After lunch on Day One of the Israel AIPPI conference, I attended a session directed to IP professionals that discussed enforcement of IP rights in US, Europe, Asia and Israel.
The Honorable Judge Amiram Binyamini spoke first, and addressed the inefficiencies of separately hearing requests for injunctions, the validity of the patent in question, whether there is, indeed infringement and what the damages should be. Judge Binyamini criticized the Israel Supreme Court guidelines which hold the presumption of validity, and expressed a preference to get a basic handle on all the issues, even if perfunctorily, at the first hearing, so that, on occasion, he could provide an indication to the parties as to which way the wind is blowing, so that they would be encouraged to come to an out-of-court settlement or to drop the case altogether. He was particularly critical of bifurcated and trifurcated proceedings where different forums heard different aspects of the case, such as the patent office considering validity and the court, infringement. the talk was interesting and thought provoking, if a little heavy after a substantial lunch.
The judge quoted Lord Esher, Ungar v Sugg:
““… that a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent”.
Mr Trevor Cook from Bird & Bird spoke about the the new European Unitary Patent and the Unified Patent Court. His British accent and style of delivery are similar to those of Richard Attenborough and I found myself day dreaming about the new European unitary patent snuffling its way through the undergrowth.
Mr Pravin Anand gave a very good presentation on recent trends in Indian law. He really put the recent pharmaceutical patent litigation in India into perspective but noting when pharmaceuticals became patentable subject matter under Indian law. Despite the obvious differences in size between the Indian and Israeli populations, it seems that in this area, there is a strong common interest. Mr David Hashmall of Goodwin and Proctor then spoke about the rocket docket and forum shopping in the US, including proceedings at the ITC. Material I had heard before, but well presented.
Professor Phillips attended the same session, and his report may be found here.
Whilst the above session was taking place, there was a seminar in claim construction and patentable subject matter, featuring Edward D Manzo of Husach Blackwell discussing claim construction around the world and the America Invents Act, Matthieu de Rooij offering advice on patent drafting for prosecution in Europe, Deputy Commissioner Jacqueline Bracha discussing Israel Patent Office Guidelines to provide clarity, and Dr Cynthia Webb discussing patentable and non-patentable subject matter.
After a tea break, I attended a very enjoyable session on Business and Taxation Aspects of IP. John Fisher, an accountant at Somekh Chaikin, who had apparently gone to the same high school as me, albeit a few years earlier, gave a very entertaining lecture with excellent slides. The main point was that after realizing that Starbucks had made some 3 billion quid in the UK but had paid a mere 6.5 million in corporate taxes, the British govt. understood that by paying royalties for use of trademarks and the like to a Dutch holding company, Starbucks were avoiding taxes in a legal but immoral manner. The issue was brought to the attention of the G6, who are working with other leading economies to close this loophole and to ensure that corporate tax will be paid where the work is done.
Ms Nava Swersky Sofer spoke about commercialization and suggested that instead of start ups, an alternative method of monetizing might be to interest an existing company to take on a project and develop it in house, since few start ups around a single project made the transition into viable companies, which generally needed a range of projects. Unfortunately, she didn’t address the issue of how the entrepreneur was supposed to interest an existing company in this manner.
Yuval Horn noted that the Israel govt. was getting aggressive in going after successful patentees where it believed that the patent was a service invention. He also discussed the royalties due to the govt. where loans were taken from Chief Scientist to provide initial funding.
Whilst I was learning about taxation, Professor Jeremy Phillips was learning about Israel trademarks. See here. Judge Michal Agmon-Gonnen of the Tel Aviv District Court) was true to form, by suggesting that, considering the “NP” part of the conference title, we’ve given too much profit to the trade mark owner. Once upon a time there was just confusion doctrine, then came unfair competition and ultimately dilution — “which has nothing to do with consumers whatsoever”. She apparently cited her controversial ruling regarding four-striped trainers that were not likely to be confused with Adidas’ three striped shoes, which, has since been overturned by the Supreme Court. I gave Professor Phillips a ride back to Jerusalem the following day, and I understood that he found Ms Agmon-Gonnen’s views intellectually stimulating, but out of sync with general trademark practice. I noted her other ground-breaking IP decisions that have since been overturned…
This event was followed by the Gala Dinner. The food was truly superb and Kosher! Yes, I know that that is no big deal for an IP conference in Israel. It is, however, a big deal for AIPPI conferences. At AIPPI Paris, I was a guest of honour, but they still couldn’t arrange Kosher food for me at the Gala Dinner.
This is the menu:
Roasted St Peter’s fish fillet, fettucine, green vegetables and Pesto
Chicken Breast filled with onion jam and almonds, chicken liver and delicate chili sauce, saffron rice
Phyllo (cigar) filled with caramelized apples, poppy seed ice cream, hazelnut praline cream.
Wine: White wine: Fusion, Merom Galil Segal’s semi dry 2012
Red wine: Fusion Merom Galil Segal’s 2011.
Everything was cooked to perfection, displayed beautifully and seved professionally. The white wine was not too sophisticated, but very drinkable. Particularly for someone like me who is not too sophisticated.
Judge Rader sang a repertoire of rock hits, including He saw her standing there, I’m a believer and a number of Rolling Stones hits. Ms Suzanne Erez, who was on my table, noted that it was odd that the Stones which were considered so rebellious at the time, were now so main stream that their songs could be sung by a Federal Circuit judge at an IP conference. I wouldn’t have thought Suzanne was old enough to remember Mick Jagger in his rebel days.
A couple of Israel Practitioners asked me who the singer was, and when I answered Judge Randall Rader, the response was “who?”. the first couple of songs were fun, but after that, I thought that he was mostly entertaining himself rather than the audience. It was tempting to take the mike and invite everyone to the X-Factor, giving all my colleagues an opportunity to take part in what could have been a fun karaoke evening, a la Ally McBeal.
I did ask Judge Binyamini, Commissioner Kling and President Tal Band if they were interested in performing, but one claimed to have lost his voice, and the others said that they weren’t singers. I am sure that some IP practioners in Israel have hidden talents – even those whose IP talents sometimes seem, well, hidden. I do stand up comedy magic and could, I think, have netertained with some patented inventions. There are patent attorneys who sing.
Maybe one of the half dozen patent attorneys with rabbinic ordination, could have said grace?
Dr Ilan Cohen then introduced the eminent guest speaker, Marshall Phelps, former IP Counsel to IBM, Microsoft and others. Marshall mapped the various smart phone wars and tried to put them into perspective, looking at other breakthrough technologies, such as the dawn of the aviation industry, sewing machines, telecommunications, and the like. he explained why the US had forced Bell and IBM to license their patents in the 50s, explaining that they were concerned that Japan would be invaded by China, and were trying to protect democracy and capitalism from communist forces. Marshall had a couple of important insights. He felt that the real defendant in the various cases was Google. Essentially, Apple was pricing its products to try to recoup the investment in their operating system whereas Google was giving Android away for free. He noted that Samsung was Apple’s biggest customer and that the patent litigation really only served the lawyers. He was confident that eventually, everyone would cross-license all the patents. He could not understand why China, who could access the Android platform like everyone else, and was anyway, making the i-phones for Apple, hadn’t yet come out with their own smart phone.
On the topic of trolls, Marshall noted that awarding damages to the winner, including the successful defendant, would be a good way to address excesses by nonpracticing entities. He felt that it was only when the NPEs went after small businesses that the US government felt a need to get involved. He mentioned that many companies tried to monetize patents they weren’t using by licensing them. He stated categorically that noone would call IBM a troll. I found this last comment rather amusing, as on his previous trip to Israel, that is EXACTLY what Marshall Phelps, then with IBM, called the company. I pointed this out to him, and he grinned wickedly and said that he was sure everyone would have forgotted, but more seriously, that it depends on the audience – i.e. he’d expect that patent attorneys would realize that the non-practicing entities like tech transfers, companies like IBM, etc. could legitimately capitalize on their inventions.
Whilst those syaing locally, went on pub-crawl, I had a lift home with Yehuda Zeruya, a Gibraltarian who introduced me to Patent Law, that is doubly aristocratic being British and Pure Serfardic at the same time.
