Other Barks & Bites for Friday, February 4: CRISPR Gene Editing Tech Debated at PTAB, PhRMA Calls Out ‘Deeply Concerning’ TRIPS Waiver to USTR, Deadline Closes for Comments on SEP Draft Policy Statement

This week in Other Barks & Bites: The Patent Trial and Appeal Board hears oral arguments in the famed CRISPR gene editing case; today marks the deadline for all comments on the 2021  version of the Joint DOJ-USPTO-NIST Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary FRAND Commitments; Judge Newman dissents from a Federal Circuit majority opinion finding clear error in a district court’s ruling on a patent settlement agreement; in a separate case, the Federal Circuit also dismissed an argument from Myco that injunctive relief against infringement upset the “status quo”; BlackBerry sells its legacy patent assets to a special purpose vehicle formed to purchase those assets for $600 million; Amazon stocks popped after weak quarterly sales while Facebook saw its stock shed value after beating on quarter revenue estimates; PhRMA files Special 301 Report comments with the U.S. Trade Representative voicing its concerns over the proposed TRIPS waiver for COVID-19-related IP rights; Judge Albright denies a motion to dismiss filed by PNC Bank which argued that Mirror Imaging’s patent claims were invalid under Section 101; and the Senate Judiciary Committee moves the Open App Markets Act towards a full vote on the Senate floor without amendments proposed by Senator Tillis.

Bites 

Eighty-One Comments Received on 2021 SEP Draft Policy Statement – As of the time of publication, 81 comments had been submitted in response to the U.S. Department of Justice – Antitrust Division (DOJ) request in December for public comment on a new iteration of the Joint DOJ-USPTO-NIST Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary FRAND Commitments. The new version has drawn criticism from many patent owners.

PTAB Hears CRISPR Gene Editing Debate: On Friday, February 4, the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) heard oral arguments in an interference proceeding about who was first to invent the use of single-guide CRISPR-Cas9 genome engineering technology in eukaryotic cells. The two teams of scientists involved are 2020 Nobel Prize in Chemistry recipients University of California, Berkeley, Professor Jennifer Doudna and her colleague Emmanuelle Charpentier, along with their teams at their respective institutions, versus the Broad Institute, led by Feng Zhang. The hearing was livestreamed here.

Judge Newman Dissents From CAFC’s Reversal of Order to Execute Settlement – On Thursday, February 3, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in PlasmaCAM, Inc. v. CNCElectronics, LLC in which the appellate court vacated and remanded an order issued by the Eastern District of Texas, ruling that a January agreement in emails between patent owner PlasmaCAM and defendant CNCElectronics was most accurately reflected by CNCElectronics’ version of the settlement agreement. Circuit Judge Pauline Newman authored a dissent in which she argued that the email exchange did not show the “meeting of the minds” required to support CNCElectronics’ demands for immunity from patent infringement claims for all possible new infringing products.

Open App Markets Act Moves Out of Senate Judiciary Without Tillis Amendments – On Thursday, February 3, the Senate Committee on the Judiciary favorably reported the Open App Markets Act, which would increase antitrust enforcement against certain business practices surrounding online software or “app” stores, out of committee by a 21-2 vote. The bill moves toward a full vote on the floor of the U.S. Senate without amendments proposed by Senator Thom Tillis (R-NC), who had sought to make the antitrust enforcement provisions of the bill more targeted against anticompetitive practices and not just against large online companies in general.

CAFC Dismisses Myco’s “Status Quo” Challenge to Preliminary Injunction – On Thursday, February 3, the Federal Circuit issued a precedential decision in BlephEx, LLC v. Myco Industries, Inc. in which the appellate court affirmed the Eastern District of Michigan’s ruling entering a permanent injunction against Myco’s sales of an infringing device for treating blepharitis, an inflammation of the eyelids. In so ruling, the Federal Circuit dismissed Myco’s arguments on appeal that the district court ignored substantial questions of patent validity raised by Myco, that the preliminary injunction was overbroad and that the district court improperly upset the status quo by entering the injunction. “[T]he status quo when the preliminary injunction was filed was a state in which the ’087 patent had been granted and could be asserted,” the Federal Circuit ruled.

CAFC Says Affirms TTAB, No Separate Commercial Impression for Stylized “.SUCKS” – On Wednesday, February 2, the Federal Circuit issued a precedential decision in In re: Vox Populi Registry Ltd. in which the appellate court affirmed a ruling by the Trademark Trial and Appeal Board (TTAB) upholding a trademark examiner’s rejection of an application to register a stylized form of “.SUCKS” as a mark. The Federal Circuit found no error in the TTAB’s determination that the stylized form of the top-level domain name failed to create a separate commercial impression, and dismissed customer declarations on perceiving “.SUCKS” as a service mark of Vox because those declarations were made without regard to the stylization of the domain name.

CAFC Rules PTAB Improperly Relied on Applicant Admitted Prior Art During IPR – On Tuesday, February 1, the Federal Circuit issued a precedential decision in Qualcomm Inc. v. Apple Inc. in which the appellate court vacated a pair of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) after finding that the PTAB improperly relied on Apple’s invalidity contentions based on applicant admitted prior art (AAPA) submitted by Qualcomm during prosecution of the patent claims, which is outside the scope of IPR review as governed by 35 U.S.C. § 311(b). The Federal Circuit remanded for the PTAB to consider whether Apple’s petition nonetheless raises a successful Section 103 obviousness challenge on the basis of patent or printed publication prior art.

PhRMA Special 301 Comments to USTR Calls Out “Deeply Concerning” COVID-19 TRIPS Waiver – On Monday, January 31, the Pharmaceutical Research and Manufacturers of America (PhRMA) submitted comments to the Office of the U.S. Trade Representative (USTR) for the USTR’s Special 301 Report, an annual review of the state of global intellectual property rights, which called the proposed waiver of IP obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) for technologies related to addressing the COVID-19 pandemic “deeply concerning” as IP is not a barrier to vaccine access.

Blackberry Sells Legacy Patents to Catapult IP for $600M – On Monday, January 31, cybersecurity and mobile handset tech developer BlackBerry Ltd. announced that it had entered into an agreement with Catapult IP Innovations, a special purpose vehicle formed to acquire BlackBerry’s patents in mobile devices and wireless networking, to sell substantially all of its non-core patent assets for $600 million in a deal including $450 million in cash and a promissory note covering the other $150 million. The deal includes a license back to BlackBerry to the patents sold to Catapult.

Eighth Circuit Affirms Breach of Fiduciary Duty for Bankruptcy Amendments to Patent License – On Monday, January 31, the U.S. Court of Appeals for the Eighth Circuit issued a ruling in Olsen v. Di Mase in which the appellate court affirmed a jury verdict finding that the drafter of a 2014 amendment to a patent licensing agreement during bankruptcy proceedings for Xurex, which owns patents covering protective coatings, engaged in a civil conspiracy to breach fiduciary duties to Xurex due to the drafter’s independent stake as a consultant to other parties to that licensing agreement.

Barks 

Copyright Office Extends Filing Deadline for Submitting Deposit Copies Under Section 710 – On Thursday, February 3, the U.S. Copyright Office announced that the agency had extended the deadline for applicants filing declarations related to timing adjustments under the agency’s emergency relief authority under 17 U.S.C. § 710. Declarants filing electronic applications by December 31 of last year have until March 31, 2022, to submit their deposit copies on those applications.

NordicTrack Exercise Bike Maker Files Section 337 Complaint Against Peloton – On Thursday, February 3, the U.S. International Trade Commission (USITC) announced that home fitness company iFit, maker of NordicTrack exercise bikes, had filed a complaint at the USITC seeking a Section 337 investigation into certain electronic exercise systems, stationary bicycles and components thereof imported into the U.S. for sale by a few firms including rival exercise bike maker Peloton Interactive, which allegedly infringe upon patents owned by iFit.

EUIPO Signs Collaboration Agreement With Major European Furniture Association – On Tuesday, February 1, the European Union Intellectual Property Office (EUIPO) announced that it had entered into an agreement with the European Furniture Industries Confederation (EFIC) to collaborate on improving awareness of intellectual property, especially design protection, in combating against counterfeits and entities engaging in unfair competition.

Gilead Announces Settlement to Biktarvy Patent Dispute With ViiV Healthcare – On Tuesday, February 1, pharmaceutical firm Gilead Sciences announced that it had entered into an agreement with specialist HIV treatment company ViiV Healthcare that resolves all worldwide litigation between those two firms based upon ViiV’s patent claims covering the novel compound bictegravir, which ViiV alleged were infringed by Gilead’s use of bictegravir in that firm’s Biktarvy HIV treatment.

USPTO Releases New, Robust Patent Public Search Tools Online – On Tuesday, February 1, the U.S. Patent and Trademark Office announced that the agency had released new Patent Public Search tools based on the current search tools used by USPTO examiners to find prior art through Patents End-to-End, to replace a series of currently available patent search tools that the agency will be retiring this September.

Judge O’Connor Enters Injunction for Rolex Against Counterfeit Watchmaker – On Monday, January 31, U.S. District Judge Reed O’Connor of the Northern District of Texas entered a ruling that granted injunctive relief against BeckerTime preventing that firm’s sale of refurbished luxury watches with Rolex trademarks, although Judge O’Connor did rule that Rolex was not entitled to disgorgement of profits due to laches caused by Rolex’s delay in asserting its trademark claims.

Lady Antebellum, Anita White Settle “Lady A” Trademark Case – On Monday, January 31, a joint motion to dismiss was entered in the Middle District of Tennessee, terminating a lawsuit including trademark infringement claims between the country group formerly known as Lady Antebellum and Seattle-area blues singer Anita White, who had performed for decades under the name “Lady A” which the country group adopted to distance itself from connections to the pre-Civil War South.

This Week on Wall Street

Amazon Stock Climbs 14% in Extended Trading After Missing Sales Expectations – On Thursday, February 3, shares of Amazon.com stock popped 14 percent in extended trading after the e-commerce titan reported quarterly earnings, including a slight miss on revenues ($137.4 billion vs. $137.6 expected). The earnings report also included the first disclosure of quarterly advertising revenues for Amazon.

Meta Shares Shed 26% of Value Despite Beating Quarterly Revenue Estimates – On Thursday, February 3, Facebook parent company Meta reported its quarterly earnings showing that the social media company beat analyst forecasts on revenues, posting $33.67 billion over $33.4 billion expected revenues. Shares of Meta were down 26 percent, however, the company’s largest ever one-day drop in share value, due to weak forecasts on revenue growth in the next quarter due to Apple’s privacy changes and macroeconomic issues for advertisers, like supply chain constraints. 

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2021 are announcing quarterly earnings next week (2020 rank in parentheses):

• Monday: Alibaba Group Holding Ltd. (160th); LG Corp. (3rd); ON Semiconductor Corp. (t-170th); Rambus Inc. (t-297th); Zimmer Biomet Holdings, Inc. (283rd)
• Tuesday: Nissan Motor Co., Ltd. (t-148th); Realtek Semiconductor Corp. (t-183rd); Shimano, Inc. (t-269th); Toyota Motor Corp. (8th);
• Wednesday: Honda Motor Co., Ltd. (30th); Motorola Solutions, Inc. (t-262nd); Renesas Electronics Corp. (159th); Sonos, Inc. (t-262nd); The Walt Disney Co. (t-183rd);
• Thursday: Mazda Motor Corp. (t-174th); Siemens AG (38th)
• Friday: Magna International Inc. (t-155th); Novatek Microelectronics Corp. (t-289th)

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