AIPPI report - Patents and populism; Unwired Planet lessons for US; why trial lawyers struggle at PTAB

The populist wave gaining traction in many parts of the world is undoubtedly filtering through to IP policies. The United Kingdom’s Brexit vote last year, for example, threw the unitary patent and Unified Patent Court projects into question, while Donald Trump’s election effectively killed off the Trans-Pacific Partnership – a trade deal that would have had major IP implications in Asia. Speaking on Sunday at the AIPPI World Congress in Sydney, retired Federal Court Judge Annabelle Bennett - an eminent figure in Australian IP - stated that “populist sentiment is affecting everything, including patents”; and she was absolutely right.

In Australia, the government has just responded to IP reform recommendations made by the Productivity Commission. Some practitioners were dismayed by the commission’s proposed fixes, which seemed to many to be based on the underlying idea that IP rights are fundamentally bad for competition. But the government’s response indicated that it would proceed fairly cautiously, just a couple of years after a patent system overhaul known as the Raising the Bar Act.

One change it seems Australia will push ahead with is the insertion of an ‘objects clause’ into the patent law. This does strike a somewhat populist tone; it would describe the legislation’s purpose as “enhancing the wellbeing of Australians by promoting technological innovation and the transfer and dissemination of technology”. “If it goes in it sounds terrific,” Bennett noted, “but my concern is that so many cases will need to be fought before it is boiled down to something judges can work with.”

Another reform that the government endorsed was the removal of a section of Australia’s Competition and Consumer Act 2010, which exempted IP licences from being regulated by that anti-monopoly law. Thus, we could see Australia become the next jurisdiction where licensing practices come under this type of scrutiny. But Bennett pointed out that the government did state in its response that it is “generally agreed” there is no fundamental conflict between IP rights and competition policy, an encouraging signal.

The United States is a jurisdiction where public perception of patent rights matters very much, as it is one of the few places where trials are conducted before a jury. Reviewing the impact of the UK's landmark Unwired Planet decision on US practice in another AIPPI session, Kirkland & Ellis partner Ken Adamo said that the realities of SEP jury trials are likely to influence which aspects of the decision are most influential.

Adamo cited IAM’s reporting on US reaction to the 166 page verdict of Justice Birss, including our recent account of US district court judge James Robart’s public criticism of the decision. While Paul Michel, the former chief judge of the Court of Appeals for the Federal Circuit, told this blog that US courts rarely take much notice of overseas cases, Adamo thinks there is one key lesson US litigators should take from Unwired Planet. “My sense is people will pay attention on not using Georgia Pacific criteria. Comparable licences play much better to a jury,” he opined. The latter is a concept any homebuyer who has driven around a neighbourhood with their real estate agent can understand perfectly well, he reasons, while the former, a fifteen-part methodology for calculating a rate, may well put jurors to sleep.

Arguing before a jury is second nature for experienced US patent trial lawyers. According to PTAB Chief Judge David Ruschke, that fact accounts for one of the biggest mistakes parties make in IPRs. Those same trial lawyers are still trying to figure out how best to argue at PTAB proceedings, Ruschke told a panel on post-grant procedures around the world. “You’re not talking to a jury, you’re talking to a panel of technology and law experts," the judge reminded practitioners. “Some counsel try to tell a story like they would tell to a jury, but then can’t answer fundamental technical questions,” he observed. Ruschke said he was well aware that the PTAB has received what he called “challenging press” and assured attendees that he does not turn a blind eye to it. But he emphasised that the post-grant system is still very much in a transition period.

IAM readers can hear form and debate with Ruschke at our third annual Patent Law and Policy event in Washington, DC on 14th November. Meanwhile, the coming patent reform efforts here in Australia will be high on the agenda at IPBC Australasia, which returns to Melbourne on 30th November.