This week in IP: Breeders split on EU study, DoJ antitrust head appointed, Tiffany settles TM dispute

Sources told Managing IP this week that a study released by the European Commission has led them to worry that SMEs could be squeezed out of the market by large biotech companies using patents to block research on new plant varieties.

On July 12, the European Commission submitted a letter to the World Trade Organization outlining the results of a study it conducted into the status of new genomic techniques (NGTs). It  showed that there have been significant advances in NGTs since the EU developed its directive on genetically modified organisms (GMOs) in 2001.

Sources are hopeful that the results could pave the way for new legislation that would allow for plants obtained through NGTs to be commercialised in Europe. However, the worry for some plant breeders is that this could open new opportunities for patenting that big seed companies could use to exploit small breeders.

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US President Joe Biden has nominated Jonathan Kanter as the next head of the US Department of Justice’s antitrust division, it was announced this week.

In a statement on Tuesday, July 20, the White House said Biden would be nominating the “distinguished antitrust lawyer” as assistant attorney general.

If confirmed by the Senate, he will succeed Makan Delrahim, who stood down earlier this year.  

Kanter, who founded his own law firm The Kanter Law Group last year, was formerly co-chair of the antitrust practice at Paul Weiss and served as an attorney at the Federal Trade Commission’s bureau of competition.

“Throughout his career, Kanter has also been a leading advocate and expert in the effort to promote strong and meaningful antitrust enforcement and competition policy,” the White House said.

IP owners will be keen to see what approach Kanter takes to antitrust law surrounding patents in his new role – particularly concerning standard essential patents (SEPs).

During his tenure, Delrahim made a name for himself among SEP stakeholders with his New Madison approach, which set out that competition law should not be used to police commitments that patent owners unilaterally made to standards-setting organisations.

In this approach, the division insisted that patent owners should be able to enforce their rights to refuse to license their technologies and to sue infringers.

Kanter is known as a critic of Google and has previously represented several companies that have complained about the company’s allegedly anti-competitive practices, including Microsoft and News Corp.

If approved, he will take on a monopoly lawsuit filed by the Department of Justice against Google last year. The case accuses Google of creating an illegal monopoly in the digital advertising market.

Tiffany settled its eight-year trademark dispute with Costco on Monday, July 19, in which the jewellery maker had sued the wholesale retailer for using the word 'tiffany' to refer to the settings on diamond rings.

The brands did not publish the terms of their agreement. The case would have gone to trial on October 4 in the District Court for the Southern District of New York had the settlement not occurred.

The agreement comes nearly a year after the US Court of Appeals for the Second Circuit vacated a summary judgment in Tiffany’s favour and remanded the case for jury trial.

The jewellery company had originally managed to snag a summary judgment in 2015 in the Southern District of New York that Costco had wilfully infringed its trademark. Tiffany then won $21 million at the same court in 2017 after a jury trial to determine damages.

But the Second Circuit said it would only affirm summary judgment when there were no genuine disputes concerning any material facts and when the party making the motion was entitled to judgment as a matter of law.

It added that Costco had raised questions that could be resolved through trial. These issues included whether its customers were actually confused, whether it adopted Tiffany's mark in bad faith and whether the relevant consumers were sophisticated enough not to be confused by the use of the term 'tiffany'.

Costco had argued that Tiffany was not just a brand name, but a widely recognised descriptive term for a specific style of pronged ring setting.

The Delhi High Court passed an order on Tuesday, July 20, modifying an injunction granted against SMS Pharmaceuticals, permitting it to export the patented drug Januvia (sitagliptin) owned by Merck Sharp and Dohme for the purpose of research and development.

Section 107A of the Patent Act, which provides for a Bolar like exception to patent infringement in India and allows generic drug manufacturers to exploit patented drugs for experiments, formed the basis of the ruling.

Mr Justice Hari Shankar referred to the earlier judgments of the high court in Bayer v Union of India and Bayer v Alembic Pharmaceutical to dismiss the patent infringement claims of Merck.

Merck argued that the patented drug was commercially sold by SMS Pharmaceuticals. However, the court observed that the company could not show a single invoice to prove that claim.

The court highlighted that the interest in creativity and progress should not be undermined by the seemingly wide nature of patent rights.

The patent is set to expire on July 5, 2022.

Lawyers for popstar Taylor Swift requested a summary judgement for her long-standing copyright dispute on Monday, July 19, over the lyrics to her 2014 hit song ‘Shake it Off’.

The suit was originally launched in 2017 by songwriters Sean Hall and Nathan Butler, who claimed that the singer had copied the lyrics from their song ‘Playas Gon’ Play’.

According to Hall and Butler, Swift’s lyrics “cause the players gonna play, play, play”

were too similar to the lyrics featured in their chorus.

In February 2018, Judge Michael Fitzgerald of the US District Court for the Central District of California threw out the lawsuit.

Fitzgerald wrote: “The allegedly infringed lyrics are short phrases that lack the modicum of originality and creativity required for copyright protection. Accordingly, if there was copying, it was only of unprotected elements of Playas Gon’ Play.”

The Court of Appeals for the Ninth Circuit revived the case in 2019 and the panel of three judges claimed that Fitzgerald had mistakenly attempted to be a judge of creative expression.

In the new request for summary judgement, Swift’s representatives argued that evidence collected during the discovery phase strengthened their case, and the judge should now issue summary judgment in Swift’s favour.

Her lawyers wrote: “The parties have completed expert disclosures and discovery as to the ‘extrinsic test’ and plaintiffs and their sole expert have admitted away plaintiffs’ claim that the song ‘Shake It Off’ infringes the copyright in the song ‘Playas Gon Play’.

On Monday, July 19, the Senate confirmed Tiffany Cunningham to a seat on the Court of Appeals for the Federal Circuit by a 63 to 33 vote. She will be the first African American to be confirmed to that bench.

The move was praised by numerous stakeholders on social media., including White House chief of staff Ronald Klain.

President Joe Biden nominated Cunningham in March alongside 10 other nominees. During a June committee meeting, Senate judiciary chair Dick Durban hailed Cunningham’s qualifications, citing her undergraduate degree from MIT and her Harvard Law degree.

“She’s been an intellectual property litigator for almost two decades working on every aspect of patent litigation from the inception of the case though discovery, trial and appeal,” said Durban.

Before joining Perkins Coie in 2014 where she is currently a partner, Cunningham was a partner and associate at Kirkland & Ellis. She also had a clerkship under Federal Circuit Judge Timothy Dyk.

Cunningham told the Senate Judiciary committee that joining the bench would be her “dream job” and added that during her clerkship on the Federal Circuit, she observed that the bench of “all white judges and only two women” lacked diversity.

She will be replacing Judge Evan Wallach, who was nominated by President Barack Obama and has served on Federal Circuit since November 18, 2011.

TCL Communication Technology and Ericsson settled their long-standing patent fight on Friday, July 16.

The parties filed a motion to dismiss in the District Court for the Central District of California, where TCL had claimed that Ericsson had not licensed its patents on fair terms. The court dismissed the case on Monday, July 19.

On Thursday, July 15, the companies filed the same type of motion in the District Court for the Eastern District of Texas, where Ericsson had accused TCL of patent infringement. The venue dismissed the dispute the next day.

The news comes about 10 months after both parties had their petitions rejected by different appellate courts.

The US Supreme Court denied cert in October 2020 on TCL’s request to overturn a ruling from the Court of Appeals for the Federal Circuit that Ericsson was entitled to a jury trial.

In September 2020, the Federal Circuit denied Ericsson's petition for an en banc rehearing. The appellate court had previously determined that TCL was not liable for patent infringement – reversing a decision from the Eastern District of Texas.

The Federal Circuit said the patent being litigated contained ineligible subject matter because it was directed to an abstract idea.

One of the most controversial clauses in the EU Copyright Directive complies with EU law and a complaint lodged by Poland against it should be rejected, an adviser to the Court of Justice of the EU has said.

In an opinion published on Thursday, July 15, advocate general (AG) Henrik Saugmandsgaard Øe rejected arguments by Poland that Article 17 of the directive was incompatible with the EU Charter of Fundamental Rights.

Article 17 will force sharing platforms such as YouTube and Instagram to filter copyright protected content.

The complaint, filed in 2019 by Poland’s Ministry of Foreign Affairs, alleged that the filter requirement could lay the foundation for censorship.

At the time, a spokesperson for the ministry told Managing IP: “Poland does not question the need to protect copyright. It is concerned only about those provisions that pose a threat to internet freedom and are not justified by the real need to protect copyright.”

However, in his opinion AG Saugmandsgaard Øe said the article was compatible with the freedom of expression and information guaranteed by the EU charter.

“While Article 17 entails an interference with freedom of expression, that interference satisfies the conditions laid down in the Charter of Fundamental Rights,” he wrote.  

Last month, Managing IP reported that many member states were yet to complete – or even begin – implementing the directive into their national laws. Poland, one source told us, was awaiting the outcome of this case.

The directive entered into force in June 2019, after which member states were given until June 7, 2021 to implement it into their domestic laws.

The CJEU is expected to issue its ruling in the coming months. It does not have to follow the AG’s findings but does so in the majority of cases.