In a Halloween decision, the Federal Circuit issued its opinion in Arthrex, Inc. v. Smith & Nephew, Inc. et al., an appeal from IPR2017-00275. Without wading into the technical merits of the decision, the three judge panel of Judges Moore, Reyna, and Chen, issued a decision that, at first glance, sent tremors through those who practice before the PTAB in AIA-based post-grant review proceedings: finding the appointment of PTAB judges unconstitutional.Read More
B.E. Technology LLC v. Facebook, Inc., Appeal No. 18-2356 (Fed. Cir. Oct. 9, 2019) identifies what it means to win in a case. More particularly, the Federal Circuit explained how to determine whether a party is “the prevailing party.” B.E. Technology (“B.E.”) brought a patent infringement suit in district court against Facebook and the case was stayed pending inter partes review. The Patent Trial and Appeal Board ultimately held the claims of the patent in question to be unpatentable, which was confirmed on appeal.Read More
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.
On September 29, a jury in California awarded Columbia Sportswear more than US$3.4 million for infringement of its design patent on heat-reflective technology for clothing and outdoor gear. Columbia accused Seirus Innovative Accessories of infringing its utility and design patents for its wavy lining material, which reflects body heat, but allows for breathability and moisture-wicking. This appears to be the first jury verdict on a design patent after the Supreme Court’s decision in Samsung v. Apple.
The Full Court of the Federal Court’s decision in Coretell Pty Ltd v Australian Mud Company Pty Ltd  FCAFC 54 has clarified the date from which the owner of an innovation patent is entitled to compensation for infringement of the innovation patent. In the case of an innovation patent which has been filed as a divisional application, the Court’s decision significantly alters the time from which relief can be claimed, and has the potential to dramatically reduce the amount of compensation to which the patentee is entitled.
A previous decision of the Federal Court of Australia (Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3)  FCA 1019) held that the owner of a divisional innovation patent was entitled to relief from the date that the “parent” application became open for public inspection (OPI). This allowed a patentee to strategically file a divisional innovation patent with claims tailored to read on to a competitor’s conduct, and then claim relief from the parent’s OPI date (which may have been some years earlier). As Justice Burley noted in Coretell, this produced the unattractive result of a person being liable to pay compensation for acts of infringement pre-dating the existence of the innovation patent said to have been infringed.
Justice Burley (with whom Justice Nicholas and Jagot agreed) corrected this anomaly and made clear that the relevant date for relief for infringement of an innovation patent is its date of grant. This diminishes the strategic benefit of patentees filing divisional innovation patents – although divisional innovation patents can still be tailored to target the conduct of a potential infringer, the patentee will only be entitled to relief from the date the divisional innovation patent was granted, and therefore publicly accessible, and not before.
It seems only fitting that with “Schoolies Week” around the corner, the Federal Circuit Court has delivered judgment in the matter of Weller & Anor v Smith  FCCA 2827 which relates to intellectual property rights and commercial reputations in the jelly wrestling products industry.
The matter relates to a dispute between the partnership of John Weller and Jake Weller trading as “Crazy Town Parties” and Ian Smith.
The Wellers trade in the party supply and party hire industry. One aspect of their business is the sale of a range of products, including a substance sold in crystalline form, that are used for jelly wrestling. The Wellers utilise a number of photos for marketing purpose in both digital and hardcopy formats including on the packaging of their jelly wrestling products.
By Chris Round
In a decision of the Federal Court in October 2015 concerning trademarks affixed to Chinese herbal teas, the Federal Court of Australia awarded additional damages to an applicant in circumstances where the evidence required to prove compensatory damages was not available.
In Truong Giang Corporation v Quach  FCA 1097, the applicant Truong Giang Corporation (TG Corp) is a Californian company that produces a green leaf herbal tea product which it sells under the name “3 Ballerina Tea”. It has sold that product in the United States since 1991 and in Australia since 1994, in distinctive dark green packaging which, amongst other things, features a prominent device or mark. In this proceeding TG Corp claimed that the respondents Mr Quach, New Leaf and Mr Alexandrou were involved in selling relatively large quantities of a tea product packaged in a deceptively similar way to the genuine 3 Ballerina Tea. Since 2006, TG Corp through its agents sold substantial quantities of 3 Ballerina Tea throughout Australia, mainly through Asian supermarkets and health food stores.
By Naomi Pearce
FCA Confirms Commonwealth may Claim Relief Under “Usual Undertakings as to Damages”
The much anticipated Court of Appeal decision in Commonwealth of Australia v Sanofi ¹ was handed down on Monday. The decision is a win for the Commonwealth, and for generic/biosimilar companies in Australia, and (if upheld in any appeal) will result in Sponsors adopting a more circumspect approach to seeking interlocutory injunctions for patent infringement in Australia.
Except where a generic/biosimilar applicant has “cleared the way” (cleared any patent impediments to launch through the Courts in Australia) or all relevant patents have expired, interlocutory injunctions are routinely sought by the Sponsor, and are routinely granted.
A recent judgment on 16 June 2015 (no. 7432/2015), saw the Court of Milan ascertain the difference between a shape trademark and an artistic shape classified as industrial design protected under copyright law.
The dispute concerned the use and the reproduction of the design of the renowned ‘Nathalie’ bed (the Design), which was created in the ‘70s by Italian designer and architect Vico Magistretti. Mr. Magistretti (and later his heirs) granted an exclusive licence of the Design to the plaintiff.
On 31 August 2015 the Public Prosecutor’s Office at the Court of Genova (Italian Prosecutor) issued a sequestration order for copyright infringement against popular streaming software: Popcorn Time.
Popcorn Time (the Software) is open source software which links users through a peer-to-peer network by allowing them to stream and watch movies or TV series. In other words, the Software does not allow users to download data from a server, but users can download files directly from different sources (i.e. other users).