U.S. patent case update: IPR proceedings
In a big day for inter partes review (IPR) at the U.S. Supreme Court, the Court issued two opinions, Oil States Energy Services, LLC v. Greene’s Energy Group, LLC et al. and SAS Institute Inc. v. Iancu et al.
CJEU provides some clarity on when a design is ‘solely dictated by its technical function’
The Court of Justice of the European Union (CJEU) recently confirmed that the “no-aesthetic-consideration” test is the preferable approach when deciding whether a design is “solely dictated by its technical function”. As a result, if aesthetic considerations are completely irrelevant the design should not be registered. However, this does not mean that the legislation requires a design to have an aesthetical merit in order to be registered as a Community Design.
Last month, the CJEU published their long-waited decision on the request for a preliminary ruling raised by the Oberlandegericht Düsseldorf (the “German Court”) back in 2016.
The CJEU has provided some clarity on the interpretation of Article 8(1) of the Community Design Regulation (CDR) and how to determine if a product’s features are “solely dictated by its technical function”. The CJEU took the chance to stress, once again, that the determination “must be interpreted in a uniform manner in all Member States”, which strongly reiterates the EU’s objective for cohesive legal application.
Thunder Road toasts success in “Pacific Ale” case again (Stone & Wood’s appeal dismissed)
On 9 March 2018, Byron Bay brewery Stone & Wood lost an appeal in the Australian Full Federal Court of Appeal to Brunswick based brewer Thunder Road with respect to their respective uses of the word PACIFIC for their rival beers.
Stone & Wood sells craft beer, including its best-selling beer “Pacific Ale”. Thunder Road launched its “Thunder Road Pacific Ale” in 2015, which it renamed “Thunder Road Pacific” later that year following letters of demand from Stone & Wood.
Designing aftermarket auto parts: exhausting design patent rights
The Automotive Body Parts Association (ABPA) brought a declaratory judgement action against Ford Global Technologies (Ford), the holding company for much of Ford Motor Company’s patent portfolio. ABPA argued that design patents are inappropriate for auto-body parts and, in the alternative, that Ford’s design patents were unenforceable against the members of ABPA because the patent rights had exhausted upon the first sale of the vehicle. (Automotive Body Parts Association v. Ford Global Technologies, LLC, Case No. 2:15-cv-10137 (E.D. MI Feb. 20, 2018).) The Court held that Ford’s designs for their vehicle components were indeed eligible for patent protection and further that the design patent rights were not exhausted when the vehicle was first sold. Id. at 2.
U.S. Federal Court rules embedding a Tweet could be copyright infringement
A federal district court in New York recently held that embedded tweets could violate the exclusive right to display a copyrighted image. In 2016, Plaintiff Justin Goldman snapped a photo of New England Patriots quarterback, Tom Brady, with Boston Celtics General Manager, Danny Ainge. Goldman then uploaded the photo to his Snapchat Story. The image went viral, making its way onto Twitter, where it was uploaded and re-tweeted by several users. From there, media outlets and blogs published articles which featured the photo by embedding the tweets on their webpages. Goldman sued the media outlets for copyright infringement.
USPTO publishes updated Subject Matter Eligibility in a new revision of the Manual of Patent Examining Procedure (MPEP)
On January 30, 2018, the USPTO quietly published a new revision (Revision 08.2017)[1] to the Ninth Edition of the Manual of Patent Examining Procedure (MPEP). The revision includes amendments to a number of chapters, including notably the guidance regarding subject matter eligibility under 35 U.S.C. § 101. This includes changes in Chapter 2105 for living subject matter eligibility and Chapter 2106 for products of nature and software eligibility. The revision incorporates the contents of previous subject matter eligibility guidance documents that were provided on the “Subject Matter Eligibility” webpage[2] of the USPTO. Although the MPEP does not have the force of law, unlike the CFR, patent examiners generally tend to follow the guidance provided in the MPEP. Accordingly, patent applicants dealing with Section 101 rejections should generally be starting with these revised MPEP chambers as a basis when crafting arguments to overcome such rejections.
Revised Chapter 2106 discusses the two-part Alice test[3] including guidance regarding whether an invention falls under one of the statutory categories and whether an invention is directed to a judicial exception for an abstract idea. Of particular note, chapter 2106.05 provides expansive guidance for determining whether a claim amounts to something “significantly more” than an abstract idea. These “significantly more” arguments are often the best avenue for overcoming Section 101 rejections.
Methods of genetic testing still patentable (Meat & Livestock Australia v Cargill decision)
On Friday 9 February, the Federal Court handed down its highly anticipated decision in Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51. The matter has attracted substantial media attention in Australia and generated debate about whether patents claiming methods which use genetic information should be allowed.
The principal claims of the application in suit involve method claims for identifying a trait of a bovine subject from a nucleic acid sample. In particular, the invention made use of single nucleotide polymorphisms (SNPs).
Western Australian Court orders ex-customers and architect to pay damages to house designer for unauthorised use of plans
On 22 January 2018, Justice Martino of the Supreme Court of Western Australia delivered his judgment in the case of Milankov Designs & Project Management Pty Ltd v Di Latte & Anor, a copyright infringement case in respect of house plans.
Mr and Mrs Di Latte engaged the plaintiff, Milankov Designs & Project Management Pty Ltd (Milankov), to design and prepare drawings for a home to be built at the Di Lattes’ property. The agreement provided that Milankov would prepare plans for stages of the design and build process – first, the development stage and, second, the construction drawing stage. The Di Lattes agreed to pay Milankov a percentage of the build cost, to be billed to the Di Lattes at various stages throughout the process.
After Milankov had prepared the stage one plans (including plans submitted to council for building licence approval) and the Di Lattes had paid several invoices issued by Milankov, the relationship between the parties broke down. The engagement contract was terminated by the Di Lattes, and Milankov promptly wrote to the Di Lattes putting them on notice that Milankov owned copyright in the plans it had created and that the Di Lattes were not entitled to reproduce the plans without its permission, including by building the house at their property.
Nonetheless, the Di Lattes proceeded to engage an architect to create plans including construction drawings by copying Milankov’s plans, and then to construct a house in accordance with the design.
EasyGroup finds proving the distinctiveness of its trade marks not so easy in the UK High Court
EasyGroup Ltd has suffered a blow in a High Court case against W3 Ltd, with the judge finding that its word mark, EASY, was invalid.
EasyGroup found itself facing a claim from W3 Ltd for groundless threats, in relation to letters of complaint it sent regarding the branding of one of W3’s businesses, EasyRoommate. As a counterclaim, EasyGroup alleged that W3’s use of the registered word mark and logo EASYROOMMATE, infringed its community registered trade mark, EASY, with W3 in turn stating that such a mark should be invalidated for being too descriptive under Article 7(1)(c) of the EU Trade Mark Regulation.
Change is Coming to Australian Parallel Importation law – What do you Need to Know?
Trade mark holders may need to reassess their commercial and international marketing strategies as the proposed amendments to the parallel importation provisions of the Trade Marks Act 1995 (Cth) (Act) take a step closer to enactment by the Australian Parliament.
The proposed amendments to the Act, contained in the draft Intellectual Property Laws Amendment (Productivity Commission response Part 1 and other measures) Bill (Draft Bill) will favour parallel importers in Australia.