Other Barks & Bites for Friday, December 3: Senate Republicans Question FTC’s Khan on Zombie Votes, USPTO’s Hirshfeld Gives Update on Small Claims Patent Tribunal Study, and Cellspin Soft Challenges Denials of USPTO Director Review at CAFC

This week in Other Barks & Bites: Moderna loses out on two appeals from PTAB final written decisions in part due to a lack of Article III standing; a group of Senate Republicans send a letter to FTC Chair Lina Khan regarding the agency’s use of “zombie votes;” the 2021 International Property Rights Index reflects an overall decline in the state of intellectual property rights globally; Joff Wild announces that he’s stepping down as editor-in-chief of Law Business Research at the end of the year; Register Perlmutter exercises her authority to extend the commencement date for the Copyright Claims Board by up to 180 days; the FTC files an antitrust suit challenging the legality of Nvidia’s $40 billion acquisition of chip supplier Arm; the Tenth Circuit affirms that RICO claims involving a university’s alleged theft of a novel algorithm developed by a student were time-barred; and Cellspin Soft files a supplemental brief at the Federal Circuit challenging the USPTO’s authority in denying requests for Director review of PTAB decisions under Arthrex. 

Bites

CAFC Tosses Moderna Appeal for Lack of Standing, Affirms PTAB Nonobviousness Findings – On Wednesday, December 1, the U.S. Court of Appeals for the Federal Circuit issued a pair of precedential opinions in appeals by COVID-19 vaccine maker Moderna from inter partes review (IPR) proceedings filed at the Patent Trial and Appeal Board (PTAB) to challenge the validity of patent claims owned by Arbutus Biopharma covering certain nucleic acid-lipid particles useful in nucleic acid delivery systems. In one decision, the Federal Circuit dismissed Moderna’s appeal for lack of standing as Moderna had terminated its respiratory syncytial virus (RSV) development program practicing technologies covered by the challenged patent. In the second decision, the Federal Circuit found Article III standing based on statements by Arbutus regarding the applicability of the patent claims to COVID-19 vaccine technology, but affirmed the PTAB’s findings that certain challenged patent claims were not unpatentable as obvious.

Senate Judiciary Committee Questions Nominees Kathi Vidal, Judge Leonard Stark – On Wednesday, December 1, the Senate Judiciary Committee held a hearing to question several recent nominees by the Biden Administration including Kathy Vidal, nominated to serve as the Director of the U.S. Patent and Trademark Office, and Judge Leonard Stark of the District of Delaware, nominated to serve on the judicial bench of the Federal Circuit. During the hearing, Vidal indicated that she would continue pursuing reforms begun by former USPTO Director Andrei Iancu, especially in the area of clarifying Section 101 subject matter eligibility for patentable inventions.

Cellspin Soft Challenges Denials for Director Review at the CAFC – On Wednesday, December 1, patent owner Cellspin Soft filed a supplemental brief at the Federal Circuit asking the appellate court to vacate and remand denials for Director review of final written decisions in IPR proceedings conducted at the PTAB. Cellspin is challenging the validity of the order under the Supreme Court’s ruling in United States v. Arthrex, and for violations of the Administrative Procedures Act for failing both to provide sufficient reasoning for the order’s decision and for lack of notice and comment rulemaking in developing the Director review process.

CAFC Affirms Invalidation of MS Treatment Over O’Malley Dissent on Estoppel Issue – On Tuesday, November 30, the Federal Circuit issued a precedential decision in Biogen International GmbH v. Mylan Pharmaceuticals Inc. in which the appellate court affirmed a ruling from the Northern District of West Virginia that Biogen patent claims covering a method of treating multiple sclerosis were invalid for failing the Section 112 written description requirement. Circuit Judge Kathleen O’Malley dissented from the majority, arguing that the district court abused its discretion in finding that Biogen was judicially estopped from drawing a distinction between clinical effects and therapeutic effects in arguing that the written description requirement was fulfilled.

Senate Republicans Urge FTC Chair Khan to Explain Zombie Votes – On Tuesday, November 30, a group of Senate Republicans sent a letter  addressed to Federal Trade Commission (FTC) Chairwoman Lina Khan asking Khan to explain the use of non-FTC commissioners to cast “zombie votes” in breaking a tie to approve a statement on prior approval provisions in merger orders issued by the FTC and the agency’s legal authority for the use of such a process.

Switzerland Leads IPRI 2021, Report Shows 2.2% Decrease in Entire Index – On Tuesday, November 30, the Property Rights Alliance (PRA) released the 2021 Intellectual Property Rights Index which showed that Switzerland ranked first overall in terms of national protections for real property and intellectual property rights, followed by Singapore and New Zealand. The entire index was down 2.2 percent over the totals from the 2020 index, driven in large part by a 5.4 percent reduction in the intellectual property rights portion of the index.

Judge Linn Dissents from CAFC Ruling Affirming PTAB Invalidation of Opioid Treatment Claims – On Thursday, November 24, the Federal Circuit issued a precedential decision in Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A. in which the panel majority affirmed the PTAB’s finding that Indivior patent claims covering an oral mucoadhesive film for administering naloxone with the use of a water-soluble polymeric matrix were anticipated by the prior art. Circuit Judge Richard Linn dissented from the majority’s findings that certain Indivior patent claims involving claimed polymeric ranges did not have support in the patent’s written description.

Tenth Circuit Affirms Ruling that RICO Claims Over Alleged Algorithm Theft are Time-Barred – On Thursday, November 24, the U.S. Court of Appeals for the Tenth Circuit issued a ruling in Cracraft v. Utah Valley University affirming the district court’s ruling that claims brought by Cracraft against UVU under the Racketeer Influenced and Corrupt Organizations (RICO) Act, over the alleged theft of Cracraft’s intellectual property in an algorithm Cracraft wrote in response to a 2003 exam question, were time-barred by the statute of limitations as the lawsuit was filed more than four years after Cracraft would have been on notice as to his injury after signing an IP transfer agreement during a mandatory pre-graduation meeting in March 2012.

Barks

USPTO’s Hirshfeld Expects Statement of Work on Small Claims Patent Tribunal by Early 2022 – On Thursday, December 2, Drew Hirshfeld, performing the duties and functions of the Director of the U.S. Patent and Trademark Office, sent a letter addressed to Senators Thom Tillis (R-NC), Patrick Leahy (D-VT) and other members of the Senate IP Subcommittee indicating that the agency has begun discussions with the Administrative Conference of the United States (ACUS) on conducting a feasibility study on a small claims patent tribunal, with a statement of work expected to be finalized by early 2022.

Joff Wild to Step Down as Editor-in-Chief for Law Business Research – On Thursday, December 2, Joff Wild announced in a LinkedIn post that he would be stepping down at the end of the year from his editor-in-chief position with Law Business Research, including his roles in content management for IAM, World Trademark Review and Global Data Review, a position in which Wild has served since 2003 when IAM was first published.

LG Announces LTE Patent License With Tinno Mobile After Successful Infringement Suits – On Thursday, December 2, South Korean electronics conglomerate LG Electronics announced that it had entered into an agreement with Chinese firm Tinno Mobile to license LG’s LTE standard-essential patents (SEPs) that were previously asserted in a series of lawsuits against Tinno’s European smartphone brand Wiko leading to court rulings against Wiko.

USITC Institutes Section 337 Complaint into Amazon, MediaTek Electronic Devices – On Wednesday, December 1, the U.S. International Trade Commission announced that it had decided to institute a Section 337 investigation into certain integrated circuits, chipsets and electronic devices imported into the U.S. for sale by Amazon, MediaTek, Belkin International and Linksys, based on a complaint for patent infringement filed by NXP Semiconductors in early November.

Register Perlmutter Exercises Authority to Extend CCB Commencement – On Tuesday, November 30, the U.S. Copyright Office announced that Register of Copyrights Shira Perlmutter was exercising her authority under the Copyright Alternative in Small-Claims Enforcement (CASE) Act to extend the date of commencement for small claims proceedings before the Copyright Claims Board (CCB) by up to 180 days after its statutory deadline set for later this month to give more time for public comments on CCB proceedings.

USPTO Issues Notices on Representative and Address, Patents for Humanity Info Collections – On Tuesday, November 30, the U.S. Patent and Trademark Office issued a notice in the Federal Register starting a 60-day public comment period to evaluate the agency’s information collection practices related to its Patents for Humanity program. The previous day, the USPTO issued another notice in the Federal Register extending by 30 days the public comment period for submissions evaluating the agency’s information collection practices regarding individuals authorized to take action related to patent application or reexamination proceedings conducted at the agency.

EUIPO, European Commission Report Shows Value of Seized Counterfeits Increased in 2020 – On Tuesday, November 30, the European Union Intellectual Property Office (EUIPO) published the results of a study conducted in partnership with the European Commission which showed that, despite a reduction in the number of total counterfeits detained by customs officials at the EU border, the value of the counterfeits seized increased by 2.4 percent over 2019’s totals.

USPTO, NCPC Partner to Create Anti-Counterfeiting PSA Campaign – On Tuesday, November 30, the U.S. Patent and Trademark Office and the National Crime Prevention Council (NCPC) released a series of public service announcements (PSAs) providing informational content on the dangers of buying fake goods ahead of the 2021 holiday season.

This Week on Wall Street

FTC Files Suit to Block Nvidia’s $40B Acquisition of Chip Design Firm Arm – On Thursday, December 2, the Federal Trade Commission (FTC) filed a lawsuit to challenge the proposed $40 billion acquisition of chip designer Arm Ltd. by U.S.-based semiconductor supplier Nvidia Corp., alleging that the acquisition will cause anticompetitive harms in several markets including driver assistance systems, datacenter server security and cloud computing CPUs, markets in which Nvidia competes with other companies supplied with Arm chips.

Susan Arnold to Replace Bob Iger as Board Chair for Disney – On Wednesday, November 1, the Walt Disney Company announced that Susan E. Arnold, a 14-year member of Disney’s Board of Directors as well as a former operating executive at the equity investment group The Carlyle Group, will take over as the Chairman of Disney’s Board on December 31, replacing Bob Iger who has served as Disney’s CEO from 2005 to 2020 and as Chairman of the Board since 2012.

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

• Monday: None
• Tuesday: None
• Wednesday: Oracle Corp. (56th)
• Thursday: Broadcom Inc. (148th)
• Friday: Carl Zeiss Meditec AG (t-144th)