• By Michael Borella

    District Court for the Western District of TexasThere is an undercurrent in patent law these days that litigation favors the defendant.  Rather than contending infringement of a few claims of one patent, plaintiffs are now advised to assert multiple claims across several patents.  After 35 U.S.C. § 101 challenges, IPR filings, and summary judgment motions, plaintiffs are lucky if they are left with a few claims of one patent to bring to trial.  Analogies have been made that patent portfolios are like Swiss cheese.

    But every so often, a patentee wins big, giving the viability of patent assertion campaigns a much-needed shot in the arm.

    To that point, patent holder VLSI has won a whopping $2.175 billion jury verdict in the Western District of Texas.  VLSI is the owner of U.S. Patent Nos. 7,523,373 and 7,725,759.  Claim 1 of the '373 patent involves determining the minimum operating voltage of a memory and storing this value in non-volatile memory.  Two voltage sources are provided, and the second is selected to operate the memory if the first is below the minimum value.  Claim 14 of the '759 patent involves a programmable clock controller that can receive a request from a first device coupled to a variable clock frequency bus.  The controller then changes the frequency of a high-speed clock that is used to control the clock frequency of a second device coupled to the bus as well as the bus itself.  Both patents purport to reduce the power consumption of chips.

    The jury found that Intel literally infringed claims 1, 5, 6, 9, and 11 of the '373 patent, and infringed claims 14, 17, 18, and 24 of the '759 patent under the doctrine of equivalents.  The jury also found that this infringement was not willful and that Intel had failed to establish anticipation of '759 patent (the validity of the '373 patent was apparently not at issue).

    All said, the jury found Intel on the hook for $1.5 billion due to its infringement of the '373 patent and $675 million for its infringement of the '759 patent.  The main justification for damages of this magnitude is that Intel has sold billions of devices infringing the patents.

    VLSI is a non-practicing entity, which Intel attempted to use against it at trial.  These efforts fell on deaf ears, but along with the 10-figure sum is likely to drive the ongoing "patent troll" narrative.

    This is the second largest patent infringement verdict ever, and it will be the largest if it holds.  A $2.5 billion award to Idenix Pharmaceuticals in 2016 was overturned on invalidity grounds.  Here, an Intel appeal is inevitable, so VLSI will not be counting its money any time soon.

  • Calendar March 23, 2021 – "How Allyship Advances Diversity & Inclusion in the Legal Profession: Part 3 — Practical Tips for Pulling it All Together" (Intellectual Property Owners Association) – 2:00 pm to 3:00 pm (ET)

    March 24, 2021 – "2021 Women's Entrepreneurship Symposium — Investing in Innovation" (U.S. Patent and Trademark Office) – 12:00 pm to 1:30 pm (EDT)

    March 24, 2021 – "Being Ready for Patent Litigation in Australia" (Shelston IP) – 5:00 pm (ET)

    March 24-25, 2021 – FDA Boot Camp (American Conference Institute)

    March 25, 2021 – "Patent Term Extensions in Emerging Markets: The Case of Mexico" (Moeller IP) – 11:00 am (ET)

    March 25, 2021 – "Patent Drafting for Success in Europe" (Mathys & Squire) – 2:00 pm (ET)

    April 16, 2020 – "Strategies for Federal Circuit, District Court, ITC, and PTAB" (UIC John Marshall Law School Center for Intellectual Property, Information & Privacy Law) – 7:40 am to 3:15 pm

    April 26-27, 2021 – Paragraph IV Disputes Conference (American Conference Institute)

  • USPTO SealThe U.S. Patent and Trademark Office will be holding the next installment of the 2021 Women's Entrepreneurship Symposium, entitled "Investing in Innovation," on March 24, 2021, from 12:00 pm to 1:30 pm (EDT).  The Symposium, which is being held as a free online event, will allow attendees to learn about:

    • Small business loans to help launch your vision
    • Understanding crowdfunding
    • Other investment funding sources for aspiring entrepreneurs

    Hope Shimabuku, Director of the U.S. Patent and Trademark Office's Texas Regional Office, will moderate a panel consisting of Natalie Madeira Cofield, Assistant Administrator, Office of Women's Business Ownership, Small Business Administration; Elizabeth Galbut, Founder, SoGal Ventures; Ruth Hedges, CEO, Crowdfundingroadmap Inc.; and Corinne Hodges, CEO, Association of Women's Business Centers.

    Additional information regarding the Symposium can be found here.  Those interested in registering for the event, can do so here.

  • IPO #2The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "How Allyship Advances Diversity & Inclusion in the Legal Profession: Part 3 — Practical Tips for Pulling it All Together" on March 23, 2021 from 2:00 pm to 3:00 pm (ET).  Brian Brookey of Tucker Ellis LLP; Serena Farquharson-Torres of Bristol-Meyers Squibb; Gloria Fuentes of Merck & Co. Inc.; John Harrity of Harrity & Harrity, LLP; and Rachael Rodman of Ulmer & Berne LLP will discuss the learnings from the first two sessions, bringing together different perspectives to provide practical tips for improving allyship personally, organizationally, and systemically.

    There is no registration fee for the webinar.  However, those interested in attending the webinar should register here.

  • UIC JMLSThe UIC John Marshall Law School Center for Intellectual Property, Information & Privacy Law will be hosting an IP Master Class virtual seminar on "Strategies for Federal Circuit, District Court, ITC, and PTAB" from 7:40 am to 3:15 pm on April 16, 2020.  The program will consist of the following sessions:

    • Session 1: Patent Trial and Appeal Board Practice
    • Session 2: District Court Practice
    • Session 3: International Trade Commission Practice
    • Session 4: Court of Appeals for the Federal Circuit Practice

    Hon. Kent A. Jordan, U.S. District Court of Appeals for the Third Circuit, will provide a keynote address.

    Additional information about the program, including an agenda and list of speakers, can be found here.  Those interested in registering for the program can do so here; the registration fee is $95 (general admission) and UIC students, faculty, adjunct professors, staff, IP Center advisory board members, and government attendees can apply for free registration.  The first ten Patent Docs readers to register for the program will be entitled to a 20% discount off of the registration fee using discount code patentdocs2021.

    Patent Docs is an Institutional Partner of the UIC JMLS IP Center.

  • Shelston IPShelston IP will be offering a webinar entitled "Being Ready for Patent Litigation in Australia" on March 24, 2021 at 5:00 pm (ET).  Tam Huynh will moderate a panel consisting of Duncan Longstaff and Andrew Rankine who will identify aspects of Australian patent law and litigation practice that present potential traps for the unwary, and provide practical guidance on steps that can be taken before commencing litigation, or in its early stages, to maximise prospects of success.  Topics to be addressed by the panel will include patent ownership and licensing, standing, pre-action discovery and preliminary injunctions, as well as post-grant patent amendments.

    Those wishing to register can do so here.

  • Moeller IPMoeller IP will be offering a webinar entitled "Patent Term Extensions in Emerging Markets: The Case of Mexico" on March 25, 2021 at 11:00 am (ET).  The webinar will address patent term extensions in Mexico, including a judicial case decided in October 2020 by the Supreme Court extending the term of a patent claiming a pharmaceutical product, which had been prosecuted for over 5 years.

    While there is no cost to participate in the program, those interested in attending the webinar can register here.

  • Mathys & SquireMathys & Squire will be offering a webinar entitled "Patent Drafting for Success in Europe" on March 25, 2021 at 2:00 pm (ET).  Martin MacLean and David Hobson of Mathys & Squire LLP will discuss tips and tricks to build into your drafting practice to safeguard against common pitfalls and maximise your probability of securing robust patent protection in Europe.

    While there is no cost to participate in the program, those interested in attending the webinar can register here.

  • By Kevin E. Noonan

    When it comes to SARS-CoV-2 infection (and resulting COVID-19), it seems our Neanderthal ancestors giveth and taketh away.  Genetic material inherited from interbreeding between Neanderthals and early humans has been shown to increase the risk of serious COVID infection (see "Inherited Neanderthal Gene Encodes Genetic Risk for COVID-19").  Recently, further explication of correlations between Neanderthal remnants in genomic DNA of modern humans has shown that a sequence on chromosome 12 is associated with milder COVID disease.

    These results were reported by the same researchers who reported the earlier, more sinister connection between Neanderthal DNA and COVID-19, which included Svante Pääbo, who almost single-handedly created the science of detecting Neanderthal DNA in archeological samples (and living humans; see Neanderthal Man: In Search of Lost Genomes).  In this more recent study, published in the Proceedings of the National Academy of Sciences USA, and entitled "A genomic region associated with protection against severe COVID-19 is inherited from Neandertals," it is a region of chromosome 12 that contains the relevant, seemingly protective genetic locus.  Humans bearing this haplotype have a 22% reduction in risk of severe COVID infection.  It is present "at substantial frequencies in all regions of the world outside Africa," a hallmark of Neanderthal DNA which arose after humans migrated from the place of our initial evolutionary development.  Unlike the earlier, deleterious locus on chromosome 3, for which there is no known function, the region of chromosome 12 associated with milder COVID infection is known to encode proteins that are expressed "during infections with RNA viruses" according to these authors.  Another unique inheritance pattern is that this locus appears to have increased in frequency between 20,000 and 10,000 years ago and again approximately 1,000 years ago, which suggests selection that could have been very effective at times when effective medical intervention would have been practically non-existent.

    With regard to the function of this locus in Neanderthals themselves, the authors posit that these early humans would have needed to adapt to environments outside Africa which undoubtedly would have included new pathogens that cause infectious disease.  Such a pattern of genetic variants that affect genes involved in innate immunity have been shown to have been introduced into Homo sapiens sapiens ancestors from Neanderthal and Denisovan populations, including for example genes that reduce susceptibility to H. pylori infection.

    The current study involved genetic assessment of 2,244 terminally ill COVID 19 patients as part of the Genetic of Mortality in Critical Care (GenOMICC) consortium.  In addition to the two loci that have been discussed previously and herein, genetic loci relevant to COVID-19 infection have also been found on chromosomes 6, 19, and 21.  Specifically with regard to the chromosome 12 locus, these researchers reported association of single nucleotide polymorphisms (SNPs) with this relevant chromosomal loci; this locus satisfied the further criterion of being absent from the genomes of 108 Yoruba individuals (the loci on chromosome 6, 19, and 21 failed this characterization test).  The chromosome 12 SNPs were found to be in linkage disequilibrium (i.e., are separated at meiosis at lower than expected frequencies) and formed a ~75kb haplotype.  The researchers interpreted this inheritance pattern to be consistent with introduction of these sequences into the modern human gene pool by interbreeding with Neanderthals.  Further genetic analyses informed these researchers that this region was not a remnant of DNA inherited by both Neanderthals and modern humans from the time (~550,000 years ago) they diverged but rather were more consistent with mixing when the two populations co-habited beginning ~100,000 years ago.  This locus is also present in the three authentic Neanderthal genomes available in current databases.

    The geographic distribution of this locus in modern human populations is illustrated by this figure,

    2021-03-18 Imagewhich shows the veritable absence in Africa and variable frequencies (25-30%) around most of the rest of the world.

    The researchers found three genes (OAS1, OAS2, and OAS3) that encode oligoadenylate synthases present at this Neanderthal-derived locus.  These genes in modern humans are induced by interferon produced by RNA virus infection and which produce a product (short-chain polyadenylates) that activate a double-stranded RNA specific nuclease.  Other antiviral responses are induced as well as a consequence of this generic induction, suggesting a mechanism for resistance to RNA virus infection.  Finer scale genetic mapping of SNPs and COVID severity protection implicated OAS3 (although these authors state that this association is "tenuous").  Also of interest is a SNP in the OAS1 gene which alters splicing of the encoded mRNA transcript and produces several isoforms of the encoded protein in its modern human counterpart. Compared with these isoforms, the researchers reported that the ancestral Neanderthal protein has higher enzymatic activity.  This isoform is also present in African populations outside this locus, which these authors posit was an ancestral form lost in humans during the time they left Africa.  Functionally, this splice site variant has been associated in earlier studies with protection against West Nile Virus.  The Neanderthal-derived locus also has missense variants in the OAS1 and OAS2 genes, and two synonymous variants in the OAS3 gene, but these are a mixture of variants present in ancestral African DNA and later acquired in Neanderthal DNA.  The missense variant in the OAS1 gene has been previously associated with moderate-to-strong protection against SARS-CoV infection, although these researchers could not rule out the possibility that the responsible genetic factor was merely closely linked to this gene.  Finally, this Neanderthal locus on chromosome 12 also seems to provide increased resistance to Hepatitis C infection.

    The authors conclude by noting the suggestion that this Neanderthal-derived DNA, particularly the OAS loci contained therein, had undergone positive selection over the past 1,000 years and their hope that "[f]uture studies of human remains from historical times will clarify whether, and when, this occurred."

  • By Kevin E. Noonan

    USPTO SealWhile those interested in the outcome await the April 9th filing of motions authorized by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) in Interference Nos. 106,126 (between Senior Party Toolgen Inc. and Junior Party The Broad Institute, Harvard University, and the Massachusetts Institute of Technology, collectively termed "Broad") and 106,127 (between Senior Party Toolgen Inc. and Junior Party The University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier, collectively termed "CVC"), some "housekeeping" types of activities have arisen in these interferences as well as in the earlier-declared Interference No. 106,115 between Broad as Senior Party and CVC as Junior Party.

    The Board issued a Memorandum on March 1st and an Order on March 9th.  In the Memorandum, the Board considered CVC's request for an order "sequestering" members of Broad's legal team in upcoming depositions of two Broad witnesses, Drs. Breaker and Ellington.  CVC's reasons in support of their request is that "Dr. Breaker adopted the entirety of Dr. Ellington's direct testimony as his own testimony in paragraphs 25 and 32 of his declaration," and thus the expectation is that "the cross examinations of Drs. Breaker and Ellington will significantly overlap and without sequester of Broad's counsel the second witness to be deposed may be prepared knowing what questions will be asked."  This would give the Broad an unfair advantage, according to CVC, and thus be prejudicial.  Also, CVC notes that in the earlier interference between these parties, No. 106,048, CVC had agreed to sequester their counsel.

    Not surprisingly Broad opposed, based in part on the distinction with the '048 Interference that that sequestration was part of a compromise involving Broad's objections to CVC's evidence.  Here, in contrast, CVC did not object to Broad's evidence and has agreed to the deposition schedule without sequestration.

    To CVC's detriment, the Board stated that the Junior Party did not assert any basis in the Standing Order for sequestration.  In addition, the Board stated that it was not clear why deposition of one witness who agrees with the testimony of another witness to be deposed, and adopts portions of that witnesses testimony, should be sufficiently prejudicial to CVC to warrant sequestration.  This sentiment is supported by the fact that the witnesses will be testifying under oath, according to the Board, and that testimony is required to be "based on their own knowledge and experience."  Moreover, the agreement between the parties in the '048 Interference is not binding on the Board, according to the Memorandum, which notes that "[t]he parties are free to reach an agreement in this proceeding and to agree to any deposition scheduling that complies with the time constraints of the interference schedule and other rules or orders."  Finally, the Memorandum states that CVC will be able to argue that the Board should give no weight to any witnesses' testimony or should be excluded.  As a result, the Board declined to issue CVC's requested offer, "[b]ecause CVC has failed to persuasively explain why counsel should be sequestrated for the depositions of Drs. Breaker and Ellington."

    In its March 9th Order, the Board ordered that, pursuant to the parties' request in an e-mail dated March 5th, the page limits for oppositions to each party's priority motion be extended from 10 pages to 60 pages.

    The news from the '126 and '127 Interferences is even less momentous, being merely Notice from Toolgen to the Board in each interference that it had, pursuant to Standing Order ¶126, had settlement discussions and, after a "good faith effort" by the parties in each interference had not agreed to settle either interference.