big10courtcases
1 December 2011Patents

Big ten: key court decisions of the year

Association for Molecular Pathology et al v US Patent and Trademark Office et al

In a case widely-tipped to be heard by the US Supreme Court, the US Court of Appeals for the Federal Circuit held that DNA inventions could be patented.

The American Civil Liberties Union wanted pharmaceutical company Myriad Genetics’ patents for the BRCA1 and BRCA2 breast cancer genes to be invalidated because, it argued, they were incorrectly granted in terms of composition and method.

The Federal Circuit’s July decision reversed a lower court’s March 2010 declaratory judgement that invalidated the Myriad patents because of their composition claims. But it did uphold all but one of the lower court’s method claim findings.

Paul Sutton, a founding partner of Sutton Magidoff LLP, says: “The Federal Circuit gave to Myriad Genetics with one hand, and took with the other. Its 2-to-1 decision on the issue of gene patenting, reversed the district court non-patentability finding that sent tremors through the biotechnology industry, confirming that genes can in fact be patented.”

L’Oréal SA et al v eBay International AG et al

France-based cosmetics and perfume manufacturer L’Oréal complained to a UK court that online auction site eBay Europe was jointly liable for the trademark infringement committed by six of its users.

In July, the CJEU ruled that online auction sites must not play an “active role” in the trademark infringement and referred the case back to the UK court for final proceedings.

Stefan Abel, partner at Bardehle Pagenberg, says: “Even if there is no doubt that the business model of online auctions itself is accepted, it can be expected that trademark owners will continue litigation with sites like eBay in order to force them to put an effective prevention mechanism in place – which will most likely be more than today’s notice-and-take-down approach.”

Bayer Corporation v Union of India

The Supreme Court of India refused to hear Bayer’s appeal against the Division Bench of the Delhi High Court’s decision in February 2010. Its decision reaffirmed the lower court’s view that that ‘patent linkage’ is an issue of government policy and not for courts to decide.

Ashwin Julka, managing partner at Remfry & Sagar, says: “Innovator pharma companies will now have to wait till amendments in this regard are introduced by the legislature or a fresh enactment along the lines of the [US] Hatch Waxman Act is brought into force.”

Therasense, Inc v Becton, Dickinson & Co

Abbot Diabetes Care’s (formerly Therasense) patent for a blood glucose test strip that is used to help manage diabetes was found to be unenforceable due to inequitable conduct, because information about a related European patent was withheld from the US Patent and Trademark Office (USPTO) during prosecution.

The US Court of Appeals for the Federal Circuit, sitting en banc, reversed this decision in May because inequitable conduct against a single claim was an ‘atomic bomb’ that could render an entire patent unenforceable.

Paul Sutton, a founding partner of Sutton Magidoff LLP, says: “The Federal Circuit, en banc, tightened the materiality element required to establish inequitable conduct, such that it will be far more difficult to prove the defense of patent unenforceability.”

DHL Express France SAS v Chronopost SAS

Chronopost brought trademark infringement proceedings against DHL in France. It argued that DHL’s online mail management service used text that infringed its ‘webshipping’ CTM. Chronopost wanted to prevent DHL from using text that infringed its CTM throughout the EU, and although it was granted an injunction to that affect in a French national court, the issue of where the injunction was enforceable could not be resolved.

“ON APRIL 12 THE CJEU RULED THAT AN INJUNCTION THAT IS ISSUED TO PREVENT FURTHER TRADEMARK INFRINGEMENT IS ENFORCEABLE THROUGHOUT THE EU”

On April 12 the CJEU ruled that an injunction that is issued to prevent further trademark infringement is enforceable throughout the EU. It added that when a ruling applies only to part of the EU, the national court should specify the limits of the decision. Traub says: “[This] puts CTM owners in a much stronger position compared to national registration owners. However...the enforcement of court decisions of one Member State in other Member States will remain difficult until further progress is made in cross-border enforcement.”

Lacoste v Crocodile International

The longstanding battle between French fashion giant Lacoste and Singapore-based fashion company Crocodile International over the use of Lacoste’s protected crocodile emblem was decided by the China Supreme People’s Court in December 2010.

The court provided important legal guidance for lower courts when dealing with foreign company versus foreign company cases.

It ruled that there will be trademark infringement when the use of a design causes market confusion through similarity. It also said that the general considerations for determining whether there is market confusion in identification include the similarities between the designs, the intentions of the respondent/defendant, and the historical background and practices concerning use of the design.

Edwin Co v Office for Harmonization in the Internal Market (OHIM) and Elio Fiorucci

Italian fashion designer Elio Fiorucci contested Japanese company Edwin Co’s 1997 Community trademark registration (CTM) of his name, despite selling all of his creative assets to the company in 1990. Fiorucci argued that, under Article 8(3) of the Italian Industrial Property Code, Edwin needed consent to register his name as a CTM.

On appeal from the General Court, the Court of Justice for the EU (CJEU), in its July 5 ruling, reaffirmed the lower court’s decision that Article 52(2) of the CTM regulation prevented the CTM registration of Elio Fiorucci. This is because an earlier right to the name existed under national law and the article’s non-exhaustive list of examples was not limited to personality, as Edwin had argued, but it included the commercial use of the name.

Florian Traub, a senior associate at Squire Sanders Hammonds, says: “The [court] has found the right balance in interpreting the relationship between national law and the CTM Regulation.”

Board of Trustees of the Leland Stanford Junior University v Roche Molecular Systems, Inc, et al

Stanford University claimed priority rights, which it had been assigned by an employee, to patents for a procedure that tests the effectiveness of AIDS treatments. It argued that Roche Molecular Systems, a molecular diagnostics company that owned a similar agreement that the employee had also signed, infringed those patents with a HIV testing kit that it had sold worldwide.

On June 6 the US Supreme Court said that the Bayh-Dole Act, which concerns patent rights in inventions made with federal assistance, did not allow Stanford’s rights to supersede those of Roche.

Paul Sutton, a founding partner of Sutton Magidoff LLP, says: “The Supreme Court [held] that since the 18th Century, US patent law has given rights in an invention to the inventor, not to another party where the inventions have been funded in part with federal monies.”

Masterpiece Inc v Alavida Lifestyles Inc

Masterpiece and Alavida construct retirement homes in separate parts of Canada. Masterpiece, operating in Alberta, used its trade name and other unregistered trademarks before Alavida, operating in Ontario, applied to register ‘Masterpiece Living’ in 2005.

The Alberta company applied to register ‘Masterpiece’ and ‘Masterpiece Living’ as trademarks in 2006, but these were rejected on the basis of Alavida’s prior application.

After both lower courts dismissed Masterpiece’s case, the Supreme Court of Canada held in May that a Canadian trademark is invalid if a confusingly similar right has been used in a different part of the country.

Mark Evans, partner at Smart & Biggar/Fetherstonhaugh, said: “As anticipated, the Supreme Court's decision emphasises that Canada's trademark system is national in scope and confirms that trade-mark rights are derived from use and not mere registration.”

The National Health Surveillance Agency (ANVISA) and Lundback case

The vice president of the Superior Court of Justice (STJ), Minister Felix Fischer, suspended a first instance decision in August 2011 that held that the National Health Surveillance Agency (ANVISA) could not grant registrations for generic medicines based on Lundbeck’s anti- depressant, Lexapro.

The first instance said that ANVISA should not grant approval to non-authorised third parties, which had used Lundbeck’s test results and data from its own application for the government approval of Lexapro, due to data exclusivity laws.

Minister Fischer suspended the decision and has determined that enforcement of the decision should be kept under abeyance because the effects the first instance’s decision would have caused harm to public policy, put Brazil’s generic drug market at risk and damaged the economy.

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