Archive | 2012, August | (4) posts

Design just as important as technical issues in Apple vs. Samsung verdict

The dispute between Apple and Samsung on smartphones and tablets has received much public attention. Recently, a landmark verdict was reached when a California based court decided in Apple’s favour. Samsung now has to pay at least one billion US dollars to Apple, who also has sought a sales ban in the USA on a number of the Samsung products involved.  A preliminary injunction hearing is scheduled on September 20, 2012.

The court held that Samsung had infringed several of Apple’s utility patents for user interface related functions in both smartphones and tablets, including one utility patent relating to the now well known “bounce-back feature”. However, what is more interesting; the court considered that Samsung had infringed a number of design patents, for example relating to the appearance of the physical device as well as the design of its graphical user interface. This kind of intellectual property dispute normally tends to be dominated by technical patent issues, thus it’s an interesting and exciting development to see that protection of design has had such a great impact on the court’s decision.

Evidence in the court proceedings included an email from Google to Samsung, pointing towards that Samsung’s “P1” and “P3” tablets (Galaxy Tab and Galaxy Tab 10.1) were “too similar” to the iPad and demanding “distinguishable design vis-à-vis the iPad for the P3”. Additionally, Apple presented an internal Samsung technical development report where Samsung’s team of engineers compared the Samsung prototype with an iPhone.

So, is this the end for Samsung’s Android based smartphones? Most likely not. It should be fairly easy for Samsung’s engineers to design around Apple’s patents and design protection, however at the cost of losing some of the features nowadays generally expected when buying a Samsung smartphone. In any case, we may see a shift from Android based smartphones towards the use of the Windows Phone operating system. This is most likely well received by Microsoft, having a planned release of Windows Phone 8 later this year.

Magnus Nilsson, European Patent Attorney

Breast cancer gene patents once again found valid by US appeals court

In the “Myriad case” an ongoing legal battle with many twists and turns, the Court of Appeals for the Federal Circuit, CAFC, has decided to once again uphold patent claims covering isolated human genes BRCA1 and BRCA2, owned at least partly by Myriad Genetics Inc in Utah, USA. The patent claims were initially invalidated in March 2010 by a federal district court in New York, after a complaint had been filed by a group of parties including the American Civil Liberties Union and the Association for Molecular Pathology. After appeal, the CAFC overturned this decision in a first judgment in July 2011. The plaintiffs then sought leave to appeal to the US Supreme Court.

Here is where the story gets a little complicated. One of the claims at issue in the Myriad patents related to genetic diagnosis of breast cancer predisposition. As such, the claim is analogous to claims that were at issue in another Supreme Court case, a patent dispute between Mayo and Prometheus. Because of the analogy between the claims at issue, and because the Supreme Court came to its decision the “Prometheus case” while still considering the Myriad case, the Supreme Court wanted the CAFC to take a new look at the Myriad case in the light of their judgment in the Prometheus case. So, the Supreme Court granted the request to appeal, vacated the July 2011 judgment by the CAFC, and ordered the case back to the CAFC for a new determination.

After an oral hearing in July, the second decision from the CAFC issued on 16 August 2012. In the new decision, available here, the CAFC concludes that the Prometheus decision does not alter their previous outcome, and has now stated twice that isolated genes are, per se, considered eligible for patent protection if all other requirements are met.

Perhaps this is not so surprising – after all, the CAFC decisions follow the established legal practice and reasoning that has been valid for at least twenty years, and maintain the status quo in the biotech industry. The really interesting question in this case has still not received an answer: What will happen if and when the question is brought up for final judgment by the Supreme Court?

Niklas Mattsson, European Patent Attorney

Counterfeit Goods in the EU – Troubling News but No Surprise

On July 24, the European Commission published a press release concerning its report on seizure of counterfeit goods during 2011 in the EU (see the full report).

It turns out that seizure of suspected counterfeit goods increased some 15 % compared to 2010. Top categories are medicines (24 %), packaging material (21 %) and cigarettes (18 %). China continues to be the main source of origin for these goods (73 %). It is also important to note that out of all detained postal packages, a worrying 36 % concerned medicines.

Sadly, the press release is no surprise. The problem of counterfeit goods is not new and we know it is increasing. The true number of counterfeit goods entering the EU, however, must be many times higher than what the customs authorities manage to seize. This in itself is troubling. More worrying is that medicines is at the top of these seizures, as fake medicines may actually harm people severely. In addition to personal health, fake goods may affect consumer loyalty and severely damage the reputation built up by the brand owner. All in all, the constant and evidently growing influx of counterfeit goods into the EU is a serious problem.

The only positive note is that over 90 % of all the goods seized were either destroyed or brought to court, which indicates that the work of the customs authorities is fruitful. It also shows the importance of filing customs applications to give the customs authorities the best possible information to detect suspected counterfeit goods.

To combat the negative trend of counterfeit goods, right holders need to take an active part in aiding customs authorities to detect counterfeit goods by lodging customs applications to a greater extent than today. Besides this, the EU may wish to establish specialized courts and a speedier and less costly procedural framework for court cases concerning seized goods. Finally, a reverse burden of proof concerning the authenticity of the goods may have a positive impact as well.

Most of all, however, we as consumers must make a stand. Rejecting counterfeit goods, if we can tell they are, will be the greatest weapon against counterfeiting.

Mattias Karlsson, Attorney at Law

Big Bucks Bunny – Decision on Protection of 3-D Community Trademarks in the EU

The renowned chocolate manufacturer, Lindt & Sprüngli AG, had filed an application for the protection of their gold rabbit with a red ribbon as a 3-D Community trademark with OHIM (the Community trademarks office). The list of goods comprised “chocolate and chocolate products” in international class 30.

A three-dimensional mark is a mark consisting of a three-dimensional shape (including containers, packaging and the product itself).

In the bunny case (C-98/11 P), OHIM rejected the application stating that the 3-D figure did not possess sufficient distinctiveness to become registered. In other words, the shape and appearance of the 3-D trademark were considered too common and generic to become anybody’s exclusive right.

Lindt & Sprüngli, not happy with this decision, took the matter to the General Court, which came to the same conclusion as the administrative decision rendered by OHIM. Lindt filed an appeal with the Court of Justice, and they have recently come to a conclusion.

The Court of Justice agrees with the other instances and decided in favor of OHIM: The gold rabbit with a red ribbon simply does not qualify for the exclusive right, which a 3-D Community trademark registration conveys.

If Lindt & Sprüngli had added text on the bunny, such as “Lindt”, the trademark most likely would have become registered. The company also has applications and registrations to this effect. Such registrations, however, are not as strong in a potential trademark conflict, since the comparison between Lindt’s bunny and a competing bunny would have required a comparison between the text elements as well.

Finally, to complete the tale, Lindt also tried arguing before OHIM and the two courts that the shape and appearance of the gold bunny are so known to the consumers of the Community that the 3-D figure had acquired distinctiveness as a result of the use of the 3-D trademark. This argument also failed with the judges, since Lindt did not file sufficient evidence to show that the trademark was sufficiently known to consumers in all 27 Community countries.

Claus Marcussen, Attorney at Law