Posts in Government

Earlier this week, the U.S. Supreme Court issued an order list indicating it had denied petitions for writs of certiorari in two cases challenging the NHK/Fintiv framework developed by the Patent Trial and Appeal Board (PTAB) for discretionary denials of validity trials under the America Invents Act (AIA). In denying petitions from consumer tech giant Apple and generic pharmaceutical firm Mylan Laboratories, SCOTUS has ended the latest challenge to the PTAB’s NHK/Fintiv rule, which has raised the ire of many entities who have found the PTAB to be a very valuable backdoor towards patent invalidation outside of U.S. district court. Both petitions essentially asked the Court whether the PTAB’s application of its NHK/Fintiv rule passes muster under precepts of U.S. administrative or due process law.

Senator Thom Tillis (R-NC) today sent a second letter to U.S. Attorney General Merrick Garland and Assistant Attorney General – Antitrust Division at the U.S. Department of Justice (DOJ) Jonathan Kanter expressing concern over the process for releasing, and the substance of, a revised version of the Joint DOJ-U.S. Patent and Trademark Office (USPTO)-National Institute of Standards and Technology (NIST) Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary FRAND Commitments. Tillis sent an initial letter on December 10, 2021, four days after the DOJ published the latest iteration of the Policy Statement for public comment.

Some say the definition of insanity is doing the same thing over and over while expecting a different outcome. That would appear to be the case with the recent refiling of a petition by Knowledge Ecology International (KEI) to the National Institutes of Health (NIH) asking it to march in under the Bayh-Dole Act to force licensing to additional parties of the prostate cancer drug Xtandi, because of its cost. The law allows academic institutions, companies and federal laboratories to own and license inventions made with government support. Similar petitions were rejected by NIH and the Department of Defense (which funded the research on the underlying invention) in the Obama/Biden Administration for a simple reason: the law is for the commercialization of federally funded inventions; it does not allow the government to set prices for successful products.

In Part II of this series, we considered the language of a specific licensing commitment made to European Telecommunications Standards Institute (ETSI) and the prevailing law relating thereto. In this Part III, we consider the 2021 Draft Policy Statement with a particular view to highlighting its inconsistencies with the ETSI framework and the inapplicability of the hold-up narrative to the situation involving an individual United States patent. Despite its purported purpose of providing the agencies’ views on “remedies for the infringement of standards-essential patents (or SEPs) that are subject to a RAND and/or F/RAND licensing commitment”, the 2021 Draft Policy Statement does not take a clear position on this issue, instead merely stating the following (some might say “the obvious”):

This week in Washington IP news, several committee hearings in the House of Representatives will focus on major tech issues. The House Oversight Committee on Thursday explores the energy impacts of cryptocurrency mining, while on Wednesday afternoon the House Europe Subcommittee will discuss ways to improve resiliency in transatlantic supply chains for critical technologies. Elsewhere, the Center for Strategic & International Studies will welcome former USPTO Director Andrei Iancu for a discussion regarding whether America’s tech policy is forcing the nation into another Sputnik moment in the race against China to build a strong domestic semiconductor industry.

On January 12, a coalition of 28 property rights groups signed a letter addressed to U.S. Attorney General Merrick Garland and Assistant Attorney General for Antitrust Jonathan Kanter asking those officials to reconsider and withdraw a draft policy statement issued in early December regarding licensing negotiations and remedies for standard-essential patents (SEPs) subject to voluntary fair, reasonable and non-discriminatory (FRAND) commitments. According to the coalition, the U.S. Department of Justice’s (DOJ) statement will only serve to bolster the fortunes of China, the major economic rival to the United States, by allowing Chinese tech implementers to infringe SEPs without respect to the rights of U.S. innovators.

On January 11, the U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) issued a precedential decision finding dilution by blurring and sustaining two oppositions filed by Spotify AB against two marijuana-related trademark applications. Applicant U.S. Software Inc. filed trademark applications for POTIFY in standard characters, and stylized with a design on July 17, 2017, and May 2, 2018, respectively. These applications sought to register POTIFY for: “downloadable software for use in searching, creating and making compilations, rankings, ratings, reviews, referrals and recommendations relating to medical marijuana dispensaries and doctor’s offices and displaying and sharing a user’s location and finding, locating, and interacting with other users and place, in International Class 9.”

Today, the full Senate Judiciary Committee officially voted to confirm the nomination of Katherine Vidal by a vote of 17-5 for Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). The Committee also voted 16-6 in favor of Judge Leonard Stark, President Biden’s nominee to replace U.S. Court of Appeals for the Federal Circuit Judge Kathleen O’Malley, who announced on July 27, 2021, that she will retire, leaving a vacancy on the court as of March 11, 2022. The hearing was originally scheduled to take place last week, but was postponed to allow members of the committee to attend the funeral of former Senator Johnny Isakson (R-GA) on January 6.

Apologies for missing last week, which was a light, short holiday recap—nothing much of note beyond less-than-average filings, given the holidays. This week was back to the new normal at the Board, with 24 petitions—one post grant review (PGR) and 23 inter partes reviews (IPRs)—and 50 new filings, with fewer than usual file-and-settle suits (as it’s the beginning of a quarter, year, and month). Another unusually high 92 terminations are mostly due to the end of file-and-settle suits from last year. A few new campaigns of note below, more discretionary denials, and a bunch of IPR denials filed against a German microbattery company round out the week.

On Tuesday, January 11, the United States District Court for the District of Columbia denied Facebook’s motion to dismiss a complaint brought against it by the U.S.  Federal Trade Commission (FTC), holding that the FTC had stated a plausible claim for relief under Section 2 of the Sherman Act. The FTC filed a complaint on December 9, 2020, asserting one count of monopoly maintenance under Section 2 of the Sherman Act. Facebook moved to dismiss both this case, and a related state case. The district court dismissed the Commission’s complaint but granted the FTC the opportunity to amend. Following a leadership change from when the complaint was initially filed, the FTC filed an amended complaint in August of 2021. L

This article, originally published on 12/27/2021, was updated on 1/12/2022 and republished on 1/13/2022 to include information that was omitted in error, beginning after “Conclusions and Outlook”.

In Part I of this post, we provided an update on three lead pioneers in the mRNA IP space, Moderna, BioNTech and CureVac. In this post we profile Sanofi, Arcturus, eTheRNA and other mRNA companies and offer conclusions. Sanofi (NASDAQ: SNY), headquartered in Paris, FR, acquired mRNA pioneer Translate Bio in September 2021 for approximately $3.2 billion and mRNA startup Tidal Therapeutics in April 2021 for approximately $470 million. With its acquisition of Translate alone, Sanofi obtained an mRNA pipeline of nine candidates (two in the clinic), hundreds of patents, and undoubtedly valuable mRNA-based technical and regulatory know-how.

A webinar hosted on Tuesday, January 12, by The Federalist Society’s Regulatory Transparency Project featured former U.S. Patent and Trademark Office (USPTO) Directors Andrei Iancu and David Kappos, as well as Duke University Professor of Law and former USPTO Administrator of the Office of External Affairs Arti Rai, discussing the proposal to the World Trade Organization (WTO) to waive IP rights under the Trade-Related aspects of Intellectual Property Rights (TRIPS) Agreement for certain COVID-19 technologies. While all three panelists agreed that the IP waiver discussion has become a distraction that will not solve the fundamental problems, Iancu and Kappos were especially passionate that the precedent set by the U.S. government’s decision to back the proposal could do very real harm, rather than good.

Today, patent data analytics firm IFI CLAIMS released its annual report of the top U.S. patent recipients and active patent family owners, providing the IP world with a look at the patent ownership landscape that developed throughout the course of 2021. For yet another year, information technology R&D giant International Business Machines (IBM) earned the top spot among entities obtaining patents from the U.S. Patent and Trademark Office (USPTO), while South Korean tech conglomerate Samsung Electronics enjoys the largest portfolio of global active patent families.

The U.S. Supreme Court yesterday asked the Solicitor General of the United States to weigh in on a petition for writ of certiorari that claims the U.S. Court of Appeals for the Federal Circuit (CAFC) is depriving litigants of their right to trial by jury under the Seventh Amendment. The petition, filed in September by Olaf Sööt Design, LLC (OSD), asks the Court to take up the following question: “Whether the Seventh Amendment allows the Federal Circuit to reverse a jury verdict based on a sua sponte new claim construction of a term the district court concluded was not a term of art and construed to have its plain and ordinary meaning; where the Federal Circuit’s sua sponte claim construction essentially recasts a specific infringement factual question, previously decided by the jury, as a claim construction issue, to be decided de novo by the appellate court.”