Posts in Government

On March 2, U.S. District Judge Mitchell S. Goldberg of the District of Delaware received several filings related to the impact of the U.S. government’s recent statement of interest filed in a patent infringement suit against Moderna’s COVID-19 vaccine. That statement argued that Moderna should be released from infringement liability under the terms of a government contract that “authorize[d] and consent[ed] to all use and manufacture” of any U.S. patented invention. The federal government’s statement of interest, filed on February 14, contended that the use of such authorization and consent clauses should eliminate Moderna’s alleged liability under 28 U.S.C. § 1498, the statute governing remedies for patent infringements by government use. While there’s nothing surprising about the positions taken by defendant Moderna or plaintiffs Arbutus Biopharma and Genevant Sciences, the relevance of Section 1498(a) to arguments surrounding government control of drug pricing could make Judge Goldberg’s next ruling an important moment in the drug pricing debate.

Panelists at IPWatchdog’s Artificial Intelligence Masters Program today debated how artificial intelligence (AI) interacts with intellectual property protection, and how laws around who (or what) can be an inventor or creator, as well as areas like patent eligibility, will need to evolve to ensure the continued “gold standard” status of the U.S. IP system. Attorneys working on some of the biggest cases in the AI space today took part in day one of AI Masters, including Professor Ryan Abbott, who is representing Stephen Thaler in his myriad of cases involving the AI machine, DABUS, both in the United States and elsewhere, and Van Lindberg, who represented Kristina Kashtanova in their recent bid to copyright a partially AI-generated graphic novel.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday granted Patent Quality Assurance’s (PQA’s) motion to dismiss its January 24 petition for a writ of mandamus asking the CAFC to restore it as a party to its high-profile inter partes review (IPR) proceeding against VLSI Technology. U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal in December 2022 ruled that PQA abused the IPR process by filing an IPR and threatening to join a separate IPR against VLSI in order to receive a payout from the technology firm. She also found that PQA misrepresented an “exclusive engagement” with a witness, Dr. Adit Singh, who was involved in another IPR petition against VLSI brought by OpenSky. She sanctioned PQA by dismissing it from the proceeding and said that, “though the behavior here may not be as egregious as that of OpenSky… I find that PQA’s behavior, nonetheless, amounts to an abuse of process.”

This week in Washington IP news, several congressional committees are holding important hearings including the House Subcommittee on Courts, Intellectual Property, and the Internet discussing IP competition with China. The House Committee on Science, Space and Technology is discussing three bills related to the Department of Energy’s role in innovation. Elsewhere, IPWatchdog is hosting the Artificial Intelligence Masters™ which will discuss at length AI, machine learning, and other new technologies and their impact on innovation.

The Copyright Claims Board (CCB) has issued its first final decision since it was established by law in December 2020, finding in favor of a photographer who claimed a lawyer infringed his copyright by displaying one of his photographs on his law firm website. David Oppenheimer’s case against Douglas Prutton was referred to the CCB by the U.S. District Court for the Northern District of California in April 2022, two months before the Board opened to receive claims. Oppenheimer said he discovered his aerial photograph of the Ronald V. Dellums Federal Building and U.S. Courthouse in Oakland, California on Prutton’s website in 2018, on a page titled “Where We Work.” Oppenheimer admitted that he copied and displayed the photograph without permission, but said his adult daughter actually found the photo and placed it on his site, and also argued fair use and unclean hands in defending his use of the work.  

Patent filings continue to be slightly depressed in the district courts and at the Patent Trial and Appeal Board (PTAB) compared to the highs of last year, with 17 new PTAB cases and 38 new district court filings. New filings consist primarily of a few apparently funded cases—a Fortress entity, for instance, sued Amazon, and a Taiwanese entity with no Internet presence has sued Apple and Samsung on wireless charging patents, with some new Jeff Gross entity filings, a slew of Dynapass filings, and some other banking campaigns picking up steam; at the Board, most of the fillings revolved around existing campaigns Robocast and Daedalus Prime, as detailed below. Ericsson continued with challenging some Phillips patents; and there’s even a funder, Element Capital, who has been hit by inter partes reviews (IPRs) after suing in their own name (via a Singapore subsidiary, against Chinese subsidiaries of other companies, including Motorola).

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today issued a second Director Review decision correcting the Patent Trial and Appeal Board (PTAB) on its approach to the “compelling merits” analysis outlined in her June 2022 Guidance Memo. In AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530, Vidal vacated the PTAB’s denial of AviaGames’ petition to institute IPR of certain claims of Skillz’s U.S. Patent 9,479,602 B1. She explained that the Board’s determination to deny the petition following a Fintiv analysis was improperly based on the district court’s judgment of invalidity under 35 U.S.C. § 101, since that is “a statutory ground that could not have been raised before the Board” and “does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.”

The People’s Vaccine Alliance released comments this week on a draft of a pandemic accord currently being considered during the fourth meeting of the Intergovernmental Negotiating Body (INB) at the World Health Organization (WHO). The organization criticized the draft for lacking strong language that would obligate WHO member parties to share knowledge and intellectual property during a pandemic. The Zero Draft is being discussed at the INB meeting from February 27-March 3, and the organization will later decide if it will be the basis of negotiation for the pandemic prevention accord. After the fourth meeting, the INB will hold another meeting from April 3-6, and it will report on developments around the accord in May, at the 76th World Health Assembly. The People’s Vaccine Alliance saw some positives in the Zero Draft; however, the group asked for more concrete language on the issue of intellectual property rights, among other topics.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal yesterday issued a precedential Director Review decision clarifying that her June 2022 “compelling merits” memo was not meant to replace the Patent Trial and Appeal Board’s (PTAB’s) analysis under Apple Inc. v. Fintiv, Inc. In IPR2022-01242, the PTAB instituted inter partes review (IPR) without exercising its discretion under 35 U.S.C. § 314(a), citing Vidal’s “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” In that memo, Vidal said that the PTAB “will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

On February 27, the U.S. Supreme Court granted a motion for leave filed by the U.S. Solicitor General to participate in oral argument, as well as for divided argument and for enlargement of oral argument time, in Abitron Austria GmbH v. Hetronic International, Inc. While the Court’s decision to grant the motion shows its interest in the Solicitor General’s arguments in favor of limiting the extraterritorial reach of the Lanham Act, a reply brief filed the same day by petitioner Abitron argues that the federal government’s proposed legal tests still go too far in allowing Lanham Act claims to reach foreign infringing sales. Last September, the U.S. Solicitor General filed a brief representing the views of the federal government on the issues in Abitron Austria, a case which asks whether the U.S. Court of Appeals for the Tenth Circuit erred in awarding civil remedies under the Lanham Act for infringement of U.S. trademarks through purely foreign sales that neither reached the United States nor confused U.S. consumers. In its brief, the Solicitor General urged the Supreme Court to grant Abitron’s petition for writ of certiorari and rein in the Tenth Circuit’s approach toward awarding Lanham Act damages for foreign infringing sales.

I attended the hearing at the U.S. Court of Appeals for the Federal Circuit (CAFC) in Maalouf v. Microsoft on Monday February 6, 2023, and the CAFC issued its opinion in the case this past Thursday. This case has curious origins. Through his company Dareltech, Ramzi Khalil Maalouf, a Lebanese immigrant and U.S. citizen, sued Xiaomi, a Chinese multinational corporation, for patent infringement in New York. The case was dismissed without prejudice because Xiaomi was found not to have a physical presence in New York, notwithstanding their proven secret office.  Later, Microsoft, naming Xiaomi as the real party in interest, filed an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). In other words, a U.S. Big Tech multinational acted on behalf of a China-controlled multinational to invalidate the patents of a small American inventor, thus clearing the way into the U.S. market for the China-controlled multinational.

On February 24, the U.S. Patent and Trademark Office (USPTO) issued a notice in the Federal Register indicating that the nation’s patent agency was reopening the comment period related to its request for comments (RFC) on collaboration initiatives with the U.S. Food & Drug Administration (FDA). Previously closed on February 6, the comment period on USPTO-FDA collaboration initiatives is now extended until March 10. The reason stated in the Federal Register notice for reopening and extending this comment period is to “ensure that all stakeholders have a sufficient opportunity to submit comments on the questions presented” in the agency’s RFC on ways that the two agencies could cooperate to improve market entry of generic drugs and biosimilars, and to reduce the number of patent grants related to certain drugs. The reopening of the comment period comes a few weeks after the USPTO also reopened and extended the deadline for responding to the agency’s RFC on ensuring robust and reliable patent rights. As reported at that time, while it’s understandable that the agency is interested in hearing from as many stakeholders as possible, some have said the extensions are creating uncertainty as to which stakeholders are being given more time to prepare their full comments for submission.

This week in Washington IP news, the House Subcommittee on Innovation, Data, And Commerce holds a hearing on promoting innovation and protecting data privacy, and the Senate Judiciary Committee holds a meeting about a handful of judicial appointments. Elsewhere, Invent Together hosts an event to honor Black inventors and hear from a variety of Black inventors and entrepreneurs.

The U.S. Copyright Office (USCO) released its decision this past week in Kristina Kashtanova’s case about the comic book, Zarya of the Dawn. Kashtanova will keep the copyright registration, but it will be limited to the text and the whole work as a compilation. In one sense this is a success, as the Office was previously threatening to revoke the copyright altogether. But the Office limited the registration and specifically excluded the individual images created by Kashtanova from the copyrighted material. This is a setback for all the artists that would like to use artificial intelligence (AI) tools as part of their creative process.

The U.S. Copyright Office (USCO) this week finalized its refusal to uphold, in part, a registration it issued to Kristina Kashtanova for a graphic novel that contained generative artwork and human story and design elements. In a letter sent to Kashtanova’s counsel on Tuesday, the USCO expressed its concerns that underlying artwork generated using the AI-powered text-to-image tool Midjourney was capable of meeting the human authorship requirement for copyright protection. “Because Midjourney starts with randomly generated noise that evolves into a final image, there is no guarantee that a particular prompt will generate any particular visual output,” the USCO wrote in the letter.