Important Change in USPTO Trademark Practice – Strategies for Fighting Patent Trolls with Sharaz Gill

Sharaz Gill

Sharaz Gill

The USPTO has changed its trademark practice with regard to renewals. Also Sharaz Gill talks with us about his strategies to fight patent trolls. He is heavily involved in the so called phone wars and has sided with companies like Nokia to fight against Non Practicing Entities like IPCom.

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 17 – December 12, 2014

 

RC =   Rolf Claessen

KS =    Kenneth Suzan

SG =    Sharaz Gill

 

 

Hello.  This is Sharaz Gill of Skepsis Telecom.  If you would like to hear a little bit about fighting patent trolls, then listen to our podcast.  This is IP Fridays.

 

KS:      Hello.  Happy Holidays and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

Both Rolf and I are very happy that you have decided to tune into our podcast today.  The response to our joint efforts has been remarkable.  We look forward to sharing IP news, interviews and developments with you in the coming New Year.  To celebrate this holiday season, we invite you to leave us a voicemail by clicking on the button on the right side of our website at IPFridays.com or use the feedback page to leave us a comment at IPFridays.com\feedback.

 

Following a random drawing of names, we will choose and announce a total of three winners who will receive complimentary Christmas mugs from an authentic German Christmas Market in Cologne, Germany (Rolf’s hometown).  We will take care of shipping no matter where you may be.  Make sure to note your e-mail address so we can get in contact with you should you win.  We encourage you to stay in touch with us so we can get to know you as our listeners.  Also, feel free to note any topics or recommend interview guests that would be a good fit for our program.

 

From Cologne, Germany to Minneapolis, Minnesota and all points in between and worldwide, we wish you and yours a wonderful Holiday Season and Happy New Year.

 

RC:      I am Rolf Claessen and I also want to wish you a peaceful Holiday Season and a successful New Year.  Today we will learn about how to fight non-practicing entities, also sometimes called patent trolls, from someone who has been fighting against NPEs.  But before we jump into the interview with Sharaz Gill, who has been fighting patent trolls, Ken Suzan has a story about a really important change in the procedures of the USPTO regarding the renewal of trademarks.  So Ken, take it away…

 

KS:      Rolf, the United States Patent and Trademark Office is about to tie a string around your finger in the form of e-mail reminders for trademark maintenance deadlines.  When dealing with trademark deadlines, it is critical that they be followed to avoid unnecessary cancellations of registrations.   In order to prevent forgetting registration maintenance filing deadlines, the United States Patent and Trademark Office will begin sending out courtesy reminders beginning in early 2015.  The reminders will be sent to all email addresses of record as listed within the Correspondence and Current Owner(s) sections of the USPTO records for the registration.

 

This will apply to Sections 8 and 71 declarations and Section 9 renewals.  It is such a simple idea that you may wonder why this has not been offered in the past.  If this idea catches on, it could spark other similar opportunities for reminders in other fields.

 

In order to receive these courtesy emails, the owner of the registration must meet three requirements.  First, the registration must be “live” on the date of sending.  Second, there must be a valid email address to the USPTO.  Third, the registrant must have authorized email communications with the USPTO.  The USPTO states that the reminders will only be sent via email and not by regular mail.   If an e-mail reminder is sent to an undeliverable e-mail address, no further attempts will be made to the registrant to remind of the upcoming maintenance deadline.  It is critical that email addresses be valid, checked, and up to date.  The USPTO also recommends that emails from the USPTO be added to a “safe senders list” and that e-mail programs not consider their communications as junk e-mail.  If the upcoming USPTO reminders are not desired, there is an opt-out mechanism for the program.  Registrants will need to delete the relevant e-mail addresses on file with the USPTO using the TEAS Change of Correspondence Address and Change of Owner’s Address forms.  Those are all available at www.uspto.gov.

 

RC:      Thank you Ken for this really important update regarding the procedures before the USPTO.  Now we have an interview with Sharaz Gill who has been fighting IPCom and other non-practicing entities in the so-called “mobile phone wars.”

 

ROLF CLAESSEN’S INTERVIEW WITH SHARAZ GILL

 

RC:      I am very excited to be joined by Sharaz Gill today.  He is managing director of Skepsis Telecom.  Skepsis Telecom is basically a revocation straw man and he is heavily involved in the phone wars and one particular case that is interesting to me is Nokia and IPCom.  So, thank you for being on the show.

 

SG:      Oh, thank you Rolf.  It is an absolute pleasure to be here and have this opportunity to give my take on the patent space as it currently is.  I should probably tell your listeners a little bit about myself first.  I think it would probably be helpful.  I have worked in all areas of the patent world.  I started life as an EPO examiner many years ago, in 1990, and worked primarily in the computers field and progressed through the EPO and finally left after 15 years.  I qualified as a European patent attorney and subsequently as a barrister in the UK.  So I have worked at all levels.  I have done patent prosecution in private practice briefly.  I have done it in-house for Qualcomm.  I have done litigation.  I was involved in some of the early mobile phone wars.  Particularly the Qualcomm Nokia cases going back to 2007 I think it was.  I subsequently jumped to HTC and defended many of their cases in Europe, most of which were against trolls as a matter of fact, so I’ve done a lot of litigation principally in Germany which is where the biggest problem for HTC was and I think that’s probably a view that most mobile phone manufacturers who are selling to Europe would actually share.  Germany is a rather difficult jurisdiction for them.  So that is my background.  Would you like to hear a little bit about straw man and what Skepsis does?

 

RC:      Yes, exactly.  So a revocation straw man like a particular company for revocation is quite new to me so I think it was very helpful in the mobile phone wars and maybe you can tell our listeners about what a revocation straw man exactly is and what your company is doing and, in particular, how you fit into the overall litigation strategy.

 

SG:      Well, I think many practitioners will be familiar broadly with the concept of straw man because it is something which is quite widely used nowadays at the European Patent Office in the opposition procedure.  Many European patent attorneys offer a straw man service there were some decisions back in the late 90’s which basically allowed this approach.  So what you are really doing is if you want to get a patent revoked, if you want to challenge a patent, then obviously if you go out and do it in your own name, you run the risk of a counterclaim for infringement because post-grant the patent can be enforced against you in any of the designated states.  It doesn’t matter if an opposition is pending, in theory an injunction can be granted.  So, ideally, you would like to be able to protect the patent without the risk of an infringement claim.  Let me tell you basically what a straw man allows.  You traditionally go to the European Patent Office and you pay a patent attorney who files for the opposition in his name.  He will help you find the prior art and he will challenge the patent.  You, of course, pay him and you hide behind him and the European Patent Office really doesn’t care who the true opponent is so it works quite well and there are quite a few straw man cases pending in various oppositions on the EPO files.  And the way to tell is when the opposition is filed in the name of a patent attorney it usually means that the patent attorney is acting as the straw man.

 

EC:      Right.  We do that as well and sometimes we just use the wife of a patent attorney or something as a straw man.

 

SG:      Yes, or a good friend.  It is a fairly common practice and we’ve all seen that.  What we found during my time at HTC was that often opposition wasn’t the best way to go and upon reexamination of myself I am a little bit skeptical about opposition and how effective it is when you are dealing with litigation.  The biggest problem with opposition, I think, is that it is so slow and it really can take four to five years, you’ve got appeals, decisions in the court system enforceable during that time unless the court decides to stay.  So opposition is very slow.  The revocation rate, I looked at figures recently, of EPO patents is only about 50% and it has been consistently around 50% for quite a few years so you know if you bring an opposition to the EPO you have about a 50/50 chance of killing the patent and it may be that the patent gets revoked in its entirety but if it doesn’t and it stands up then assuming that it is not amended, then you are in trouble and even if it is amended you may still be in trouble.  So there are a lot of things to be worried about there, particularly when you are looking at an infringement action in a national court.  So, and the other problem of course is, and you know this as a German practitioner, the Federal Patent Court in Germany, which is responsible for the validity of granted European patents for the German designation and the German ____________ will not consider an invalidity case while an EPO opposition is pending.  So it wouldn’t be inadmissible.  That is the problem you get.  If there is an opposition pending, you’ve got a problem because you can’t bring an action in the Federal Patents Court and the Federal Patents Court, of course, has a much higher revocation rate.  Many things _____ in Germany before you get to a final decision but the statistics I’ve seen certainly in the telecom sector were around 80% revocation rate so you really would be better off in the Federal Patents Court.  Of course, the problem with the Federal Patents Court is that it is very slow.  There are backlogs there again and it can take you four to five years and if you have an infringement action pending against you in one of the jurisdictions such as Mannheim then you know you could be looking at an injunction on a patent complaint nine months after the complaint is filed.  It’s usually more like a year but it could be as soon as nine months and you don’t have time for the Federal Patents Court to consider the validity, you don’t have time for the EPO to act.  So those two alternative ways of challenging the patent are not of much help to you.  So what we have ended up doing quite frequently, at HTC, was to file a UK Revocation Action and try to get them expedited.  So we get sued in Germany, and then we try to get the UK cases on very quickly and there are procedures within the English law which allow you to do that.  You can’t do it all the time, but if you can make a case then the English Courts will accelerate the proceedings in order to give guidance to the German infringement courts.  So this is something that we did fairly frequently.  We did it against IPCom, we did it against Apple, we did it against Nokia, and most recently I am thinking about my experience with HTC and I am obviously no longer with HTC but that’s where my principle experience was gained and that’s really what gave me the idea for Skepsis.

 

Now, what occurred to us while I was still at HTC, was wouldn’t it be good if we could knock out some of these patents before they became a problem.  Wouldn’t it be good if we could be proactive because when you are an in-house practitioner you know which patents are dangerous because quite often the research is against your competitors and you will see that the same patents come up again and again and again, whether it’s IPCom, Nokia, or whoever the search engine finds tends to be the same patents.  So you keep an eye on the court filings in Germany, principally, and certainly the reports that come out on the web and you can see what patents are going to be in danger and quite often you will get a licensing approach from one of these licensing companies threatening you with a patent so you have to know which patents you should be worried about.  There’s usually a period of time between the time of an approach when you first know their identity and actually getting sued.  So, it occurred to us that wouldn’t it be good if there was some straw man entity out there that actually used court based litigation rather than the EPO opposition proceeding to challenge the validity of these patents.  The benefits there are clear because if you can do that, first you are shielded from any counterclaim, you’re not in the picture for infringement, the patentee doesn’t know it’s you, and you’ve also got, if you go to the UK Court, a much high revocation rate.  In the telecom sector I think only one _________ patent stands in ___________ so you are looking at 90% revocation rate in the English Courts.  If you can get this case on an English Court very quickly and get a finding of validity, then you really are in a good position both in negotiating a license and also quite possibly for not paying at all if it looks as though the patent is going to be found invalid.  Of course the German Courts will respect the decision of the English Courts.  They are not obliged to follow it as you know but the English Courts have regard for German decisions and the German Courts in the same way have a high regard for English decisions.  So if you got an infringement action pending against you in Mannheim and an English revocation is successful, and you file a translation of that revocation with the Mannheim Court, there is a very good chance that you will get any injunction granted in Mannheim State pending the findings of the Federal Patents Court or indeed the opposition division if indeed there is an opposition pending.  So, it occurred to us that wouldn’t it be nice if there was a company that could do that?  So we looked around and there wasn’t.  There were lots, as we said, of patent attorneys who specialized in EPO proceedings but nobody was doing the litigation straw man.

 

EC:      Like proactive cancellation or revocation proceedings basically?

 

SG:      Exactly.  And proactive is the way to go in my view based on my experience.  What you find quite often, and this is regrettable I think, many handset manufacturers don’t have a strategy.  They are entirely reactive and they wait to be sued in difficult jurisdictions like Mannheim and I think we have a bigger problem in the Unified Patents Court depending on you know how some of those local divisions play out in the future.  So, to my mind that is just suicide.  It really is.  You are just asking for trouble.  You’re giving the advantage of (1) the choice of jurisdiction to the patentee, and (2) they have the benefit of the time as well.  You know, if you are reactive, the first time you see this complaint is when you first really understand the infringement and you only at that point can start looking for prior art to challenge the patent whereas, you know, if you’ve got nine months to an injunction in Mannheim it doesn’t give you very long to find the relevant prior art and file it with the Mannheim Courts in an attempt to get it to stay there and also file possibly foreign revocation actions.  So, you know, it’s not a very sensible way to do it.  If you have a strategy, then, as I say, a lot of these patents would be able to be identified in advance and be able to be knocked out before they become a problem.

 

EC:      Right.  One case that really is interesting to me because it all started let’s say the awareness in Germany for patent trolls that was the case IPCom against Nokia and you were heavily involved in this case.  So, can you summarize this case from your point of view?  Like, what kind of proceedings were going on concurrently and what strategy did you choose?

 

SG:      Yes, absolutely.  There were two defendants in the German cases in particular.  Those with Nokia and HTC.  A rather interesting combination of targets in my view given that at the time Nokia was the biggest handset manufacturer in the world.  HTC was a relatively new entrant but was enjoying some success, they had the world’s first Android smartphone out and the sales were modest but growing.  So it was an interesting combination of targets.  IPCom sued both in Germany and for reasons of court scheduling the first decision to come out, both those cases were in Mannheim among a number of cases but the Mannheim ones are the ones I will focus on.  The first decision to come out was actually the decision against HTC back in 2009 and it was the first thing I had to deal with actually just after I joined HTC.  It was on the so-called 100 path and as I think many of your listeners will know, IPCom’s portfolio was originally the Bosch Mobile phone portfolio, they purchased it and then tried to enforce it as a licensing entity and their whole goal was to bring the U.S. licensing style and  model to Europe and make it work which, you know, there’s actually nothing wrong with that as long as the patents are all such a quality that they will stand up to litigation or stand up to the close scrutiny that they get and I think it was Nokia’s view and probably HTC’s that IPCom was asking for too much money at the time and so they didn’t want to settle.  They wanted to challenge the portfolio.  In fact I think particularly Nokia was very keen and I know they dedicated an awful lot of resources to challenging IPCom’s patents far more than HTC given HTC’s sales were much more modest.  What happened though, rather interestingly, was that the first decision to come out in the 100 case was against HTC and that was back in, I think, February or March of 2009.  The District Court of Mannheim granted an injunction against HTC based on this patent and they set the bond for enforcement of the injunction at 1 million euro.  Now that bond may seem very low to your listeners, and it seemed very low to me at the time, IPCom duly posted the bond and enforced the injunction and things got very interesting because all of the sudden there was an injunction on a standard essential patent against a handset manufacturer in Germany.  I think anybody who had been following the debate on ________ knows that certain companies such as Motorola attempted the same thing against Apple in Germany fairly recently and that didn’t go so well.  It resulted in an investigation by the European Commission.  The facts of the cases were similar and if you go back to 2009, IPCom at the time were actually doing exactly what Motorola does, and subsequently Samsung did the same thing against Apple in fact, was doing exactly the same time but the European Commission wasn’t interested in an investigation at that point for reasons I won’t go into but it wasn’t, so what you got was a rather worst possible case for HTC where they really couldn’t sell their handset if they complied with the UMTS standards in Germany.  I think this grabbed the attention of the world and everybody looked as though IPCom really has succeeded with its model.  Fortunately for HTC that injunction was stayed by the Court in _____________ and the Overlands Committee.  They stayed the injunction and that patent was subsequently found to be revoked in the English Court.  Nokia filed a UK revocation action and that patent was subsequently revoked in the English Courts and a few weeks ago was finally revoked by the German Supreme Court and it was revoked by the German Federal Patent Court subsequently.  So you had a situation where you have a patent for which an injunction is awarded against a handset manufacturer in Germany, against a bond of 1 million euros, which turns out to be valid and this is exactly the problem with Germany.  I don’t want to bash Germany because there are many good things about the system, and the system works very well, and I think you know the Court in Mannheim has learned a lot over the years.  I think they were relatively inexperienced with telecom systems and _________ at that time and they have dealt with subsequent litigation in the meanwhile that I think they would be a lot more reluctant to grant injunctions on that basis nowadays.  I think certainly the bonds that are being required in the cases of finding infringement have gone up dramatically to the 100 million mark, depending on handset sales.  It is a very different environment now.  But that’s pretty much what happened.  There were a whole bunch of other IPCom patents around and a number of which were assessed against HTC.  Nokia very proactively challenged a great many IPCom patents in the English Court.  They used this preemptive approach to attack the patents before they became a problem and I think the figures I remember now Nokia issued a press release as one time saying that they challenged roughly 63 of the IPCom patents and managed to get them either revoked or significantly amended so that they no longer posed a threat.  So Nokia spent an awful lot of money at challenging this portfolio and I think the figure I heard at conference recently was 40 million euros, but I wouldn’t want to be quoted on that, but I think it was about 40 million euros.  That is the figure that someone suggested that Nokia actually spent on challenging IPCom’s patents.  So, obviously, a very significant expenditure.  The result is, of course, that the, as far as we know anyway, Nokia certainly didn’t settle with IPCom and that said the dispute is ongoing so nothing has been going on for I think for six or seven years now.  So that is also a measure of IPCom’s determination to enforce its portfolio and so obviously it has a belief in its portfolio and in that sense there is obviously a balancing exercise to be done against the cost of litigation and the risk to your business against what the patentee is asking for in terms of a reasonable royalty.  That’s an internal business debate I suppose for the CEO’s of handset manufacturers but you know if you spend 30 million on litigation and still be in the fight until the end of it, you have to ask yourself whether that was the right way to go.  Obviously Nokia has their reasons and I think there was a lot of reaction at the time to the idea of a non-practicing entity being set up in Europe and actually the notion that it would perhaps start, open the flood gates, for other NPEs coming from the U.S. to do the same thing.  I think it was unfortunate and met with a lot of resistance within the industry.  Deutsche Telekom, Vodafone  as well was very involved in those cases.  They were the principal defendants in several of the actions.  So, there was a lot of determination to defeat IPCom.  You know, to IPCom’s credit that they are still going in the face of all this and it is rather an interesting situation the way it’s panned out.  In the past I would have been more partisan about the whole situation when I worked for HTC then your view is that any NPE that sued you is bad.  I don’t think it is quite that clear-cut anymore.  I think as I age and learn a little bit more about the industry, I do appreciate that if you invest in R&D and develop technology then as a patentee you have a right to recover reasonable royalty.  I don’t think anybody has a problem with that.   I think that’s fairly fundamental.  The whole purpose of the patent system is to reward innovation and if you can’t enforce your patents, then why innovate.  But there is a balance, isn’t there?  And I think that’s where the courts have let a lot of well let both sides down actually in a way because these protracted disputes don’t help anybody.   As a manufacturer it causes instability in your business.  There are so many threats of injunctions over the years from IPCom patents that HTC’s and Nokia’s businesses have suffered disruption and then on the other hand you can see IPCom’s position where they spent a lot of money buying a portfolio from Bosch which is a reputable company and obviously spent a lot on R&D they feel they should have a right to some recompense for the R&D that Bosch paid for and enough said you can see their point too.  I think the biggest problem with the Nokia IPCom and HTC IPCom is that they went on too long.  They’ve gone on far too long.  There has been sort of an inability in the Court system to resolve this to help the parties resolve this so that’s really my view looking back on it.

 

EC:      Right.  So, you have been involved in many of the different proceedings involved for lots of defendants against NPEs.  And you have probably developed, together with the other defendants, strategies to fight against NPEs.  What would be your five top tips for our listeners if they would be attacked by an NPE to defend themselves?  What did you learn in the last couple of years?  What kind of lessons do you what to give our listeners?

 

SG:      Well, I think the first thing is, and this comes out of really what I have been saying so far, don’t wait to be sued.  Most of the time you know which patents are going to be a problem for you.  If you wait to be sued, you give the advantage to the patentee.  Now, as I said, Mannheim is a preferred jurisdiction for many patentees.  They like it, it’s fast, the scrutiny of validity can sometimes be limited, decisions can be a little bit erratic at times, it is a dangerous place to be taken.  So if you wait to be sued, you are automatically giving the advantage to the patentee, so be more proactive.

 

I think that flows into my second point which is that do consider using a straw man.  The advantages are very clear, you are out of the litigation, you can challenge these patents, you will save a lot of money because there are no counterclaims against you, and you may end up, if you are lucky, having a situation where you don’t pay any royalties.  But if you wait and you are sued, not only do you lose the advantage of choice of jurisdiction and timing and patents, you also incur higher legal costs because you are filing the invalidity case then reactively but also paying for to defend the infringement case, not to mention the risk to your business if there is an injunction.  So that is point two, do consider using a straw man.  It may be that you feel with the EPO it is a better way for you to go but in numerous experiences I don’t think that is the case and it sounds like shameless advertising for Skepsis but I do absolutely think Skepsis offers a very effective service in situations like this for companies that are willing to correct it.  That is when Skepsis works best.  If you wait, you’ve got problems.  It doesn’t mean that Skepsis can’t help you, certainly we might be able to get cases on faster in the UK because we are not dealing with infringement counterclaims and there are fewer issues so we might be able to challenge that faster in the UK than you can if you were to get sued in Mannheim or one of the German Courts.  You know, I think straw men are a good thing.

 

Point three is avoid the EPO opposition where you can.  If you determine not to use a straw man and you want to do it yourself, then the Federal Patents Court is probably the better forum for you.  It is not going to be any slower I think than or faster than the EPO but if you ever get that far, as far as a decision, you are more likely to get a favorable decision in the Federal Patents Court in my view.  Of course, if you file the opposition then you preclude yourself and everyone else from filing in the Federal Patents Court nullity actions so I think stay out of the EPO.  I think, if you do get sued unexpectedly, particularly in Germany, then do consider filing some kind of foreign revocation action.  The UK is the traditional go-to venue for that because you can get a case expedited, you can have it accelerated, so you get a decision to help guide the German Court.  Pretty much, if you get an invalidation from any respective Court in Europe, the German Courts will consider it and they are obliged to under the German Supreme Court case law.  So you know whether you go to the Neatherlands or you go to the UK, always consider filing a foreign revocation action to help provide guidance to the German Court.  And that would be my point four.

 

I think one thing we discovered, in Mannheim in particular, was that if you can get the bond payable for enforcement in the injunction set at a level which is reflective of your potential lost sales, if the patent is subsequently found invalid, then you are in a good position because many trolls will find it difficult to post a bond of that size.  I’m talking about the one hundred million sort of level.  I think Apple didn’t succeed in doing that against Motorola if I recall.  I think it was in Munich.  But they got the bond set at one hundred million and I think they found it very difficult.  So if you do have significant sales in Germany, do put in affidavits or whatever it takes to demonstrate that your potential lost sales are going to be very, very high and in that sense you really inflate yourself because it’s alright if a non-practicing entity gets an injunction against you because that’s nearly automatic in Germany if they find an infringement, but enforcing it is another thing, it’s quite a separate thing.  And that requires the posting of a bond and a lot of people overlook that and that’s actually one aspect of the German system, it’s actually a safeguard which is built into the German system which I think often gets disregarded.  People think Germany is a dangerous jurisdiction.  There are mitigating factors and safeguards in the German system which allows a defendant in an infringement case some piece of mind.  So if you can get the bond set higher, I think that is probably the final piece of advice I would give.

 

EC:      Very good.  So, one question I have is you are saying to stay out of the EPO and this might be probably also a decision that would be relevant to cost issues, right, so many people use the EPO and opposition proceedings to save costs because then they can destroy the patent centrally and they don’t have to file revocation proceedings in each and every country and you are saying okay stay out of the EPO because the revocation rate is really low and go national and that would be that you are suggesting to file revocation proceedings maybe in the UK first and then also other countries?  Or do you think in your experience one country is enough?

 

SG:      I’m wasn’t saying that the EPO revocation is very low but they are lower than the National Court.  I think about 50% revocation rates at the EPO.  You make a very valid point there Rolf because yes National Court fee are much more expensive and yes central revocation at the EPO is going to be far more cost efficient if you get one.  That’s the first thing and secondly is when you get it.  When you are dealing with litigation you know costs are less important.  I wouldn’t say they are unimportant but they are less important then when you are being sued.  If someone is going to take your handset off the market, assuming we are talking about mobile phones, and that could cause potentially irreparable harm because you know you lose, even if you can modify your handsets or your product to get around the infringement, you still have this damage done to your reputation, this damage done to your ability to supply your credibility as a supplier is undermined.  The destruction to your business is something you really don’t want as a manufacturer.  So, of course, you are willing to spend more money and that is just a factor of life.  You’ve got to do it.  So suddenly the budgets which were tight become much looser and the company can be fighting for its life effectively so it’s got to pay and lawyers do as well.  But in my experience, if you can knock out a patent in the UK, I would be very surprised if a German Court would enforce an injunction against that same patent, assuming the claims were the same and I think a German Court would stay it almost certainly.

 

RC:      Yes, until the Federal Patent Court decides basically, and then the Federal Supreme Court.

 

SG:      So if you knock it out in the UK you’ve probably knocked it out in Germany or at least delayed the risk until the Supreme Court has looked at it and because the English Courts are fairly reputable and they do a very thorough job because, you know, it is a very expensive procedure, you do have expert evidence, you have judges who are specialists, you know like you do in Germany, you are going to get a decision which is well reasoned and so again I’d be equally surprised if the German Court didn’t follow it to the extent the facts were the same.  So in that sense you can be sure the German Courts will probably try to remain consistent with the English decision.  You know the Dutch Courts as well which is another jurisdiction for infringement action, they would most likely be skeptical about the validity of the patent if the English Court already found it being valid.  French Courts, well, you know, the traditional amity between the English and the French but I do think the Courts do respect each other and I think a finding on validity would be mutually respected.  So in that sense I think you know for the key jurisdictions, if you can knock it out in the UK, you’re going to get stays or at least a lot of skepticism from Courts in Germany, Netherlands, France, and probably the majority of European Courts.

 

RC:      Thank you very much.  That was very, very helpful to get such a good insight into fighting NPEs and the strategies involved so thank you very much for being on the show and I want to ask you to tell our listeners where they could reach you if they wanted to reach you.

 

SG:      I am more than happy to do that.  First thing let me thank you for giving me this opportunity.  It has been an absolute pleasure talking to you, Rolf.  The easiest way to find Skepsis is to go on our website which is www.skepsis-telecom.com and all our contact details are on there and we would be more than happy to talk to you.  We give general advice without any obligation.  I’m a nice chap.

 

RC:      Thank you very much for being on the show.

 

SG:      Okay, thank you very much Rolf.  Have a good evening.

 

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You have been listening to an episode of IP Fridays. The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms. None of the content should be considered legal advice. The IP Fridays podcast should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents of this podcast are intended for general informational purposes only and you are urged to consult your own lawyer on any specific legal questions. As always, consult a lawyer or patent or trademark attorney.

 

 

Copyright 2014

All rights reserved.

The songs in the intro and extro are licensed under a paid license issued by GEMA.

 

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