More books for review

Another temptingly interesting batch of new intellectual property books has become available for review:
Common principles of European Intellectual Property law, edited by Ansgar Ohly.  This book, published by Mohr Siebeck, postulates that European IP law is often seen through the spectacles of national law and that pan-European discussions about issues of Community law seem to be the exception. The contributors to this volume investigate if and to what extent European rules and principles applicable to all IP rights already exist or whether they can be found on the basis of the acquis communautaire and comparative law. They also discuss the merits and the methodology of common principles before turning to several areas of substantive intellectual property law such as grounds of protection, secondary liability and exceptions, to enforcement and finally to the relationship between IP and neighbouring areas of EU law. Further information is available from the book's web page here.

Der Patentanwalt, by Uwe Pitzner. Published by Carl Heymanns Verlag.  This work is aimed firmly at the patent practitioner and gives advice concerning client relationships, contracts, professional requirements and -- perhaps most usefully -- problems and pitfalls that the German patent attorney may encounter when dealing with matters pertaining to the United States, France and the United Kingdom. Further information is available from this book's web page here
Heilmittelwerbegesetz, by Peter Bülow, Gerhard Ring, Markus Artz and Kerstin Brixius. Published by Carl Heymanns Verlag. This is a commentary on the origin, structure and provisions of the German HWG, European law on public relations and trade to advertising, prohibitions and requirements in pharmaceutical advertising, fines and penalties for violations of the HWG. Further information is available from this book's web page here.

EPÜ – und PCT-Tabellen, by Zdenko Bozic, Isabell Düwel, Markus Gabriel, Benjamin Teufel. Published by Carl Heymanns Verlag. This volume contains a tabular overview of EPC 2000 and PCT application procedures, with EQE examples as teaching aids -- but there's more to it than that. The book deals with workflow, deadlines, divisional applications, etc. Further information is available from this book's web page here.
If you would like to review any of these titles, please email Sarah Harris at Oxford University Press ( and inform her accordingly, but not later than this Friday, 30 March.  If you have not previously reviewed a book on the subject that you request, and are not known to the journal, do please state briefly why you feel qualified to review the requested volume.  Please remember that, in the event that you do not review the book, you are expected to return it speedily to JIPLP so that it can be sent out expeditiously to another reviewer.

Court clips Red Bull's wings

Authors: Joel Smith, Rachel Montagnon, Anna Gibson (Herbert Smith)

Frisdranken Industrie Winters BV v Red Bull GmbH Case C–119/10, Court of Justice of the European Union, 15 December 2011

Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jps033, first published online: March 14, 2012

The Court of Justice of the European Union (ECJ) has held that a supply chain partner (SCP) who, under an order from a third party, merely executes a technical part of the production process, such as the filling of branded cans or containers, without having any interest in the external presentation or branding of the product, does not itself make ‘use’ of the sign as prohibited under Article 5 of the Trade Marks Directive (89/104).

Legal context

In late 2006, Red Bull sought an injunction against Winters in the Netherlands claiming that the service it provided infringed the world renowned RED BULL trade mark. At first instance, an injunction was granted against Winters by the District Court on the basis that the filling of cans bearing the BULLFIGHTER sign infringed Red Bull's trade mark rights. Red Bull and Winters appealed and cross appealed this decision to the Regional Court of Appeal, which upheld the decision but extended the injunction to both the PITBULL and LIVE WIRE marks, relying on the provisions of the Benelux Convention on Intellectual Property (Trade Marks and Designs) which corresponds to Article 5(1)(b) and (2) of the Directive.

Following a further appeal by Winters, the Netherlands Supreme Court decided to stay the proceedings and to refer various questions to the ECJ, namely whether the mere filling of packaging bearing potentially infringing trade marks constituted trade mark infringement under Article 5 of the Directive.


Red Bull produced and marketed an energizing drink under the world famous trade mark RED BULL. It obtained numerous international registrations for that trade mark, valid, inter alia, in the Benelux countries. Winters, a Dutch Company, was an undertaking which was mainly involved with the filling of cans with drinks produced by itself or by others. Smart Drinks Limited, a legal person under the law of the British Virgin Islands, was a competitor of Red Bull.

Winters filled cans on the instructions of Smart Drinks, who supplied Winters with empty cans all bearing various signs, decorations, and texts, including the signs BULLFIGHTER, PIT BULL, RED HORN, LONG HORN, and LIVE WIRE. Winters placed the filled cans at the disposal of Smart Drinks, which then exported them to countries outside the Benelux. Winters only performed filling services for Smart Drinks and did not send the filled cans to that company; nor did Winters deliver or sell the cans to third parties.


In considering the questions referred, the ECJ considered that although it was clear that an SCP such as Winters operates in the course of trade when it fills cans under an order from another party, it does not follow, however, that the SCP itself ‘uses’ the signs displayed on the cans as prohibited under Article 5 of the Directive. In particular, the Court held that an SCP which merely fills, under an order from and on the instructions of another party, cans already bearing signs similar to trade marks and therefore merely executes a technical part of the production process of the final product without having any interest in the external presentation of those cans and the signs, does not itself ‘use’ those signs within the meaning of Article 5. Moreover, the Court noted that an SCP in Winters’ situation does not, on any view, use those signs ‘for goods or services’ which are identical with, or similar to, those for which the RED BULL trade mark was registered. In this regard, the Court noted that the service provided by Winters consisted of the filling of cans and that this service does not have any similarity with the product for which Red Bull's trade marks were registered.

The Court acknowledged that it had previously held (in UDV North America [2009] ECR I-1279; Google France and Google [2010] ECR I-2417; and L'Oreal and Others [2011] ECR I-0000), with regard to online service providers, that an ISP may infringe where it uses a sign corresponding to the trade mark of another person in order to promote goods which one of its customers is marketing with the assistance of that service, where that use is carried out in such a way as to establish a link between the sign and service. However, the filling of cans bearing signs similar to the trade marks is not, by its very nature, comparable to a service aimed at promoting the marketing of goods bearing those signs and does not imply, inter alia, the creation of a link between the signs and filling service. Rather, the business which carries out the filling is not apparent to the consumer, who would not make a connection between its services and those signs.

In addition, and contrary to concerns raised by both Red Bull and the European Commission, the ECJ dismissed the idea that its decision would permit the customer of an SCP to circumvent the protection offered to the proprietor under the Trade Marks Directive by dividing the production process and awarding different elements of the process to different SCPs to escape liability, as those services may still be attributed to the customer who could remain liable under the Directive.

A Dutch decision in August 2011 (Heineken NV v Olm Brouwerijen NV) may, however, strike a word of warning to SCPs as the Court in this case found an alternative way to hold a third party liable for the filling of branded containers. Heineken brought a claim of trade mark infringement against a small Dutch brewer, Olm, for the filling of Heineken casks (bearing the HEINEKEN mark) with Olm beer and the sale of such casks to wholesalers and independent retailers. Whilst, as might be expected, the sale of Heineken casks by Olm was held to infringe Heineken's trade mark, the filling of Heineken's casks did not. Instead Olm was found liable under the doctrine of ‘profiteran van wanprestatie’—benefiting as a third party from a breach of contract.

Practical significance

This decision is of relevance to the consumer and retail sectors, particularly food and drink brands, as SCPs which provide technical services to brand owners involving the use of trade marks, such as the filling of cans or containers, will not be liable for infringement under the Directive, if such use is not promotional use to end consumers. However, the finding that a trade mark proprietor cannot act against an SCP under the Directive does not allow the customer of such an SCP to circumvent the protection offered to the proprietor under the Directive (by dividing the production process between different SCPs) as those services may still be attributed to the customer who will remain liable.

Further, in light of the Dutch Heineken decision, trade mark owners may want to consider contractual arrangements to look for an angle to pursue SCPs which supply infringing third parties with services in the future, although trade mark rights will still be enforceable against the customers of those SCPs, which should ensure that infringing goods can be prevented from reaching the market.

April 2012 Special Issue on Geographical Indications

The Armagh Bramley Apple:
the latest GI to receive protection
from the European Commission
The April 2012 issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available in full to online subscribers. Both subscribers and non-subscribers can check out the full list of contents (which includes contributions on topics other than GIs) here. It is a special issue with a major focus on geographical indications and the impact of the body of law which protects GIs on other areas of IP law.

The achievement in getting this issue together is a tribute to the combined efforts of the two guest editors, Miguel Ángel Medina González (Elzaburu, Spain) and Keri Johnston (Johnston & Wassenaar, Toronto). The two have managed to do this while separated by thousands of miles of ocean, several time zones and entirely different legal cultures. Both are influential members of MARQUES, a leading European trade mark organisation. Miguel Ángel, a MARQUES Council Member, is Chair of its Geographical Indications Team while Keri, who has been on the MARQUES Geographical Indications Team since 2007, is currently its Vice Chair.

The jointly-penned guest editorial for this issue reads as follows:
"The geographical factor

The “geographical factor” has evolved from a mere reference to a geographical indication of provenance of a product to that of an indicator of qualities or characteristics which reflect its geographical origin. “Geographical origin” in this context means not merely the place from which the product physically comes or where it is manufactured, but a place that has a special link with the product in question and that relates to qualities resulting from the specific soil where the product is grown, to local human factors, culture, and ways in which it is produced, processed or prepared — or to the reputation acquired because of the tradition and the special way in which the product is handled or manufactured in a certain place, which may vary from jurisdiction to jurisdiction.

Not everything that comes from a certain place may be identified by the name of that place. Sometimes it may not even be possible to make reference to a geographical name to inform consumers of the characteristics, kind or type of a certain good, if use of that geographical name is restricted because it is protected as intellectual property.

Geographical indications often seem to have a special and intimate charm; they are also said to be a tool for the economic take-off of developing countries.

Consumers seem to be increasingly attracted by goods which have specific qualities on account of their geographical origin. This has led geographical indications to collide with that other species of intellectual property that serves a function of indicating the origin of goods in the course of commerce: the trade mark. This happens particularly when the trade mark has geographical connotations or consists of a geographical name linked by the public to a product. Geographical indications and trade marks, respectively acting as indicators of a geographical origin and business origin, may create a synergy, but may also lead to conflicts around the world.

The different legal views coming from the New World and the Old (the European Union, among other countries) do not help to tone down this apparent conflict. The trade mark approach, based on the “prior rights” principle is sometimes in conflict with the approach based on the protection of geographical indications (as in Europe), which is founded to some extent on the legitimacy of territorial rights, as a sort of preferential or privileged right to a certain geographical designation that confers on geographical indications a protection that is asymmetric and stronger than that conferred on trade marks.

Generally speaking, even within jurisdictions which make special legal provision for them, geographical indications are treated very differently from country to country and do not enjoy the same high level of harmonization as do trade marks.

Specific types of trade marks (e.g. collective, certification and guarantee marks) seem more frequently to take a place on the market as a more balanced position between individual trade marks and geographical indications, as they may be allowed to benefit from the best advantages of both types of right and to obtain protection for geographical terms even in those countries where no register for geographical indications exists. Nevertheless, the ability of such marks to fulfil the functions of a geographical indication is also under discussion.

In some respects today's scenario resembles a Tower of Babel in where different terminology and different regulations, with different scopes of protection coexist, and where certain designations are strongly defended in some countries as valuable assets (or even as items of national interest), while in others they are merely generic expressions which are free to use.

Geographical indications today are a bit like guests who have been invited to lots of different parties. The WTO has been trying to push forward the delayed Doha agenda for a multilateral register in the past few months. WIPO is increasing its efforts to amend the Lisbon System (at present it is the only system for international registration of “appellations” of origin) to allow the accession of intergovernmental organizations to make it more attractive for new members. The European Union is involved in the process of clarifying the panorama in its territory and make it more user-friendly by merging regulations and harmonising procedures at the same time that it studies the extension of its protection schemes to new products and includes the protection of geographical indications in the negotiations of its many bilateral agreements with other regions all over the world. Even the ACTA negotiations have taken geographical indications into consideration. So we see that, while geographical indications are welcome, we remain uncertain as to where they belong".

Some IP books for review

The Journal of Intellectual Property Law & Practice (JIPLP) has received a further batch of new intellectual property law titles for review.  They are listed below.  If you are seriously interested in reviewing one of them for the journal and believe yourself to be suitably qualified to do so, please email Sarah Harris at by not later than Thursday 15 March 2012 and let her know. If you have not previously reviewed a title for JIPLP, please state why you'd like to review the title of your choice.

Please remember: authors, publishers and our readers depend on your assessment of books that are sent for review. If, once you have received the book, you don't feel that you can review it, we ask you to send it back to us so that we can pass it on to another reviewer.

The books available for review are as follows:

Developing a legal paradigm for patents, by Helen Gubby, published by Eleven International Publishing. The author is an attorney and expert in legal terminology and linguistics with experience of both common and civil law systems. This book is a historical analysis which shows that the dialogue today over the role and function of the patent system is both based on and reflected by judicial decision-making in earlier times. Further details available from the publisher's website here.


The Oxford introductions to US law: Intellectual property, by Dan Hunter, published by Oxford University Press. The author explains how intellectual property has contributed greatly to the innovations that society needs today, describing ways in which the expansion of IP can reduce innovation by stopping others from implementing great ideas or producing new work. The author seeks to help readers think about modern IP in a way that allows them to see how innovation and progress are linked to IP law, and how small changes in the laws have had significant consequences for our society. Further details available from the publisher's website here.


How to fix copyright, by Bill Patry, published by Oxford University Press. This controversial author's thesis is based on what he describes as "the need to recognize that the consumer is king".  Patry maintains that law can only solve legal problems, not business problems, and too often an attempt is made to invoke law in order to solve business problems. He also offers a series of pragmatic fixes that steer a middle course between an overly expansive interpretation of copyright protection and abandoning it altogether. Further details available from the publisher's website here.


CIPA Guide to the Patents Acts (7th edition), composed by a team of authors on behalf of the Chartered Institute of Patent Attorneys, published by Sweet & Maxwell. This is the most recent edition of a standard reference work for patent practitioners. It contains section-by-section references to relevant United Kingdom and European Patent Office case law. Further details available from the publisher's website here.


A user’s guide to patents (3rd edition), by Trevor Cook, published by Bloomsbury Professional. A companion to the same publisher's user's guides to copyright, designs and trade marks, and with a further user's guide to data protection in the pipeline, the latest edition of this popular and widely-used book has a strongly practical flavour to it. The author, a partner in Bird & Bird LLP, is a highly respected senior member of the British intellectual property community. Further details available from the publisher's website here.


The essentials of patent claim drafting, by Morgan D Rosenberg, published by Oxford University Press. A practical guide to the drafting of patent claims in US patent applications, this volume emphasises the how-to of claim drafting, rather than on the history and theory of claiming. It contains multiple examples for all types of claims which a practitioner is likely to draft, and provides an easy reference for the drafting of particular types of claims. It is written primarily for novice patent attorneys and patent agents, as well as law students and those studying for the US Patent Bar Exam. Further details available from the publisher's website here.


Rezensionen Neu Ergänzende Schutzzertifikate / Supplementary Protection Certificates, by Christopher Brückner, published by Carl Heymanns Verlag. The author, a Patentanwalt, Apotheker, Bardehle Pagenberg, Munich, has compiled a German/English handbook of the law on supplementary protection certificates and paediatric extensions for pharmaceutical patents, with the cooperation of Peter von Czettritz, a Rechtsanwalt, Preu Bohlig & Partner, Munich. An Further details available from the publisher's website here.

ISPs cannot be ordered to adopt general and preventive filtering systems

Authors: Enrico Bonadio (City University London) and Mauro Santo (M&R Europe, Milan)

Case C-70/10 Scarlet Extended SA v SABAM—Société belge des auteurs, compositeurs et éditeurs SCRL, Court of Justice of the European Union (ECJ), 24 November 2011

Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jps004, first published online: March 2, 2012

In Scarlet Extended SA v SABAM, the ECJ held that EU law precludes the imposition of an injunction by a national court which imposes on internet service providers (ISPs) the adoption, at their expense and for an unlimited period, of a general and preventive filtering system with a view to preventing the illegal sharing of electronic files containing musical, cinematographic, or audiovisual works. In reaching its decision, the court stressed the need to strike a fair balance between copyright protection and the right of ISPs to conduct business freely as well as the right of their customers to protect personal data and receive or impart information.

Legal context

In this reference for a preliminary ruling, the ECJ was asked to assess the lawfulness under EU law of injunctions against ISPs requiring them to apply filtering tools aimed at detecting and blocking the transfer of files which allegedly infringe copyright. In particular, the ECJ had been asked to interpret certain provisions of, inter alia, the following directives.
(i) Directive 2000/31 on certain legal aspects of information society services (‘E-Commerce Directive’);

(ii) Directive 2001/29 on the harmonization of certain aspects of copyright and related rights in the information society (‘Info-Society Directive’);

(iii) Directive 2004/48 on the enforcement of IP rights (‘Enforcement Directive’).

The proceedings were brought before the Court of Brussels (Tribunal de première instance) in 2004 by the collecting society SABAM against the ISP Scarlet, which provided its customers with access to the internet (without offering other services such as downloading or file-sharing-related services). SABAM claimed that Scarlet's customers infringed copyright by engaging in peer-to-peer file sharing and asked the national court to order Scarlet to bring such infringements to an end by blocking or making it impossible for its customers to send or receive in any way such files using peer-to-peer software. SABAM also asked that Scarlet inform it about the details of the measures it would apply in order to comply with the order. In June 2007, the Court of Brussels ordered Scarlet to terminate the infringements, imposing certain filters to prevent users from sharing and downloading files. Scarlet appealed to the Court of Appeal of Brussels, arguing that the requested measure was technically impossible and would also impose a general obligation to monitor communications on its network, which was at odds with the E-Commerce Directive and several fundamental rights. The Court of Appeal referred the case to the ECJ.


The ECJ was asked to verify whether under EU law ISPs can be subject to an injunction imposing the adoption of a preventative monitoring system requiring them to apply filtering tools with a view to detecting and blocking copyright infringement. In principle, Article 8(3) of the Info-Society Directive allows ‘injunctions against intermediaries whose services are used by a third party to infringe a copyright or related right’. The monitoring system in this case, however, was (i) referred to all electronic communications passing via the ISP's services, in particular those involving the use of peer-to-peer software; (ii) applied indiscriminately to all its customers; (iii) a preventive measure; (iv) exclusively at the ISP's expense; and (v) for an unlimited period.

The court first noted that the lawfulness of such a system should be assessed taking into consideration the principle laid down in Article 15 of the E-Commerce Directive. The latter provision states that ISPs which offer internet-related services are not required to monitor the information which they store or transmit, nor are they under a general obligation actively to seek facts or circumstances indicating unlawful activities. The court considered that the monitoring system in question infringed this provision of the E-Commerce Directive, as it would require the ISP to (i) identify the peer-to-peer files within all the electronic communications of all its customers; (ii) identify the allegedly infringing files; and (iii) determine which files are illegally transferred and block them. Such preventative monitoring, the court emphasized, would require ISPs proactively to check all electronic communications transmitted on their network, adding that this mechanism was not compliant with Article 3(1) of the Enforcement Directive, according to which the measures, procedures, and remedies necessary to ensure the enforcement of IP rights (IPRs) should be fair and equitable.

The court then took pains to stress the need to strike a fair balance between copyright protection and other fundamental rights protected under EU law. In this regard, the court explicitly referred to its finding in Promusicae (Case C-275/06), where it held that ‘the protection of the fundamental right to property, which includes the rights linked to intellectual property, must be balanced against the protection of other fundamental rights’. Indeed, as the court said, IPRs are protected under Article 17(2) of the Charter of Fundamental Rights, but such protection is not absolute and should be subject to limitations under certain circumstances.

In particular, the court noted that the order to install the contested filtering system would limit the freedom of ISPs to conduct their business, which is protected at EU level by Article 16 of the Charter of Fundamental Rights. As a matter of fact, such injunction would require ISPs to install a complicated, costly, and permanent computer system, which would have a negative impact on ISPs' overall economic activity. This would also be contrary to Article 3(1) of the Enforcement Directive, according to which the required measures should not be unnecessarily complicated or costly.

The court also considered the principle of proportionality and the need to strike a fair balance between copyright protection and the right of ISPs' customers to have their confidential data protected as well as to receive or impart information (the right to privacy of communication and the right to protection of personal data are protected by Articles 7 and 8 of the EU Charter of Fundamental Rights, and the free speech right by Article 11). The court thus stated that an injunction requiring ISPs to install the described filtering system would break this balance. Indeed, that system would involve a systematic analysis of all contents and the collection and identification of users' IP addresses used to exchange the files. Those addresses, the court recalled, are protected personal data as they allow those users to be precisely identified. Moreover, the ISPs' customers' freedom to receive and impart information could also be potentially jeopardized as the filter mechanism in question might not adequately distinguish between unlawful content and lawful content, with the result that its implementation could lead to the block of lawful communications.

Practical significance

This decision stresses the need to strike a fair balance between several rights and interests, ruling that copyright does not have a superior rank vis-à-vis the right of ISPs to freely conduct business as well as the right of their customers to protect personal data and receive or impart information.

The court's findings constitute a victory for ISPs, which cannot be forced by copyright owners to install cumbersome and costly filtering mechanisms aimed at detecting and stopping copyright infringements committed by their users (though ISPs are not prevented from voluntarily introducing a filtering system as a consequence of an agreement struck with right holders). The decision has also been welcomed by digital freedom organizations and hailed as being capable of boosting free speech online: in their eyes, this decision confirms that invasive and general monitoring of internet users' activities is unfeasible and unacceptable. The court's ruling stresses instead the need and relevance of a neutral and open internet environment which respects fundamental rights.

This decision seems to be in line with the criticisms expressed on the other side of the Atlantic by several commentators vis-à-vis the recently proposed Stopping Online Piracy Act (SOPA), which was introduced in the US House of Representatives on 26 October 2011 (also known as Enforcing and Protecting American Rights Against Sites Intent on Theft and Exploitation Act). This bill would compel ISPs to adopt filters to prevent their customers reaching pirate websites easily. It is believed by several commentators that the bill's vague wording might leave open the door to intrusive forms of filtering, which would multiply costs and performance problems for ISPs and expose their users to a violation of their privacy (see The Economist, 26 November 2011).

It should, however, be borne in mind that in Sabam v Scarlet, the ECJ did not prohibit per se the adoption of other (and future) blocking and filtering measures which respect the fundamental rights at issue. This echoes the reasoning adopted by the AG in his opinion, in which he had stressed that any law interfering with the exercise of the fundamental rights in question would be allowed if it is adopted on a national legal basis and is ‘accessible, clear and predictable’ as to the nature and scope of the measures applicable.

This ruling also reflects the general view shared by the ECJ in previous case law, ie that the duty to detect and stop IP infringements in the online world is exclusively placed upon IPRs owners, as it occurs in the offline environment.

Federal circuit grants mandamus on Delaware transfer motion

Author: Charles R. Macedo and David Goldberg (Amster, Rothstein & Ebenstein LLP)

In re Link_A_Media Devices Corp., 662 F.3d 1221, US Court of Appeals for the Federal Circuit, 2 December 2011 (per curiam)

Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jps011, first published online: February 22, 2012

The US Federal Circuit has granted a petition for a writ of mandamus directing the US District Court of Delaware to transfer a case to the Northern District of California. The district court was found to have committed a clear error by putting too much emphasis on the fact that the defendant was incorporated in Delaware, at the expense of other relevant considerations.

Legal context

Over the past few years, venue selection in US patent infringement actions has become a major issue. The US Court of Appeals for the Federal Circuit has increasingly issued writs of mandamus to district courts for refusing to transfer actions where the parties had insufficient contact with the forum. Until recently, the writs primarily involved actions brought in the Eastern District of Texas. In In re Link_A_Media Devices Corp., the Federal Circuit issued a writ of mandamus directing transfer of a patent infringement action from the US District Court for the District of Delaware to the US District Court for the Northern District of California. Link_A_Media balances the weight of the corporate citizenship of the parties against other convenience factors.


Marvell International Ltd brought a patent infringement action against Link_A_Media Devices Corp. (‘LAMD’) in the US District Court for the District of Delaware. Marvell was incorporated under the laws of Bermuda, where it had a regular, established place of business. It was a holding company for a related company that was headquartered in the Northern District of California, which employed the inventors of the patents in suit and is presumed to house the relevant documents.

LAMD is a Delaware corporation that also has offices in California. Nearly all of LAMD's 130 employees work at its California headquarters, and none of its employees work in Delaware. After the district court denied LAMD's motion to transfer, LAMD sought a writ of mandamus from the Federal Circuit directing the Delaware District Court to transfer the case.


The Federal Circuit, per curiam, granted the extraordinary remedy of the petition for writ of mandamus and ordered the Delaware District Court to transfer the action to the California District Court.

Applying the law of the Third Circuit, the forum circuit where the District of Delaware is located, the Federal Circuit looked to the various private and public interest factors to be considered in a motion to transfer under 28 USC §1404 as set out in Jumara v State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995). The Federal Circuit found that the district court failed to balance those factors fairly and instead elevated two considerations to overriding importance: ‘With respect to private interests, the district court's fundamental error was making Marvell's choice of forum and the fact of LAMD's incorporation in Delaware effectively dispositive of the transfer inquiry.'

First, Link_A_Media found that while the Third Circuit places significance on a plaintiff's choice of forum, the district court placed far too much weight on the plaintiff's choice of forum. This is so because when a plaintiff brings its charges in a venue that is not its home forum, that choice of forum is entitled to less deference.

Secondly, Link_A_Media found the district court's heavy reliance on the fact that LAMD was incorporated in Delaware was similarly inappropriate. The Federal Circuit reasoned: ‘Neither [28 USC] § 1404 nor Jumara list a party's state of incorporation as a factor for a venue inquiry. It is certainly not a dispositive fact in the venue transfer analysis, as the district court in this case seemed to believe.’

Thirdly, Link_A_Media found the district court erred when it also refused to consider two of the private interest factors in a Third Circuit venue inquiry: the convenience of the witnesses and the location of the books and records. The Federal Circuit criticized the district court's conclusion that these factors are ‘outdated, irrelevant, and should be given little weight, if any, except for those rare instances where truly regional defendants are litigating’. The Federal Circuit explained that while advances in technology may alter the weight given to these factors, it is improper to ignore them entirely.

Fourthly, Link_A_Media found that the district court also erred when it found that consideration of the public interest factors did not favour either forum. The Federal Circuit expressly criticized the district court for its over-reliance on the state of incorporation of the defendant as part of the public interest factors: ‘The defendant's state of incorporation … should not be dispositive of the public interest analysis’ particularly where ‘[a]side from LAMD's incorporation in Delaware, that forum has no ties to the dispute or to either party’.

Finally, Link_A_Media rejected Marvell's argument that the public interest favoured the case remaining in Delaware because that district's judges were highly experienced in patent infringement litigation as ‘confusing the public interest factor relating to a trial court's familiarity with applicable state law’—which does not apply to a patent case that ‘arise[s] under the federal patent laws, for which there is uniformity nationwide’.

Thus the Federal Circuit granted the petition for writ of mandamus and directed the district court: to vacate its order denying petitioner's motion to transfer venue and to direct transfer to the US District Court for the Northern District of California.

Practical significance

Link_A_Media is likely to cause more patent infringement actions to be transferred from the Delaware Court when the parties' only connection to Delaware is that a defendant is incorporated there. While the Federal Circuit did not reject the relevance of the corporate residence of a party to an action, it did require greater contact to a forum jurisdiction than merely place of incorporation. It will be interesting to see if the Third Circuit will address this issue and offer the same conclusion.

JIPLP March 2012 -- and thereafter

JIPLP is always looking for ways
of delivering its content to readers
The printed version of the March 2012 issue of the Journal of Intellectual Property Law & Practice has been posted and subscribers should be receiving their copies shortly if they have not already done so. Subscribers to the online subscription will know that the contents of this issue have been available to them online for some weeks, since they are placed on Advance Access as soon as they have been readied for publication.

We have a couple of special issues on the way. The first focuses on geographical indications, their scope, their commercial utility and their interface with more traditional forms of intellectual property. The second, which annually coincides with the International Trademark Association (INTA) Meeting, naturally concentrates on trade mark law.  If you are attending this year's INTA Meeting, which takes place in Washington DC from 5 to 9 May, we hope that you will visit the Oxford University Press booth in the Exhibition Hall.  There you will have a chance to meet and discuss a full range of intellectual property publication topics with members of JIPLP's editorial and production teams, among others.  Further details of OUP's and JIPLP's presence at INTA 2012 will be posted in due course.

The contents of whichever happens to be the current issue of JIPLP can be viewed online by subscribers and non-subscribers alike here.