A ‘Patent Troll’ Down-Under? Why Vringo Has Sued ZTE Australia

“It is a truth universally acknowledged, that a patent troll in possession of a good portfolio must be in want of a victim.”

– Jane Austen, Pride and Prejudice and Patent Trolls

I am on the record, on this blog and elsewhere, as being of the opinion that Australia is not a jurisdiction in which the ‘patent troll’ business model can work effectively.  I have expressed the view, in particular, that the US litigation system, and related patent laws, make that country an almost uniquely happy hunting ground for patent trolls.

So, you might expect that I would have been surprised to learn that US-based non-practising entity (NPE) Vringo Infrastructure Inc has commenced patent infringement proceedings in the Federal Court of Australia against the local subsidiary of Chinese telecommunications equipment manufacturer ZTE Corporation.

I confess I was a little surprised, until I remembered who Vringo is, and where I had seen the company’s name before, and realised that this lawsuit is not typical ‘troll’ activity, but is more likely part of a global patent licensing strategy conducted at least partly for the benefit of the very much practising entity, Nokia.

As I shall explain further, I do not consider Vringo to be a patent troll – at least not when it comes to the patents at issue in the dispute with ZTE.  However, I have to acknowledge that a number of online media outlets have used the ‘t-word’ in relation to Vringo, e.g. smartcompany.com.au and itwire.com (and again, here).

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Tags: Australia, Licensing, Patent litigation, Patent pools, Smartphone wars, Trolls

‘Raising the Bar’ Transition Begins to Bite!

Euroceltique S.A. [2013] APO 30 (9 May 2013)
Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc. [2013] APO 34 (30 May 2013)


Two recent decisions of a Delegate of the Commissioner of Patents have focussed attention on transitional provisions in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.  In each case the outcome has been unfavourable to the applicant.

1. In the first decision, Euroceltique S.A. has been denied permission to amend its patent application while an appeal of an earlier opposition to the Federal Court remains pending, as a result of the operation of new section 112A of the Patents Act 1990.
2. In the second decision, a request by joint applicants Sunesis Pharmaceuticals, Inc. and Millennium Pharmaceuticals, Inc. for an extension of time to file a request for examination under the former law, predating the Raising the Bar reforms, has been refused.

As regular readers of this blog would be well-aware, the majority of provisions in the Raising the Bar Act came into effect on 15 April 2013.  Naturally, this act included transitional provisions to define what should happen in the case of applications and other actions commenced before the commencement date, but which remain in-progress after that date.

The most important of these transitional provisions cover the substantive changes to the standards required of a valid patent, including the tests for inventive step, utility, and the level of disclosure required in order to support the full scope of protection claimed by an application or patent.  For these types of reforms introduced by the Raising the Bar Act, the new standards may apply to applications filed before 15 April 2013, but only if a request for examination is not filed until after that date.

However, other amendments made by the Raising the Bar Act have alternative transitional provisions and, in particular, some had immediate effect from 15 April 2013 even in respect of matters already in-progress.

In the short time since commencement of the Raising the Bar reforms, the Patent Office has already had reason to consider the effect of each of these types of transitional provision.

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Tags: Amendments, Australia, Extensions of time, Raising the Bar

‘Raising the Bar’ Raises Its Head in Federal Court

Reckitt Benckiser Healthcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd [2013] FCA 583 (28 May 2013)

Less than two months after the majority of provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came into effect, the revised law has been considered in a decision of the Federal Court of Australia.

Two aspects of the recent patent reforms have arisen in the dispute between Reckitt Benckiser Healthcare (‘RB’) and GlaxoSmithKline Australia Pty Ltd (‘GSK’).  The first aspect relates to new provisions which are intended to prevent patents from being declared invalid on ‘technical’ grounds arising from a faulty chain of title from an inventor to an ultimate patent-holder.  The second aspect relates to raised requirements for the standard of disclosure required in a patent specification under section 40 of the Patents Act 1990.

To make matters interesting, the decision manages to wrongly interpret the effect of the reforms relating to disclosure under section 40.  Fortunately, on this occasion the error has had no impact on the outcome.  However, the fact that such a seemingly simple error could be made is cause for concern in view of the extensive amendments made to the Australian intellectual property laws, and the long time frame over which the courts will gradually come to consider each of the changes.

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Tags: Australia, Entitlement, Raising the Bar, Validity

Molecules, Information, Artificiality, Genes and Patents

On 13 June 2013, the US Supreme Court issued its much-anticipated ruling in Association for Molecular Pathology v Myriad Genetics, Inc.  The full ‘slip’ opinion is available from the Supreme Court’s website [PDF, 147kB].

As has been widely reported, the decision was unanimous in finding Myriad’s isolated DNA claims to be unpatentable.  Justice Thomas authored an opinion on behalf of eight judges, and Justice Scalia concurred with the majority judgment (and concurred in part with the reasoning).

The judgment addresses the fundamental question of whether ‘isolated DNA claims’ are directed to molecules uniquely brought into being by human endeavours, or to information content encoded in those molecules which is simply extracted from nature.  The Supreme Court has taken the opposite view on this issue from the majority in the US Court of Appeals for the Federal Circuit (CAFC).  A single judge of the Australian Federal Court decided the equivalent case back in February of this year, reaching the same conclusion as the US CAFC, although for different reasons.

With the Australian decision going on appeal, and due to be heard before five judges of the Federal Court (Chief Justices Allsop, with Justices Dowsett, Kenny, Bennett and Middleton) on 7 and 8 August 2013, the question now naturally arises as to whether the Australian court will be influenced by the US decision.

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Tags: Appeal, Australia, Genetic technology, Patentable subject matter, US

Parody: Hitler Receives a Threat from a Patent Troll

Subtitle parodies of the pivotal ‘breakdown’ scene from Oliver Hirschbiegel’s 2004 film Der Untergang (‘Downfall’) are so 2008!

Even so, when I found out this week that there is a web site which makes it easy for anyone to create their own Downfall parody video, I just had to give it a go.

If you have somehow managed to miss out on the Downfall parody phenomenon over the past few years, you can easily catch up at the Know Your Meme website.  Know Your Meme documents how these parodies have been met with approval by Hirschbiegel.  The production company Constantin Films was initially somewhat less impressed with what it saw as an infringement of its copyright in the film, but eventually bowed to the inevitable.

I am conscious that not everyone will consider Hitler to be an appropriate source of comedy.  The events of World War II, and the atrocities committed in the name of the Third Reich, can, for some people, never be the subject of humour.  If this is you, then please do not play the video.  It is certainly not my intention to cause offence.

If you have not seen the (undoctored) film Downfall, then I would encourage you to do so.  It is a powerful piece of cinema, and (as is apparent even from the parodies) the portrayal of Adolf Hitler by actor Bruno Ganz is both mesmerising and chilling.  The enduring influence of the film, which has doubtless been seen by millions of people born decades after the end of WWII, helps to ensure that we will never forget what happened.  And as philosopher, essayist, poet and novelist George Santayana famously wrote in vol. 1 of The Life of Reason: ‘Those who cannot remember the past are condemned to repeat it.’

So, without further ado…

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Tags: History, Humour, Trolls