An impugned order relating to the appeal by Novo Nordisk under the Patents Act, 1970, against the Controller of Patents was set aside in March this year, by the Intellectual Property Appellate Board, as having been made without affording the appellant an opportunity of being heard since the order affects the appellant adversely. The Board felt that the impugned order was unreasonable as it was manifestly arbitrary, and as such was unsustainable. Novo Nordisk A/S filed an international PCT application in the Denmark Patent Office in 2001. In India, it assigned the invention - which concerns human plasma deals and with clotting problems – to Novo Nordisk Healthcare AG in 2003. The Appellant filed a request for examination in September 2005. The office of the Controller of Patents and Design issued the First Examination report (FER) in June 2006, in which it raised objections that the invention lacked in inventive step, lacked in novelty, was anticipated and that most of the claims were neither patentable, nor allowable under the relevant sections of the Act. Novo Nordisk was told to respond to the objections and resubmit by June 9, 2007. Novo Nordisk filed its response on June 7, 2007 giving elaborate observations against the adverse citations and requested that an opportunity of hearing under section 14 of the Act should be afforded if the respondent desired to take any decision adverse to its interest. The Patent office in its impugned order in August 2007 maintained its technical objections and refused the applicant’s request for a hearing on account that it filed its response on the last date, and that a request for a hearing must be made at least ten days in advance of the expiry of time limit. The Appellate Board felt that a fair hearing was a fundamental right and the Registrar could have relaxed the conditions of section 80, before the Office chose to issue the impugned order and further remanded the case. ....Click here for full details >>

In the above mentioned case, the Federal Circuit reversed the district court’s grant of summary judgement of invalidity and held that the asserted patent claims were drawn to statutory subject matter and therefore not invalid under Article 101. Prometheus Laboratories marketed a test that used a method for calibrating the dosage or thiopurine drugs used for treating certain autoimmune diseases. Mayo Collaborative Services and Mayo Clinic Rochester purchased and used Prometheus’ test. In 2004 Mayo announced that it would design a test measuring the same metabolities for its own use and sale. Prometheus sued Mayo for infringement, asserting certain claims of US patents ‘623’ and ‘302’. The Federal Circuit held that the inventive nature of the claimed method stems not from pre-emption of all use of these natural processes, but the application of a natural phenomenon in a series of transformative steps comprising particular methods of treatment. The Court concluded that the claimed methods of treatment are patentable subject matter because they transform an article into a different state or thing and the transformation effected by the changing metabolism is central to the purpose of the claimed process. ....Click here for full details >>

In the above mentioned case, the Federal Circuit vacated and remanded the district court’s judgment of no direct infringement and affirmed the judgement of no contributory infringement, no inducement of infringement and no trademark infringement. The Court vacated and remanded the judgment of invalidity based on anticipation, obviousness, or lack of enablement. The Court also affirmed the judgment of no inequitable conduct and no laches. Vita-Mix was assigned the ‘021 US patent’, a method of preventing the formation of air pockets around the moving blades of a consumer food blender using a plunger into the blender to block the air channel that creates the air pockets. In 2006 Vita-Mix sued Basic for patent infringement of its blender models and trademark infringement for its Blender Solutions™ 5000 model. Basic responded by filing declaratory judgment counterclaims of non infringement, invalidity and inequitable conduct. Basic claimed that it designed a stir stick to stir air pockets which was non infringing. The district court resolved on summary judgment the entire dispute between the parties. Vita-Mix appealed on the issues of patent and trademark infringement; Basic cross-appealed on issues of no invalidity, inequitable conduct and laches. The Federal Circuit reminded that direct infringement can be proven by circumstantial evidence and concluded that the district court erred as a matter of law in disposing of the direct infringement claims by requiring direct evidence of infringement by Basic or Basic’s customers. The Court also pointed out that Vita-Mix had failed to register the mark Vita-Mix 5000 or the number 5000. The Court also affirmed that Vita-Mix’s delay in filing suit did not give rise to the presumption of laches. ....Click here for full details >>

In the above mentioned judgement, the Federal Circuit raised sua sponte the issue of lack of standing of plaintiff AsymmetRx, and vacated the district court’s grant of summary judgement to defendant Biocare. US Patents ‘256’ and ‘227’ which relate to p63 antibodies and methods for using them to detect malignant carcinoma, are owned by Harvard which entered into a licence agreement with Biocare to make, use and sell the p63 antibodies. The Biocare Licence was prior to the granting of the above mentioned patents and also defined a limited field of use - the life science market, but did not actually limit the Licence grant to that field. Later, Harvard entered into an agreement with AsymmetRx on p63 antibodies. Under the AsymmetRx Licence, ‘an exclusive commercial licence’ was granted to the plaintiff under the above mentioned patents and a licence to use the antibodies. The Licence was limited to a field defined as ‘the sale of clinical and diagnostic products and services based on detecting p63 expression or mutation.’ Harvard retained certain rights while imposing certain obligations on the company. Moreover, AsymmetRx could enforce the patents in an infringement action as long as it possessed an exclusive licence at the time the action commenced. AsymmetRx sued Biocare for patent infringement stating that Biocare’s sale of the antibodies violated its exclusive rights in the commercial diagnostic field. The district court granted Biocare’s motion for summary judgment and that the Biocare Licence excluded only rights to any materials covered by patents already in existence at the time of receiving the licence. The Federal Circuit addressed the question of whether the plaintiff had the statutory right to bring an infringement action without the patent owner Harvard which held the title. The Court noted that without a title the licensee had no right to sue for infringement in his own name, holding that Harvard did not convey the entire right to enforce the patents to the plaintiff. ....Click here for full details >>

The mere fact that a website is accessible in a particular place may not itself be sufficient for the courts of that place to exercise personal jurisdiction over the owners of the website, ruled the Delhi High Court. Lilly Icos LLC of Indianapolis (a technical collaboration between Eli Lilly and Icos Corporation) sued Richie Laboratories for marketing a Tadalafil tablet under the brand name TADARICH through its website, which, it claimed can be accessed in Delhi. Tadalafil, a key ingredient in treating erectile dysfunction cases is patented by Lilly Icos globally. The company which promotes the pharmaceutical preparations alleged that its registered trademark CIALIS for its tablets, is unique in shape, design and colour and with no descriptive meaning, and was also being used by the defendant as RICHALIS, detrimental to Lilly's interests. Lilly contended that the offending trademarks are being advertised by the defendant, whose website can be accessed in Delhi, therefore invoking jurisdiction. The court, in refusing to entertain jurisdiction, observed that, where the website is interactive, permitting the users not only access to its contents, but also subscription to the services provided by its owners/ operators, it may in certain circumstances create jurisdiction in the court of the place where the website is available. The circumstances do not apply here, as the website in question is passive and it is not proved that the defendant invited any subscription from anyone, including anyone in Delhi, for their products. ....Click here for full details >>

In its recent decision, the High Court of Delhi, made absolute its order restraining Bisleri International and its sister concerns from using the mark ‘MAAZA’ or any other deceptively similar trademark for mineral water, aerated water, nonalcoholic drinks, syrup and other such soft beverages. The defendant (Bisleri) and its employees were also restrained from using and/ or disclosing to any person the knowhow, formulations and other intellectual property used in the preparation of beverage bases and beverages sold under the trademark ‘MAAZA’. Since the plaintiff is the registered owner of the trademark ‘MAAZA’ following a Deed of Assignment by the two companies in 1993, the refusal to grant an injunction, felt the Court, would cause irreparable loss and injury to the plaintiff. In 1993, Coca Cola, the well known global soft drinks manufacturer acquired the intellectual property rights of MAAZA from the defendant (formerly a part of the Parle Group of Industries) who owned the trademark. The secret beverage base for MAAZA was retained with its affiliate company, Golden Agro Products Ltd. By the terms of the Assignment, Bisleri was to assign and transfer the MAAZA trademark in India to Coca Cola along with its Intellectual Property rights for a stipulated sum. Parle Exports relinquished its franchise, and in 1994, Coca Cola claimed that a licence agreement with Golden Agro transferred all their intellectual property rights and formulation rights to the plaintiff. In March 2008, Bisleri, finding that Coca Cola had filed for registration of the ‘MAAZA’ trademark in Turkey, sent a legal notice to them repudiating the agreement, on grounds that it breached the agreement, since they were allowed to use the mark MAAZA in India alone. The plaintiff then filed the suit seeking permanent injunction and damages for infringement of trade mark and passing off, since Bisleri ignored the irrevocable and absolute transfer of the entire IP rights and knowhow in its favour. Coca Cola also alleged that the defendant, unauthorized, permitted the manufacture of certain secret ingredients of MAAZA to be manufactured by a third party by the name of Varma International, a direct relation of one of its employees, who were selling MAAZA products in the Australian markets. In defence, Bisleri, with its offices in Mumbai, alleged, that the Court did not have territorial jurisdiction to try the cases. This was overruled, largely on the plaintiff’s claim that Bisleri had issued an advertisement which they inferred to be a threat, in a Delhi newspaper. ....Click here for full details >>

Famous Swiss watch manufacturer claims that watches have ceased to be functional and have acquired the status of jewellery, while suing Alex Jewellery for infringing and diluting its famous brand in respect to their rolled gold jewellery products. The defendant contended that with gold prices escalating, artificial or rolled gold jewellery can have as much value as a premium watch, arguing that its adaption of the similar brand name was intended for goods not similar for which the trademark is registered. Other claims included, that the trade channels were different, that there were 25 other registrations in the name of Rolex for different class of goods; that the plaintiff was aware that the defendants were marketing their artificial jewellery under the Rolex name for years and invoked the law of limitations. In addition, the defendant claimed that the name Rolex was inspired by their son’s name Alex and that their products were of rolled gold. The Delhi High Court, recognised Rolex’s claims and its citations that Titan, Seiko or Chopard who are well known watch makers are also identified with the jewellery business, pronounced a clear case of infringement and passing off and allowed Rolex to proceed further. ....Click here for full details >>

Opponent, Burberry, filed invalidity proceedings against the applicant alleging that their Community Design lacked novelty and individual character on the grounds that it was identical to a handbag manufactured by them which had been in the market before the filing date of the RCD and evoked the same overall impression in the informed user as many of the opponent’s products which use the registered trademark ‘Burberry Check’ pattern. The opponent provided, as evidence, copies of the relevant registered trademarks covering the pattern, and some of their catalogues showing handbags with the check pattern. The Invalidity division upheld the applicant’s RCD on the grounds, that although the registered trademarks proved the availability of the ‘Burberry Check’ pattern before the RCD’s application date, the remaining documents failed to prove a conclusive date of disclosure. The Appeal Board held that the opponent had proven that the RCD lacked individual character and that the evidence proved that the RCD was almost identical to many of the products in the opponent’s catalogue. The Board revoked the ID’s decision, declared the RCD invalid and apportioned the costs of both proceedings to the applicant. ....Click here for full details >>

In this case, the Board of Appeal was asked to decide whether the design for an MP3 recorder lacked novelty over an earlier product which had been commercialized in Europe before the Registration date of the Community Design. The owner of the Community Design alleged that the applicant for invalidity had not proven that its earlier design had been made known to the public before filing its application. The owner of the Community Design also alleged that an equivalent design was filed at the Chinese Office by a Mao XuePing on its behalf. The owner therefore, alleged the applicant for invalidity’s design was identical to that filed by Mao XuePing and questioned the good faith of the applicant for invalidity. The applicant for invalidity claimed that Mao XuePing was employed by it and would have had access to the design and it was the owner of the CD whose good faith was in question, and that it had proven imports into Denmark which brought the product into the realm of public knowledge. Accordingly, the Board upheld the invalidation of the design. The case raises an important point, namely, the question of designs which are disclosed to third parties under presumption of confidentiality. ....Click here for full details >>

In this case, the applicant had filed an application containing four different views showing, respectively, first sofa, a second sofa, a chair, and a group containing all three. Rather than raise a ‘lack of unity’ objection, the Office appears to have assumed that the applicant intended to file to protect only a set of furniture all together, changed the indication of the product to ‘set of stuffed furniture’ and registered the design. In invalidation proceedings, the opponent filed evidence showing the public availability of each of the three items of furniture. The Invalidity Division upheld the design since they said that the ‘set’ was not disclosed. The Board of appeal rejecting the decision said that the design very properly was for three separate items and each was invalid. ....Click here for full details >>

It was necessary to compare designs as a whole not their individual components, ruled the Board of Appeal, to determine their overall impression, while dismissing an appeal by Plantillas Rosmar who had filed for invalidity against joint holders, Belso Shoes and Roots Universal’s above mentioned RCD. Plantillas challenged the validity of applicant’s Community Design protection for a sandal with crossed straps and a geometrical pattern on the bottom. The Cancellation Division dismissed Rosmar’s application for invalidity, because it represented a different product, a sole as opposed to a sandal; a decision which was upheld by the Board. ....Click here for full details >>