How courts around the world are tackling AI, SEPs and software eligibility
Groundbreaking cases from around the world highlight the impact that court rulings are having on new and emerging areas of intellectual property. The first edition of the Patent Litigation Review, which casts an expert eye on some of the most pressing issues facing those engaged in patent litigation, reveals the key trends that made waves across the global landscape in the last 12 months, with the authors providing fresh comment for this article.
Superior court decisions on AI and computer-implemented inventions leave Australia divided
The High Court of Australia’s split decision in Aristocrat v Commissioner of Patents has failed to provide unified guidance when it comes to the patentability of computer-implemented inventions. “The split decision means that the appeal was dismissed, and the decision of the Full Federal Court, rejecting Aristocrat’s patent application, was upheld,” report Katrina Crooks, Andrew Rankine and Duncan Longstaff of Spruson & Ferguson (see “Australia: Three Superior Court Decisions Look Set to Have Serious Patent Implications”). Unfortunately, the ruling does little to resolve the questions that surround the eligibility of computer-implemented inventions in Australia. “Being a split decision, it does not provide a binding precedent on which lower courts or administrators can rely.”
Similarly, the High Court’s refusal of an appeal in Commissioner of Patents v Thaler – over a patent application that names an AI platform as inventor – furthers the idea that any change in a position surrounding AI needs to come from legislative change rather than case law. “There is significant and active debate throughout the Australian legal and patent professions, industry and government about what Australia’s policy position and law, including in relation to patents and copyright, should be with respect to AI-generated works,” Crooks, Rankine and Longstaff say.
For detail as to how the US courts are treating the related issue of software eligibility, see “Specialist Chapter: A Primer on US Litigation When It Comes to Software Patents".
Delhi High Court takes strong position on SEPs, while Colombian injunction signals a promising venue for SEP litigation
SEP/FRAND ruling puts India in the spotlight
“Between 2018 and 2022, some implementers started to declare that India’s stance had shifted, and interim relief is no longer available in SEP disputes,” Siddhant Chamola of Anand and Anand states (see “India: SEP and Antitrust Challenges Demonstrate Judicial Desire to Strengthen Patent Regime”). However, the Delhi High Court rejected this argument in Intex v Ericsson, upholding an interim order in Ericsson’s favour against Indian mobile manufacturer Intex, which was refusing to license its SEPs.
“More important than the outcome of the decision are the principles that the court laid down for deciding future SEP disputes,” Pravin Anand argues in the same chapter. The court’s reasoning included implementers not needing access to the SEP holder’s licensing agreements to make a counteroffer, and that “an injunction, and not damages, is the answer to solving hold-out by an unwilling licensee”. It also indicated that UK judgments (eg, Interdigital v Lenovo) have no standing in Indian courts.
Vaishali Mittal also claims that the Delhi High Court’s stance on this matter “has positioned India as possibly the only jurisdiction in the world that not only grants interim relief to SEP holders but also recognises their right to receive pro tem royalties as security, at the beginning of a lawsuit”, even before the court addresses the questions of infringement, FRAND compliance and validity.
Indeed, as Urfee Roomi, Janaki Arun and Jaskaran Singh of Sujata Chaudhri IP Attorneys assert in their chapter from IAM’s Inside India’s IP Market, Intex v Ericsson has “shaped the SEP litigation space in India for the future” (see “What Rights Holders Need to Know as the Court Landscape Continues to Evolve”). They state that, as a result, the Delhi High Court has “paved the way for SEP holders to effectively assert and protect their SEPs in India”.
The case is significant not only in and of itself but also for indicating a direction of travel. “SEP litigation in India has not only increased in quantity, but has diversified,” Anand, Chamola and Mittal report. “Now, courts are not dealing just with SEP lawsuits for cellular technology, but across a vast spectrum instead.” Even SEP holders have initiated lawsuits or pre-litigation mediation against well-known, global handset manufacturers. Implementation patent cases by well-known SEP holders have also increased. “More litigation is on the horizon, and the next few years may see the highest volume of SEP litigation that India has witnessed.”
Colombian courts weigh in on preliminary injunctions
While it is difficult to predict the length of a preliminary injunction (PI) process before the Colombian courts, Ericsson v Apple indicates that six months is a reasonable period for a first-instance decision, and approximately four additional months to decide an appeal. It has become clear to Andrés Rincón and Eliana Portilla of Cavelier Abogados that “even for SEPs, the evidentiary benchmark is the same as for ordinary patents”, meaning that evidence of actual infringement must be provided in order to eventually obtain a PI in Colombia (see “Colombia: Why a Robust Patent System is Leading to Litigation Wins”).
Rincón and Portilla point out that the country is attractive for SEP litigation. Ericsson v Apple was a first case, but Nokia v Oppo was also in scope (just before a global negotiation over 5G patents worldwide agreement was reached by the parties). Ericsson v Lenovo is currently ongoing, with PI requests before several local courts.
“What we saw in Ericsson v Apple is that it is possible to litigate SEP cases in the country and that courts are prepared to hear those cases. At the end of the day, Ericsson injunction requests were rejected by 13 different courts either in the first or second instance, not because it is not possible to get a PI, but because those cases lacked (due to very case-specific circumstances) concrete preliminary evidence allowing the grant of a PI. In fact, now that Ericsson is trying to enforce its patents against Lenovo, they do have a PI granted by a local court. In my view, there is no doubt that countries like Brazil or Colombia are hit venues for interesting SEP litigation, with very reasonable timelines not only for preliminary injunctions, but also final rulings on the merits.”
Surprising number of pharma and telecom actions feature in UPC’s first months
Prior to the opening of the UPC, there was an overwhelming expectation that early cases would fall outside sectors rich in intellectual property, such as life sciences and technology, until the court’s approach to key issues (eg, PIs) became clearer, say Emmanuel Gougé, Judith Krens, Marc Holtorf and Sarah Taylor of Pinsent Masons (see “Specialist Chapter: First Months of UPC See Broad Sector Engagement and CMS Teething Problems”).
However, this has not proved to be the case. “While, in the first month, UPC actions were filed in a variety of sectors, perhaps surprisingly life sciences companies led the way in filing some of the early cases,” they go on to report. “The Sanofi and Amgen actions are part of a long-running global dispute, and put down a marker that the UPC will play a part in large, highly valuable multinational disputes.” The life sciences space has also seen infringement actions filed by 10x Genomics against NanoString and Vizgen, with one action being the first case lodged before the UPC concerning the assertion of a unitary patent.
Certainly there have been a significant number of mobile telecoms and SEP actions lodged during the court’s first nine months – Panasonic filed 12 infringement actions against various subsidiaries of Xiaomi and Oppo – confirming that it is being used by multinational companies in high-value, technically complex disputes.
“The first few months of the UPC has confirmed some early expectations but has also thrown up some surprises,” Gougé, Krens, Holtorf and Taylor report. While at the time of writing it was too early to draw any definitive conclusions, it was clear that “engagement is positive and the next 12 months will undoubtedly prove to be incredibly exciting for patent litigation in Europe”.
The road ahead
Nine months on since the UPC opened by business and things are looking positive, with engagement exceeding expectations. As of 31 January 2024, an “impressively high” number – 217 – of actions have been filed by both multinationals and SMEs across a broad range of sectors. Further, almost 20,000 unitary patents have been granted so far.
Although it has only been operational for a relatively short period, it is evident from the identities of some of the parties involved and questions from clients that the court is “cementing its role as a strategically powerful forum in global patent litigation”. However, it is still early days. The Pinsent Masons trio believe it is still far too early to identify any concrete trends in approaches but are looking forward to seeing the court’s first substantive decisions. “Given the UPC’s tight litigation timeframes, it is unlikely that we will have too long to wait.”
“As the court continues to grow in popularity, so may its reach,” they speculate. “Ireland is expected to hold a referendum on UPC membership in June 2024.” The country’s entry would be welcome to litigants more familiar with common law jurisdictions, such as the United Kingdom and United States.
However, while attitudes towards the UPC are generally positive, sizeable obstacles remain. “A perceived lack of transparency – particularly access to UPC pleadings and other documents – has become a talking point over recent months,” Gougé, Krens, Holtorf and Taylor state. “While UPC judges have indicated that they are aiming for harmonisation on this point, national influence has clearly played a role with different UPC divisions issuing inconsistent decisions, and clear guidance from the Court of Appeal in Ocado v AutoStore, expected in Q2 2024, will be welcome.”
The Pinsent Masons trio are also looking forward to seeing how the UPC approaches some key issues such as the role of the doctrine of equivalents in assessing infringement, and whether, or how it permits the use of tools such as Arrow declarations. The first substantive decisions are expected in late spring to early summer in 2024.
The Patent Litigation Review was published in November 2023 and casts an expert eye on some of the most pressing issues facing those involved in patent litigation in the Americas, Asia-Pacific and Europe, the Middle East and Africa. The review can be read in full here here.