Warner-Lambert is a subsidiary of pharma giant Pfizer and it has a patent for a drug called pregabalin, sold under the trade mark Lyrica. The patent was the subject of a decision of Mr Justice Arnold [2015] EWHC 2548 (Pat), which the Kats pawed over here. His decision was upheld by the Court of Appeal in Warner-Lambert v. Actavis and Generics [2016] EWCA Civ 1006, unravelled by the Kats here.
The case touched on a number of issues, both substantive and procedural, but the one of most interest to this GuestKat is the decision on insufficiency, based on which several claims of the patent were held invalid. As a result, Pfizer will not have patent protection for Lyrica in respect of its use as a treatment for certain types of pain, because it was found that there was no basis for saying that it was "plausible" that pregabalin would be effective for all types of pain. Against that background, the patentees have appealed to the UK Supreme Court, which has agreed to hear the case. The main issue before the Supreme Court is whether “plausibility” should play a role in the statutory test for sufficiency of disclosure.
Wednesday, 31 May 2017
Implausibly incredible or just plain insufficient?
Never Too Late: If you missed the IPKat last week!
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Kat smelling interesting news |
Monday, 29 May 2017
‘Display At Your Own Risk’: A Tour into ‘Copyright Surrogacy’
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'DAYOR' exhibition - Glasgow 2017 (...and Kats wondering which they prefer, Mona or 'surrogate' Mona) |
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Another 'GLAM' Cat (Photo by Ree Drummond / The Pioneer Woman) |
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Surrogates or not: Kats cant touch! (DAYOR exhibition - Glasgow 2017) |
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Studying policies (all day long), terms and conditions (bring it on) ....but metadata : no can do. (DAYOR exhibition - Glasgow 2017) |
This is a welcome victory for public domain advocates after the recent blow delivered to their campaign by the EFTA Court’s Municipality of Oslo decision last April (see here and here). In this decision, the EFTA Court confirmed that public domain works could be registered as trade marks, without falling foul of the 'public policy' or 'morality' exclusions provided by the Trade Mark Directive (Article 3(1)(f)). Some may fear that this interpretation will allow the creation of new "copyright mutants"[1], or indeed, encourage cultural institutions to secure unlimited "surrogate IP rights" by using trade mark rights to reclaim out-of-protection works from the public domain.
This debate reveals that the relationship between the public domain and intellectual property rights remains difficult to disentangle - even in cases involving traditional forms of artistic expressions like visual artworks. It will be interesting to see how national governing bodies and leading cultural institutions choose to adapt their policies going forward.
[1] Dastar v. Twentieth Century Fox, 539 U.S. 23 (2003) ; European Copyright Society, Trade mark protection of public domain works: A comment on the request for an advisory opinion of the EFTA Court (1 November 2016) 7.
Sunday, 28 May 2017
Judge Alsup driving forward Uber-Waymo trade secret dispute amongst "red flag" disclosure hearings
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On this Memorial Day Weekend, the AmeriKat's friend Chi has better things to do then ponder trade secrets and interim hearing strategy - like sitting on a hot tub roof (with thanks to Kat friends Jim Pooley & Laura-Jean Anderson) |
Since the Kat last reported on the trade secret and patent dispute two months ago, the following has transpired:
- Levandowski asserts his Fifth Amendment rights against self-incrimination and then later steps down as head of Advanced Technologies.
- Warnings (and an order) from US District Judge Alsup is given over excessive redactions in the proceedings. Pleading the Fifth also potentially impedes Uber's ability to advance discovery documents that serve as its defence (as opposed to Levandowski's defence).
- Judge Alsup rules that Levandowski's Fifth Amendment right does not shield him from having to disclose a due diligence document that was prepared when Uber was acquiring Levandowski's start up, Otto.
- Judge Alsup therefore orders Levandowski to provide information or logs setting out documents over which he claims privilege and which he asserts should not be disclosed in the proceedings. The due diligence report was ordered to be included in this log. Judge Alsup wrote that:
"At the risk of repetition, the very purpose of a privilege log is to allow a fair way to test a claim of privilege. That traditional privilege log requirements should be verboten merely because they might connect the dots back to a non-party in a possible criminal investigation is a sweeping proposition under which all manner of mischief could be concealed."
- Uber's request to have the dispute decided in arbitration is rejected on the basis that there was not enough "intertwining" between the claims in the trade secret dispute and the arbitration clauses that were made between Levandowski and Google as part of his employment agreements.
- Waymo is partially granted their preliminary injunction motion (sealed order due to confidential information).
- Judge Alsup refers case to US Attorney for investigation of the possible theft of trade secrets. This in no way guarantees that the US Attorney's Office will in fact open a criminal investigation.
- Uber reportedly warns Levandowski to comply with its court orders or risk being fired.
- Uber files notice that it will appeal the arbitration ruling.
- On Wednesday, the Court orders Levandowski to do better on his privilege logs by Friday.
- On Thursday, US Magistrate Judge Corley says Uber's disclosure (or non-disclosure) of key documents (including due diligence report - argued to be protected by attorney-client privilege - and term sheet) "raised a giant red flag". Orders the unredacted term sheet be disclosed.
- Trial has been set for October 2017.
The IPKat will keep readers updated as the case progresses. In the meantime, the AmeriKat recommends reading this Recode article given it pre-dates the dispute and, with the benefit of hindsight, makes the Otto-Uber deal and resulting dispute click into place.
The meaning of "red carpet" in two and three dimensions: from Ancient Greece to Cannes
The dictionary tells us that a “red-carpet” is a “long, red floor covering that is put down for an important guest to walk on when he or she

As described by Thomas Page on cnn.com on May 26th, in his article—“Greek tragedy and railways: An unexpected history of the red carpet”, the “red carpet” has a history reaching back to ancient times.
“Arriving with a sting in its tail, the red carpet has deadly origins. But its modern day incarnation, synonymous with wealth, glamor and stardom, is about as far removed from its beginnings as you can imagine. So how did we get to here?”The literary use of the term goes back to the Greek playwright Aeschylus, in his play, "Agamemnon", written around 458 BC. Page notes that Clytemnestra, Agamemnon's wife, talks about a "floor of crimson broideries to spread / For the King's path." The question is why the reference to the “floor of crimson broideries.” Page brings the view of Amy Henderson, historian emeritus at the National Portrait Gallery, Washington, who observes that --
"Agamemnon goes away to fight (in the Trojan Wars) and leaves his wife Clytemnestra at home. He's away for a long time, and they both find significant others. When he comes back he's in love with Cassandra and brings his concubine home with him."While Clytemnestra has carried on her own acts of infidelity, she also has the burden of the memory that Agamemnon had sacrificed their 15-year-old daughter so, with the help of the gods, he could benefit from the winds necessary to sail. And so, Clytemnestra proclaims--
"Let all the ground be red / Where those feet pass; and Justice, dark of yore, / Home light him to the hearth he looks not for."According to Henderson, Clytemnestra “rolls out the crimson carpet to convince him to walk into his death.” As Page sees it, “Clytemnestra had grim proof of concept that people will follow a red strip of textile.” The end reminds one of a Spaghetti Western—either Clytemnestra murders her husband, in the bath no less, or her lover kills Agamemnon. Whatever happened at the end, the first “red carpet” is a long way from the Academy Awards and the Cannes Film Festival.
We move forward over 2000 years. According to Henderson, there is documentary evidence that James Monroe, the fifth U.S. president, in the 1820’s, would disembark from a boat, presumably via a red carpet. Later, the carpet was tied to the railroads. As Henderson notes--
"In 1902, New York used plush crimson carpets to direct people boarding the trains."While the red carpet itself does not appear to have been anything special as a matter of quality, nevertheless since it was used in connection with first class passengers, it came to be identified with high social status. This seems to have led to the use of the term-- "red carpet treatment". Hollywood soon followed, blending the sense of “the special” as embodied within the early 20th century meaning of the term with the actual use of a red carpet to promote the premiere of movies.
It was Sid Grauman who apparently first did so in 1922, in connection with the movie, “Robin Hood”. Down the red carpet at the theatre walked such superstars of the silent movie era as Douglas Fairbanks and Wallace Berry. The effect was almost instantaneous. Again, in Henderson’s words--
"the idea of glamour became instantly associated (with it). For the actors, it was all about you, and that of course is what Hollywood loves."From movie launch, the red carpet then moved mainstream to the Academy Awards. In 1961, the Academy of Motion Picture Arts and Sciences incorporated a red carpet as part of its presentation format. Then, as now, format might be a difficult thing to protect by IP, but the red carpet was on its way to taking on a transcendent meaning. Henderson observes—
"Of course, it was black-and-white... (but) the process of the runway culture was more important than seeing it in red to begin with."The broadcast of the Oscar ceremonies went color in 1965, and with it, the "red carpet" became mainstream among home viewers. The "red carpet" has become a staple of other events, perhaps most notably the Cannes Film Festival. So what do we make of the "red carpet" as a matter of IP? This Kat has three thoughts.
First is the fascination with the color red. Red, as the color of blood, related both to life and death, dates back thousands of years. More recently, psychologists, neuroscientists and the like have studied the hold that the color holds over us. Much of this is beyond this Kat's catnip grade, but Kat readers are encouraged to delve into the subject.
Second is the development of the physical object as a symbol of status. No trademark here, even of the three-dimensional kind. Still, the presence of the red carpet in various settings continues to connote glamour, irrespective of the quality of the carpet itself. Indeed, the red carpet used at the Oscar ceremonies is destroyed at the conclusion of the ceremony, while that used at Cannes is recycled as pellets for use in packaging. Accordingly, it differs from the luxury watch, whose allure is embodied in the affixed mark, or the diamond, whose value is largely measured by its price. Here, the concept of the red carpet merges with the object itself, at least for few hours; the notion that future red carpets, if used in the appropriate settings, will also connote glamor, is unimpaired.
Third is the use of term in a two-dimensional manner. There are two aspects here. First, consider the dictionary understanding of "red-carpet treatment", namely, "very special treatment; royal treatment.” Obviously, this meaning is connected with the significance that has already been attached to the three-dimensional object. As such, it has become part of our modern lexicon.
But having come to take on such a laudatory connotation, one wonders how use of the term "red carpet" has fared as a trademark. After all, given its laudatory meaning, one might expect that it will be viewed as lacking distinctiveness. This Kat was therefore surprised to find that on the U.S. Trademark Office database, there are 299 entries for marks comprised or consisting of "red carpet." Slightly more than half of these marks are now inactive, but compare it with "green carpet" (31), "blue carpet" (10), and "brown carpet" (0!). Despite the fact that "red carpet" carries with it a potentially non-distinctive trademark meaning, it has fared much better as a mark than other forms of descriptive use of the name of a color together with the word "carpet."
A carpet is a carpet is a carpet--unless it is the unique story of the "red carpet".
Photo on lower left by Ovedc
Appointed Person issues first appeal decision in a design case
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Union Jack Kat |
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Valid design? |
Friday, 26 May 2017
Friday Fantasies
We want you. |
Please note the closing date for receipt of applications:
18:00 Monday BST. 5th June, 2017.
Thursday, 25 May 2017
Life as an IP Lawyer: Singapore
The AmeriKat's professional life, be it on the Kat or sat at her desk litigating her hours away, involves a huge amount of coordination, support and opposition with lawyers from all over the world. One of the IPKat's key objectives is to bring this global IP community closer together by sharing IP decisions, legislation and practice from across the world with our readers, with the aim that by understanding our unique perspectives on the culture of IP practice we can work together to make IP a success story for innovators, creators, users and the public. With those grand aims, the AmeriKat thought it would be worthwhile to ask the next generation of global IP lawyers to illuminate IP practice in their jurisdiction, as well as to give readers some fun reading over their lunch-al-desko...
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Aaron Thng |
What can you see from your office window right now?
Ventilation shafts, someone else’s roof garden, and if I crane my neck, a bit of the Singapore river.
When did you know that you wanted to pursue a career in IP?
It’s always been something I was interested in, because of its connection with art and design. Also, the concept of being able to own, and extract value from, something intangible is something I find fascinating.
Walk us through a typical day...
I get up at 8, and try to get in a bit of reading before work. Once at the office, its coffee, news from NextDraft (Dave Pell’s review of the day past) and then, work proper.
What are the key differences in your system that client/other lawyers from outside the jurisdiction find surprising or strange?
Because Singapore is tiny, our courts are not divided into federal or state courts. There is the Supreme Court, which consists of a High Court and a Court of Appeal, and then the State Court, which handles most first instance cases of lower value.
That, and our long judgments. A short judgment here usually weighs in at around 50 pages.
As the IPKat's readers are likely eating their lunch while reading this, what is a typical lunch for you?
Frog leg porridge. It’s a rice porridge with braised frogs, usually cooked in a clay pot.
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Singapore |
With so many businesses, especially internet start-ups, being able to operate so easily across borders, the concept of "jurisdictions" has become a lot more dynamic. A holistic enforcement of IP rights now usually requires coordination between multiple parties and multiple sets of lawyers, across jurisdictions.
What are the misnomers that people have about IP practice in your jurisdiction?
Most people don’t immediately see the value of IP until they run into problems with it. This is an oversight I try to disabuse my clients of.
If you could change one thing about IP practice in your jurisdiction, what would it be?
I’d want to streamline the discovery process. In a lot of IP cases, parties refuse to disclose documents because they claim them to be confidential. As a result, many cases become bogged down at the discovery stage.
What advice do you give clients when they are looking to protect or enforce IP rights in your jurisdiction?
That based on how open markets have become, it is seldom sufficient to simply apply for protection in one jurisdiction, but not the next. This applies especially if your business is internet-based.
What gives you the biggest thrill in your job?
Defending people and businesses against over-zealous enforcement of IP rights, and leaving work with nothing left in my in-tray.
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View from Aaron's office |
Hollywood studios are starting to take action against illegal downloaders in Singapore. It started with the rights holders behind the Dallas Buyers Club movie, and now a few more studios have entered the fray. It remains to be seen how successful they will be, though.
To be successful in your jurisdiction, what are the key skills a young IP lawyer needs?
An interest in everything. IP law percolates through every industry.
What other jurisdictions do you work with the most in your practice?
Malaysia (naturally), Japan, and the US.
Looking into your crystal ball, where do you see the profession in 10 years’ time?
Paperless law firms, with many processes automated, and with skeletal staffing. I’m curious to see how AI robots, like ROSS, will improve the profession.
If you could practice IP law anywhere else in the world for a year, where would that be and why?
Silicon Valley, because that place, more so than anywhere else, drives innovation and disruptive technologies.
If you could have lunch with someone famous in the IP world (judge, lawyer, inventor, politician, alive or dead), who would that be?
I would want to chill with Chief Judge Alex Kozinski of the US 9th Circuit. He can choose whatever he wants for breakfast, but I’d want to pick his brain on the theory of intellectual property, and of law in general. I’d also want to pick up some writing tips.
What is the best piece of advice you have ever been given?
That litigation is actually a lot like tennis - they’re really all about angles. Also, in both, the players hold themselves to a strict codes of ethics, there is no room for brazen aggression or cheap shots, and sometimes, a delicate touch is all you need.
If our readers were to come to your city, what are the top three things you recommend they see, do and eat (in that order)?
1. Coney Island, in the north-east of Singapore, because it is the one place here that approximates ethereal beauty. Also, there are many nice birds.
2. The Singapore Zoo (one of the best rainforest zoos in the world) is always good. I visit it regularly.
3. Kway Chap, which is a dish of flat, broad rice sheets in a soup made with dark soy sauce, and served with pig offal, braised duck meat, bean-curd, salted vegetables, and hard-boiled eggs. I doubt it’s for everybody, but at just $3, there’s nothing better.