The current appeal concerns a South African patent registered in the name of Aventis.�� The registered patent claims a composition that facilitates holding an active ingredient in a solution.�� The composition is a technique to prevent the formation of a gel or to break down a gel when the active ingredient is introduced into the solution.�� Two main issues were raised in the present appeal: (1) whether an amendment, made several years ago, to the patent’s independent claim was valid; and (2) whether an interim injunction shall be granted during pending action in a corresponding patent validity hearing.

The Court dealt with the first issue by examining the construction of the patent specifications and dismissed the appeal.�� On the facts of the case, the Court found that the amended claims remained a ‘composition’ with the same constituents and effect as the original patent claim and that the amendment merely expressed what was silent in the original claim.

On the second issue, the Court noted a ‘complication’ in Aventis’ action for an injunction against infringement.�� The Court acknowledged that the patent claimed a composition made up of the different components.�� The Court also noted that the product being imported and offered by the respondent, Cipla, was not a composition.�� Cipla’s product consists only of several components. ��As such, Cipla’s product, consisting of several components intended for mixture, was found by the Court to have a specific and sole intention of being used in a manner that can infringe the patent and is therefore unlawful.

The Court canvassed the law in other jurisdictions and found that it would be deficient if there was no remedy against intentionally aiding, abetting or inducing infringement of a patent.

More interestingly, however, the Court considered the submissions of amicus curiae. ��Specifically, when determining whether to grant an injunction against infringement, the broader public interest must be taken into account.�� Several United States cases were cited. In particular, the cited cases found that:

(a) In granting an injunction against patent infringement, one requirement is that there be no disservice to the public interest (Ebay Inc v Mercexchange, LLC [1])

(b) An injunction may not be granted where enjoining the defendant from selling its product could pose a serious risk to the public health if the patentee could not fill a market need (Innogenetics, NV v Abbott Laboratories��[2])

(c)�� There is weight against the granting of an injunction if a patent infringer’s product has superior medical features (Barb Peripheral Vascular, Inc v WL Gore & Associates, Inc��[3])

(d) An injunction be refused based on evidence that millions of innocent contact lens wearers would suffer real adverse consequence if sale of the infringing contact lenses is enjoined (Johnson & Johnson Vision Care, Inc v Ciba Vision Corporation��[4])

(e) An injunction be refused because the public interest would not be substantially advanced or harmed (Edwards Lifesciences v Corevale��[5])

In the present case, there was no suggestion that Aventis would not be able to meet a demand for the pharmaceutical product of the disputed patent. ��There was also no evidence that Cipla’s product offered any superior medical benefits, nor was there any evidence that there would be material disruption to patients if an injunction were to be granted.�� Additionally, the present case is unlike the Edward Lifesciences case, where in that case, an injunction would have no practical effect.

The Court found that Cipla’s resistance to an injunction was founded upon commercial interests. Once Aventis’ patent expires, Cipla sought to gain an advantage of being first to supply a cheaper generic product. On the other hand, Aventis has just as much interest in establishing a first presence in the generic market and refusing an injunction would equally prejudice Aventis.

Overall, the most interesting aspect of the present judgment involves consideration of the “public interest” element when deciding whether to grant an injunction for patent infringement.�� As noted above, the Court of Appeal of South Africa canvased and considered the law in other jurisdictions.�� Although the cited US case law ruled against granting injunctions on the basis of a “public interest” analysis, the Court of Appeal of South Africa adapted the same inquiries and, based on the facts of the appeal, granted an interim injunction.

The judgment by the Supreme Court of Appeal of South Africa illustrates that consideration of granting an injunction can extend beyond determining simply whether there is a well-grounded apprehension of irreparable harm and whether there is an adequate ordinary remedy.�� The cited case law illustrates that in multiple jurisdictions, the Courts are willing to ensure they are not only considering facts of the case in isolation, but also, where necessary, in the context of the broader public interest.�� In doing so, however, the Courts must take care in not straying from the spirit and principles underlying respective patent laws.

Stephen Lam is a JD candidate at Osgoode Hall Law School.

��1����Ebay Inc v Mercexchange, LLC��547 US 388 (2006) at 392.

[2]��Innogenetics, NV v Abbott Laboratories��578 F. Supp 2d 1079 (WD Wis 2007) at 1105.

[3]��Barb Peripheral Vascular, Inc v WL Gore & Associates, Inc��2009 WL 920300 (D. Ariz.).

[4]��Johnson & Johnson Vision Care, Inc v Ciba Vision Corporation��712 F. Supp. 2d 1285 (M.D.Fla. 2010).

[5]��Edward Lifesciences AG and Ewards Lifesciences LLC v Corevalve Valve, Inc and Medtronic Corevalve, LLC��2011 WL 446203 (D. Del).

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Google’s AdWords platform allows an advertiser to “bid” on the right to have an advertisement link displayed with search results for a word or combination of words relevant to the advertiser’s business. Rosetta Stone is accusing Google of trademark infringement on the basis that Google is “selling” trademarked words and phrases, such as “Rosetta Stone” and “The Fastest Way to Learn a Language …”, to advertisers on Google pages and the result pages are confusing to consumers. A full list of registered Rosetta Stone trademarked phrases may be found on the . The Google AdWords platform determines where advertisements are placed by assigning an “Ad Rank” based on factors such as an advertiser’s maximum monetary bid and “quality score” metrics. A summary of how the AdWords platform works may be found .

Rosetta Stone asserted several claims in the district court: 1) direct trademark infringement; 2) contributory trademark infringement; 3) trademark dilution; 4) vicarious trademark infringement; and 5) unjust enrichment. The district court disposed of the case in Google’s favour by summary judgment and dismissed the unjust enrichment claim. The Court of Appeal, however, vacated the district court’s summary judgment with respect to direct infringement, contributory infringement and dilution claims.

Overall, in vacating the district court’s summary judgment on 3 claims, the Court of Appeal remanded issues for further proceedings by objecting to the lower court decision on doctrinal and procedural points. On several points of evidence, the Court of Appeal held that the testimony and evidence considered in the district court could not sustain the summary judgment and that there was evidence to establish several questions of fact. On the claim of trademark dilution, the Court of Appeal found that the lower court erred by incorrectly placing a burden of proof on Rosetta Stone to demonstrate that Google was using trademarks as a source identifier for Google’s own products. The Court of Appeal also found the lower court omitted a “fair use” analysis for trademark infringement.

As the Court of Appeal reviewed evidence and testimony from the lower court, several interesting events were brought to light. Firstly, the court considered the Google AdWords policy changes that occurred over the years. The record shows that prior to 2004, trademarks as keyword search triggers for unauthorized advertisers were not allowed. In 2004, restrictions were loosened. The court heard evidence, however, that a Google study at the time (in 2004) suggested that the unrestricted use of trademarks in the text of an advertisement might confuse Internet users. Despite these finding, in 2009, restrictions were further loosened, allowing trademark terms to be used in ads without the approval of a trademark owner. Google’s research showed that about 7% of its total revenue was driven by trademarked keywords. The court heard testimony that Google’s policy changes were revenue driven. Secondly, the court heard testimony from 5 consumers who, in 2009, mistakenly purchased counterfeit software from links on a Google search page. The consumers mistakenly believed the software to be affiliated or authorized by Rosetta Stone for distribution. ��Thirdly, the court heard evidence that Google purportedly allowed known infringers and counterfeiters to bid on Rosetta Stone trademarks as advertising search keywords. On many points of testimony, the Court of Appeal concluded there to be sufficient evidence to create questions of fact that cannot sufficiently be resolved by summary judgment.

This case is important for a few reasons. To start, it is one of the first United States appellate court opinions on a “trademark owner v. search engine keyword advertiser” case addressing whether trademark infringement liability may arise. Secondly, a decision against Google could impact the future of Google’s AdWords platform and the Internet keyword search advertising business model. On the other hand, if the court ends up deciding in favour of Rosetta Stone, the result could spur many more cases over keyword advertising. Any company with a website could assert that customers are being mislead by Google’s AdWords program and bring similar lawsuits.

On his , Professor Goldman, Associate Professor of Law at Santa Clara University School of Law, criticizes the Court of Appeal decision as failing to provide a judgment based on “the big picture normative conclusion that keyword ad sales shouldn’t violate trademark law.” As the Court of Appeal remanded the case for further proceedings, we’ll need to wait at least a few more years for the landscape to settle on whether keyword advertisement sales violate trademark law.

Stephen Lam is a JD candidate at Osgoode Hall Law School.

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