This week in IP: Germany wipes up litigation, SCOTUS hears Minerva, Chanel loses Huawei TM battle

According to statistics on European litigation exclusively revealed by Managing IP this week, German courts have been wiping up European patent litigation since 2015.

The data, provided by Darts-IP, shows that Germany took in 3,692 cases between 2015 and 2019, compared to 673 in Italy, 503 in France, 492 in the Netherlands and 430 in the UK, the next four most popular countries for European patent litigation.

German courts also featured the most frequently in the list of the top 10 most popular European courts for patent cases, with the Düsseldorf Regional Court coming in first place, the Munich Regional Court third, the Mannheim Regional Court fourth and the Hamburg Regional Court ninth.

Sources speculated that German courts might be particularly popular because of the bifurcated system, which allows patent owners to secure injunctions before courts have an opportunity to examine patent validity.

Click here to read the full analysis – including patent case statistics for the UK, Italy, France and the Netherlands.

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The US Supreme Court heard oral arguments in Minerva Surgical v Hologic on Wednesday, April 21, a case on whether to eliminate or scale back the doctrine of assignor estoppel, which forbids inventors from challenging their own patents.

During the proceeding, the court’s justices appeared open to the idea of limiting the doctrine rather than eliminating it entirely.

Sonia Sotomayor, for example, noted that there was a fairness element Hologic was not grappling with, and asked whether the doctrine should be tethered in some way to a determination of the actual scope of what was assigned.

Will Milliken, director at Sterne Kessler in Washington DC, who live-tweeted the case from his firm’s account, concluded that the justices were searching for a workable and fair way to limit the doctrine.

Nathan Kelley, partner at Perkins Coie in Washington DC, similarly said: “Given today’s questioning, it’s hard to see how the court either blesses or condemns assignor estoppel altogether.

“The more likely outcome is a reformulation of the test along the lines suggested by the government. Such a decision could ease the ability of engineers and scientists to move among employers without carrying assignor estoppel baggage.”

These predictions will come as good news to those practitioners and in-house counsel who didn't want to see the doctrine dashed completely.

This issue of assignor estoppel arose in the courts after medical device maker Hologic sued uterine health specialist Minerva for infringing certain claims of its patents. Hologic had acquired the rights indirectly from Minerva’s founder, Csaba Truckai.

Minerva then asserted invalidity arguments and filed inter partes reviews at the Patent Trial and Appeal Board, which ruled that the method patent claims were invalid. Hologic asserted assignor estoppel.

After rulings from the District Court for the District of Delaware and the Federal Circuit, both parties appealed to SCOTUS. The high court accepted the petition for writ of certiorari from Minerva on January 8, but denied Hologic’s petition.

A decision from the Supreme Court is expected to be handed down in four to six months.

Luxury fashion house Chanel has lost a trademark dispute with Huawei at the EU General Court.

In a ruling handed down on Wednesday, April 21, the court said the marks must be compared as applied for and registered, without altering their orientation.

In 2017, China-based Huawei applied for an EU trademark at the EUIPO. The application, covering computer hardware, was for a figurative sign displaying two interlocking U shapes in a vertical position.

Later that year, Chanel opposed the application, citing earlier French trademarks it had registered.

Chanel’s marks, covering products including perfume and cosmetics, display two interlocking C shapes in a horizontal position.

In March 2019, the EUIPO’s Opposition Division rejected Chanel’s challenge on the grounds that Huawei’s applied-for mark was not similar to Chanel’s and that there was no likelihood of confusion.

That ruling was upheld by the EUIPO’s Fourth Board of Appeal (BoA) later that year, prompting Chanel to appeal to the General Court. 

According to the court: “When carrying out an assessment of their identity or similarity, the marks at issue must be compared in the form in which they are registered and applied for, irrespective of any possible rotation in their use on the market.

“The marks at issue share some similarities but their visual differences are significant.”

Although Chanel can technically appeal against the ruling to the Court of Justice of the EU (CJEU), it’s likely that this decision will be the end of the road for the fashion company.

As of May 2019, trademark decisions that have already been considered on appeal twice (by the EUIPO’s BoA and then by the General Court) can only be heard by the CJEU if they raise an issue that is “significant to the development of EU law”. 

Since that change was introduced, no trademark appeals have been allowed.

Kimberly Moore will become chief judge at the US Court of Appeals for the Federal Circuit on May 22, it was announced on Wednesday, April 21.

Moore, who has been a circuit judge since September 2006, will succeed Sharon Prost, who has been chief judge since May 2014 and has been on the court since September 2001.

Prost will remain on the Federal Circuit after she steps down as chief judge.

One of Moore’s most recent notable opinions was in American Axle v Neapco, in July 2020. She wrote that the court majority’s ruling expanded patent eligibility law under Section 101 well beyond its statutory gate-keeping function.

She argued that the decision reduced the Alice-Mayo two-part test to a single step. “As the nation’s lone patent court, we are at a loss as to how to uniformly apply Section 101.”

Moore also authored an opinion in October 2019 in Arthrex v Smith & Nephew, in which she ruled that administrative patent judges were indeed principal officers, not inferior ones. The case is pending a final verdict at the Supreme Court.

One of Prost’s most notable achievements has been acting as chief judge during the COVID pandemic, which compelled the court to hear cases by telephone and decide more disputes on the briefs.

The court began hearing cases remotely in March 2020, but planned to decide whether oral arguments could be held safely in person on a case-by-case basis.

In May 2020, Prost issued an administrative order to suspend in-person arguments indefinitely until further notice.

She wrote: “Counsel appearing in cases before this court are currently subject to various approaches to, and timeframes for, community recovery and reopening, which may impact their ability to travel for argument.”

Moore will serve as chief judge when Tiffany Cunningham, the first new Federal Circuit judge for several years, joins on May 31.

On Wednesday, April 21, IBM and patent market company IPwe announced plans to issue patents as digital assets known as non-fungible tokens.

IBM said it would create an infrastructure for the NFT patents by storing the records on its blockchain network.

The goal of tokenisation is to help make it easier to sell, buy, and commercialise patents in order to create new liquidity for investors and companies.

Erich Spangenberg, CEO of IPwe, said: “The use of NFTs to represent patents will help create completely new ways to interact with IP.

“This is expected to benefit not only large enterprises that have significant intellectual property, but bring new opportunities to small and medium enterprises and even individual IP owners.

“We believe it will usher in new offerings by financial services firms and corporations to promote the evolution of a new patent asset class,” he added.

IBM general manager Jason Kelley said: “Our work with IPwe is another example of our collaboration with leading innovators to drive outcomes powered by blockchain capabilities and digital assets that have the potential to transform entire industries.”

NFTs have been used in the past to represent sports memorabilia, iconic tweets and digital art.

IBM and IPwe have collaborated on several occasions over the past three years on projects using blockchain and artificial intelligence to create platforms to generate patent portfolio analytics and help protect patent ownership.

IPwe expects the NFT platform to be available by the fourth quarter of 2021.

The District Court for the District of Delaware sided with L’Oreal on Tuesday, April 20, in a suit against the University of Massachusetts over the education body’s patents covering methods to treat skin using the organic compound adenosine.

The court found that the patents were invalid under Section 112 under Title 35 of the US Code, agreeing with the defendant that the commonly accepted meaning of the phrase "enhancing the condition of the skin” made in the claims was clearly indefinite.

It also found that the claims in question did not define or suggest what constituted noticeable decreases in “one or more of wrinkling, roughness, dryness, or laxity of the skin sallowness, or pigmentary mottling in skin”.

The suit started when the university and Carmel Laboratories sued L’Oreal in 2017, accusing it of infringing two patents, US numbers 6,423,327 and 6,645,513.

According to the complaint, cardiovascular physiologist James Dobson at the University of Massachusetts discovered “that a topical application of adenosine can be used to enhance the condition of the skin by applying adenosine to the dermal cells in specified concentrations”.

The university licensed the invention to Carmel Labs in 2008 and the company used it to develop Easeamine, an anti-aging face cream.

The complaint went on to say that two weeks before the launch of an expanded Easeamine product line in 2010, L'Oreal announced its new Youth Code line of anti-aging skincare which used adenosine.

This week, the Ensuring Innovation Act went to President Joe Biden for approval, having been passed in both the House of Representatives and the Senate last week.

The act imposes more restrictions on which biologics and generic drugs qualify for product exclusivity protections by replacing the term “active ingredient” with “active moiety” when defining a new chemical entity.

Though the bill, which was introduced by Senator Bill Cassidy of Louisiana and Senators Tina Smith of Minnesota and Roger Marshall of Kansas, doesn’t mention patents, it does examine practices such as 'evergreening', patent thickets and product hopping.

But pharmaceutical businesses don’t appear to be too worried about the change. According to the head of IP at a large pharma company in the US, the bill codifies longstanding Food and Drug Administration practice on how to define the term 'active ingredient'.

“For that reason, it’s not a big deal,” he says.

As the bill has broad bipartisan support, Biden is likely to sign it soon.

A Chinese governmental department has won three out of the four copyright disputes it filed against technology conglomerate Tencent.

Issuing its judgment on Sunday, April 18, the Beijing Internet Court asked Tencent to pay RMB 50,000 ($7,663) in compensation for each of the three violations.

The film and television production centre belonging to the Publicity Department of the Chinese Communist Party accused Tencent of showing movies on its platform without authorisation.

According to the South China Morning Post, the Beijing court found that Tencent had infringed the department’s “right of communication through information networks”.

In the case that the film centre lost, the dispute surrounded the rights to a film called "Gao Fengshan", which is about the life of a late comedian who specialised in cross talk, a type of traditional Chinese comedy involving a pair of comedians.

The court found that the original copyright owner transferred exclusive copyright to a third party but later also transferred it to a company named Linfeng Hongda, from which the film centre obtained the rights.

As a result, the court found that the film centre’s claim to exclusive rights did not stand.

The film centre was originally part of China’s State Administration of Radio, Film and Television, but its operations were handed over to the publicity department in 2018 as part of a government restructuring.

In 2019, the department also sued Beijing-based internet services company Sohu, alleging infringement of 25 films. In December 2020, the Beijing court ordered Sohu to pay RMB 310,000.

On Friday, April 16, Apple won a dispute at the US Trademark Trial and Appeal Board for its music-streaming service Apple Music by citing its rights to The Beatles’ Apple Corp company, which the famous four-man band from Liverpool created in 1968.

Apple registered its mark for 'Apple Music' when it entered the music-streaming service business in 2015. A year later, American jazz musician Charles Bertini opposed the trademark on the basis that it closely resembled his brand called Apple Jazz, which he had been using since 1980.

According to Bertini, Apple Jazz and Apple Music were too similar in name and would confuse his music’s listeners.

Apple referred to its 2007 agreement with Apple Corp, in which it settled a decades’-long dispute with the company owned by The Beatles over the name and use of the Apple logo.

In the settlement, the tech company acquired the trademark rights to 'Apple Corp' and then licensed them back to the music company.

In the new legal battle, Apple argued that because John Lennon, George Harrison, Paul McCartney and Ringo Starr founded their company in the 1960s, its music-related trademark outdated Bertini’s.

Bertini has said he may appeal the decision.