This week in IP: SCOTUS seeks gov view on skinny labels, Brandit opens first Norwegian office, and more
UK appoints new IP minister; Swiss court orders Lidl to destroy choc bunnies; Ed Sheeran set for trial again; SCOTUS unmoved by Apple attack; Syco Entertainment snags $125m IP securitisation deal; EPO and Colombia make PPH permanent
Managing IP stories we published this week include:
UK gov appoints new IP minister
The UK government has appointed Dean Russell as the new minister for enterprise and markets, responsible for intellectual property, it emerged this week.
Russell, who has been the member of parliament (MP) for Watford since 2019, took up the position of parliamentary under-secretary in the department for business, energy and industrial strategy on September 20.
The MP, 46, tweeted that he was delighted to have been chosen and was looking forward to delivering existing commitments and working on new opportunities to support business across the country.
Russell is also a member of the Health and Social Care Committee and sits on committees for the Air Traffic Management and Unmanned Aircraft Bill and Neonatal Care (Leave and Pay) Bill.
He has a bachelor’s degree in physics and business studies and a master’s degree in physics and material science from De Montfort University in Leicester.
Russell is the 12th IP minister to be appointed in 12 years. Seven of those have come since the UK voted to leave the EU in 2016.
Two MPs have done the job twice in that time: Chris Skidmore and Jo Johnson, the younger brother of former prime minister Alexander ‘Boris’ Johnson.
The younger Johnson’s first stint ended shortly before his brother became PM. The second lasted about a month.
Swiss court orders Lidl to destroy choc bunnies
The Federal Supreme Court of Switzerland ruled last Thursday, September 29, that the German supermarket Lidl had to destroy all its gold chocolate bunnies.
The court found that Lidl’s rabbits infringed the trademarks of Swiss chocolate maker Lindt, which produced similar chocolate bunny designs.
The federal forum in Lausanne also ordered Lidl to cease production of the gold-foiled goods.
The ruling overturned a first-instance decision from a Swiss commercial court, which found against Lindt.
The chocolate maker submitted surveys showing that its gold bunny was well known to the public and that the Lidl rabbits were likely to cause confusion, even though there were some differences between the designs.
The court ruled that destruction of Lidl’s stock was “proportionate, especially as it does not necessarily mean that the chocolate as such would have to be destroyed”, suggesting they could be melted down and reused.
This judgment is the latest victory for Lindt, which has fought in several forums to preserve its rights over the gold bunny design.
The company applied for a trademark for the three-dimensional shape of its bunny in 2000, and the right was granted the following year.
The issue of whether a chocolate bunny could be trademarked was then taken to the Court of Justice of the EU, after a long battle between Lindt and Austrian rival chocolate maker Hauswirth.
Hauswirth was later ordered by a Vienna court to stop producing its bunnies.
SCOTUS asks for solicitor general’s view on GSK v Teva
The US Supreme Court asked the solicitor general to give her view on whether it should hear Teva’s dispute with GSK on Monday, October 3.
Teva appeal to SCOTUS to reverse a $235 million award it was ordered to pay to GSK by the Court of Appeals for the Federal Circuit.
The Federal Circuit determined in October 2020 and then again in August 2021 that the generics company induced infringement of GSK’s patented indication for carvedilol despite using a skinny label.
The court used the second verdict to clarify that its decision would not affect use of Section 505 (j) (2) (A) (viii) of the Food, Drug, and Cosmetic Act (also called Section VIII).
Section VIII protects generic drug companies from infringement lawsuits filed by innovator drug firms so long as the uses of their drugs are not covered by patents.
The Federal Circuit declined to rehear the case en banc in February, prompting Teva to seek a SCOTUS verdict.
The solicitor general hasn’t announced when she will give her opinion.
SCOTUS denies cert in Biogen v Mylan
The US Supreme Court declined to hear Biogen’s dispute with Mylan on Monday, October 3.
This decision essentially upheld the ruling from the Court of Appeals for the Federal Circuit in November 2021.
In that edict, the court found that Biogen’s written descriptions weren’t clear enough and that the pharma firm’s patents were invalid under Section 112 in Title 35 of the US Code.
Biogen filed a petition for writ of certiorari in June.
Other petitions involving Section 112 are currently pending review at the high court.
Amgen filed a petition for writ of certiorari in November 2021 after the Federal Circuit ruled that two of its patents were invalid because their functional claims were too broad.
Novartis announced plans in September to ask SCOTUS to overturn the decision that its patent was invalid for failing to satisfy Section 112.
Brandit opens first Norwegian office
Intellectual property consultancy Brandit has opened an office in Oslo, the firm announced on Monday, October 3.
Brandit has recruited Christoffer Vedal and Thomas Hvammen Nicholson as its first Norway-based partners from Protector IP.
Hvammen Nicholson told Managing IP there was a gap in the Norwegian market for Brandit’s domain management and brand advisory services.
“Traditional Norwegian firms don’t invest as much in these areas, which are seen as very soft IP,” he said.
Jesper Knudsen, Brandit’s chief executive, said he was confident there was demand in Norway for the firm’s approach.
“We have found that brand owners expect us to be more like full-service consultants and not just attorneys,” Knudsen said.
Vedal said the office would grow in the coming years and increasingly rely on support from the wider Brandit network.
“We have usually worked in teams of four to five attorneys with two or three paralegals, and that’s the perfect size in my view,” he said.
In August, Managing IP broke the news that Brandit would establish a virtual office to advise on issues related to the metaverse, non-fungible tokens, and other Web3 technologies.
Last month, Brandit also opened a new office in Turkey, led by Yasemin Aktaş.
Jury to hear claims Ed Sheeran copied Marvin Gaye
Ed Sheeran must go to trial over claims he copied Marvin Gaye’s 1974 song ‘Let’s Get It On’ with his own 2014 hit ‘Thinking Out Loud’, a New York federal judge ruled last Thursday, September 29.
The UK singer told the court the case should be dismissed because the elements he was alleged to have taken from Gaye’s song were not eligible for copyright protection in the first place.
But Judge Louis Stanton at the District Court for the Southern District of New York said it should be up to a jury to decide whether Sheeran violated copyright rules.
“Although the two musical compositions are not identical, a jury could find that the overlap between the songs’ combination of chord progression and harmonic rhythm is very close,” Stanton wrote.
The claims were brought by Structured Asset Sales, which bought a stake in the estate of Gaye’s collaborator Ed Townsend.
In April, Sheeran was cleared of copyright infringement allegations in a UK lawsuit over his song ‘Shape of You’.
The trial will be held in Manhattan, but no date has been set.
SCOTUS unmoved by Apple attack on Qualcomm patent
The US Supreme Court won’t hear Apple’s validity challenge to three Qualcomm patents, it revealed on Monday, October 3.
Apple wanted the court to overturn a 2021 ruling from the Court of Appeals for the Federal Circuit that upheld the validity of the Qualcomm patents.
The refusal of certiorari follows a similar decision in June, when the Supreme Court declined to review the validity of two other Qualcomm patents.
The validity proceedings, which began at the Patent Trial and Appeal Board (PTAB), stem from a global patent dispute over the use of Qualcomm technology in Apple devices.
The companies settled in 2019 with a licence deal that granted Apple the rights to use Qualcomm patents and chips.
But the terms of the deal also allowed Apple to continue its challenge to the validity of the Qualcomm patents at the PTAB.
The licence is set to expire in 2025.
Syco Entertainment snags $125m IP securitisation deal
Syco Entertainment has struck a $125 million securitisation deal for the IP in its ‘Got Talent’ franchise, its adviser ACF Investment Bank announced on Saturday, October 1.
The IP investment company has been working with Syco Entertainment to create an acquisition fund to grow a global entertainment empire.
According to ACF, the deal was the first of its kind as it involved the securitisation of various aspects of the ‘Got Talent’ IP, including production margins and fees, digital income, franchise, original content sales, and sponsorship income.
“While we have seen these types of transactions in the music industry, we are pleased to consummate this transaction in the content space,” said an ACF spokesperson.
Popular television shows such as ‘America's Got Talent’, ‘Britain's Got Talent’, spin-offs, and international productions in 72 territories follow the ‘Got Talent’ format.
These shows are aired to more than 1 billion viewers in 194 countries worldwide.
“The strength of IP is evidenced by this complex transaction,” said Thomas Dey, founder and chief executive at ACF Investment Bank.
“We are looking forward to the next steps in this ambitious plan.”
EPO and Colombia make fast-track patent programme permanent
The EPO and the Superintendence of Industry and Commerce of Colombia permanently extended their joint Patent Prosecution Highway programme on Saturday, October 1.
The offices launched a pilot PPH programme in February 2016 and renewed their agreement in October 2019.
The PPH programme allows accelerated processing of a patent owner’s application whose claims under a corresponding filing have been determined to be patentable by a PPH partner office.
The programme leverages the fast-track examination route to expedite the processing of patent applications.
The EPO has PPH agreements with all IP5 member offices: the JPO, KIPO, the CNIPA, and the USPTO.
The office also has PPH programmes with the national patent offices of Australia, Brazil, Canada, Israel, Malaysia, Mexico, Peru, the Philippines, Singapore, and Saudi Arabia.