2015 in review: The year’s top ten cases

1  A song and dance over biosimilars

By now the words ‘patent dance’ should need little introduction and one of the biggest intellectual property disputes of 2015 looks likely to run into 2016.

In July, the US Court of Appeals for the Federal Circuit ruled in Amgen v Sandoz that biosimilar applicants can opt out of the dance, a process allowing parties to address any patent claims while a biosimilar drug is being approved by the US Food and Drug Administration. Sandoz, which was sued by Amgen over its biosimilar version of Amgen’s drug Neupogen (filgrastim), has since launched the product.

Jeremy Oczek, partner at law firm Bond, Schoeneck & King, says in his view, which is “echoed by many others”, the federal circuit’s decision will not be the end of the line.

“With the fractured 2-1 ruling, and given the critical importance to the biopharmaceutical industry, this case appears ripe for en banc review or for consideration by the Supreme Court.”

2  Blurring the lines

If the lines between what constitutes copyright infringement and what doesn’t were not blurred enough, they are now.

In March, the US District Court for the Central District of California ruled that the 2013 hit single “Blurred lines” by Robin Thicke and Pharrell Williams breached the copyright of Marvin Gaye’s 1977 song “Got to give it up”.

The court ordered the pair to pay late soul singer Gaye’s family $7.3 million.

But Oren Warshavsky, partner at law firm BakerHostetler, tells WIPR that most copyright attorneys found the verdict surprising.

“Pharrell and Thicke never disputed being inspired by Marvin Gaye’s song,” he says, adding that the elements borrowed included Gaye’s distinctive style such as his falsetto voice, crowd noises, percussion, and the use of a cowbell.

“A copyright only prevents others from copying original elements of a work, and the record seems to indicate no such copying here,” he says, arguing that the ruling is unlikely to stand or be widely followed.

3  The bear facts

German law makers were sweating over the difference between a chocolate bear and a gummy bear.

In September, the country’s Federal Court of Justice (Bundesgerichtshof) ruled in favour of chocolate maker Lindt & Sprüngli in its trademark dispute against confectionery company Haribo.

Haribo had sued Lindt claiming that the latter’s gold chocolate bear infringed its trademark for Haribo gummy bear sweets.

In 2012 the District Court of Cologne ruled in favour of Haribo, but two years later the Higher Regional Court of Cologne reversed the decision, which the federal court upheld.

Jens Matthes, partner at law firm Allen & Overy, tells WIPR: “The court should have taken into account how well known Haribo’s Goldbär brand is in Germany, and that Lindt had previously massively promoted a gold-wrapped chocolate bunny as Goldhase (gold rabbit).”

4  Wood for the trees

You’ve heard of not being able to see the wood for the trees, but distinguishing one eucalyptus from another is even trickier.

This Brazilian dispute centres on two eucalyptus varieties produced by biotechnology company Eldorado Brasil Celulose and pulp maker Fibria Celulose.

Fibria sued Eldorado in 2013 after receiving an anonymous message that Eldorado had been allegedly cultivating its own version of Fibria’s cultivar product VTO2.

In August this year, the 4th Civil Court of Três Lagoas agreed with evidence submitted by Fibria that the eucalyptus breeds were 99.99% identical.

Gabriel Di Blasi, managing partner at law firm Di Blasi Parente & Associados, who is representing the plaintiff, says that Eldorado has appealed against the decision and is aiming to produce the opposite outcome.

5  Untangling a legal web

This year the US Supreme Court revisited a 51-year-old ruling to consider a claim surrounding patent royalties.

The resulting decision, which found that inventor Stephen Kimble was not owed royalties after his patent covering a Spider-Man-like toy had expired, followed an almost 20-year dispute between inventor Kimble and superhero comic book creator Marvel.

Bob Stoll, partner at law firm Drinker Biddle & Reath, says that in deciding Marvel v Kimble the Supreme Court relied on stare decisis, drawing on the Brulotte v ThysCo ruling. In the 1964 decision the Supreme Court said that a patent owner cannot demand royalties for a patent after it has expired.

6  Nestlé facing sour outcome?

Chocolate lovers may well recognise the four-finger chocolate bar as Nestlé’s Kit Kat, but is that enough to warrant trademark protection?

The English High Court, seeking an answer, sought help from the Court of Justice of the European Union (CJEU), which gave its judgment in September this year.

In a somewhat convoluted ruling, the CJEU said that EU law precludes the registration of a shape containing three essential features, “one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result”, but that legislation refers only to the manner in which the goods function and not how they are manufactured.

It added that in order to be granted a trademark that has acquired a “distinctive character”, an applicant must prove that the “relevant class of persons” perceives the goods or services as designated exclusively by the applied-for mark, as opposed to any other mark which might also be present.

Patricia Collis, trademark attorney at law firm Bird & Bird, says the clarification that the technical result ground does not apply to method of manufacture was an important part of the ruling.

“Even if Nestlé manages to get past the shape objections (which cannot be overcome on the basis of acquired distinctiveness) they will still have to contend with the non-distinctiveness objection. This could potentially be tricky for Nestlé as the shape mark is used together with other marks.”

7  A competitive edge

This year there was a flurry of uncertainty over when, or if, a company could seek an injunction against the alleged infringement of a standard-essential patent (SEP).

In July the CJEU shed some light on the issue in its eagerly-awaited judgment in Huawei v ZTE.

Huawei, China’s largest phone maker, was seeking an injunction against the alleged infringement of a SEP covering the LTE standard. SEPs are required to be licensed on fair, reasonable and non-discriminatory (FRAND) terms.

The court issued a mixed ruling. It confirmed that a SEP owner that has given an irrevocable undertaking to grant a licence on FRAND terms does not abuse its dominant position by seeking an injunction due to alleged infringement.

However, the SEP owner must have alerted the implementer to the alleged infringement and, after the infringer has expressed its willingness to conclude a licensing agreement, presented a written offer for a licence on FRAND terms that specifies the royalty and how it was calculated.

Avi Freeman, partner at Beck Greener, a firm of patent and trademark attorneys, says the case highlighted the relationship between IP rights and competition law.

“Whereas IP is there to encourage innovation and generate new and better products and services, competition law, among other things, is there to ensure that the price people pay is the best the market can provide.

“The decision seems to balance the competing interests between the two parties by requiring the patentee to make an offer on FRAND terms … and then forces a negotiation by requiring the potential licensee to make a counter offer if the original offer is not accepted.”

8  Reputation v location

In May the UK Supreme Court confirmed that mere reputation in the UK is not enough to bring a valid passing off claim if a business does not trade there.

The question was posed in a dispute between Hong-Kong based Starbucks, no relation to the coffee shop franchise, and UK broadcaster Sky.

Starbucks claimed that Sky’s internet television service Now TV, launched in 2012, traded off the goodwill of its own similar service operating under the same name and which launched nine years previously.

Rejecting the claim, the court said because Starbucks’ business is based in Hong Kong, it has no customers, and therefore no goodwill, in the UK.

Chris McLeod, partner at patent and trademark attorneys firm Elkington & Fife, says: “This is particularly important when companies can relatively easily and cheaply generate a global reputation of sorts via the internet.”

9  More trouble for ‘gene patents’

In a judgment that will still be fresh in many people’s minds, Australia’s highest court ruled in D’Arcy v Myriad Genetics in October that naturally occurring nucleic acid molecules are not patentable, overturning a lower court decision.

D’Arcy, a breast cancer survivor, was seeking to revoke one of Myriad’s patents related to the BRCA1 gene—mutations of which are associated with the development of breast and ovarian cancer—based on a lack of “manner of manufacture”.

In September last year, the full Federal Court of Australia upheld Myriad’s patent, ruling that isolated fragments of DNA or RNA can be a “manner of manufacture” and are therefore patent eligible under Australian law.

The latest ruling has overturned that decision. The court found that while the discovery of the gene was a product of human action, to consider it an invention stretched Australia’s patent law.

Tania Obranovic, special counsel at Watermark Intellectual Asset Management, an Australian firm of patent and trademark attorneys, says the decision has “reversed decades of accepted patent practice” and sets Australian law at odds with most major jurisdictions.

“Although ostensibly mirroring the corresponding US Supreme Court Myriad decision, the Australian decision actually goes further in that it also invalidates the patentability of cDNA, for which no natural counterpart exists,” she adds.

10  Indian forum-shopping

In India, some clarity on where IP owners can file lawsuits alleging IP infringement was given earlier this year.

In Indian Performing Rights Society (IPRS) v Sanjay Dalia & Anr, the Supreme Court of India said that plaintiffs must sue in courts which have jurisdiction where they carry out business.

The dispute focused on a copyright infringement claim originally filed by IPRS at the Delhi High Court in 2007. The court is thought to be popular due to its having judges with considerable exposure to IP-related issues.

IPRS’ head office was in Mumbai but it had a branch office in New Delhi.

The defendants owned cinema halls in the Mumbai area, which was also the place where the infringement was alleged to have occurred by the plaintiff and the action had arisen. They challenged the decision to file suit in Delhi.

The Delhi High Court upheld the defendants’ objection and said that the suit should have been filed at the court in Mumbai. IPRS appealed against the order to the Supreme Court but the appeal was rejected.

Gaurav Mukerjee, partner at law firm Remfry & Sagar, says: “The case is a major step towards removing whatever little ambiguity had existed regarding territorial jurisdiction for a suit for infringement of copyright and/or a trademark.

“The ruling is primarily aimed at curtailing the mischief potential of the provisions in question, ie, the possibility of the plaintiff dragging the defendant to far-flung places.”