Four senior court rulings from last week and why they matter
Last week we reported on some important court rulings from the US and the UK, including cases featuring the London black cab and an Eli Lilly blockbuster drug. Below we explain why four of them matter.
A black day for shape marks
“Some may say English IP judges are being unduly harsh on the UK’s innovative product design industry,” claimed Christopher Benson, senior counsel, IP and media at Taylor Wessing, in response to a recent decision by the English High Court.
On Wednesday, the court rejected an appeal from The London Taxi Company against a finding that designs of the city’s famous black cabs lack distinctive character.
Benson explained that this judgment is the latest in a string of decisions where IP judges have given adverse rulings in relation both to the registrability and enforceability of shape trademarks.
In light of this decision, as well as the inability of Nestlé to trademark the shape of its four-finger KitKat chocolate bar and Trunki’s loss in the UK Supreme Court, brand owners are going to find it difficult to show that shape of a product is inherently distinctive unless the shape departs “significantly from the norms and customs of the sector”, he added.
Benson went on to say that Lord Justice Floyd’s comments indicate it will be difficult to prove acquired distinctiveness, unless there is evidence that the relevant consumers identify trade source “because of” the shape of the mark.
“Unfortunately the law is not clear and we can expect further rulings in this area in the future,” he concluded.
Wow!
On Thursday we reported on a decision by the US Court of Appeals for the Federal Circuit which backed a lower court in finding that patents owned by technology company Two-Way Media are invalid under the Alice v CLS Bank test.
The four patents generally relate to a system for streaming audio/visual data over a communications system, with the Federal Circuit backing a ruling from the US District Court for the District of Delaware that the claims were ineligible under section 101.
Dennis Crouch, law professor at the University of Missouri School of Law, was somewhat critical of the decision in a blog post with Patently0.
“The Federal Circuit’s decision in Two-Way Media is in some amount of tension with the court’s 2016 decision in Amdocs v Openet Telecom,” he explained.
He stated that in Amdocs, the court noted that the claims appeared “problematic” under section 101, but that the architecture showed that the invention was actually a technological improvement.
“In Two-Way Media, the court faced the same dilemma but arrived at the opposite conclusion—holding that although the specification described a technological improvement, the claims were written at too abstract a level to be patent eligible,” he further stated.
He concluded: “Note here that Judge Reyna dissented in Amdocs. However, rather than accepting the Amdocs precedent, Reyna is now the author of Two-Way Media—a decision that does not cite Amdocs. Wow.”
The simple things
Last Monday, the Federal Circuit reignited a patent battle between Microsoft and software company MasterMine Software.
Donald Curry, founder of Curry Law Firm, explained that the case dealt with an interesting issue concerning potential patent indefiniteness where a claim appears to include both ‘system’ and ‘method of use’ limitations.
While the Federal Circuit affirmed a lower court’s claim construction, it reversed the indefiniteness ruling.
The district court had ruled that several asserted patents claims were indefinite because they impermissibly included method of use elements in a system claim, following Federal Circuit precedent in IPXL v Amazon.com, explained Curry.
“In contrast, in MasterMine, the language in the disputed system claims did not plainly include method of use language,” Curry said, so the court held that the claims “inform those skilled in the art about the scope of the invention with reasonable certainty” and were not invalid as indefinite.
He concluded: “The MasterMine decision emphasises the need for those drafting patent claims to be precise in their wording.”
Thomas Kohler, director at Downs Rachlin Martin, said the opinion confirms that functional language can be broadly used in apparatus/system claims, as long as it’s done correctly.
“The key is to make it clear that there is some structure/component performing the recited function rather than just a function that occurs unconnected to a specific structure or component causing it to occur,” he explained.
According to Kohler, the thrust of the opinion, based on how the judges run through the recent history since the IPXL decision, “seems to be that they think this should be a simple thing to figure out and they are a bit tired of having to keep revisiting it”.
Kohler agrees with this, and said the fact that courts get it wrong “shows how far you can get in a patent case with good advocacy on a bad point”.
A rare intervention
As our sister site LSIPR reported last Wednesday, the English Court of Appeal overturned a ruling from the High Court and said that patent claims covering Eli Lilly’s blockbuster drug Cialis (tadalafil) are invalid as obvious. According to one lawyer, the decision was a rare intervention from the higher court.
Three judges said that a patent directed to the erectile dysfunction drug should have been found invalid for obviousness by Mr Justice Birss in the English High Court, handing victory to Actavis, Teva and Mylan, which had sought to revoke the patent but were initially rebuffed.
Lord Justice Kitchin, who was writing for the court, said Birss had “lost sight” of the fact that the claimed invention “lies at the end of the familiar path through the routine pre-clinical and clinical trials process”.
According to Jonathan Radcliffe, partner at Reed Smith, it is rare for the Court of Appeal to interfere unanimously with the finding of a highly experienced trial judge on the issue of obviousness.
“As all three Court of Appeal judges are patents specialists, this has ensured that whilst the trial judgment’s analysis has been carefully considered, the Court of Appeal has not been deterred from identifying that the factually intensive nature of this case led the trial judge to adopt a too rigorous and over-elaborated approach to the ‘obvious to try’ approach to obviousness and novelty.”
He added that there have been a number of cases over the years where the Court of Appeal has “repeatedly” warned against such over-elaboration and that there are often many factors in the factual background leading to the discovery of a drug which influence the question of “obvious to try”.
Chris Hayes, partner at Lewis Silkin, added that the decision is important as it highlights the potential vulnerability of pharmaceutical dosage regime claims to an obviousness attack “where clear pointers exist in the prior art to test compounds across the claimed dose range” and that it may spur challenges to other dosage regimen patents.
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