Posts in Technology & Innovation

As a former Chairman of the House Judiciary Committee and co-author of major patent legislation, I have a special interest in supporting and protecting U.S. intellectual property rights. So, I took note last month when the Office of the U.S. Trade Representative (USTR) released its latest Special 301 Report on Intellectual Property Protection and Enforcement.

As previously reported here, on February 28, 2022, in Interference 106,115, the Patent Trial and Appeal Board (PTAB) issued a decision in which it awarded inventive priority to the Broad Institute (Broad) over the University of California (U.C.) on an invention covering applications of the CRISPR-Cas9 gene editing system in eukaryotic cells. This decision purports to award substantial control of the CRISPR-Cas9 patent landscape to Broad. This article provides additional background on CRISPR-Cas9 technology, outlines the critical findings in Interference 106,115 that resulted in the PTAB awarding priority to Broad, and describes the impact of the PTAB’s decision for Broad, U.C., and other companies involved in the development of CRISPR-Cas9 technology.

resident Biden took an important step toward safeguarding the U.S. economy with last year’s Executive Order No. 14,036, “Promoting Competition in the American Economy,” aimed at promoting competition at home in the face of unfair competitive pressure from state-owned or sponsored firms overseas, particularly in China. That Executive Order includes regulatory and policy reviews across the spectrum of American commerce, noting “a fair, open, and competitive marketplace has long been a cornerstone of the American economy. It also emphasized the importance of achieving this goal through promoting competition and innovation by firms small and large at home and worldwide.” Yet, the proposal directed to one facet of the order — for patents covering inventions that are essential to a technology standard such as Wi-Fi or 5G wireless communication — risks not only undermining American innovation and competitiveness but also upending the notion of fairness and the very policy the Executive Order seeks to advance.

StockX, which describes its e-commerce resale platform as “[t]he current culture marketplace,” is primarily used by consumers to resell and buy sneakers, among other items. In January 2022, StockX announced its plans to launch The Vault, which uses non-fungible tokens (NFTs) to allow buyers to track ownership of physical products resold on its e-market and warrant their authenticity, including Nike shoes. Swiftly thereafter, Nike sued StockX in the United States District Court for the Southern District of New York (SDNY), alleging that StockX’s use of Nike’s famous marks in connection with its NFTs constitutes trademark infringement. Nike, Inc. v. StockX LLC, 1:22-cv-00983-VEC. In its original February 3, 2022, complaint, Nike alleged that StockX mints NFTs using Nike’s trademarks without authorization and sells them to consumers, who either believe or are likely to believe that StockX’s NFTs are connected with Nike when they are not.

At the end of January, BlackBerry announced it had completed the sale of the majority of its patents to Catapult IP Innovations, a special purpose vehicle specifically formed for the acquisition. Approvals for the transaction were granted under the 1985 Investment Canada Act and the 1976 Hart-Scott-Rodino Antitrust Improvements Act. More information on the transaction can be found here on the SEC website. The value of the deal was reported to be $600 million, a figure that makes it one of the largest patent acquisitions in the last ten years and spurs a great deal of speculation about whether it is worth it. This article explores Blackberry’s divested portfolio and disassembles some of the assumptions surrounding the portfolio and the deal’s value.

On May 9, a comment signed by a coalition of 25 law professors, economists and former U.S. government officials, and co-written by Adam Mossoff, Law Professor at George Mason University’s Antonin Scalia Law School, and Jonathan Barnett, the Torrey H. Webb Professor of Law at the University of Southern California’s Gould School of Law, was submitted to the European Commission as a response to the EU governing body’s call for evidence on standard-essential patents. Like another recent response to the EU Commission by a group of scholars with the International Center for Law & Economics (ICLE), the Mossoff-Barnett comment attempts to dispel several misconceptions about the impact that SEPs have on the commercialization of new technologies, especially major communications technologies like 4G/LTE and WiFi that have been widely commercialized to the benefit of the vast majority of global consumers, thanks in large part to the patent rights that help to structure commercialization efforts.

On April 28, Google published a blog by their general counsel, Halimah DeLaine Prado, about the crisis condition of the U.S. patent system. Prado portrays Google as a strong supporter of the patent system, citing their history in initiatives to spur new inventions and technologies. For example, Google was a key player in 2013 in starting the Open Patent Non-Assertion Pledge (to not sue on open-source software). Google was also instrumental in the beginnings of the License On Transfer network (which helps members who have been sued by “patent trolls”). Google has provided technical support for the Prior Art Archive. Prado notes that Google has 42,000 patents, which she says they license at “fair value,” and sell to grow the portfolios of other companies, all in the interest of small businesses.

The United States National Institutes of Health (NIH) signed a deal today with the World Health Organization’s COVID-19 Technology Access Pool (C-TAP) and the Medicines Patent Pool (MPP) that allows manufacturers greater access to key COVID-19 technologies owned by NIH. The licensing agreement offers 11 technologies under transparent, global and non-exclusive licenses. They include “the stabilized spike protein used in currently available COVID-19 vaccines, research tools for vaccine, therapeutic and diagnostic development as well as early-stage vaccine candidates and diagnostics.”

Four scholars with the International Center for Law & Economics (ICLE) have sent comments to the European Commission urging against any changes to the EU’s legal framework for licensing of standard-essential patents (SEPs) that would limit SEP holders’ ability to seek injunctions against alleged infringers. The ICLE scholars write: “It is simply not helpful for a regulatory body to impose a particular vision of licensing negotiations if the goal is more innovation and greater ultimate returns to consumers.” The comments come in response to the Commission’s February 2022 Call for evidence, which explained that “some users have found that the system for licensing SEPs is not transparent, predictable or efficient. This initiative seeks to create a fair and balanced licensing framework and may combine legislative and non-legislative action.” The feedback period ended May 9 and asked stakeholders to submit their views on: “(i) transparency; (ii) the concept of licensing on FRAND terms and conditions, including the level of licensing; and (iii) effective enforcement.”

While some companies have not yet jumped on the cryptocurrency bandwagon, others are rolling out processes to accept payment for goods via cryptocurrency. Some companies are also embracing cryptocurrency internally, in the form of employee benefits. Earlier this year, BTCS, Inc., the blockchain technology company, announced that it will offer dividends payable in Bitcoin. This should come as no surprise, since the company was the first “pure play” U.S. publicly traded company focused on digital assets and blockchain when it went public in 2014. Continuing to lead the digital asset industry, it is now also the first Nasdaq-listed firm to offer shareholders the option to receive dividends in bitcoin.

Senate Finance Committee Chair Ron Wyden (D-OR), Ranking Member Mike Crapo (R-ID) and Senators Bob Menendez (D-N.J.), Charles Grassley (R-IA), Catherine Cortez Masto (D-NV) and Ben Sasse (R-NE) sent a letter today to U.S. Trade Representative (USTR) Katherine Tai asking that she “dramatically improve” transparency in the negotiations surrounding waiver of intellectual property rights under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The letter noted that details of the draft text of a waiver agreement were announced in March, before Congress had been briefed or shown the text. Most recently, a new draft was shared with all World Trade Organization (WTO) Member States that has caused controversy on all sides of the issue.

Last week, the U.S. District Court for the Southern District of New York granted Block, Inc.’s Motion to Dismiss a complaint brought by AuthWallet, LLC against it for failure to state a claim. The district court found that the claims of AuthWallet’s patent were invalid because they claimed patent ineligible subject matter under 35 U.S.C. § 101. AuthWallet’s U.S. Patent No. 9,292,852 relates to systems and methods for processing financial transaction data. Block provides online platforms, products, and services that facilitate financial transaction data. Specifically, Block offers mobile payment options that provide a means for customers to earn and redeem rewards for multiple vendors. In its complaint, AuthWallet alleged that Block’s payment platforms infringe on one or more of claims of the ’852 patent, either literally or under the doctrine of equivalents. Specifically, AuthWallet alleged that Block put the inventions claimed by the ’852 patent into service (i.e., used them) and, therefore, Block benefited financially and commercially.

A large portion of the technology that we rely on daily—cell phones, computers, and the sensors and infrastructure that connect them, as well as an increasing percentage of drugs—is manufactured outside the United States, and in particular China. Indeed, over the past 25+ years the value of goods imported from China has increased ten-fold. Most companies are aware of the potential patent infringement liability for sales made in the United States but may not know that liability for infringing a U.S. patent can also extend to the processes used to make their product—even when manufacturing is done entirely outside the United States by a contract manufacturer.

The U.S. Patent and Trademark Office’s (USPTO’s) new director wasted no time getting down to business in terms of protecting design innovation in the United States. Only two days after being sworn in, Director Kathi Vidal announced the release of the USPTO’s Summary of public views on the article of manufacture requirement of 35 U.S.C. § 171. This report summarized public comments received in response to a December 2020 request by the USPTO. It is fitting to see the USPTO giving attention to protecting design innovation in new and emerging technologies since, as Director Vidal noted, design patents have been shown to provide a “catalyst for growth” and a “competitive edge” for U.S. manufacturers. With advancements in technology since the USPTO first issued guidelines for examining computer-generated designs in 1996, the Office wisely sought the public’s comments on whether its approach to 35 USC § 171’s requirement that a design be for an article of manufacture should be revised to account for new and emerging technologies.