Archive:December 2016

New Developments in Amgen v. Apotex
Supreme Court Signals Shift in Approach to Damages in Design Patent Infringement Cases
To Perform a Technical Function or Not: This is Rubik’s Question.
EU recap: Ruling of the Court of Justice of the European Union on the possibility of consumers being misled (Mille Miglia vs e-miglia)

New Developments in Amgen v. Apotex

Apotex petitioned the Supreme Court for a writ of certiorari on September 9, 2016, seeking review of the following two issues: (1) “[w]hether the Federal Circuit erred in holding that biosimilar applicants that make all disclosures necessary under the BPCIA for the resolution of patent disputes . . . must also provide the reference product sponsor with a notice of commercial marketing under 42 U.S.C. § 262(l)(8)(A)”; and (2) “[w]hether the Federal Circuit improperly extended the statutory 12-year exclusivity period to [12.5] years by holding that a biosimilar applicant cannot give effective notice of commercial marketing . . . until it receives [FDA approval].” The Supreme Court denied the petition on December 12, 2016, without comment.

However, the questions Apotex presented are narrower than the cross-petitions taken from Amgen Inc. v. Sandoz Inc., 794 F.3d 1347 (Fed. Cir. 2015), which remain pending before the Supreme Court. The Court sought the opinion of the Acting Solicitor General concerning the Sandoz petitions, and in an amicus brief filed on December 7, 2016, the Acting Solicitor concluded that the Court should hear the case. If the Court agrees, it may address Apotex’s questions in the course of deciding Sandoz. Meanwhile, biosimilar applicants and other interested parties should continue to watch the Sandoz petitions and take any decisions into account in developing strategies.

For further information, please see the update to a recently published alert on this case.

By: Margaux L. Nair, Kenneth C. Liao, Trevor M. Gates, Peter Giunta

Supreme Court Signals Shift in Approach to Damages in Design Patent Infringement Cases

In its first design patent case in over a century, the Supreme Court on Tuesday, December 6, 2016, reversed a damages award Apple Inc. (“Apple”) had won over Samsung Electronics Co., Ltd. (“Samsung”) in their protracted patent battle.  The design patents at issue were directed to certain elements of Apple’s iPhone.  The Court focused its attention on the meaning of the term “article of manufacture,” suggesting that the Federal Circuit’s definition, which encompassed the entire phone, might be too broad.  Instead, the Court determined that “article of manufacture” could be limited to a particular component of a product, regardless of whether that component is severable (or sold separately) from the product as a whole.  Declining to decide how much money Apple was entitled to under this new interpretation, the Court remanded the case to the Federal Circuit for further proceedings.

Please click here to view the full alert.

By: Jason A. Engel, Gina A. Jenero, Jacob C. Vannette

To Perform a Technical Function or Not: This is Rubik’s Question.

After the CJEU decision in case C-30/15 P, fans of three-dimensional trade marks will be wondering if the opportunity to register them is as straightforward as it appears from the recent reform of the Regulation No. 207/2009.

For 10 years, Simba Toys and Seven Towns have been involved in the Rubik’s cube saga, which began in 1999, when the three-dimensional sign reproducing the popular Hungarian toy was registered as a Community trade mark.

The application for a declaration of invalidity filed in 2006 by Simba Toys was based mainly on the infringement of Article 7(1)(e)(ii) of Regulation No 40/94, which prevents a trade mark consisting exclusively of the shape of goods which is necessary to obtain a technical result to be registered.

The EUIPO Cancellation Division as well as the Board of Appeal and the General Court rejected the arguments of the German firm on the grounds that the essential characteristics of the sign at issue are a cube and a grid structure on each surface of the cube and that they do not perform any technical function.

Hence, the appellant’s argument was rejected because the rotating capability of the lattices did not result from the shape presented, but from the invisible internal mechanism which was not part of the graphical representation filed in the trade mark application.

As often happens, the above decisions have been overturned by the CJEU. In particular, the approach of the lower courts was found to be too narrow as they did not take into account the additional elements relating to the function of the actual goods in question.

Lastly, the court held that not taking into account the rotating capability of the cube would extend the trade mark protection to any other kind of puzzle with a similar shape. On the other hand, the technical function behind the cube falls within the scope of Article 7(1)(e)(ii), which precludes the granting of a permanent monopoly on technical solutions. Therefore, in this case it would be more appropriate to consider a patent protection as it has a limited life unlike trademarks.

In conclusion, while the Rubik brand will continue to ensure its exclusivity through other trademarks, copyright, passing off and unfair competition protection, this case made it clear that an effective access to the registration of unconventional trade marks remains as uncertain as the interpretation of Article 7(1)(e)(ii).

By: Serena Totino and Michał Ziółkowski

EU recap: Ruling of the Court of Justice of the European Union on the possibility of consumers being misled (Mille Miglia vs e-miglia)

Recap from the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017 – click here.

On 17 February 2011, the company Rebel Media Ltd applied to the European Union Intellectual Property Office for the registration of a community trademark for the following graphic designation:

for goods and services in classes 12 (vehicles, land, air and water transport devices), 14 (including precious metals and alloys thereof, jewellery, gemstones), 18 (including leather, imitation leather and products from such materials), 25 (clothing, footwear, headwear), 35 (including advertising, in particular of electric vehicles, organization of advertising events) and 41 (education, training, recreation, sports and cultural events) of the Nice Classification.

On 16 September 2011, the company Automobile Club di Brescia lodged an opposition to the registration of the above mark in respect of all of the goods and services submitted.

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