Other Barks & Bites for Friday, May 12: Intel and OpenSky Kill VLSI Patent; AI Inventorship Comments Due; and Pharma CEOs Testify on Insulin Prices

This week in Other Barks & Bites: AI inventorship comments due, the United States Patent and Trademark Office (USPTO) seeks nominations to two advisory committees; Oprah’s company settles a trademark dispute with a podcast; and high-profile pharmaceutical company CEOs testify before the Senate on insulin prices.

Bites

Intel and OpenSky Get VLSI Patent Invalidated

Following months of drama that included sanctions against OpenSky and its temporary removal as an active party to the proceedings, Intel and OpenSky have succeeded in invalidating all challenged claims of VLSI’s patent at the Patent Trial and Appeal Board.

The decision will not come to the surprise of many in the IP community. The Board ultimately found that Intel and OpenSky had shown by a preponderance of the evidence that the relevant claims of U.S. Patent No. 7,725,759 were obvious over two prior art references. The case number is IPR2021-01064.

USPTO AI and Inventorship Comments Due Monday

The U.S. Patent and Trademark Office (USPTO) sent a reminder out Friday that submissions for its AI inventorship Request for Comments (RFC) are due Monday, May 15. The Office announced the RFC in February. The USPTO previously sought comment on the topic , but the latest RFC was issued following its decision to deny patent protection to inventions created by Stephen Thaler’s artificial intelligence (AI) machine, DABUS. That decision was upheld by the district court and U.S. Court of Appeals for the Federal Circuit (CAFC) on appeal, but the CAFC in its decision left open the possibility that inventions made by human beings with the assistance of AI may be eligible for patent protection. The FRN poses 11 questions for written response, including “how does the use of an AI system [in the invention process]…differ from the use of other technical tools”; whether AI inventions may be patentable under current patent laws on joint inventorship; and if statutory or regulatory changes should be made to better address AI contributions to inventions. 

USPTO Asks for Nominations for Upcoming Vacancies on the PPAC and TPAC

On Thursday, May 11, the USPTO announced an open call for nominations to three upcoming vacancies on the Patent Public Advisory Committee (PPAC) and up to three upcoming vacancies on the Trademark Public Advisory Committee (TPAC). The new members would start their three-year term on December 1, 2023, and can participate in proceedings remotely. Nominations must be submitted electronically or through the post by July 3. “The Advisory Committees play a critical role in advising me and the USPTO on the work we are doing to promote inclusive innovation, economic prosperity, U.S. competitiveness, national security, and world problem-solving by incentivizing and protecting more innovation, especially in key technology areas, and bring that innovation to impact,” said Kathi Vidal, USPTO Director.

INTA Publishes White Paper on IP in Space

On Thursday, May 11, the International Trademark Association (INTA) released a white paper on the need to protect intellectual property in the growing space industry. The paper titled IP in Space, INTA argues current national and international laws do not fully take into account the intangible assets that make space exploration possible. “Technology has once again rushed ahead of the law, as commercial plans are regularly announced for new initiatives in space, even though space remains largely a legal vacuum—particularly so in the area of IP,” said 2022 INTA President Zeeger Vink.

Pharma Companies Testify Before Senate on Insulin Prices

On Wednesday, May 10, CEOs from insulin producers Eli Lilly and Co., Novo Nordisk, and Sanofi testified before the Senate Committee on Health, Education, Labor & Pensions and were questioned about the price of insulin. The three companies control 90% of the insulin market and have been under heavy criticism for high insulin prices. According to Stroud, if the rules are passed Unified Patents would no longer be able to petition for review if not directly threatened by a lawsuit. Senator Bernie Sanders (I-VT) said in his opening statement, “Americans die, get sicker than they should and go bankrupt because they cannot afford the outrageous cost of prescription drugs, while the drug companies and the PBMs make huge profits.” Sanders further questioned the CEOs, who committed to keeping the latest insulin treatment plans to $35 a month.

CAFC Issues Precedential Ruling Affirming PTAB Win for Sony

On Tuesday May 9, the U.S. Court of appeals for the Federal Circuit (CAFC) issued a precedential decision affirming the Patent Trial and Appeal Board’s ruling that all challenged claims of Bot M8 LLC’s gaming patent, U.S. Patent No. 8,078,540, were unpatentable. The inter partes review (IPR) was brought by Sony. The court specifically found that the Board did not err in its claim construction analysis of the independent claims, or that any error the Board did make was harmless.

Appeals Court Delivers Mixed Ruling in Apple Copyright Case

On Monday, May 8, the U.S. Court of Appeals for the Eleventh Circuit issued a ruling that affirmed one part of a district court ruling that issued a summary judgment for Corellium that dismissed direct copyright infringement against Apple. Apple has claimed that Corellium infringed on its copyright by allowing users to run Apple’s operating system to expose security flaws. While the appeals court confirmed the district court’s summary judgment dismissing Apple’s claim of direct infringement, it vacated and remanded for further proceedings on Apple’s two other claims, infringement on Apple’s icons and wallpaper, and contributory infringement.

Barks

ITC Institutes Investigation into Chinese LiDAR Company

On Thursday, May 11, the U.S International Trade Commission (ITC) voted to investigate the Shanghai-based Hesai Technology for violating five patents of San Francisco-based Ouster. Hesai is accused of importing light detection and ranging (LiDAR) systems for sale that infringe on Ouster’s patents. Ouster is asking the ITC to issue a limited exclusion order and a cease-and-desist order when the investigation is completed.

Durbin and USCO Director Discuss AI and Copyright

On Wednesday, May 10, U.S. Senate Majority Whip and Chair of the Senate Judiciary Committee Dick Durbin (D-IL) met with Shira Perlmutter, Director of the U.S. Copyright Office (USCO) to discuss the impact of AI on copyright. The two also talked about the 2020 CASE Act and the Office’s 2024 budget. “I applaud her (Perlmutter’s) leadership at the Copyright Office and its efforts to examine the application of copyright law to issues being raised by the growing proliferation of AI,” said Durbin.

Unified Patents: USPTO Proposed Rules Have ‘Fatal Flaws’

On Wednesday, May 10, Johnathan Stroud, general counsel at Unified Patents, wrote an opinion piece in The Hill that detailed Unified Patents’ concerns with USPTO Director’s April 27 testimony before the House IP Subcommittee. On April 20, the USPTO released Advance Notice of Proposed Rulemaking for potential PTAB reforms, which Stroud claimed “would expose American entrepreneurs and the patent system to abuse and waste.”

Oprah Settles Trademark Dispute over Podcast Name

On Monday, May 8, Oprah Winfrey’s company Harpo settled a trademark lawsuit over a podcast about the media mogul called “Oprahdemics”. After the settlement, the owner of the podcast Roulette Productions LLC changed the podcast’s name to “You Get a Podcast,” a reference to Oprah’s famous “you get a car” moment. Harpo sued Roulette Productions last year alleging that the podcast would mislead listeners to think that Oprah was connected to the entity.

This Week on Wall Street

Bank of England Raises Interest Rate to Highest Level in 15 Years

On Thursday, May 11, the Bank of England upped its interest rate by a quarter point to 4.5%, the highest since the 2008 financial crisis. Similar to the U.S. Federal Reserve, the Bank of England is not predicting a recession, however, it is predicting inflation to continue rising. “Headline inflation has been falling in the United States and euro area, although core inflation measures remain elevated,” the central bank wrote in its published statement.

Peloton Recalls 2.2 Million Bikes Due to Hazardous Seat

On Thursday, May 11, Peloton issued a voluntary recall of 2.2 million exercise bikes due to fall and injury hazards due to faulty seats. The exercise equipment company was a hot stock pick during the COVID-19 pandemic and resulting stay-at-home orders, however, the company’s stock value has fallen over 95% from its peak. The recall came after 35 reports of a seat breaking including 13 which resulted in injuries.

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: Tencent (53), Baidu (73)
• Wednesday: Cisco (46)
• Thursday: Applied Materials (52), Alibaba (103)
• Friday: Deere & Company (96)