This week in IP: Thales beats Philips at ITC, EPO completes unitary patent prep, and more

Cannabis trademark filers should choose their words carefully and “avoid like the plague” any slang words associated with the plant, said the chairperson of the EUIPO’s First and Third Boards of Appeal at a conference in Alicante yesterday, July 7.

Gordon Humphreys, speaking on a panel moderated by Managing IP’s senior reporter Max Walters at the IP Case Law Conference, gave an overview of cannabis trademark filings and how the EUIPO boards approach them.

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The US International Trade Commission affirmed an administrative law judge ruling that patents asserted by Philips were unenforceable and not infringed by Thales on Wednesday, July 6.

The ITC instituted the proceeding in January 2021 and held a one-week trial that year. ALJ David Shaw made a final initial determination in April this year that all the asserted claims of four patents asserted by Philips were not infringed by Thales and were unenforceable.

Axinn partners Jeannine Sano, Eric Krause, Paul Zeineddin, Denise Plunkett and Michael Keeley advised cellular communication modules developer Thales.

The companies are also at odds at the Court of Appeals for the Federal Circuit, which heard a case in June over whether Philips’ pursuit of exclusionary relief against Thales in the ITC was consistent with its fair, reasonable and non-discriminatory obligations to ETSI.

The District Court for the District of Delaware ruled in August 2021 that Philips’ case at the ITC was consistent with its commitments.

Some counsel said they hoped the Federal Circuit would rule in favour of Thales because it wasn’t appropriate to seek leverage at the ITC in most standard essential patent negotiations.

The EU’s supplementary protection certificate waiver took full effect last Friday, July 1 after the legislation’s transitional period ended.

The waiver, formally introduced in 2019, gives generic and biosimilar makers more freedom to produce their own versions of patent-protected drugs and biologics for export outside the EU and day-one release within the bloc.

Drugmakers will be allowed to stockpile medicines for launch in the EU within the last six months of an SPC’s term.

The transitional period exempted SPCs that were applied-for but not yet active in July 2019 from the waiver until the start of this month.

The end of the three-year grace period could mark the start of a wave of SPC-related litigation in Europe, as generics start notifying SPC holders of their intent to manufacture under the waiver.

Generic industry coalition Medicines for Europe (MfE) rejoiced at the waiver entering into full force, claiming it would spark investment in European life sciences manufacturing.

“We call on authorities to closely monitor any potential misuse of the notification system for frivolous litigation, which could delay competition from generic and biosimilar manufacturers in markets where SPCs have expired,” said MfE director general Adrian van den Hoven.

Nokia secured a standard-essential patent injunction against Chinese smartphone maker Oppo and its subsidiary OnePlus at the Mannheim Regional Court on Tuesday, July 5.

It was the second victory for Nokia over Oppo in Mannheim in recent weeks. The court ruled in the Finnish telecoms company’s favour in a non-SEP infringement case in June.

In its latest judgment, the Mannheim court found Nokia had complied with its obligation to offer a fair, reasonable, and non-discriminatory licence to a 4G/5G SEP.

The court considered Oppo to be an unwilling licensee under the criteria established in the landmark Sisvel v Haier decision issued by the Federal Court of Justice in 2019.

A Nokia spokesperson said: “The Mannheim Regional Court has ruled for the second time, this time on a cellular standard essential patent, that Oppo is using Nokia’s patented technologies in its smartphones and is selling them illegally without a licence.”

“The court also found that Nokia has acted fairly. Despite extensive negotiations, Oppo has refused to agree a licence on fair terms and has turned down proposals to arbitrate the disagreement.”

The parties are currently embroiled in parallel litigation in the UK, France, and Spain, as well as Munich and Düsseldorf.

The EPO has completed preparations for the implementation of the unitary patent system, the office announced on Monday, July 4.

Jérôme Debrulle, the chair of the select committee of the Administrative Council for the Unitary Patent, gave the update during a meeting with the EPO president and vice presidents, the chairs, and vice chairs of the governing bodies of the Unified Patent Court (UPC), and leaders of the working groups.

Debrulle said: “In October 2021 the select committee adopted an ambitious work programme to complete the implementation of unitary patent protection.

“By the end of June 2022, the select committee had completed its work programme and is now ready for the entry into operation of the unitary patent system.”

EPO President António Campinos said: "We're now on the homestretch of preparations for the Unitary Patent package, and our solid progress reflects the close co-operation between all partners.”

The July 4 meeting was the second gathering of UPC project participants since the launch of the provisional application period on January 19.

The UPC and unitary patent project is expected to launch early next year. Final preparations, such as completion of the IT system and the appointment of judges, are already underway.

Earlier this month, Campinos was re-elected as EPO president for another five years starting on July 1 2023.

The US District Court for the Central District of California confirmed a record $175 million arbitration award last Thursday, June 30, against Vital Pharmaceuticals for violating Orange Bang’s rights over the trademark ‘Bang’.

The court also upheld the arbitrator’s order that Vital Pharmaceuticals pay a 5% royalty on all future sales of Bang-branded products and around $10 million in attorney’s fees.

The award is one of the largest ever granted in a US trademark case.

The arbitrator found in April that Vital Pharmaceuticals, which was only allowed to manufacture creatine-based products with the ‘Bang’ trademark under a 2010 trademark co-existence agreement with Orange Bang, had breached its obligations.

Monster Energy, also named as a defendant in the petition to vacate the arbitration order, agreed to team up with Orange Bang for this case to help defend its trademark rights.

After considering Vital Pharmaceuticals’ petition, Judge Dale Fischer of the California court noted that the arbitrator appeared to have taken great care with both the factual issues and the law.

“In short, there is no basis to find that the award was completely irrational or that the arbitrator engaged in manifest disregard of the law,” he said.

The court took note of Vital Pharmaceuticals’ allegation that the arbitrator may have been incorrect in his rulings but opined that the argument fell far short of the standard for vacating an arbitration award.

NBC sued Jay Kennette Media Group in the US District Court for the Central District of California on Friday, July 1 over the registration of ‘Dunder Mifflin’, the name of the fictional paper business in the The Office.

The network claimed the defendant was a trademark squatter and that it had built a business based on registering trademarks belonging to others.

The complaint stated that the defendant registered the mark around six years ago to sell merchandise. NBC tried to register ‘Dunder Mifflin’ in 2020 but its application was rejected. The media company is appealing that rejection.

The plaintiff asked that the defendant’s remaining ‘Dunder Mifflin’ merchandise be destroyed and asked for damages and profits from the products.