Friday Filppancy

Coca-Cola's shape mark too smooth for
the General Court
Coca-Cola falters in EU General Court on bottle shape trade mark:  On Wednesday, the EU General Court issued its decision rejecting Coca-Cola's Community trade mark application to register a 3-D sign for the contour of a bottle without fluting.  OHIM's Board of Appeal had previously rejected the application on the basis that it was devoid of distinctive character under Article 7(1)(b) of the CTM Regulation 207/2009.  The General Court, in affirming OHIM's decision, was unswayed that Coca-Cola's survey evidence proved that the mark had acquired distinctive character throughout the EU in respect of a significant part of the relevant public.  On the survey point the General Court stated:
"First, as regards the surveys relied on by the applicant, it must be held that the Board of Appeal was correct to find, in paragraph 51 of the contested decision, that those surveys were not capable of proving that the mark applied for had acquired distinctive character throughout the European Union in respect of a significant part of the relevant public. The surveys were conducted in 10 EU Member States, namely Denmark, Germany, Estonia, Greece, Spain, France, Italy, Poland, Portugal and the United Kingdom, even though the European Union had 27 Member States at the date on which the application for registration was lodged. It is true that the surveys in question concluded that the mark applied for had acquired a distinctive character in the 10 Member States where they were carried out, with the recognition rate being between 48% (Poland) and 79% (Spain); however, they did not establish that that was also the case in the other 17 Member States. The results of those surveys cannot be extrapolated to the 17 Member States in which no surveys were conducted."
So yet another warning on the value of survey evidence in trade mark proceedings.  If you are going to do them, make sure they show acquired distinctive character throughout the entire European Union.

Who is next on VirnetX's hit list?
Apple's $626 million patent troll battle:  Earlier this month, a jury in the Eastern District of Texas awarded $626 million damages to VirnetX Inc for Apple's willfull patent infringement of four patents said to be infringed by iMessage, FaceTime and other software. VirnetX, a patent holding company (many will read "patent troll") with about 80 patents in its portfolio sued Apple back in 2012.  During the first round, a jury had awarded VirnetX $368 million, but after Apple successfully appealed due to VirnetX's failure prove that the allegedly infringing feature was motivating consumers to purchase Apple's devices when it came to a question as to how to apportion royalties the Court of Appeals for the Federal Circuit vacated the damages award.  The case then went back to the Eastern District for retrial.  Unfortunately, the result was an increased jury award.   VirnetX is no stranger to Silicon Valley - having previously sued Microsoft (see here) and Cisco (which it loss - see here).

Oxford Nanopore Technologies' MinION
DNA sequencer - for when you
need to sequence DNA on the go!
Illumnia's latest lawsuit signals start of new gene-sequencing platform war:  On Tuesday, Illumnia announced in a press release that it commenced patent infringement actions with respect to US Patents Nos. 8,673,550 and 9,170,230 which they exclusively license from the UAB Research Foundation and the University of Washington.  The patents, goth entitled "MSP Nanopores and related methods" relate to methods for making and using nanopores as part of nanopore sequencing technology (a method for sequencing DNA - see article here).  The lawsuits, started in the US International Trade Commission (ITC) and the US District Court for the Southern District of California, have been brought against emerging UK-based company, Oxford Nanopore Technologies, one of the UK's highest valued companies who are developing and selling nanopore sequencing products. See district court complaint here and ITC complaint here.  Illumina, the giant in gene-sequencing, is reported to generate more than 90% of all DNA data.  The lawsuits mark the start of a battle of technology platforms with Illumina's larger sequencing instruments battling Oxford Nanopre's MinION - a much smaller, pocket-sized sequencing instrument (see picture here).  For an interesting analysis on the suit and Illumina's market position, see this illuminating (har!) blog post by Mick Watson (in his personal capacity - but also the Director of Ark-Genomics at the Roslin Institute, University of Edinburgh).  For more information, see this excellent article in MIT's Technology Review.

MARQUES - putting a finger on hot topic trade mark issues
Arbitrating trade marks and want to know more?  Look no further than the upcoming MARQUES course on 19 April 2016 that will examine the fundamentals of and practical tips on the issues on arbitrating and mediating trade marks.  The event, being held in London at the offices of Bristows LLP, will devote the morning to arbitration with insight provided by arbitrators and the Director of the WIPO Arbitration and Mediation Center, Leandro Toscano.  As the announcement continues:
"The afternoon session will consider the fundamentals behind mediation of trade mark disputes and when it might be appropriate. Delegates will hear the perspective of both a mediator as well as that of a lawyer representing a client at mediation and how a lawyer can help. How to mediate trade mark disputes in the US will be discussed and a speaker from OHIM will present about using their mediation service."
For more information please click here.
Friday Filppancy Friday Filppancy Reviewed by Annsley Merelle Ward on Friday, February 26, 2016 Rating: 5


  1. Wow! I am stunned by Illumina's district court complaint. Not a single piece of evidence of infringement. Everything is based upon inferences that really cannot (in all fairness) be drawn from the available evidence.

    Why on earth did Illumina not obtain one of ONT's devices and then analyse the proteins that it uses? Whilst perhaps difficult, that would surely not have been impossible - and certainly better to go down that line than what, on the face of it, looks at best like a fishing expedition and at worst like vexatious litigation.

  2. I see the corresponding EP patent has just been granted after the examiner raised an objection relating to the priority claim and cited a PhD thesis. The priority filing looks questionable as to whether it discloses the "same invention" as per EPO-speak. The inevitable opposition should be interesting.

  3. @Confused Cat

    Could it be that Illumina is not free to reverse engineer, because ONT does not yet sellbut only makes the devices available with restricted terms and conditions under the "MinION Access Programme" ?

    Does the US have an equivalent of the Anton Piller orders , saisie contre-facon ( Directive No. 2004/48/EC)?

  4. @triales

    Fair comment. I still think that it would have been better to try various ways of confirming suspicions before launching action - though there may well be other factors of which I am unaware that dictate the (apparently bizarre) strategy taken.

  5. triales,

    I am not as conversant with the items that you list, but can tell you that here in the United States it is NOT patent infringement to attempt to reverse engineer a patented item - which includes verifying how an item may meet the patented protections.

    This falls under the experimental use exemption, or otherwise known as the "mere tinkering" exemption.

    Now the situation is different if that tinkering does not rise above a mere verifying (if you are actually still using those features protected by patent.

    One of the things to keep in mind in any such situation is the nature of the patent itself. At least in the United States this nature is well known and portrayed as a "negative right." Rather than a "positive right" that gives you the right to make anything, the "negative" nature is an exclusionary one to keep others from making. That exclusionary right does NOT keep others from inventing improvements or follow-on inventions that can be patented separately. In fact, the large majority of inventions are of this follow-on nature.

    What this directly entails are items that have patent protection that cannot be "positively" practiced because the end item happens to have multiple features protected by patents belonging to more than one entity - non-overlapping protections that any one patent holder does not have the ability (as opposed to "positive" right) to practice in the "positive" sense. And this situation still allows (and promotes) innovation because climbing onto the shoulders of currently protected IP is allowed.

    You are just not allowed to go to market and usurp those shoulders you have climbed upon.

  6. Please check the buffer for a comment concerning the "negative right" nature of patents in response to triales.

  7. What looks to Confused Cat:

    " best like a fishing expedition and at worst like vexatious litigation"

    is, I suppose, the most rational and effective way to proceed, in the USA, towards a negotiated settlement.

    I'm not a litigator but I had thought that the time for filing "evidence" was not as an Annex to the Complaint, but later. I had always understood that the classic way to manage a dispute over patents in the USA was to set up two teams of lawyers. Hard Cop and Soft Cop, if you like. Hard Cop embarks on aggressive litigation until told to stop. Just as assertively, and just as urgently, Soft Cop seeks a negotiated settlement which will allow the litigators to be called off. In the end, that saves most money and resolves uncertainty quickest, no? Is that not what is happening here?

    Is this not what everybody expects, even demands? Those Blackberry people in Canada were castigated, were they not, for not quickly settling, and coughing up licence royalties, on a bunch of patents that were palpably revocation-ripe but for the time being presumed valid?

    So isn't the USA rather like Germany as a jurisdiction then? A jurisdiction in which litigation is a First Resort rather than, as in England, a Last Resort?

  8. Since Illumina until recently held approximately 20 % of the Oxford Nanopore stock, one would imagine that they are better informed than most as to the tejchnology being used. Either the litigation is intended to stymie the public offering (a strategy which is often used but has little effect) or they believe they have a good argument, or both.

  9. How to write a loaded question:

    "Those Blackberry people in Canada were castigated, were they not, for not quickly settling, and coughing up licence royalties, on a bunch of patents that were palpably revocation-ripe but for the time being presumed valid?"

    LOL - the answer (no) would not even begin to capture the "spin" from MaxDrei on both the purported validity (palpably...? really?) and the ever present attack on the US standard of Clear and Convincing.

    The "boogeyman" of litigation is almost recognized as the (correct and proper) method set up by the government for enforcement (and one manner of challenge) of the property right that is a patent.


    The taint of passive-aggression though is cloying.

  10. (pssst. the term for the US litigation process is "Notice Pleading" and yes, this is directly set up such that not all evidence is there up front, as is often the case, not all evidence is available unless a court has power to compel one side to produce evidence)

    Maybe the though of those with more money and more power and more capability of "hiding the ball" being "fair" is appealing to some....

  11. Is it a fact universally acknowledged that those who use the term "passive aggressive" are being passive aggressive?

    Or is this just an amusing paradox?

    I do hope this doesn't attract active aggression.

  12. Meldrew,

    You are employing a paradox yourself by suggesting that a term cannot be used (lest the user of the term destroy their own credibility by using the term).

    Since you have provided NO sound reasoning for your own "trap," and since the term is a legitimate description of a particular tactic AND can be used without the self-destruction mode that you would desire, I will kindly dismiss your reply as worthless and ask that if you have something perhaps a bit more substantive or on point to add, that you do that instead.

    Here, your linguistic gambit fails. The term can be used appropriately to describe another's action without the "trap" that you suggest.

  13. US Anon

    Have I touched a nerve? You seem to read questions as statements.

  14. Glad to be out of the madhouseMonday 29 February 2016 at 10:12:00 GMT

    Meldrew, don't you agree that phrasing a statement as a question is a prime example of passive-aggressive behaviour?

  15. Touched a nerve?

    Not at all.

    I can ask the same of you.

    As for reading questions as statements, well, the blogosphere IS an imperfect world, and the points I make (both in the original post, and in reply to your post) DO fit, so any "misperception" in my reading is rather moot, wouldn't you say?

    (Or is that question somehow not a statement as well...? ;-) )

  16. Gtbootm,

    The classic lawyer advice: do not ask a question that you do not know what the answer will be.

    As far as passive-aggressive, note the silence from Meldrew on the point that I actually presented.

    Perhaps the cat got his tongue...

  17. Silence may indicate assent or contempt.

    I leave it to you to judge.

  18. By breaking your silence, well, what am I to make of that...?

    (and aside from that, your "opinion" of either assent or contempt really does not mean anything, so....)


All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here:

Powered by Blogger.