Patent Infringement Research Articles

Round-up of English patent litigation 2023

Abstract 2023 saw 15 decisions, concerning 22 patents, in inter partes proceedings in which patent infringement and/or validity was in issue. 6 patents were held to be valid and infringed, 9 not to be infringed and 9 to be invalid, all but 3 on the ground of obviousness. 2023 also saw 6 Court of Appeal decisions in such proceedings, in 3 of which the trial judge was reversed on validity - in two cases in favour of the patentee.

Promoting innovation in mental health treatment: Exploring intellectual property laws in innovative and affordable technologies

The paper explored promoting innovation in mental health treatment through exploring intellectual property laws in innovative and affordable technologies. The current intellectual property landscape presents challenges that demand strategic adjustments to strike a balance between incentivizing innovation and ensuring widespread accessibility to groundbreaking mental health technologies. Proposed recommendations encompass among others; advocating for shorter and more flexible patent terms, introducing legislative clarity on patent infringement, and promoting collaboration through legal measures. Additionally, the recommendations prioritize incentivizing information sharing, discouraging knowledge fragmentation, and embedding provisions that prioritize the accessibility and affordability of mental health technologies. This comprehensive strategy aims to create a legal environment that not only safeguards intellectual property but also propels the mental health technology sector toward heightened innovation, collaboration, and accessibility. The urgency for these reforms is underscored by the identified challenges within the intellectual property framework, emphasizing the need for nuanced adjustments. Ultimately, the recommended reforms offer a holistic approach to foster an environment that protects intellectual property rights while advancing mental health innovation to benefit a diverse range of individuals and communities.

Statute of limitations rules in patent infringement litigation in China

Abstract This article examines the statute of limitations applicable to patent infringement actions in China, highlighting open questions that will require legislative and judicial clarification over the coming years. In 2020, the fourth amendment to the Chinese Patent Law introduced a 3-year limitation period, resolving the pre-existing discrepancy with the Civil Code. However, several issues remain open to interpretation and in need of further clarification. These include the commencement of the limitation period, proof of actual or constructive knowledge of the infringement and of the identity of the infringer(s) and the applicable statute of limitations for acts of infringement occurred before the 2020 amendment.

Patent Infringement by Cross-border Acts: Introduction and Analysis of Recent Case Law in Japan

Patent Infringement by Cross-border Acts: Introduction and Analysis of Recent Case Law in Japan

Patent Infringement, Private Law, and Liability Standards

Patent Infringement, Private Law, and Liability Standards

Reducing Officer, Director, and Company Exposure to Patent Infringement Damage Awards

Reducing Officer, Director, and Company Exposure to Patent Infringement Damage Awards

Investigating Patent Value and Litigation Probability of Global Technology Standards

Standard-essential patent (SEP) is a patent that claims an invention that must be used to comply with a technical standard. The issues of patent infringement are often at the forefront of the strategy and planning in patent litigation. Determining an appropriate methodology for valuing a patented invention is a complex and nuanced undertaking. This is particularly true for patent cases where the accused product or service includes many overlapping features and technologies. Patent information can be used in important issues of global technological standardization in order to evaluate the competitive potential of the SEP. This article makes two major contributions: First, it compares the patent value of SEPs with that of non-SEPs. According to the results, SEPs do have higher value, which indicates the effectiveness of the SEP system supported by standard setting organizations. Second, based on comprehensive observations of litigated SEPs, a model for predicting the probability of litigation is established and the litigation probability distribution of SEPs is plotted.

The Requirements for Confirmation-Type Perpetuation of Evidence in Civil Patent Infringement Cases: With a Comparative Discussion of French Law

<p>專利法因其具備「公共財」特性，容易被侵害，且較難被察覺，其次，又基於其無體性而加劇侵權誘因，隨著當代技術之發展，導致智慧財產侵權成本大幅降低，專利侵權案件常有「證據偏在」之情形，再考量到專利法已無刑事責任，無法採用搜索、扣押制度蒐證，亦使專利侵權訴訟對於民事證據保全之需求度高於一般民事程序。然而，智慧財產法院運作十餘載，證據保全聲請核准率偏低，且欠缺可預見性及安定性，不符立法者於2000年，在既有「緊急型」存在的前提下，新設「開示型」以提升核准率的意旨，也因此法國運作超過兩百年之高效穩定證據取得制度，更具研究意義與參考價值。本文首先闡明臺灣專利侵權民事證據保全適用聲請要件所遇之瓶頸，其次論述近期最高法院111年度台抗字第437號裁定及智慧財產案件審理法大幅強化證據規則部分，作為司法權與立法權就此議題的重要回應，之後納入法國相關立法例討論，以充分發揮比較法之價值，並於結論嘗試針對臺灣未來施行新制時提出方案建議，以期完善整體證據保全制度。</p> <p> </p>

Case Law: A Review of Selected Pharmaceutical Patents Litigated in the UK Courts during 2022

Patents lie at the interface between technology and law.  This review provides a summary of four high profile cases from 2022 in which patents in the pharmaceutical or medical space were litigated in the UK Courts.  The first case concerns Astellas’ patent for Betmiga® (mirabegron) for overactive bladder.  The second case involves a patent to Bristol-Meyers Squibb for Eliquis® (apixaban) for thromboembolic disorders.  The third case concerns Novartis’ patent for Exjade® (deferasirox) for use in the treatment of conditions involving excess iron in the blood caused by haemochromatosis, etc.  In the final case, Novartis defended its patent for Gilenya® (fingolimod) as a disease modifying therapy for relapsing remitting multiple sclerosis.  The article aims to focus on the technology behind the patents and to provide an insight into how science interacts with law in the context of patent enforcement and infringement. 

MOID: Many-to-One Patent Graph Embedding Base Infringement Detection Model

With the increasing number of patent applications over the years, instances of patent infringement cases have become more frequent. However, traditional manual patent infringement detection models are no longer suitable for large-scale infringement detection. Existing automated models mainly focus on detecting one-to-one patent infringements, but neglect the many-to-one scenarios. The many-to-one patent infringement detection model faces some major challenges. First, the diversity of patent domains, complexity of content and ambiguity of features make it difficult to extract and represent patent features. Second, patent infringement detection relies on the correlation between patents and the comparison of contextual information as the key factors, but modeling the process and drawing conclusions present challenges. To address these challenges, we propose a many-to-one patent graph (MPG) embedding base infringement detection model. Our model extracts the relationship between keywords and patents, as well as association relation between keywords from many-to-one patent texts (MPTs), to construct a MPG. We obtain patent infringement features through graph embedding of MPG. By using these embedding features as input, the many-to-one infringement detection (MOID) model outputs the conclusion on whether a patent is infringed or not. The comparative experimental results indicate that our model improves accuracy, precision and F-measure by 3.81%, 11.82% and 5.37%, respectively, when compared to the state-of-the-art method.

Does current legislation provide for adequate compensation in cases of unjustified preliminary injunctions? Originator–generic conflicts in the context of patent infringement proceedings

Abstract In Germany, preliminary injunctions are frequently granted for pharmaceutical patents. If a granted preliminary injunction later proves to be unjustified, under section 945 ZPO (German Code of Civil Procedure), the defendant generic company can claim damages on a strict liability basis. However, attempts to enforce such claims are rare, and, even when they are enforced, originators have little to fear because their profits routinely exceed the losses of the generic companies by a significant margin. Yet, delayed market entry by generic companies not only harms generic companies themselves but also leads to the unjustifiable maintenance of high prices for patent-protected medicines. The resulting higher costs place a burden on the already strained healthcare system as well as on the health insurance companies. Section 945 ZPO does not take account of these higher costs, raising the question of the need for further legal bases for claims.

IPR of Lays variety potato – Is it a matter of public or private interests?

Learning outcomes The objectives of the case study are to provide an overview of intellectual property rights and intellectual property rights in Indian context; understand the intellectual property rights implementation and challenges for implementing it in emerging economies; understand what would be the best approach that companies can adopt when the companies face backlash in such circumstances; and explore the scope for redefining the intellectual property rights in the changing global environment. Case overview/synopsis In December 2021, the Protection of Plant Varieties and Farmers’ Rights Authority (PPV&FRA) in India revoked the plant variety protection (PVP) certificate granted to PepsiCo India Holding (PHI) for its Lays variety potato (FL-2027, known as FC-5). The FC-5 variety possessed low moisture content which made it suitable for making potato chips. The controversy started with Pepsi suing the small and marginal farmers of Gujarat for alleged patent infringement and cultivating the patented variety. Pepsi’s legal suit against nine marginal potato farmers in Gujarat initiated the dispute over how intellectual property (IP) rights are used to intimidate small, marginal farmers and its infringement of farmers’ rights. But, on the other side, the interesting aspect was how IP infringement could be a setback for the companies that made the capital investment to develop the variety. The case study discusses the backlash Pepsi faced due to this IP rights legal suit and the punitive aspects of IP rights (IPR) law. Moreover, in the context of the global pandemic, the case study helped discuss the need to redefine the intellectual property rights regime keeping in mind global welfare. Complexity academic level The case is intended for use in postgraduate-level management courses in agricultural marketing, agribusiness, international business and economics. This study can help management students understand how IPR is defined, the apparent complexities associated with it and the adverse effect of it on small and marginal farmers in emerging economies. Supplementary materials Teaching notes are available for educators only. Subject code CSS 5: International business.

When your friend takes a fall: Spillovers of patent infringement lawsuits on firm innovation via cross-owners

Patent infringement lawsuits profoundly affect firms' innovation decisions, but few studies explore their spillover effects. In this paper we examine whether patent infringement lawsuits affect innovation of firms not involved but sharing cross-owners with the involved. Using the PSM-DID method and Chinese A-share listed firms’ data from 2009 to 2020, we find that after sued cross-held firms encounter patent infringement lawsuits, uninvolved focal firms increase innovation investment significantly. Information transmission from cross-owners is the important mechanism. Additionally, when sued cross-held firms and uninvolved focal firms belong to the same dialect region, industry, or uninvolved focal firms are non-SOEs, the innovation spillovers of patent infringement lawsuits are more obvious. Finally, we show that after uninvolved focal firms promote innovation input, their current and future innovation output goes up as well. Our study reveals the innovation spillovers of patent infringement lawsuits and expands research on inter-firm interaction through cross-owners.

University patent litigation in the United States: Do we have a problem?

In an attempt to increase revenues from patenting activities, some universities have started in recent years to pursue “overzealous” strategies to monetize their existing patents, by selling them to the highest bidder and enforcing them in court. In this paper we find quantitative evidence that patent litigation has an adverse effect on university technology transfer activities, reinforcing prior findings by Shane and Somaya (2007). However, we empirically show that universities do not litigate aggressively over patent infringement: not only do they litigate much less than patent assertion entities (PAEs), but we also observe no increase in terms of their propensity to litigate over the last two decades. Nor do we find any evidence of aggressive litigation strategies.

Can patentee preference in patent infringement dispute resolution impact innovation?

Evaluating the impact of intellectual property protection on innovation should include multiple perspectives, of which the impact of patent infringement remedies is an indispensable perspective. The two options for resolving patent infringement disputes in China include civil litigation (CL) and administrative adjudication (AA). Despite the fact that the judicial system has been emphasized as playing the leading role in intellectual property protection, patentees have shown a strong preference for AA since 2015. The general application of AA had been criticized by scholars. Does the patentee's preference bring inappropriate protection and stifled innovation? This study used regression models and 2008–2020 data on the choice of patent dispute resolution mode in China. The number of invention patent applications was the dependent variable, and choices for CL or AA were the independent variables. The choice of AA and the invention patent application were found to have a significant and positive association, implying that AA provides an appropriate level of intellectual property protection to incentivize innovation. Characteristics derived from AA should be valued and used as a reference to improve innovation policies.

The Hitchhiker’s Guide to Outer Space Patents

Investment in space technologies has predominantly been a prerogative of the public sector. Now increasing privatization and commercialization of space markets is creating opportunities to develop new space applications. The potential to commercially leverage intellectual property is a motivating factor behind this private financing and plays a key role in helping private companies secure returns on investment. International space law treaties remain silent on the notion of intellectual property and intellectual property treaties lay heavy emphasis on territorial application of patent law, thereby creating a theoretical disconnect. Legal machinery drafted for activities on board the International Space Station (ISS) and the US Patents in Space Act serve as good starting points in bridging the gap between patents and space law by advancing the concept of quasi-territoriality. However, in doing so, they expose the space-patent market to possibilities of forum shopping, flags of convenience and race to the bottom scenarios. Lack of a reliable legal regime to address issues of patent infringement can negatively influence the future development of the space sector. The resolution to this problem is a new international legal framework that establishes uniform conditions for enforcement of space-based patents. outer space, patents, space commercialization, extra-terrestrial jurisdiction

An Analysis of the Russian Patent Situation in the Context of the Ukrainian Situation

This research analyses the Russian patent landscape, particularly focussing on the implications of the Ukrainian situation and subsequent global economic sanctions. Utilising global patent databases, the study identifies that over the last decade, 77,000 patents have been granted in Russia to foreign entities, with the largest numbers attributed to the United States, Japan, and Germany. An observable decrease in patent applications by foreign entities in Russia from 2018 onwards is documented. Amidst sanctions and Russia’s new laws limiting infringement compensation, potential isolation of Russia from global patent systems is anticipated. This isolation permits internal infringement of non-Russian patents while externally exposing Russian innovations to unimpeded global use. The data and trends presented here provide insights into the impacts of geopolitical events on international patent filings and offer a basis for evaluating the evolving functionality and utility of global patent systems amid international conflicts.

특허심판의 임의적 전치주의 채택에 대한 소고

As the world's fourth-largest patent applicant country, the value of intellectual property rights has been emphasized, and disputes are increasing and the relevant legal system is changing. The system for resolving such disputes is based on a two-pronged structure of patent prosecution and patent infringement litigation, in which necessary preemption is largely applied depending on the type of dispute.
 First of all, in the case of patent law, disputes over patent applications and their examination procedures are basically only subject to patent examination by patent judges as a special form of appeal against patent rejection or patent invalidation, and lawsuits against patent revocation decisions or judgments of patent judges are immediately subject to the exclusive jurisdiction of the patent court, which is the highest court, and the judgment of the patent court can be appealed to the Supreme Court, which consists of a two-trial structure.
 On the other hand, on December 1, 2015, Article 24 of the Civil Procedure Act was amended to concentrate the jurisdiction of the first instance court to the district court with jurisdiction over the location of the high court, and to recognize the overlapping jurisdiction of the Seoul Central District Court for suits related to intellectual property rights, including patents. At the same time, on December 1, 2015, Article 28(4) of the Court Organization Act was amended to concentrate the jurisdiction of appellate review of infringement cases decided by the court of first instance to the Patent Court. In other words, the Patent Court has exclusive jurisdiction over appellate review of infringement cases involving patent rights, which were previously handled by the Seoul High Court and 23 other high courts and district court divisions nationwide. This is to improve the professionalism, consistency, and efficiency of the patent courts, enhance the effectiveness of industrial property rights protection such as seekers' patents, and contribute to enhancing national competitiveness through the advancement of the patent litigation system.
 In light of the above changes in the system, it is necessary to conduct a post-legislative evaluation of the feasibility of introducing necessary precedentialism in patent judgment. In particular, as patent review and patent infringement litigation proceed simultaneously, there may be differences in the views of district courts and patent judges in the handling of patent disputes, resulting in delays. If complaints are raised as a result and the need for legislative improvement is emphasized, it is necessary to evaluate the legislation after the fact. In a situation where the protection environment of patent holders has been greatly improved due to the activation of the patent court, it would be desirable to have a discretionary preemption system that allows parties to choose the judgment of the patent appeals board.

Shepard’s Validation of Antitrust Relief Framework on Patent Infringement of Novartis’ Cancer Drug Using Genomic Architectures of Legal Literature based on UK Intellectual Property Law

Comparative law is designed for alignment of constitutional law with other countries advocating public welfare and safety. The United States has an Intellectual Property provision under U.S. Fair Clause using their constitution as pre-emptive doctrine. The aim of this paper is to evaluate the applicability of UK Intellectual Property Law based on their complexed policies on Artificial Intelligence. Hence, it leads to problem statements questioning: (1) the eligibility of matters of facts did not meet UK IP Law; (2) the standard for evidence towards invention using Artificial Intelligence does not conform with UK IP Law; (3) Liability in AI patent infringement is not subsistent in UK IP Law; and (4) AI’s compliance is not subject for responsibility under creativity and non-obviousness criteria. The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement promotes public welfare and safety under constitutional laws. India, as a member, is obliged to comply with the standard of evidence in patentability under World Trade Organization (WTO). The WTO is a committee responsible for advocating business law. Invention for marketability of patent product has its own complexed policy to comply for acceptance of an Intellectual Property creation. Constitutional law is designed to be made comparable with other countries, promoting the monetary success of their nation exhibiting economic progress in industrial and technological advancements. Hence, authorless works marking artificial intelligence towards public health and safety must be done in lack of any dedication to human connections, resulting in immersion of their “new” product as a work of art, making non-obviousness skills to people as part of common logic and interests, hence, a product of convenience. This intergovernmental task force is vital to implement constitutional laws comparable to other countries. Hence, the advocacy of business ethics is a highly acknowledged means of making the lives of people to be technologically advanced with convenience. Thus, inventions should be made affordable for public access.

(Invited) The Importance of Patent Claim Language on the Path from Invention to Product

Patents often offer significant competitive advantage for inventions on the path from discovery to product. Specifically, the inventors/owners of a patent are given the right to prevent other parties from making, using or selling the subject invention. The claims of the patent define the scope of competitive advantage for the subject invention. Regarding patents,[1] “...the name of the game is the claim.” The wording of claims has been called,[2] “...one of the most bizarre sentence structures in the English language.” And, the courts have noted that,[3] “...the nature of language makes it impossible to capture the essence of a thing[invention] in a patent application[claim].” Consequently, electrochemical scientists, engineers and technologists involved in transitioning discoveries to product are well advised to understand the meaning and scope of the claims in their patented inventions.In this presentation, we will compare and contrast claims as analogous to real estate property. We will provide a brief history of U.S. patent law in terms of the requirements of claims in a patent application. We will review claim construction, i.e., establishing the meaning and scope of an invention, beginning with the inventor internal Invention Disclosure, the preparation of the patent application with a patent attorney, and the examination of the patent application by the U.S. Patent & Trademark Office. Once the patent application is allowed and issues as a patent, the meaning and scope of the claim is settled, unless the patent becomes the subject of a patent validity or infringement challenge.During patent infringement challenges, the meaning and scope of the patent claims are determined in order to decide if the patent is valid and/or if infringement has occurred. We will review the rationale and evolution of claim construction from a factual inquiry by juries to a matter of law determined by the courts. We will present the hierarchy of factors used by the courts during claim construction.Finally, we will conclude the presentation with a brief review of claim construction during a lithium battery infringement case.[4] We conclude the inventor can play a significant role in claim construction with the initial preparation of the internal Invention Disclosure, the preparation of the patent application with a patent professional, and during the examination of the patent application by the U.S. Patent & Trademark Office. Acknowledgements: The financial support of Faraday Technology, Inc. corporate R&D is gratefully acknowledged.