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Welcome to The SNIP, a monthly newsletter by Urška Petrovčič, Adam Mossoff, and Devlin Hartline of Hudson Institute's Forum for Intellectual Property. The SNIP offers a brief breakdown of the latest policy issues and case developments in intellectual property.
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THE LATEST FROM HUDSON
Hudson Institute Publishes Memo on Overbroad State Right-to-Repair Bills
On August 22, 2022, Hudson Institute published a policy memo on state right-to-repair bills that would require producers of electronic devices to make available their copyrighted computer programs and the keys to the digital locks that protect their copyrighted works from unauthorized access and copying. Supporters of the bills argue that consumers should be able to do whatever they want with the electronic devices that they have bought. However, the policy memo notes that these bills would sideline the long-standing balance of rights implemented by federal copyright law that have secured to authors and innovators the right to enjoy the fruits of their creative labors for over two centuries. The memo explains how these bills are not only bad policy, but they are also unconstitutional given that they conflict with federal copyright law and the doctrine of federalism.
The SNIP: Hudson Institute publishes a policy memo analyzing the constitutionality and policy implications of proposed state right-to-repair bills.
Learn More:
READ: “State Right-to-Repair Laws Need to Respect Federal Copyright Laws: A Constitutional, Legal, and Policy Assessment,” Devlin Hartline & Adam Mossoff, Hudson Institute (August 22, 2022).
CASE DEVELOPMENTS
Moderna Sues Pfizer and BioNTech for Infringement over COVID-19 Vaccine Patented Technology
On August 26, 2022, Moderna sued Pfizer and BioNTech for patent infringement, alleging that the technology used by the two companies in their COVID-19 vaccines infringes key elements of Moderna’s patented messenger RNA (mRNA) technology. Moderna claims that Pfizer and BioNTech initiated clinical testing options that included the use of unmodified mRNA without infringing Moderna’s innovative path, but that they ultimately copied Moderna’s patented technology without its permission. Moderna does not ask the court to pull the Pfizer-BioNTech COVID-19 vaccine from the market or to block future sales, and it says that it will let the court decide the amount of the damages. Early in the COVID-19 crisis, Moderna pledged not to enforce its patent rights during the pandemic, but it subsequently modified the pledge after vaccine supplies became plentiful to apply only to lower-income countries.
The SNIP: Moderna sues Pfizer and BioNTech for infringement of its patented mRNA technology.
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Federal Circuit Holds that AI Is Not an “Inventor” under the Patent Act
On August 5, 2022, the U.S. Court of Appeals for the Federal Circuit held in Thaler v. Vidal that an artificial intelligence (AI) software system could not be listed as an inventor in a patent application. The court reasoned that the plain meaning of the Patent Act, which provides that an “inventor” is an “individual,” requires an inventor to be a natural human being. It also noted that the U.S. Supreme Court had previously held in a non-patent case that the word “individual” “ordinarily means a human being, a person.” The Federal Circuit’s decision is another rejection of Thaler’s patent application listing an AI as the inventor that has faced similar outcomes in other places, such as Australia, the United Kingdom, and the European Union.
The SNIP: Federal Circuit holds that only natural human beings can be listed as an “inventor” on a patent application.
Learn More:
READ: Thaler v. Vidal, Case No. 2021-2347 (Fed. Cir. August 5, 2022).
READ: “Federal Circuit Rules Inventors Must Be Natural Human Beings,” Matthew Horton & Austin J. Kim, The National Law Review (August 11, 2022).
READ: “Inventors Must Be Human, Federal Circuit Rules in Blow to AI (1),” Samantha Handler, Bloomberg Law (August 5, 2022).
Texas Court Skeptical of Apple’s Requests for Anti-Suit Injunction against Ericsson
On July 28, 2022, a Texas court denied Apple’s request to stop the enforcement of an injunction that the company is facing in Colombia. Earlier in July, a court in the South American country granted Ericsson an injunction that prohibited Apple from importing and selling in Colombia 5G iPhones and iPad Pro models that infringe Ericsson’ s patents. Although Apple generates only about one-fifth of a percent of its global sales in Colombia, Apple filed an emergency motion in Texas stating that Ericsson was unfairly seeking foreign court intervention and deliberately interfering with the pending litigation in the Texas court. The court denied Apple’s request, and Chief Judge Rodney S. Gilstrap even warned Apple that future misuse of an emergency court order would likely warrant sanctioning.
The SNIP: The Eastern District of Texas rejects Apple’s request for an anti-suit injunction.
Learn More:
Read: “Ericsson Rips Apple's Claim of 'Secret' Colombia Injunction,” Dave Simpson, Law360 (July 18, 2022).
Read: “Gilstrap Won't Bar Ericsson's 'Pressure' on Apple in Colombia,” Dave Simpson, Law360 (July 28, 2022).
Read: “Apple/Ericsson Dueling FRAND Suits Highlight Issues with Recent Proposed Changes in DOJ’s SEP Policies,” Steve Brachmann, IPWatchdog (January 24, 2022).
LEGISLATION & POLICY DEVELOPMENTS
Opening Briefs Submitted to the USPTO in OpenSky v. VLSI
In response to a request from Kathy Vidal—director of the U.S. Patent and Trademark Office (USPTO)—parties have submitted their briefs in OpenSky Industries v. VLSI Technology. The dispute began in 2021 when OpenSky challenged VLSI’s patent in front of the Patent Trial and Appeal Board (PTAB). VLSI subsequently alerted the PTAB of an email in which OpenSky suggested that it would tank its own PTAB case in exchange for a payment from VLSI. In briefs to Director Vidal, VLSI said that the USPTO should answer the question of “whether the Office should allow itself to be used to facilitate extortion.” OpenSky, on the other hand, argued that the emails were simply negotiations and that it was VLSI that engaged in abuse of the PTAB process by violating a non-disclosure agreement.
The SNIP: Director Vidal receives briefs on whether OpenSky v. VLSI involved abuse of the Patent Trial and Appeal Board (PTAB) system.
Learn More:
READ: “OpenSky/VLSI Parties Battle It Out in Briefs to Vidal," Eileen McDermott, IPWatchDog (August 22, 2022).
READ: “Sabotage Claims Swirl in Patent Feud with Billions at Stake (1),” Matthew Bultman, Bloomberg Law (March 10, 2022).
READ: “OpenSky Attorney Emails Expose the Seedy Underbelly of PTAB Practice,” Gene Quinn, IPWatchDog (March 4, 2022).
