Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

In , the Federal Court of Canada invalided patents for interactive program guide (“IPG”) technology and clarified a reasonable royalty as the appropriate remedy had the patents been found valid and infringed.

Rovi supplies , and Videotron is a telecommunications corporation providing cable services and . IPGs are interactive menus that you may have used to select/search programming listings rather than viewing them on a paper guide.

Rovi’s revenue model is to license a portfolio for a rate without consideration for the number of patents. Videotron did not renew its license which expired in 2016. Videotron claimed they licensed to avoid litigation, and later realized that Rovi’s portfolio is obsolete. Notably, Rovi wanted to double the royalty rate and when Videotron asked Rovi to “.” Rovi did not provide an adequate answer.

Rovi that Videotron infringed four patents, which Videotron were invalid. Rovi’s patents were held due to obviousness and anticipated knowledge in consideration of prior art and knowledge of the skilled person. Rovi’s patents were secured in the 1990s, one of which claims a “”. ��The Court held that it was obvious to the industry that IPGs would be prominent in the future and that 1990s were “.” Therefore, or obvious extensions.

The Court’s for denying the remedy of accounting of profits is significant, as not much caselaw has clarified this equitable remedy. Videotron’s products are classified as “complex products” since the patented technology is a small part of the overall value of the product —- not analogous to a pharmaceutical product. With standard patent cases, patentees can be granted ‘accounting for profits’ as a remedy. The availability of such a remedy is questionable with non-standard cases. The for awarding an ‘accounting for profits’ ��are as follows:

First, the Court did not find undue delay by Rovi in pursuing litigation against Videotron.

However, upon examining Rovi’s conduct, the Court found that Rovi operated in bad faith — that Rovi was using “” and not disclosing the list of infringed patents to Videotron to prevent them from designing around them. The recognition of “hard-ball” as a characteristic of bad faith conduct is a novel interpretation of a traditional equitable ground.

Second, the judge recognized Rovi’s “” into royalty deals and took note of Rovi’s delay in prosecuting patents which results in the problem of “holdup”. Granting an accounting remedy in this case would set an undesirable precedent contrary to the purposes of IPR as it gives patentees leverage in negotiations where the royalty would reflect the .

Third, Rovi that Videotron wilfully infringed their patents, however, the judge concluded that Videotron refusing to renew their agreement was actually based on a “reasonable assessment of the necessity of the patents”.

As the court considered the fourth factor neutral, it moved on to an interesting analysis of the complexity of calculating an accounting of profits — that inventors are entitled to that portion of which is causally attributable to the invention. However, patentees seeking an accounting remedy must provide a sound and reliable way to calculate profits. Here, the Courts found that Rovi’s proposal for calculating Videotron’s profits complex and unreliable, said to be based on “” evidence. The court noted caselaw describing that “.”

Instead, the Court accepted Videotron’s proposal of the appropriate remedy as a “.” It was a safer approach to argue a reasonable royalty cap of $150,000 per feature based on design-around rather than arguing that the royalty was zero, since the non-infringing alternative is to remove the IPGs all together.

The post Discretionary Remedies Clarified, and Videotron Ltd Successfully Defends Against Much Litigation-Experienced Rovi Guides Inc. appeared first on IPOsgoode.

Michelle Mao is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

Moderna and Pfizer battle’s over the inventive process of their respective mRNA COVID-19 vaccines revisit the negative associations of profit, monopolies, and optics in patent litigation. On August 26, 2022, Moderna released a that they will pursue a patent infringement lawsuit against Pfizer/BioNTech for their use of Moderna’s registered mRNA patents in creating the Pfizer COVID-19 mRNA vaccine. Moderna claimed that they had registered foundational mRNA patents between 2010 and 2016. , however, is that while Moderna is pursuing an infringement claim, they clarified that they will not prevent future sale of Pfizer vaccines, will not seek damages from sales of Pfizer’s vaccines in certain circumstances, will not seek a cut of Pfizer’s sales from the US government or from the 92 low and middle-income countries that had trouble accessing COVID-19 vaccines. While the specific remedy sought by Moderna is not defined in the press statement, Moderna wants a chunk of Pfizer’s profits, such as through .��

The strategic choice of Moderna’s press statement to detail remedies they will not pursue without revealing the precise ��remedies they will pursue has led critics to call Moderna out for using “optics” and the quasi-sacrosanctity of intellectual property to further profits and strengthen their position in the mRNA pharmaceutical business. The balance that patent law seeks to achieve is well known, with , of the United States Constitution defining the purpose "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Moderna sought to protect themselves from the feeling of “unfairness” that arises when another appropriates your labour (in this case, Moderna’s labour of researching mRNA-based vaccines). Appealing to deeply engrained values of ownership, investment of resources and labour, and protecting themselves against misappropriation of their invested resources Moderna can protect its brand image while seeking billions of dollars from Pfizer in royalties or other types of remedies by, for example, appealing to deeply engrained values of ownership, investment of resrources and labour, and protecting themselves against misappropriation of their invested resources.��

The values at issue in this lawsuit speak to the current flaws of patent laws around the world, and the lawsuit’s impacts will be especially prominent as it relates to the COVID-19 vaccine that has saved almost in just one year. Currently, the Moderna versus Pfizer patent litigation is only being restricted to high-income countries solely on Moderna’s not to seek money from sales in low-income countries. However, reliance on this promise may be flimsy as Moderna has already its promise to not enforce patents through litigation during the pandemic to enforcement in high-income countries (as seen now). This exposes some concerns about our patent laws. For example, this lawsuit may have a chilling effect on future mRNA vaccine development. Another concern is how low- and middle-income countries (LMICs) may suffer from future patent lawsuits where promises not to seek sales from LMICs are not made and in the context of . Balancing the need to encourage rapid responses to global emergencies that require new technologies and access to these technologies all while discouraging monopolies will need to be scrutinized as we head out of the COVID-19 pandemic.��

So what solutions are available to prevent slowdowns in innovation and concerns for access in LMICs? What solution could be to make amendments to a country’s patent act, such as Canada’s which included such amendments. However, the impacts to the patentee could be significant, especially in terms of profits in a national or global emergency. While the amended Patent Act ensures payment of remuneration which the Commissioner of Patents deems adequate in of the Patent Act, this provision may not be feasible in countries with weaker economic power. A statutory defense to patent enforcement could be another solution, as seen in the American approach in This section allows patent “infringement” if the manufacturers are manufacturing goods for the use of the government in difficult times. Interestingly, we are already seeing this defense being used by Moderna themselves claims made against them. While these are two approaches available, the countries implementing these adjustments to patent protections are high-income countries with economic power to guarantee patentees are adequately recompensated, leaving the issue for LMIC concerns unaddressed. Additionally, these solutions also may not adequately address the chilling effect on innovation as the statutory defense is limited and the consequences of patent litigation are expensive.

Currently, no court decisions have been rendered regarding Moderna’s patent infringement claim against Pfizer. However, given the novelty and scale of the COVID-19 pandemic, there is no doubt that whatever decision is made, it will become a new precedent for future patent infringement claims of this scale.

The post Moderna sues Pfizer for mRNA Patent Infringement: when optics and profits reveal real issues in modern IP law usage appeared first on IPOsgoode.

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

In the latest development in the global patent wars between Google and Sonos, Google has Sonos, having filed two suits in the United States District Court for the Northern District of California on August 8, 2022. Through these , Google has Sonos of infringing seven (7) of its patents related to , including detection of “hotwords” and wireless charging.

Google and Sonos’ spotty history

Google and Sonos have been trying to one-up each other since the beginning of the pandemic. As reported , in January 2022, two years after Sonos filed the first patent infringement lawsuit against Google, the United States International Trade Commission issued a ruling in favour of Sonos holding Google’s products infringing on five of Sonos’ smart speaker related patents, and banning the import of goods with the infringing features into the US.

To circumvent the import ban, Google chose to roll back many features offered to its customers at the time of sale of the products. Expectedly, the decision to remove functionality instead of licensing the patents from Sonos has caused some with Google’s customers.

Allegedly, the companies had previously worked together to incorporate Google voice assistant on Sonos devices. But this relationship soured soon after, with Sonos Google of monopolistic practices and of using patent laws to squash competition from small companies. Google, on the other hand, that they collaborated to develop new technology and accuses Sonos of leading a misleading campaign against Google.

Most interestingly, Sonos has accused Google of something called . ��Sonos claims that Google’s infringement of over 100 of Sonos’ patents is deliberate and a business model. Efficient infringement refers to Google’s bet that the cost of contesting and paying off patent infringement lawsuits will be significantly less than the profits earned from sale of the technology. Sonos also says that Google has been undercutting its prices to crowd competitors out of the market.

The present suit

On August 8, Google filed two lawsuits against Sonos it of infringing seven of Google’s patents through a range of products, such as Sonos Move, Sonos Roam, Sonos Arc and Sonos One. The company also plans to file these actions before the United States International Trade Commission to ban imports of allegedly infringing Sonos products into the US.

Sonos has responded by accusing Google of using the lawsuits as an intimidation tactic against Sonos calling out Google’s practices.

What may occur moving forward

Neither company has a history of using patent laws offensively. While Google continues to collect user data and uses online as its main money-maker, its approach on initiating litigation, like Sonos, has been lackadaisical.

But with both companies facing off in multiple jurisdictions, it remains to be seen if there is any merit to Sonos’ claim of efficient infringement.

The post Google sues Sonos for Patent Infringement – Again appeared first on IPOsgoode.

Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.

On April 07, 2022, the Federal Court of Canada released its in favour of the plaintiffs in the patent infringement action against Munchkin Inc. and Munchkin Baby Canada Ltd.

Background

This suit concerned the well-known system of disposing of soiled diapers. The Diaper Genie is used with a cassette which contains soiled diapers till the Genie can be emptied. Angelcare related to the diaper pail cassettes and/or its assembly with its Diaper Genie. Until 2016, Munchkin was manufacturing and selling diaper pail cassettes that were only compatible with Angelcare’s diaper pails.

, the plaintiffs - Angelcare Development Inc., Edgewell Personal Care Canada ULD, Playtex Products, LLC and Angelcare Canada Inc. (the “plaintiffs’ or “Angelcare”) – filed a suit against Munchkin Baby Canada Ltd. and its American parent company Munchkin Inc. (the “defendants’ or “Munchkin”) for direct and induced patent infringement. Angelcare that Munchkin directly infringed its patents by commercialising on four generations of cassettes and two diaper pails. Angelcare also claimed that Munchkin induced infringement of its patents by encouraging users to assemble Angelcare’s diaper pails with Munchkin’s cassettes. Angelcare’s claim was met with a by Munchkin for invalidity of the suit patents on various grounds, including anticipation, obviousness, overbreadth, insufficiency, lack of utility and double patenting.

In its , however, the court agreed with Angelcare holding Munchkin liable for direct and induced patent infringement. The court also rejected most of Munchkin’s claims of patent invalidity, for four claims on one patent that were held to be anticipated.

Inducement

A salient feature of this judgment is the decision on indirect infringement or inducement. Under Canadian law, a person who induces or encourages another to infringe a patent is themselves responsible for infringement of the patent. The three-part test for inducement was laid down in as:

1. The act of infringement must be completed by the direct infringer;
2. The act would not have been committed “but for” the inducement or encouragement; and
3. The influence must have been knowingly asserted with this desired result.

In Canada, selling a component of a patented combination does not, by itself, constitute infringement of the patent. So, Munchkin’s sale of cassettes that are compatible with Angelcare’s Diaper Genie does not by itself constitute infringement. But in holding Munchkin liable for indirect inducement, the court a host of factors, including Munchkin’s products intentional proximity to the Diaper Genie and the discounted rate of its products compared to Angelcare’s cassettes. Most importantly, the court considered the label of Munchkin’s products which unambiguously claims to be compatible with the Diaper Genie.

The court concluded that Munchkin’s business model to use the Diaper Genie to sell its cassettes and Munchkin is as a result actively leading its customers to infringe the suit patent through its cassettes. Therefore, the infringement was done by the end user and would not have been done without Munchkin’s inducement. Satisfying three-part test, Munchkin was held liable for indirect patent infringement.

Liability of the US parent company

Aside from indirect infringement, the court also Munchkin’s argument that its American parent company is not liable for infringement as it has no role in the manufacture, use or sale of the cassettes or diaper pails in Canada. The evidence indicated that the designs for the cassettes came directly from the parent company in California, which also made marketing decisions in Canada. As such, the parent company was held liable for infringement.

What’s next?

No action for an appeal has been taken yet, and Angelcare’s patents have not only been secured against Munchkin’s infringing activities but have also been accorded validity by the court for any impending patent disputes.

The post Airing their Dirty Diapers: Final decision in Angelcare v Munchkin appeared first on IPOsgoode.

Claire La Mantia is an IP Innovation Clinic Fellow and a 3L JD Candidate at Osgoode Hall Law School. This article was written as a requirement for Prof. Pina D’Agostino’s Directed Reading: IP Innovation Program course.

In late November 2021, . This lawsuit was made in response to Peloton’s claim that Lululemon’s design patents for these activewear pieces were invalid. Only months later, in January 2022, . Nike’s allegations stem from Lululemon’s recent acquisition of Mirror, a wall-mounted, at-home fitness device that tracks a user’s workouts, fitness progress, and offers a range of exercise classes and training sessions. , while Lululemon has indicated that it will challenge the validity of Nike’s patents for this technology. These cases demonstrate interesting practical considerations that are important for those seeking intellectual property protections to reflect on.

Firstly, they illustrate the potential to use intellectual property for both offensive and defensive purposes. On one hand, a party may seek intellectual property rights in order to protect themselves from competitors attempting to use their product. For example, holding a patent allows the owner to exclude others from making, using, or selling the patented invention or design and claim compensation where a party does so without the patent holder’s permission, as Lululemon and Nike are attempting to do. On the other hand, a party may utilize intellectual property as part of an offensive business strategy. A party may obtain a patent so that they can establish their own freedom to operate and make, use, or sell the patented invention or design. Likewise, intellectual property can be a source of revenue where the party grants licenses to selectively allow others to make, use, or sell the invention or design.

Secondly, the cases indicate potential strategies a party can use to defend against claims of infringement. A common defence is to claim that the patent a party is being accused of infringing is invalid and should not have been granted in the first place. The allegation of invalidity could be based on a claim that the patent fails to fulfill one or multiple of the criteria required for patentability. In the case of a utility patent, this could include that the invention is not new, does not demonstrate an aspect of ingenuity, is incapable of use, or is related to subject matter that has been excluded from patentability. For a design patent, a claim of invalidity could include that the design is not new or that the feature pertains primarily to function rather than ornamental design. Both Peloton and Lululemon challenge the validity of the patents they are alleged to have infringed, with Peloton arguing that Lululemon’s design patents are anticipated and/or obvious and Lululemon claiming that Nike’s utility patents are overly broad. Another potential strategy is denying that infringement occurred by differentiating the alleged infringing act from the patent in question. Peloton is attempting to use this strategy against Lululemon by claiming that both companies have distinctive and recognizable brands and the designs of Peloton’s athletic wear would not be confused with Lululemon’s, and thus would not constitute infringement.

Lastly, these cases demonstrate the potential for continuing costs associated with intellectual property protections. While intellectual property protections are important business investments and can serve as a means of enforcement and protection of rights, the intellectual property system is not fool-proof and parties may have to make ongoing investments to defend their own registered intellectual property as well as defend themselves against claims of infringement. , and have each made significant investments in intellectual property protections pertaining to activewear, accessories and exercise equipment, including utility patents, design patents, and trademarks. However, all have been involved in intellectual property disputes, both as the intellectual property rights holder and the alleged infringer.

The post Peloton, Lululemon and Nike Patent Infringement Lawsuits: Practical Intellectual Property Considerations appeared first on IPOsgoode.

Photo by Memed Nurrohmad ()

Brandon Pierre is an IPilogue Writer and a 1L JD Candidate at Osgoode Hall Law School.

��

In a dizzying exception to an exception of a rule, the case of ’s HIV drug bictegravir underscores the value of a well-planned legal strategy.

(“ViiV”), majority-owned by (“GSK"), claims that Gilead’s (sold under the brand name “Biktarvy”) directly copied its dolutegravir's formulation under (“patent 385”). The with Gilead paying $1.25 billion USD upfront to GSK in early 2022, followed by paying three percent royalties on all future U.S. sales of Biktarvy.

This article delves into the legal doctrines that support the parties’ claims and the overarching strategy to their settlement. The comments pertain specifically to ViiV Healthcare Company v Gilead (case 18-224) in the U.S. District Court for the District of Delaware.

Note that the doctrine of equivalents, dedication-disclosure, and specific exclusion only apply in the United States. Canada uses a purposive approach (see ).

Doctrine of Equivalents

under the doctrine of equivalents, which has two exclusions: dedication-disclosure and specific exclusion.

The prevents parties from circumventing literal infringement by making minor variations to a patented invention. Under the doctrine of equivalents, a patent can be infringed upon if these variations are immaterial. For example, whether a bike has 32 spokes or 36 spokes, it is still a bike.

, Gilead argued that ViiV could not rely on the doctrine of equivalents due to the dedication-disclosure rule and the doctrine of specific exclusion (see page 2).

Dedication-Disclosure Rule

In the U.S., the dedication-disclosure rule states that if a patent discloses or describes a novel feature, but that feature isn’t listed in the patent’s claims, then the feature is dedicated to the public and is not patent-protected (). For example, a patent could describe a bike with two wheels (bicycle), three wheels (tricycle), or four wheels (quadracycle) and then only claim the two-wheeled design. Under this doctrine, the inventor could not then sue another for using the three-wheeled or four-wheeled design.

Gilead posited that since patent 385 described, but did not claim, the formulation used in Biktarvy, it is available to the public and cannot be recaptured through the doctrine of equivalents (). In Canada, and dismissed ViiV’s claims on a similar basis.

Doctrine of Specific Exclusion

The doctrine of specific exclusion states that a product cannot be deemed equivalent to a patented invention if it is literally the opposite of the patented invention. A product can be deemed “outside the reach of the doctrine of equivalents because that [product] is clearly excluded from the [patent’s] claims whether the exclusion is express or implied” (). For example, a patent for an “electric” bike cannot be equivalent to a “non-electric” bike.

Issues regarding expert testimony, construction of legal claims, and legal precedent .

Concluding Remarks

In the end, settlement was in the best interests of both parties. Pursuing protracted lawsuits in , and elsewhere could exponentially increase litigation costs if the matter were left to courts. There are also significant profits at stake. Sales forecasts for the drug were $1B USD in 2018 and rising to $5B USD annually by 2024 (see ). These targets were far surpassed in 2019 when the drug delivered .

The includes a worldwide patent license to certain ViiV patents related to dolutegravir. ViiV also agreed not to enforce their patents against Gilead for any future product containing bictegravir in exchange for royalties. Since the science implies that both bictegravir and dolutegravir have , the agreements suggest both pharmaceutical companies can move forward profitably.

The post Gilead and ViiV Healthcare Settle Global Patent Dispute for Over $1B USD appeared first on IPOsgoode.

Photo by Bence Boros ()

Tianchu Gao is an IPilogue Writer and a 1L JD Candidate at Osgoode Hall Law School.

If you are a fan of Google products, you will likely find that some of its home appliances are becoming slightly more cumbersome to use. You may need to individually adjust each speaker in a multi-room audio system instead of using the group volume controller. Some users may have to use a specific app to set up their smart devices and update them. These changes are the result of a recent by the U.S. International Trade Commission which held that Google infringed on five of Sonos’ patents relating to smart speakers.

Sonos is a developer and manufacturer of audio products based in the U.S., best known for its multi-room audio products. According to Sonos, the company began sharing its technology with Google in 2013, when the two started working together. Google was not a competitor at the time, but it soon moved into Sonos’ space, launching its first music streaming device, Chromecast, in 2015 and the Google Home speaker in 2016.��

The lawsuit began in January 2020, with Sonos alleging that Google violated its patents related to audio technologies and used them in products that undercut Sonos. Since then, the parties have been enmeshed in a global with cases across the U.S., Canada, France, Germany, and the Netherlands.

The by the U.S. International Trade Commission came out in August 2021. It determined that Google violated the , which aims to deter unfair competition through prohibiting actions like importing products that infringe on U.S. patents. As a result, the Commission issued an import ban against Google products that infringed Sonos’ patents, mostly manufactured in China. The decision was upheld in the in January.

A New 91��ɫ Times anticipated that the impact of the ruling on Google’s business is likely to be limited. The newer products developed by Google are using different technologies, and Google’s main cash cow, online advertising, remains intact. ��

Yet the conflict between Google and Sonos is important because it reflects the antitrust problems created by the expanding businesses of today’s tech giants. Starting out as a search engine in 1998, Google is now producing a wide range of hardware products including laptops, smartphones, and home devices. Apple and Facebook (now renamed Meta) are also facing similar issues against smaller companies. According to , its lawsuit against Google is meant to “ensure all companies, regardless of size, receive fair compensation for investing in the development of industry leading technology.”

The post Little Guy Fighting Goliath—Sonos’s Victory Against Google in Patent Infringement appeared first on IPOsgoode.

Patent protection is a crucial consideration for inventors with new innovations. It ensures that innovation persists in the marketplace, and also guarantees some form of monopoly and profit for inventors who invest in engineering new solutions. However, the recent tension between Google and Sonos forces us to consider: how useful are patents to start-up companies with limited resources?

in two federal court systems for the infringement of five patents. For a collaboration in 2013 between Google’s music services and Sonos’ home speakers, Sonos shared the blueprints to their speakers— a mistake in hindsight which led to the alleged infringement on Google’s part. Sonos is seeking financial damages and a ban on the sale of Google’s speakers, smartphones, and laptops in the United States.

Beyond patent infringement related to the company’s wireless speaker technology that allows speakers to connect and synchronize with one another, the company makes an anti-competition argument: allegedly, tech giants Amazon and Google created an environment in which Sonos would be dependent on them, only to then use their leverage to “squeeze” the smaller company. Despite attempting to enforce their intellectual property rights against Google for years, Sonos has had no luck in attaining a resolution.

This type of lawsuit between Sonos, , and Google, , is . Similar cases have occurred between in relation to anti-competitive practices and between regarding trademark infringement.

Sonos was to innovate in the wireless home speaker market in 2005. While there is a benefit to being first in the market and to attain a monopoly for a specified time period, “bigness” in the technology industry threatens the enforceability of patent rights. For example:

• When Sonos initially found that Google was infringing its patents, it approached the company with a licensing contract. Google responded with a deal that would require them to pay next to nothing for the use of the technology.
• Where tech giants infringe on patent-protected technology, they can out-compete smaller companies by offering new devices at lower prices. Google and Amazon did this by selling their speakers starting from $50, while Sonos speakers typically start at $200.
• Large companies have significant negotiation leverage when it comes to exclusivity. For example, Google has maintained that it will pull its virtual assistant from Sonos’ speakers if users can simultaneously use other assistants from services like Apple or Amazon.

These factors put Sonos in the impossible position of having the right to monopolize a technology they developed, but not having any practical way to enforce these rights, due to a lack of resources and influence in the market.

This lawsuit is a reminder to start-up companies of the importance of a sound IP strategy before entering collaborations in the marketplace. It is important to consider what information should remain private and what protections contracts can ensure, such as an ability to freely collaborate with others in the marketplace (thus avoiding the exclusivity issue).

Written by Summer Lewis, a second year JD Candidate at Osgoode Hall Law School. Summer is also the Content Editor of the IPilogue.

The post The Implications of Commercializing IP: How Patent Rights Get Compromised in Big Tech appeared first on IPOsgoode.

Although the issue is serious, it is not a hopeless one. Recent developments in both the United States and Canada offer some hope for companies on how to defeat patent trolls .

This past Spring, the US Supreme Court ��certioari for��Personal Audio v. Electronic Frontier Foundation, giving the Electronic Frontier Foundation (EFF) a firm win against patent trolls. The issue arose in 2013 when Personal Audio LLC sent letters to several podcasters and companies to force them into a licensing deal or face a patent infringement . Personal Audio held a for “a system for disseminating media content representing episodes in a serialized sequence” and claimed that this covered all forms of . Amongst the targeted podcasters was comedian , who was sued by the company for patent infringement and raised half a million dollars in a crowd-funded campaign to fight back. Although Carolla later settled, the issue was far from over.

In 2013 the Electronic Frontier Foundation (EFF) challenged Personal Audio’s patent with an “inter partes review”. Amongst their of contention, the EFF argued that the patent had a priority date of 1996, however, systems for delivering episodic content already existed on the internet well before this time. They gave examples like CNN’s “Internet Newsroom” and the Canadian Broadcasting Corporation’s show “Quirks & Quarks”, which operated on platforms that enabled episodic content but originated before the priority date. EFF was reportedly��successful in their challenge and the US Patent and Trademark Office invalidated the patent. This decision was later in the US Court of Appeal and the Supreme Court denied certioari.�� With EFF's firm victory over Personal Audio, this case will surely influence future cases regarding patent trolls.

Meanwhile, in April 2018, Canada announced its national IP strategy, which included amendments to key IP�� to combat patent trolls. Amongst the amendments is a new requirement for patent to include minimum standards of information, such as details on the specific patent being infringed and how it is infringed. This requirement is aimed at reducing vague or deceptive demand letters that are often used by patent trolls. Government officials also said the proposed amendments will give Canadian companies that are targeted by patent trolls the home court advantage in litigation, with any infringement claims made against Canadians restricted to Canadian courts.

Taken together, it seems that the opposition against patent trolls has made some headway, however, we will have to wait to see the lasting effects of these events.

Imtiaz Karamat is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

The post Advances in Securing the Bridge to Innovation: Recent Progress on Combating Patent Trolls appeared first on IPOsgoode.

Background

Teva Pharmaceuticals developed a medication for the treatment of multiple sclerosis called Copaxone. Sandoz Pharmaceuticals submitted to the Food and Drug Administration to develop generic versions of Copaxone. Teva launched a suit in 2012 claiming patent infringement under . “Average molecular weight” was a disputed term which Sandoz claimed to be ambiguous.

After hearing expert evidence, the district court found the term to not be ambiguous, and that Sandoz infringed Teva’s patent. Sandoz appealed to the Federal Circuit Court of Appeal, arguing that “average molecular weight” was “insolubly ambiguous”. The Federal Circuit heard the case de novo without giving deference to the district court’s factual determinations, and unanimously reversed the lower court’s decision. Teva for writ of certiorari to SCOTUS. The petition was granted and were heard on October 15, 2014, and the decision was published on January 20, 2015.

Arguments by Sandoz

In the oral arguments, counsel for Sandoz relied heavily on , a significant case where SCOTUS determined that the interpretation of patent claims are questions of law rather than questions of fact. Sandoz claimed that even fact-finding becomes a legal inquiry, since the district court has to make a legal inference of a fact to put it into context of the patents-in-suit. Being questions of law, Sandoz argued that the Federal Circuit need not give deference to district courts and was��correct in reviewing such claims de novo. Moreover, enforcing deference to the district court will create a “cottage industry of trial lawyers fighting with the judge about which bucket some particular evidence fits into”.

Arguments by Teva

Counsel for Teva pointed to the convention of the judicial system where district court judges find the facts and the Courts of Appeal review those fact-findings deferentially under Rule 52(a). They argued that patent construction claims are hybrids, containing a mix of questions of law and fact. Some cases, like this case, is one where factual findings by��themselves point to the correct outcome since the ultimate legal conclusion rests on fact-finding.

Decision

The majority of SCOTUS held that when reviewing a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, appellate courts must apply a “clear error”, not a de novo, standard of review. They distinguished between evidence intrinsic and extrinsic to the patent. In reviewing intrinsic evidence, a district court judge’s determination is solely a determination of law, which appellate courts can review de novo. When a district court requires��extrinsic evidence and consults experts to settle factual disputes, the judge’s determination is a factual finding that must be given deference unless a clear error has been made.

With regards to Sandoz’s argument that it may be difficult to separate “factual” or “legal” questions, SCOTUS stated that courts of appeals have long been able to separate factual from legal matters. As a result, SCOTUS determined that the Federal Circuit in this case erred in law in failing to review factual findings only for clear error.

Analysis

SCOTUS has settled the controversy in the applicability of Rule 52(a) in relation to patent construction claims that extends beyond the pharmaceutical industry. The decision promotes consistency in the law and judicial integrity of factual determinations at large. Moreover, with on appeal, reviewing patent construction claims de novo provides an incentive for��unnecessary litigation, increases trial costs, and arbitrariness of decisions.

Long-term implications from this ruling are less clear. It is to be expected that district court judgments on patent construction claims will not be appealed as often as before, and litigators will shift the focus of their claims on factual determinations to gain higher certainty on appeal. Since fact-finding often requires expert testimony, litigants will spend a greater amount of resources hiring experts, adding to the complexity for district court judges to explain their judgments in areas where they themselves may not have expertise.

Beyond the pharmaceutical industry, the emphasis of fact-finding in the district court and what constitutes a “clear error” on appeal may have shifted patent litigation in favour of those with deeper pockets to hire experts. It is unclear how this ruling will affect smaller players who claim to have their patent rights infringed by large companies.

Nonetheless, Teva v Sandoz provides greater clarity in litigation for patent construction claims and resolves the controversy of the applicability of Rule 52(a) towards appellate courts.

Jason Ho is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post A Dose of Consistency: SCOTUS Settles the Controversy in Teva v Sandoz for Patent Litigation appeared first on IPOsgoode.