board Member and a senior partner with McCarthy TĂ©trault in the Toronto office.

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Much has been written about the patent system worldwide, and in particular theĚýissues with software patents.ĚýIn 2012, the New 91ŃÇÉ« TimesĚýĚýthatĚýpatent litigation and purchases in the smartphone industry grew to $20 billion dollars over the previous 2 years.ĚýThe Times alsoĚýĚýthat Apple and Google had spent more in 2011 in this regard than on research and development. One would think these massive investments by technology companies would only be made if there was an associated return. A Wall Street JournalĚýĚýfound, however that all of this investment by smartphone companies has yielded little reward in terms of monetary compensation or worthwhileĚýinjunctions. Even the highly-publicized $1 billion dollar Apple victory has been , and is currently under appeal. (See past IPilogue coverage on the initialĚý, and the subsequentĚý.) Similarly, anĚýinjunctionĚýwon by Apple against a Samsung tablet and phone was eventuallyĚý. While these developments would not indicate a positive return on these largeĚýinvolvements, the true net benefit of patent litigation must be considered in light of the entire patent system, and in doing so, account for the perspectives of all the players involved.

What Else Did Apple Gain?

While return on investmentĚýis typically measured financially, there are many benefits beyond monetary that can be argued to have been gained by Apple. By vigilantly defending its patents, Apple has shown a willingness to take others to court when it believes its intellectual property has been infringed on. Apple's willingness to defend its patents likely increases theĚýdeterrenceĚýfactor and encourages other parties to invest in proper research and development to ensure that they do not infringe any of Apple's intellectual property. Apple also gains affirmation in those patents which have been upheld, likely strengthening and streamlining future legal actionsĚýwhere those patents are involved. Neither of these benefits are necessarily reflected by monetary awards orĚýinjunctions being granted, but benefit Apple nonetheless.

What Else Did Samsung Lose?

Samsung could be seen as having two main losses beyond the real financial costs of the award and legal defence. By being found guilty ofĚýinfringement, Samsung has to address its internal product development process which lead to the construction of infringing devices. This will require increased investment and work to produce future products that do not infringe patents owned by Apple or other constituents. This will also introduce uncertainty into Samsung's product development, as current product roadmaps will need to be modified to avoid similar infringement claims in the future.

Finally, this award against Samsung sends a message to the market that they inadequately protectedĚýthemselvesĚýfrom this legal risk. This could lead to concerns by investors that Samsung may be exposing themselves to other legal liabilities. At a minimum, this massive award against Samsung at least implicitly undermines the company's reputation in the public eye for originality and innovation.

What About Third Parties?

Interested third parties can, for the most part, be divided into "other smartphone manufacturers", and "consumers". In the future other smartphone manufacturers will have to increaseĚýinvestmentsĚýin patent acquisition and dueĚýdiligence to avoid similar infringement suits.ĚýThis will affect their ability to invest and plan future products, potentially shifting resources from new product development to managing intellectual property.

Consumers have the most to lose and least to gain in the ongoing smartphone legal battles. ĚýAs manufacturersĚýinevitablyĚýinternalize the cost of patent acquisitions, litigation, and payment of settlements, smartphone prices paid by consumers must rise to cover these costs. If Apple's patents are upheld and Samsung is found to infringe on them, consumers may further lose from a reduction of competition in the marketĚýspurredĚýby an extension of Apple's monopoly over patented technology. Consumers may also benefit, however, from stronger intellectual property protection which would encourage further investments in research and development. As a result, new innovative products would likely be developed with the assurance that effective legal protection will be given to these new inventions. This was the original "trade-off" of the patent system; public disclosure of an invention in exchange for a time -limited monopoly ensuring that investments in research and development can be profitably commercialized.

The View Forward

While ongoing for many years, many patent suits have yet to be definitively decided by the courts. Many parties are interested in seeing how the various suits pan out, as positive results may have a cascading effect and encourage more enforcement actions.ĚýIt will have to be seen whether this will stifle innovation by expanding monopolies, or encourage moreĚýinvestmentĚýwith the promise of effective protection.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at Thompson Rivers University.

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A copyright infringement by multiple authors’ groups – including two Canadian ones – against Google and several universities for their book scanning and digital distribution has beenĚý.

Federal Justice Hon. Harold Baer Jr. drew from the of , as well as the (ADA) in his decision. The defendants convincingly argued that Hathitrust appropriately disseminates materials for educational and social good purposes, in particular by greatly increasing reading material accessibility for people living with visual impairments.

The and the were the two Canadian plaintiff organizations, losing alongside the Authors Guild of America and others.

The backstory
The HathiTrust Digital Library is a database of reading material, much of which is provided the . The purpose of Google’s Library Project is, by Silicon Public writer Lisa Jackson, “to scan and publish all the books in the world.” HathiTrust already contains 10M books, 73 percent of which are copyrighted material.

This victory for Google follows on the heels of a recent copyright concession. In this , Google and the (AAP) announced a settlement in their marathon copyright dispute, which started in 2005. The suit was filed by the APP on behalf of members McGraw-Hill, Pearson Education, the Penguin Group, John Wiley & Sons, and Simon& Schuster. The APP gave Google the right to scan and sell e-books on the online store Google Play for an undisclosed amount of money.

The judgment
At issue was scanning for the purpose of indexing. The judge found that scanning is “transformative”, which is a fair use justification to sidestep normal copyright regulation. Historically for commentary, criticism or parody, but the definition is expanding in the digital day and age.

The judge, however, wrote that the “most important” transformative purpose of the scans was the “unprecedented ability of print-disabled individuals to have an equal opportunity to compete with their sighted peers” as argued by the defendants and the , which provided an opposition brief in the case. Judge Baer,

“The totality of the fair-use factors suggest that copyright law’s “goal of promoting the Progress of Science . . . would be better served by allowing the use than by preventing it.” Bill Graham, 448 F.3d at 608 (quotation marks omitted). The enhanced search capabilities that reveal no in-copyright material, the protection of Defendants’ fragile books, and, perhaps most importantly, the unprecedented ability of print-disabled individuals to have an equal opportunity to compete with their sighted peers in the ways imagined by the ADA protect the copies made by Defendants as fair use to the extent that Plaintiffs have established a prima facie case of infringement. In addition to the briefs submitted by the parties, the two memoranda filed by amici further confirm that the underlying rationale of copyright law is enhanced by the HDL.”

The orphans
Orphaned works remain in question. With a little over a quarter of works in HathiTrust having no copyright or known copyright, there is confusion about how best to proceed. Google proposed that it scan the orphaned works, place up to 20 percent of the text in search results, sell the works, and then set aside the collected sales revenue until the author comes forward. The New 91ŃÇÉ« Federal Court that proposal last year. U.S. District Judge Denny Chin felt that the plan as outlined in the Amended Settlement Agreement (ASA) not onlyĚýĚýtook too many liberties with the works, but also posed anti-trust concerns.

The ASA would give Google a de facto monopoly over unclaimed works. Only Google has engaged in the copying of books en masse without copyright permission…Google's ability to deny competitors the ability to search orphan books would further entrench Google's market power in the online search market.

Judge Baer did not rule on the orphan works question because the suit argued against the legality of the – a University of Michigan Library-led project to identify books whose copyright holders cannot be identified or contacted – which has not formally launched its efforts. The Orphan Works Project states on their website in an update from this past July that “There are no plans to provide access to these works.”

The new status quo
To recap the current parameters, there are some clear checks and balances to fair use in practice. One might say that neither side of this copyright debate is happy. And perhaps that’s how it should be. To wit:

• When people search the HathiTrust database to search a word in a copyrighted book, only the page numbers and number of mentions in the book are provided. The full text of the book is not available for fully abled individuals who do not have rights holder’s permissions.
• Full text will be made available for people who have rights holder’s permissions as well as for people with certified print disabilities. In the case of those with print disabilities, the work will be provided in an auditory version.

The response
The general public response has been largely positive, though there is a sample bias because so many internet commentators tend to the pro-digital-proliferation side of these types of debates. While many members of the copyright, legal or library community wrote supporting the decision; others, such as blogger Matthew Sag, have overstated the victory.

“The decision is a landmark win for the HathiTrust, the University defendants, people with print-disabilities, Google, the Digital Humanities and, I would argue, for humanity in general,” said Sag.

Authors are not, however, without their advocates. The concern that too much fair use hurts copyright holders who rely on copyright purchase for income was best summed up by Publisher’s Weekly reader George Payerle, who , “It’s clear that authors are expected to subsist on electrons.”

The big question
One major issue that remains under-addressed is data access. Google through HathiTrust is collecting large amounts of data about the who, what, where and when of book searching.

Word on the street is that Amazon has been less than generous about sharing its intel with publishers, so it’s possible that a part of the Google-AAP settlement includes terms of data sharing.

Certainly author groups should benefit from this same access to data, even as piecemeal compensation for their lack of legal copyright at the hands of fair use.

Denise Brunsdon is a JD/MBA candidate at Western University.

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There are millions of words that have been written both by conservative and progressive judges, lawyers, scholars, political scientists, social scientists, historians and journalists on various judicial philosophies and interpretative doctrines, but the influence of the status of the litigant in influencing judicial decision making has rarely been theorised, analysed and documented.

Judging is also personal, “in the sense that judges’ personal attributes including background characteristics such as race and sex; personality traits such as authoritarianism and professional and life experiences, such as having been a prosecutor or having grown up in turbulent times-influence judging”, according to conservative Judge Richard A. Posner. There is also a nonpolitical and nonpersonal dimension to judging: the “legalist” factor which is the neutral application of the rules not made up for the occasion to facts fairly found.

According to Posner, legalism however fails at a deeper level to refute the hypothesis that political and personal leanings influence judicial decisions in cases that arise in “dauntingly complex, uncertainty-riven legal system”. ĚýMost constitutional and statutory provisions are open-ended and can be read in different ways- this is certainly true of many of the provisions found in our intellectual property statutes. Most are written that way deliberately to allow for the discretionary judicial interpretation that takes into account the myriad factual situations that arise.

It is the thesis of this blog that apart from the political, personal and legalistic factors that push the judge to judge one way or the other, the status of the litigant or litigant-related factors also influence the trajectory of the decision-making process. If judges can decide a case, Ěýtaking into account the political consequences of their decisions, so do they decide cases with a view to the Ěýconsequences for the particular litigant.

Could there be cases in intellectual property law that are litigant-propelled?Ěý This is a good area for future research. Feminists have in the recent past deconstructed that intellectual property law has historically discriminated against women. Intellectual property law has been designed by men to propagate male-oriented and male-serving intellectual property regimes.Ěý It is logical that these male oriented intellectual property regimes would be more friendly and has historically been more friendly to male litigants. In his book, The Spinster and the Prophet, Mckillop tells the compelling story of Florence Deeks, who lost her legal battle against H.G. Wells in spite of significant evidence of unauthorized copying.

Was the intellectual property law case of the Law Society of Upper Canada decided by the Supreme Court of Canada decided the way it was (allowing the LSUC to copy and distribute copyrighted materials) because of the litigant status of the Law Society as a group of lawyers and judges as lawyers? ĚýIs it possible that Supreme Court Judges were more sympathetic to the members of the legal community than they would have been to a different user group?

Was the Da Vinci Code case decided the way it was because of the litigant status ofĚý Dan Brown, the author of the Da Vinci Code, who had grown astronomically successful in the world of authorship? The book became a brand name and he became a publishing empire. He became too big to be destroyed. ĚýCould the courts disturb that phenomenon?

These are questions that are worth exploring and they lend themselves to analysis based on the “litigant-propelled” or “litigant status” schema.

The post Does The Status And Character Of The Litigant Or Litigant-Related Participant Influence Judicial Decision Making And Therefore The Result? appeared first on IPOsgoode.

The focus of the paper is on the high-tech patents, which comprises of hardware, software and financial inventions. The hardware category includes patents covering semiconductor technologies, memory and digital signal processing (chip) architectures and design. The software category includes patents covering user interfaces, database technology, software development, computer graphics and cryptography. The financial category includes patents classified as financial process, business practice, management or cost/ price determination data processing inventions.

While acknowledging the fact that each patent dispute is unique, the paper identifies different types of popular patent litigation profiles- non-practising entity (NPE) Suits; Litigation-Avoidance/ Patent Detente; Sport of Kings; David v. Goliath; Predation; and others.

NPE Suits:

In the paper, the term NPE refers to a corporate 'patent enforcement' entity that neither practices nor seeks to commercialize its inventions. The core business of NPEs is essentially patent enforcement. NPEs typically have a reputation of suing mature companies that have sold allegedly infringing products. Since the NPEs do not have products of their own, counter-suing for patent infringement is not possible.

An interesting feature of NPEs is their focus on high-tech inventions, instead of the ones catering to biotechnology. The reasons are multifold: 1) NPEs have historically acquired their patents from distressed or bankrupt companies, principally casualties of the Internet bubbles; 2) the products in computer and semiconductor-related industries tend to be covered by many patents, increasing the likelihood of infringements; and 3) in high-tech, it is arguably easier to file a paper patent that can be bought and sold free of the underlying technology. Biotechnology inventions have more stringent enablements and written description standards which are more difficult to meet without having actually made the invention.

Litigation-Avoidance/ Patent Detente:

Companies can discourage threats of suits by their competitors by building portfolios of patents. Companies that engage in defensive patenting tend to be large, which on one hand makes them vulnerable to patent litigation, and on the other gives them the ability to underwrite large patent portfolios. However, despite the increasing practise of defensive patenting, the share of suits involving hardware and software inventions has actually risen. This is explained by the fact, among other explanations, that defensive patenting is not intended to guard against lawsuits brought by plaintiffs with little product revenue- NPEs or individuals.

Sport of Kings:

This refers to the litigation involving large corporations, a consequence of which is usually patent warfare. The stakes could be as high as $25 million, and the average litigation costs could jump to $5.5 million. Some well-known examples include battles between Qualcomm against Broadcom, and Creative against Apple.ĚýĚý

David v. Goliath:

The lawsuits involving individual inventors against large corporations fall under this category.ĚýĚýThe paper states that several studies have shown that individuals and small companies are more likely to sue than large companies. What distinguishes NPEs and such individual inventors is the motive behind the lawsuit. The independent inventors are perceived as seeking not only money, but also justice or vindication by a court. Also, an individual with fewer resources is likely to be more selective than an NPE about its targets and the patents it asserts.

Predation:

This is a strategic use of patent litigation by established companies to impose distress on their financially disadvantaged rivals. Such litigation can damage a defendant's credit rating, its relationship with customers and its reputation with investors, regardless of how the suit ultimately resolves.

This paper uses the research data from Stanford's IP Clearinghouse for cases initiated in the U.S. District Courts from January 2000 through March 2008. Some of the interesting findings are captured in Table 1.

ĚýTable 1: Patent litigation suit study results calculated based on the absolute number of suits as a function of suit categoriesĚý

Table 1 indicates that the 28% of all suits fit the sport of kings profile.ĚýĚýThis can be explained by the fact that most of the software and hardware patents are owned by large corporations. NPEs, considered willing and eager litigants, only constitute 19% of the total number of suits. Noticeably, the NPEs contribute the most towards the financial patents suits. It is speculated that this may partially be due to the substantial uncertainty associated with financial patents, which the NPEs are more willing to exploit.

Overall, the study provides insight into the patent litigation lawsuit environment in the U.S., and provides a perspective on how effectively the system is working. While it does not address patents never litigated, or patents never licensed, it nevertheless provides a guideline for direct reformations and developments in the patent regime.

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