Other Barks and Bites: USPTO Extends Another Comment Period; Vidal Corrects PTAB’s Treatment of Multiple Dependent Claims; CAFC Orders Pharma Company to Delist Orange Book Patent

This week in Other Barks & Bites: the U.S. Court of Appeals for the Federal Circuit (CAFC) issues a precedential decision affirming a district court’s order that Jazz Pharmaceuticals must delist its patent related to the narcolepsy drug Xyrem from the Food and Drug Administration’s (FDA’s) Orange Book; the U.S. Patent and Trademark Office (USPTO) extends the deadline on its Request for Comments concerning collaboration initiatives with the FDA; USPTO Director Kathi Vidal issues a precedential Director Review decision granting rehearing and a modified Final Written Decision for patent owner; a district court denies three motions from Meta that attempted to reverse a previous judgment ordering the company to pay $174.5 in royalties to Voxer over patent infringement; President Biden passes on vetoing a cease-and-desist order against Apple; and the USPTO launches a new education platform to teach students about innovation and intellectual property.

Bites

Patent Owner Prevails in Vidal Director Review of PTAB’s Treatment of Multiple Dependent Claims

In Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (Feb. 24, 2023), U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal on Friday granted rehearing of a Patent Trial and Appeal Board (PTAB) Final Written Decision (FWD) and modified the decision to indicate that the petitioner failed to show by a preponderance of the evidence that claims 3–16, as dependent from claim 1, are unpatentable. Vidal deemed the issue of multiple dependent claim patentability as to each of its alternatively referenced claims to be an issue of first impression.

USPTO Reopens and Extends Time Period for Comments on USPTO-FDA Collaboration Initiatives

The USPTO has extended another comment period, this time with respect to its November 7 Request for Comments (RFC) on collaboration initiatives it is undertaking with the Food and Drug Administration (FDA). The original deadline for comments closed on February 6, but today, a Federal Register Notice was published indicating that the comment period will be reopened and extend through March 10, 2023. As of January 30, 30 public comments had been filed in response to the FRN seeking input on ways that both agencies can collaborate to promote innovation while preserving patient access to generic pharmaceuticals. As of Friday, February 24, there were 68 comments received and 63 posted.

The Office recently also issued a second extension of the comment period for input on its RFC regarding Robust and Reliable patents.

Federal Circuit Affirms District Court’s Instruction That Jazz Pharma Must Delist Patent from Orange Book

The Federal Circuit on Friday, February 24, issued a precedential decision affirming a district court’s grant of an injunction to Avadel CNS Pharmaceuticals, Inc. directing Jazz Pharmaceuticals to delist its U.S. Patent No. 8,731,963 for the narcolepsy drug Xyrem from the FDA’s Orange Book. The CAFC agreed with the district court’s construction of the ‘963 patent claims as system, rather than method-of-use claims, and rejected Jazz’s arguments that the claims can still qualify as “an approved method of using the drug” under FDA regulation 21 C.F.R. § 314.53(b)(1). The court ultimately lifted the stay of the injunction and required Jazz to ask the FDA to delist the patent within 14 days of the decision.

CAFC Upholds PTAB Ruling in Selfie Stick Patent Dispute

On Thursday, February 23, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed The Patent Trial and Appeal Board’s (PTAB) ruling that a selfie stick patent from inventor Ramzi Khalil Maalouf is unpatentable. The ruling is a win for Microsoft, which initiated the inter partes review (IPR) of the patent, despite the inventor claiming the company was not under any threat of a lawsuit. The circuit judges wrote that the PTAB “did not err in its claim construction or ultimate legal conclusion of obviousness,” and found that the board’s analysis of the case was sufficient. 

Members of Congress Urge USPTO to Scrutinize Merck

On Wednesday, February 22, Senator Elizabeth Warren (D-MA) sent a letter to the USPTO asking the Office to scrutinize pharmaceutical company Merck’s patent applications for its cancer drug, Keytruda. “It is not at all clear that Merck is doing anything other than extending its monopoly power over the drug,” wrote Warren in the letter addressed to the USPTO. Three other Democrats, Senator Bernie Sanders (D-VT), and Representatives Katie Porter (D-CA) and Pramila Jayapal (D-WA), also signed the letter. The letter accuses Merck of anti-competitive business practices and calls on the organization to reject applications that do not meet the Office’s standards. 

Biden Passes on Vetoing Apple Watch Ban

On Tuesday, February 21, AliveCor, an electrocardiogram (ECG) technology, announced in a press release that a December International Trade Commission (ITC) ruling which imposed a cease and desist order on Apple Watches infringing on AliveCor patents cleared Presidential review. It is the first time that a U.S. president upheld a Limited Exclusion Order (LEO) against Apple. “We applaud President Biden for upholding the ITC’s ruling and holding Apple accountable for infringing the patents that underpin our industry-leading ECG technology,” said Priya Abani, CEO of AliveCor.

District Court Affirms Ruling Ordering Meta to Pay $174.5 Million in Patent Dispute

On Tuesday, February 21, a district court judge denied three motions from Meta in the tech company’s bid to reverse a $174.5 million judgment. In September 2022, a jury ruled that Meta had to pay the judgment for infringing on two patents from Voxer, a company that makes walkie-talkie apps. In this post-trial move, Meta attempted to have one of Voxer’s patents invalidated as well as asking the court to either overturn the ruling or hold a new trial. On the claim of patent invalidity, U.S. District Judge Lee Yeakel wrote, “the court concludes that Facebook has failed to show by clear-and-convincing evidence that the asserted claims of the ‘270 Patent are ineligible under Section 101.”

Barks

USPTO Launches IP Education Platform for Students

On Thursday, February 23, the USPTO announced the launch of EquIP HQ, a platform to educate students about intellectual property and inventions. The platform was created by the USPTO in collaboration with Second Avenue Learning, and it provides free resources for teachers and students. In a statement, the USPTO wrote, “the primary goal of EquIP HQ is to raise intellectual property awareness, knowledge, and understanding among K-12 learners and educators.”

USCO Seeking Comment on Fees for Late Royalty Payments

On Thursday, February 23, the U.S. Copyright Office (USCO) issued a notification of inquiry seeking public comments about when fees for late royalty payments should be assessed under the Music Modernization Act’s blanket mechanical license. The notice specifically seeks input on the interplay between the Copyright Royalty Judges’ late fee regulations and the Office’s reporting and payment rules. Comments must be submitted by April 10.

Green Trademarks on the Rise in Europe

On Wednesday, February 22, the European Union Intellectual Property Office (EUIPO) released a study that found the number of trademarks considered “green” increased in 2021 by 12%. The most common trademarks were for products in energy conservation or energy production. Large companies were most interested in filing green trademarks, accounting for 13% of their trademarks filed.

Study Finds China Leading the Way in Nuclear Fusion Patents

On Tuesday, February 21, research company Astamuse released data showing that China leads the world in patent applications and grants related to nuclear fusion technology. The study found that China also leads the world in research institutes studying the potential breakthrough in energy production. The United States was in second place, followed by the United Kingdom and Japan.

This Week on Wall Street

Tesla Announces New California Engineering HQ

On Wednesday, February 22, Tesla CEO Elon Musk and California Governor Gavin Newsom held a press conference to announce Tesla’s new engineering HQ in Palo Alto, California. The building was previously occupied by Hewlett-Packard, and Governor Newsom talked up the deal as proof of the state’s commitment to renewable energy. Tesla and Elon Musk have faced scrutiny from state and federal regulators in the past, which was partially why Musk moved the company’s headquarters to Texas in 2021. The new facility will function as a dual headquarters according to Musk.

Pfizer Says RSV Vaccine Could Receive FDA Approval this Summer

On Tuesday, February 21, Pfizer said in a press release that the FDA has set an action date in August to review its RSV vaccine that would protect infants against the disease. It would be the first RSV vaccine that can be given to pregnant women that would protect infant children.  “If approved, RSVpreF would help protect infants at their first breath from the devastating effects of this infectious disease,” said Annaliesa Anderson, Ph.D., Senior Vice President and Chief Scientific Officer of Vaccine Research & Development at Pfizer.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2022 are announcing quarterly earnings next week (2022 rank in parentheses):

• Monday: None
• Tuesday: None
• Wednesday: Salesforce (68), Snowflake (207)
• Thursday: Dell (13), Hewlett-Packard (84), Marvell Technology (191)
• Friday: None

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Author: lifeonwhite