This week in IP: USPTO seeks comment on PTAB pro bono, UPC CMS access tightened, and more

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Moderna sued fellow vaccine companies Pfizer and BioNTech for infringing its mRNA technology patents at the US District Court for the District of Massachusetts and the Higher Regional Court of Düsseldorf in Germany on Friday, August 26.

According to Moderna, Pfizer and BioNTech’s vaccine ‘Comirnaty’ infringed its patents filed between 2010 and 2016 for foundational mRNA technology, which was critical to the development of its own COVID vaccine ‘Spikevax’.

“We are filing these lawsuits to protect the innovative mRNA technology platform that we pioneered, invested billions of dollars in creating, and patented during the decade preceding the COVID-19 pandemic,” said Moderna CEO Stéphane Bancel.

Moderna alleged that Pfizer and BioNTech copied two key features of its patented technology.

The first was a chemical modification that avoided provoking an undesirable immune response when mRNA was introduced into the body. The second was its approach to encode for the full-length spike protein in a lipid nanoparticle formulation for a coronavirus.

“We believe that Pfizer and BioNTech unlawfully copied Moderna's inventions, and they have continued to use them without permission,” said Moderna chief legal officer Shannon Thyme Klinger.

Modern hasn’t sought an injunction to remove 'Comirnaty' from the market or any damages for Pfizer's sales to 92 low and middle-income countries. It has also not claimed compensation for sales where the US government would be responsible for damages.

Outside the 92 countries, however, Moderna expects Pfizer and BioNTech to compensate it for the alleged use of its patented technologies, said Klinger.

The Delhi High Court settled the position on pre-litigation mediation in intellectual property disputes on Monday, August 29, after it held that such actions weren’t compulsory in cases in which plaintiffs sought urgent interim relief.

Justice Prathiba Singh observed that IP cases in which urgent relief was sought didn’t merely involve the interest of the parties but the interest of the consumers of the products and services in question as well.

The court issued the decision in a trademark infringement suit filed by Estonia-based Bolt, a mobility company.

The defendant, Ujoy Technology, argued that pre-litigation mediation set out by the Commercial Courts Act was mandatory for IP suits.

No suit could be entertained if pre-litigation mediation hadn’t happened, it claimed.

But Singh said that the Supreme Court’s decision didn’t cover suits in which urgent interim relief was sought.

“Such reliefs are usually granted by courts not merely for the protection of statutory and common law rights, but also in order to avoid confusion, deception, unfair and fraudulent practices, etc, in the marketplace,” she said.

The court rejected the defendant's objection regarding the maintainability of the suit.

The USPTO issued a request for comment on its Patent Trial and Appeal Board pro bono programme on Tuesday, August 30.

The office said it was interested in collecting demographic information on those who sought assistance through this programme to determine the extent to which women, minorities and veterans used it.

The USPTO also stated that it was seeking public comment to evaluate whether the collection of this information was necessary and would have practical utility.

Feedback, the office noted, could provide insight on how to minimise the burden on inventors when responding to requests for this information.

The USPTO launched its PTAB pro bono programme in March 2022.

The PTAB Bar Association acted as a national clearinghouse to connect volunteer patent practitioners with eligible inventors seeking assistance with ex-parte appeals.

The USPTO obtained a trademark registration for its own brand on Tuesday, August 30.

It obtained one registration on a standard character mark for ‘USPTO’ and registered two logos with the same name.

The office applied for the registration in August 2021 in response to misleading solicitations and scams from bad actors pretending to be affiliated with the agency.

The Department of Commerce filed the application on the USPTO’s behalf.

The agency noted at the time that an examining attorney would review the application and make a determination, just like they would for any other filing.

“We firmly believe that it’s never too late to do the right thing, and doing everything within our power to protect our trademark customers is the right thing,” David Gooder, commissioner for trademarks, said last year.

The organisers of the Unified Patent Court said last week that the log-in process for the court’s case management system would be tightened to ensure only authenticated users could access it.

In an announcement on the UPC website, it was revealed that an electronic identification certificate would be required.

The certificate is compliant with EU Regulation 910/2014, which seeks to ensure trust in electronic transactions.

The new system, which went live yesterday, replaced the account and password system.

Earlier this month, Managing IP reported that Net Service, the Italy-based software developer behind the UPC’s CMS, would roll out a suite of e-learning modules, webinars, and in-person training events.

Confirmation of Net Service’s plans to blend e-learning and in-person training on the CMS followed a successful pilot at the London office of Simmons & Simmons in June.

The USPTO has extended the feedback period for its patent subject matter eligibility guidelines as a result of overwhelming interest, it announced on Wednesday, August 31.

The office previously said it would seek feedback in July and requested that all comments be sent to the 101@uspto.gov by September 15.

Feedback can now be submitted via the Federal eRulemaking Portal until October 15 2022.

According to the USPTO’s notice, the eligibility guidance that’s been in place since 2019 has contributed to more consistent examination, but there is more work to be done.

The USPTO said the feedback would form part of its multi-pronged approach toward providing more clarity and certainty on patent eligibility, set out in Section 101 under Title 35 of the US Code.

In August, Senator Thom Tillis presented legislation to reform subject matter eligibility law.

The USPTO clarified that any feedback sent to the 101@uspto.gov mailbox (which is no longer active) would be given equal consideration.

Ericsson must pay $31.5 million in damages for infringing patents owned by Dutch telecoms provider KPN, a Texas jury ruled last Friday, August 26.

KPN proved Ericsson had infringed at least one claim of three patents relating to telecoms network technology, jurors at the District Court for the Eastern District of Texas found.

The jury awarded all of the damages sought by KPN after it decided Ericsson wilfully infringed the patents.

KPN said in court filings that it had repeatedly offered Ericsson the chance to license the patents, which cover various wireless network functions.

Texas litigation boutique Susman Godfrey represented KPN in trial proceedings.

“While Ericsson attempted to argue that KPN’s technology implicated user consent issues, trial proceedings unearthed that Ericsson knew that US carriers already were using the technology,” a firm statement said.

The Dutch telecoms provider is also an Ericsson customer for 5G infrastructure.

The companies agreed a five-year contract for Ericsson to provide KPN with 5G network technology in 2020.

Amazon and World Wrestling Entertainment have filed joint lawsuits against 13 defendants accused of selling counterfeit WWE title belts on the e-commerce platform, it was announced on Tuesday, August 30.

The lawsuits, filed in Middlesex County in New Jersey, are the result of a joint operation between WWE and Amazon’s Counterfeit Crimes Unit (CCU).

The defendants are accused of selling belts which imitate the WWE World Heavyweight, Universal, Intercontinental, United States, and NXT Championship title belt designs.

Two individuals are also facing felony counterfeiting charges brought by prosecutors in Middlesex County in relation to the belts.

“Official and licensed WWE products, branded by our intellectual property, are trusted by our fans around the world and we go to great lengths to protect consumers from counterfeits and other types of infringements,” said WWE vice president of IP Matthew Winterroth.

“It’s our hope that other companies look at Amazon’s CCU as a model of how to partner with companies of any size to help combat this relentless threat,” Winterroth added.

CCU director Kebharu Smith said the unit would continue to work with WWE and Middlesex County law enforcement to bring bad actors to justice.

“Amazon is committed to the authenticity of products in our store and protecting our customers from all forms of counterfeits, including those impacting fans of the iconic entertainment brand,” Smith said.

The CCU, founded in 2020, is made up of former federal prosecutors and law enforcement agents, as well as investigators and data analysts.

It is one of several anti-counterfeiting initiatives launched by Amazon in recent years, amid criticism over the prevalence of counterfeits on the platform.

The US Trade Representative (USTR) named Amazon on its Notorious Markets List of counterfeiting hotspots in 2020 and 2021, a move which the company sharply objected to as being politically motivated.

The USTR announced it was seeking comments for the 2022 edition of the list last Friday, August 26, with a deadline of October 7.