• IPO #2The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Compulife: Datascraping and Trade Secret Law" on September 8, 2020 from 12:00 pm to 1:00 pm (ET).  David Conrad of Fish & Richardson, PC; Kenneth Corsello of IBM; and James Pooley of James Pooley, PLC will discuss Compulife v. Newman, an Eleventh Circuit decision that appears to offer publishers of data a novel way to pursue website scrapers by using trade secret law, and thus is also an important possible threat to companies that depend on others' data as fodder for their artificial intelligence solutions.  The panel will discuss:

    • Whether this case offers website publishers a new arrow in the quiver to combat unwanted website scrapers beyond "typical" claims under the Computer Fraud and Abuse Act (CFAA) and a contract claim for breach of the underlying terms of service.
    • Other important cases involving datascraping including Van Buren v. U.S. (recently granted certoriari before the U.S. Supreme Court), HiQ v. LinkedIn (cert petition pending), and Digidrill v. Petrolink (5th Circ., July 2020).

    The registration fee for the webinar is $135 (IPO member) or $150 (non-member) (government and academic rates are available upon request).  Those interested in registering for the webinar can do so here.

  • By Kevin E. Noonan

    Federal Circuit SealToday, the Federal Circuit affirmed under Rule 36 the decision by the District Court of Nevada (Du, J.) in March that the claims asserted by Amarin Pharma against West-Ward Pharmaceuticals International Ltd., Hikma Pharmaceuticals USA Inc., Dr. Reddy's Laboratories, Inc., and Dr. Reddy's Laboratories, Ltd. were invalid for obviousness, in Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc.  Rule 36 decisions are rarely further discussed; this case (while not particularly remarkable) does provide an opportunity to understand the factual and legal circumstances surrounding this increasingly frequent outcome.

    The case arose in ANDA litigation over Amarin's Vascepa® drug, which is a highly purified preparation of eicosapentaenoic acid (EPA).  Specifically the formulation used in the patented methods is specified as comprising at least 96% EPA by weight and (relevant to these claims) further comprises substantially no docosahexaenoic acid (DHA) or related esters.  The drug is used to treat hypertriglyceridemia (hyperTG), a condition where blood concentrations of triglycerides (TG) can be as high as 500-1500 mg/dL (normal blood levels are less than 150 mg/dL TG).  Prior art drugs, specifically Lovaza comprised a mixture of EPA and DHA, but suffered from the side effect that patients developed increased amounts of low-density lipoprotein-associated cholesterol (LDL-C) in their blood, increasing the risk of heart attacks.  As a consequence, Lovaza was administered with a statin to counteract this negative side effect.  Amarin's Vascepa® drug did not have this side effect and did not require concomitant statin administration.

    Amarin asserted U.S. Patent Nos. 8,293,728; 8,318,715; 8,357,677; 8,367,652; 8,431,560; and 8,518,929; claims 1 and 16 of the '728 patent are representative:

    1.  A method of reducing triglycerides in a subject having a fasting baseline triglyceride level of 500 mg/dl to about 1500 mg/dl who does not receive concurrent lipid altering therapy comprising: administering orally to the subject about 4 g per day of a pharmaceutical composition comprising at least about 96% by weight of all fatty acids present, ethyl eicosapentaenoate, and substantially no docosahexaenoic acid or its esters for a period of 12 weeks to effect a reduction in triglycerides without substantially increasing LDL-C compared to a second subject having a fasting baseline triglyceride level of 500 mg/dl to about 1500 mg/dl who has not received the pharmaceutical composition and a concurrent lipid altering therapy.

    16.  The method of claim 1, wherein no fatty acid of the pharmaceutical composition, except for ethyl-EPA, comprises more than about 0.6% by weight of all fatty acids combined.

    The District Court held that Defendants' label would induce infringement of all asserted claims of all Amarin's patents, a not uncommon outcome in ANDA litigation in view of FDA requirements for a generic drug to conform to the specifications of the corresponding branded version.  However, infringement liability of any kind was precluded by the court's further finding that all of the claims of all of Amarin's asserted patents were invalid for obviousness.

    Defendants asserted the following prior art references to support their obviousness arguments:

    1.  Lovaza as cited in the Physicians' Desk Reference (PDR), that disclosed the combination of EPA + DHA for hyperTG, administered at same dose as Amarin's patents prescribe; Lovaza was reported to have same effects as Vascepa® on LDL-C when used with a statin but had raised LDL-C when administered by itself

    2.  Mori et al., Purified Eicosapentaenoic and Docosahexaenoic Acids Have Differential Effects on Serum Lipids and Lipoproteins, LDL Particle Size, Glucose, and Insulin in Mildly Hyperlipidemic Men, 71 Am. J. Clinical Nutrition 1085- 94 (2000), which disclosed that administration of EPA alone reduced TG levels by 18.4% and DHA alone by 20%, stating these were essentially the same effects; also disclosed that serum LDL-C increased by 8% ("significantly") with DHA administration but by only 3.5% with EPA.

    3.  Hayashi et al., Decreases in Plasma Lipid Content and Thrombotic Activity by Ethyl Icosapentate Purified from Fish Oils, 56(1) Curr. Therap. Res. 24-31 (1995) disclosed that "at least one patient with hyperTG that improved with EPA treatment"; no disclosure of effects on LDL-C except that EPA did not increase LDL-C.

    4.  Kurabayashi et al., Eicosapentaenoic Acid Effect on Hyperlipidemia in Menopausal Japanese Women. Obstet. Gynecol. 96:521-8 (2000), which disclosed that EPA administration at ½ dosage with estrogen (which was known to increase TG); reported 27% reduction in serum TG levels.

    The Lovaza reference was the principal reference relied upon by the District Court in making its obviousness determination, for teaching that this formulation was effective at reducing TG levels in patients with hyperTG, but with the risk of pathological increases in LDL-C levels.  The Court considered the knowledge in the art regarding Lovaza in combination with the Mori reference for its teachings that the LDL-C raising effect was due to DHA in the Lovaza formulation.  The other cited art was relied upon for teaching that EPA alone could reduce TG levels, albeit on hyperTG patients as well as patients with elevated TG but not above 500 mg/dL.  Based on this art, the District Court found the person of skill in the art would have been motivated to combine the teachings of the Lovaza reference and the Mori reference because there would be a benefit in being able to administer one drug (EPA) rather than Lovaza plus a statin (for, inter alia, improved patient compliance reasons).  The District Court also perceived Plaintiff's expert as conceding this point, and that the prior art taken as a whole showed the desired effect known in the art to be associated with EPA administration alone.  The Court found that the skilled worker would have had a reasonable expectation of success in this combination, based on expert testimony and the District Court's understanding of what was disclosed in the prior art.

    The District Court then turned to the objective indicia of non-obviousness (termed the "secondary considerations in Graham v. John Deere & Co.).  In rendering its decision, the District Court characterized the procedural status of her deliberations by saying that Defendants had established a prima facie case of obviousness and she would then consider whether Plaintiffs had rebutted that case with evidence of secondary considerations; this analytical framework would be one of Plaintiff's arguments for errors of law on appeal.  Plaintiffs asserted the secondary considerations of unexpected benefits, satisfaction of long-felt but unmet need, skepticism, praise, and commercial success; after considering Plaintiff's evidence the Court found that certain of these secondary considerations (satisfaction of long-felt need, commercial success) provided evidence contrary to an obviousness determination but on balance Plaintiff's evidence of secondary considerations did not rebut the prima facie case.  (In an interesting twist recognized by the District Court, these patents were granted after the Examiner deemed the secondary considerations rebutted the Examiner's prima facie case.)

    On appeal, Amarin argued that the District Court erred by establishing the prima facie case before considering the secondary considerations, which Amarin argued was improper, citing In re Cyclobenzaprine, 676 F.3d 1063 (Fed. Cir. 2012).  Amarin also accused the District Court of engaging in hindsight bias, and for shifting the burden from Defendants in how it performed its obviousness analysis (again, but establishing the prima facie case and then placing the burden on Amarin to rebut it).  For their part, Defendants countered Amarin's Cyclobenzaprine citation with the Federal Circuit's later-decided Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., 719 F.3d 1346 (Fed. Cir. 2013) case, and further opposed Amarin's other grounds of appeal.

    The Federal Circuit heard oral argument on September 2nd, before a panel of Judges Dyk, Reyna, and Hughes (a recording of the oral argument can be obtained here).  Judge Dyk raised with Amarin's counsel the effect of the Novo decision regarding the prima facie case approach, stating by question that the panel was bound by earlier cases and Novo had affirmed the legal correctness of the District Court's approach.  Amarin's counsel argued that the District Court further erred by balancing the various species of secondary indicia but Judge Dyk appeared to believe that the one sentence Amarin pointed to in the District Court's opinion was insufficient evidence of analytical impropriety.  Judge Dyk asserted that merely weighing the secondary considerations versus the prima facie case seemed to satisfy the law in his view.  Judge Reyna's less extensive questioning focused on Amarin's argument that the District Court reached its conclusion before looking to secondary considerations, asking where in the record that would be.  Judge Hughes did not pose any questions to Amarin's counsel, and none of the judges questioned Defendants' counsel.  The Court's Rule 36 affirmance followed the next day.

    It is clear that the Court was not convinced the District Court had committed any legal error in how it performed its obviousness analysis and that Amarin did not show clear error in any of the District Court's factual findings.  Thus, the Rule 36 affirmance followed.

    Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc. (Fed. Cir. 2020)
    Nonprecedential disposition
    Panel: Circuit Judges Dyk, Reyna, and Hughes
    Per curiam

  • By Kevin E. Noonan

    Federal Circuit SealThe Federal Circuit recently applied well-established principles of obviousness in affirming the Patent Trial and Appeals Board's invalidation of several patents related to antifungal formulations in Anacor Pharmaceuticals, Inc. v. Flatwing Pharmaceuticals, LLC.

    The subject matter of the claimed invention was a topical formulation of 1,3-dihydro-5-fluoro-1-hydroxy-2,1-benzoxaborole (known as tavaborole):

    Structure
    and sold as KERYDIN® for treatment of a fungal infection (onychomycosis) caused by Trichophyton rubrum or T. mentagrophytes.  Flatwing Pharmaceuticals successfully initiated inter partes review of all claims of U.S. Patent Nos. 9,549,938 (the "'938 patent"), 9,566,289 (the "'289 patent"), 9,566,290 (the "'290 patent"), and 9,572,823 (the "'823 patent") for being as unpatentable for obviousness; the opinion characterizes dependent claim 2 of the '823 patent as being representative:

    1.  A method of delivering a compound, in a human, from a dorsal layer of a nail plate to a nail bed to treat onychomycosis caused by Trichophyton rubrum or Trichophyton mentagrophytes, the method comprising: contacting the dorsal layer of the nail plate with a pharmaceutical composition comprising a compound that penetrates the nail plate, the compound being [tavaborole] or a pharmaceutically acceptable salt thereof, thereby treating onychomycosis due to Trichophyton rubrum or Trichophyton mentagrophytes.

    2.  The method of claim 1, wherein the pharmaceutical composition is in the form of a topical solution comprising 5% w/w of [tavaborole], and wherein the pharmaceutical composition further comprises ethanol and propylene glycol [emphasis added].

    (Although other claims in the related patents in inter partes review recite ranges from 1-15%.)

    The PTAB had earlier found claims in two related patents to be invalid for obviousness (see "Anacor Pharmaceuticals, Inc. v. Iancu (Fed. Cir. 2018)").  Here, the PTAB applied some of the same art and arrived at the same conclusion of obviousness.  The Board decided that the prior art taught the use of antiifungal compounds (albeit not tavaborole) at concentrations overlapping the 5% recited in claim 2 of the '823 patent for treating fungal infections and thus the combination taught all the elements of the claimed invention.  The Board held that routine optimization by the skilled worker would have produced the claimed formulations which would have been reasonably expected to be effective against onchomycosis.  The Board also rejected Anacor's arguments regarding challenges posed by using organoboron compounds that would have precluded the existence of a reasonable expectation of success, based on expert testimony, and further rejected that the prior art (which taught 10% antifungal concentrations in prior art formulations) taught away from obviousness of the claimed invention teaching 5% tavaborole formulations.

    The Federal Circuit affirmed, in an opinion by Judge Lourie joined by Judges O'Malley and Chen.  Using the substantial evidence standard for factual questions arising before the PTAB, In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000), and de novo review of questions of law, the panel agreed with the Board's conclusion that the choice of 5% tavaborole concentrations in the claimed in formulation was a matter of routine optimization.  The Federal Circuit recognized that tavaborole concentration was "a result-effective variable[] such that one could optimize nail penetration by routine experimentation within a predictable range of concentrations" in support of its opinion.  The evidence showed that screening techniques existed in the art for testing for efficacy.  The art also taught a relationship between nail penetration and antifungal effectiveness, for example, wherein the art taught that 5% econazole concentrations were effective for penetrating nails.  According to the opinion, because tavaborole is a smaller molecule than econazole the skilled worker would have expected it to be effective in penetrating nails and thus being effective as an antifungal agent in that milieu.

    The panel also rejected Anacor's teaching away argument, because the art showed that any diminution of effectiveness caused by lowering econazole concentration from 10% to 5% was modest and depended on other factors such as excipients used in the formulation.  The opinion characterized the attitude exhibited by the art as not amounting to discouragement against using 5% econazole formulations and thus concluded that the art did not teach away from them.

    Finally, with regard to Anacor's argument that the skilled worker would have recognized that using organoborane compounds posed some difficulties in formulation, the opinion states that "[prior art] describing in vivo inhibition of a common fungus with organoboron compositions—formulated in either mineral oil or petroleum jelly—is especially damaging to Anacor's arguments."  Moreover, the Federal Circuit found that any purported challenge was not reflected in the specification, wherein "the specification does not offer any guidance beyond citation of well-known guides to pharmaceutical formulation" for making the claimed organoborane formulations.

    Finding no error by the PTAB, the Federal Circuit affirmed its judgment of obviousness for all challenged claims.

    Anacor Pharmaceuticals, Inc. v. Flatwing Pharmaceuticals, LLC (Fed. Cir. 2020)
    Panel: Circuit Judges Lourie, O'Malley, and Chen
    Opinion by Circuit Judge Lourie

  • By Kevin E. Noonan

    Federal Circuit SealOne of the banes of any practicing patent attorney's professional existence is counseling clients on licensing agreements where the parties attempt to avoid setting forth definitive terms on contract provisions regarding circumstances expected to arise in future.  This is an understandable inclination, because such terms are likely to depend on such future circumstances that neither party wishes to anticipate and thus later find that they are at a disadvantage as a consequence.  But such an inclination neglects to consider other ways to structure a contract to avoid these risks, and also neglects to acknowledge the possible consequences of failing to address these issues during current contract negotiations.  For such clients, the Federal Circuit's recent decision in Phytelligence, Inc. v. Washington State University provides a cautionary tale (as well as an example for the intrepid attorney to use for convincing such clients of the pitfalls that can arise and problems that can be created by fainthearted conduct during contract negotiations).

    The predicate facts are these.  WSU and Phytelligence negotiated a Propagation Agreement for propagating a new apple cultivar named WA38 and patented by WSU.  The Propagation Agreement permitted Phytelligence to propagate the trees but not to sell them unless the company obtained permission under a separate license.  The relevant provision of the Propagation Agreement provided that:

    If [Phytelligence] is an authorized provider in good standing . . . by signing this Agreement, [Phytelligence] is hereby granted an option to participate as a provider and/or seller of Plant Materials listed in Exhibit A, if the Cultivar is officially released by WSU and becomes available for licensing by [WSU] . . . .  [Phytelligence] will need to sign a separate contract with [WSU], or an agent of [WSU], to exercise this option.

    Prior to executing the Propagation Agreement, Phytelligence requested clarification of this provision, with regard to whether WSU intended to require a separate license (to which WSU replied in the affirmative). But this clarification came with a caveat:  WSU informed Phytelligence that "there exists the possibility that if we license WA 38 to an exclusive licensee, that company/ person/ group may want to do his/her own plant propagation without outside assistance or may want to do that under contract with its own contractors."  And further:

    We [WSU] have no idea how WA 38 will be licensed at this time.  It would take any form: under an open release through a nursery group, for example, to an exclusive license with a company, group of individuals, coop., etc.  That decision has not yet been made, so there can be no guarantees made to anyone at this point.

    (Which turned out to be not much of a license or even an agreement to enter into a license.)  Under these circumstances, Phytelligence considered its agreement to be a "strictly research undertaking" that would permit the company to "experiment with propagation techniques"; WSU did not disagree.  Phytelligence proposed that it "might make more sense" to make a "fee-for-service" arrangement or experiment with propagation on its own; WSU responded that the "fact of the matter is that what happens from a commercialization/licensing point of view in regard to WA 38 and future apple releases is completely out of [our] hands at the moment."  Phytelligence ultimately signed the Propagation Agreement, specifically stating that in view of the need to sign this agreement as a precursor to any future licensing activity or agreement, this agreement was "fine as it is" (emphasis in opinion).

    As it turned out, that decision (or at least the basis for it) was a mistake.  Less than six months thereafter, WSU announced a Request for Proposals to companies interested in commercializing WA38 apples.  The proposal was for an exclusive license to manage commercialization of these apples, including contracting with nurseries to propagate the apples.  Phytelligence did not submit a proposal.

    In due course WSU executed an exclusive license with Proprietary Variety Management (PVM) to manage commercialization, and the right to subcontract for nursery services exclusively with Northwest Nursery Improvement Institute (NNII).  Under these contracts and licenses, as the opinion sets forth, "no industry participant could obtain a license to sell WA 38 without becoming a member of NNII."

    Three years later, Phytelligence notified WSU that it wanted to exercise its option under Section 4 of the Propagation Agreement.  Pursuant to the option clause in Section 4, WSU notified Phytelligence that it needed to sign a separate contract with PVM as WSU's agent.  In its turn PVM notified Phytelligence that it needed to join the NNMI, which the company refused to do and notified WSU that this requirement was not contained in Section 4 of the Propagation Agreement.  WSU provided Phytelligence with three options, two of which did not require membership in NNMI.  Phytelligence rejected these options and thereafter, WSU terminated the Propagation Agreement on the grounds that Phytelligence had materially breached the Propagation Agreement by selling and delivering WA38 to a third party without a license, and for patent and trademark (COSMIC CRISP) infringement.

    Phytelligence brought suit in Washington State court against WSU for breach of the Propagation Agreement for granting an exclusive license with PVM; Phytelligence sought damages and specific performance, to wit, "issuing a license to Phytelligence to propagate and sell commercially WA38 apples."  In counterclaims WSU alleged Phytelligence had infringed its patents and trademarks and removed the action to federal court.  The District Court granted summary judgment in favor of WSU on the University's motion that Section 4 was an "unenforceable agreement to agree."  The parties stipulated to an injunction to permit this appeal and WSU waived any money damages it had sought before the District Court.

    The Federal Circuit affirmed, in an opinion by Judge Reyna joined by Chief Judge Prost and Judge Stoll. With regard to the patency of Section 4 as an enforceable term of the Propagation Agreement, the Court analyzed this provision under Washington State contract law.  The law instructs the court to look at the "reasonable meaning of the contract language to determine the parties' intent," according to the opinion, citing Hearst Commc'ns, Inc. v. Seattle Times Co., 115 P.3d 262, 267 (Wash. 2005) (termed the "objective manifestation theory").  This analysis is based on the "ordinary, usual, and popular meaning" of contract terms absent the parties manifesting a different meaning when the court considers the entire agreement. Under Washington State law, an agreement to agree is unenforceable, because "[a]n agreement to agree is an agreement to do something which requires a further meeting of the minds of the parties and without which it would not be complete," quoting P.E. Sys., LLC v. CPI Corp., 289 P.3d 638, 644 (Wash. 2012). Citing this authority, the opinion contrasts an "agreement having open terms" as being one in which "the parties intend to be bound by the key points agreed upon with the remaining terms supplied by a court or another authoritative source, such as the Uniform Commercial Code."  Under these principles and precedent, the Federal Circuit considered Section 4 to be an unenforceable agreement to agree because under the plain meaning of the words in the Propagation Agreement the exercise of the option required a separate contract between the parties wherein the terms of such contract were not set forth, even in principle, in Section 4.  (Some of the Court's reasoning is practical:  the opinion states "the Propagation Agreement provides the court with no objective method for determining the terms of the 'separate contract' between Phytelligence and WSU (or its agent).")

    The Federal Circuit also rejected Phytelligence's attempt to introduce and rely on extrinsic evidence to support its appeal of the District Court's summary judgment decision.  This extrinsic evidence included a form constituting "WSU-approved standard licensing terms" which negated any need for future negotiations on the terms of the sought-after license.  To the extent Washington State law permits such extrinsic evidence (under what it terms "the context rule") it is limited "to determin[ing] the meaning of specific words and terms used and not to show an intention independent of the instrument or to vary, contradict or modify the written word" (emphasis in opinion).  On the merits, Phytelligence's theory fails as being "self-contradictory" according to the Court; the opinion states:

    According to Phytelligence, the parties agreed that Phytelligence would receive the terms contained in the Form License.  . . .  The Form License, however, requires the "Licensee" to "be a NNII member nursery in good standing" in order to license WA 38.  . . .  It is also undisputed that no propagator was offered a license to WA 38 unless it was a member of NNII.  Membership in NNII is the very requirement that Phytelligence alleges was not required by Section 4 and triggered WSU's breach. Thus, Phytelligence's claim of breach of contract fails under either premise.  On the one hand, if the parties agreed that the "separate contract" in Section 4 would contain the standard terms of the Form License, then WSU did not breach Section 4 by requiring Phytelligence to become a NNII member.  On the other hand, if the parties did not agree to such standard terms, Section 4 is unenforceable as an agreement to agree [citations to the record omitted].

    And the e-mail colloquy between the parties prior to executing the Propagation Agreement did not support Phytelligence's arguments regarding the form contract supplying the needed specificity on licensing terms. Considering this extrinsic evidence, the Federal Circuit held that "the email communications between the parties indisputably indicate that at the time the parties executed the Propagation Agreement, WSU did not commit to any definite terms of a future license with Phytelligence."

    And none of the other extrinsic evidence proffered by Phytelligence was any more persuasive to the Federal Circuit.  This evidence included a declaration from Phytelligence's CEO regarding his understanding of the agreement (which the Court held did not create a genuine material fact dispute) (indeed, the opinion notes that the CEO's deposition testimony supported the conclusion that there was no understanding between the parties at the time the Propagation Agreement was signed regarding the terms of a future commercialization license).  And the Court similarly rejected Phytelligence's allegation that WSU had established a "customary practice" of licensing its apple cultivars by licensing other cultivars, because there was no evidence that the parties agreed that any such customary practices would be followed in these licenses.  Finally, the Court rejected Phytelligence's argument that the parties' conduct created a genuine issue of material fact on this question, because the parties engaged in negotiations over the terms of a license and could not agree on such terms.

    The opinion lacks any mention of the principle that a contract can be construed against the drafter or that WSU, having the cultivar, the patent, and the trademark was in a position to strategically leave certain terms vague and then be in the position to make the best bargain for itself in future when the circumstances were more certain.  Perhaps such considerations would have been relevant if the case had gone to trial, but by being able to have the District Court grant summary judgment sufficiently supported by Washington State law WSU was able to avoid these issues, to Phytelligence's detriment.

    Phytelligence, Inc. v. Washington State University (Fed. Cir. 2020)
    Panel: Chief Judge Prost and Circuit Judges Reyna and Stoll
    Opinion by Circuit Judge Reyna

  • By Kevin E. Noonan

    Federal Circuit SealThe Federal Circuit recently vacated a District Court decision by Federal Circuit Judge Dyk, sitting by designation, based on erroneous claim construction in Baxalta Inc. v. Genentech, Inc.

    The case arose over Genentech's Hemlibra® (emicizumb-kxwh) product, which Baxalta alleged infringed its U.S. Patent No. 7,033,590.  Baxalta asserted claims 1, 4, 17, and 19; these claims were directed to certain elements of the "blood clotting cascade" for treatment of hemophilia A.  The invention claimed in the '590 patent involved using antibodies or antibody fragments to replace binding of Factor VIII (which is deficient or inhibited in hemophiliacs) to Factor IX, which permits restoration of the cascade (wherein Factor IX activates Factor X) as set forth in the following drawing:

    2020-08-30 Image
    The Federal Circuit found Claims 1, 4, and 19 to be illustrative:

    1.  An isolated antibody or antibody fragment thereof that binds Factor IX or Factor IXa and increases the procoagulant activity of Factor IXa.

    4.  The antibody or antibody fragment according to claim 1, wherein said antibody or antibody fragment is selected from the group consisting of a monoclonal antibody, a chimeric antibody, a humanized antibody, a single chain antibody, a bispecific antibody, a diabody, and di-, oligo- or multimers thereof.

    19.  The antibody or antibody fragment according to claim 4, wherein the antibody is a humanized antibody.

    At trial, the parties proposed alternative claim constructions for the terms "antibody" and "antibody fragment."  Baxalta's proposed claim construction defined "antibody" as "[a] molecule having a specific amino acid sequence comprising two heavy chains (H chains) and two light chains (L chains)."  Genentech's proposed construction was that "antibody" should be construed as "[a]n immunoglobulin molecule, having a specific amino acid sequence that only binds to the antigen that induced its synthesis or very similar antigens, consisting of two identical heavy chains (H chains) and two identical light chains (L chains)" (emphasis added).  These differences were relevant because Genentech's Hemlibra® product was a bispecific antibody, i.e., the heavy and/or light chains comprising the antibody were different, thus permitting the two portions of the antibody to recognize and bind to different antigens.  Judge Dyk, sitting by designation, held that the term "antibody," without more, could have different meanings to the skilled worker and both parties' definitions were consistent with these different meanings.  In deciding to adopt Genentech's proposed construction, Judge Dyk held that Baxalta's specification contained a definition of the term that was dispositive:

    Antibodies are immunoglobulin molecules having a specific amino acid sequence which only bind to antigens that induce their synthesis (or its immunogen, respectively) or to antigens (or immunogens) which are very similar to the former.  Each immunoglobulin molecule consists of two types of polypeptide chains.  Each molecule consists of large, identical heavy chains (H chains) and two light, also identical chains (L chains).

    This definition was inconsistent with the remainder of the '590 specification, that disclosed bispecific antibodies, and also inconsistent with other naturally occurring antibody embodiments, such as IgM and IgA.  Judge Dyk also dismissed the inconsistencies that this construction raised between claim 1 and claims 4 and 19 based in the one instance of express disclosure in the '590 specification.  The District Court also relied on amendments made during prosecution of the '590 patent claims, wherein Baxalta amended claim 1 as filed to replace "antibody derivatives" with "antibody fragments."  In Judge Dyk's view, these amendments amounted to a disclaimer of bispecific antibodies and limited the claims to antibody fragments.

    With regard to the District Court's construction of the phrase "antibody fragments."  Baxalta proposed construction of "[a] portion of a molecule having a specific amino acid sequence comprising two heavy chains (H chains) and two light chains (L chains)," whereas Genentech proposed to construe this term to mean "[a] fragment of an antibody which partially or completely lacks the constant region; the term 'antibody fragment' excludes all other forms of antibody derivatives."  Again relying on express language in the specification ("antibody fragments . . . partially or completely lack the constant region" and identifying examples of fragments (Fv, Fab, Fab' [and] F(ab)'2)," Judge Dyk construed the phrase "antibody fragment" to mean "a fragment of an antibody which partially or completely lacks the constant region" and that "the term 'antibody fragment' excludes bispecific antibodies."

    Based on these constructions, the parties stipulated that Genentech's Hemlibra® product did not infringe, and after the District Court entered judgment, Baxalta appealed.

    The Federal Circuit vacated Judge Dyk's claim construction and final judgment and remanded, in an opinion by Judge Moore joined by Judges Plager and Wallach.  The panel opinion reviewed Judge Dyk's construction de novo because the only evidence relied upon in Judge Dyk's decision was intrinsic evidence and thus the Federal Circuit owed the District Court no deference; see Teva Pharma. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015)).  Under this standard, the Federal Circuit found that Judge Dyk erred in construing the term "antibody."  Relying on the plain language of the claim (the first canon of claim construction under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Judge Dyk joined 9 other Federal Circuit judges in this opinion), the Federal Circuit held that "nothing in the plain language of claim 1 limits the term "antibody" to a specific antibody consisting of two identical heavy chains and two identical light chains or an antibody that only binds the antigen that induced its synthesis or very similar antigens."  The panel also opined that the dependent claims "confirm[ed] that [the term] "antibody" is not so limited," inter alia, wherein dependent (and asserted) claim 4 expressly recited a bispecific antibody as a species of antibody or antibody fragment.  Construing a term in an independent claim to exclude expressly recited species in dependent claims is "inconsistent with the plain language of the claims," according to the panel, citing Intellectual Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1378 (Fed. Cir. 2018); and Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008).  Genentech argued (at trial and before the Federal Circuit) that the proper outcome was to invalidate any such inconsistent dependent claims, which the panel refused to do based on the plain language of the claims.

    Turning to the specification, the panel also rejected the District Court's reliance on specific disclosure set forth above.  While acknowledging that, in isolation, that paragraph could be interpreted as providing a definition, "claim construction requires that we 'consider the specification as a whole, and . . . read all portions of the written description, if possible, in a manner that renders the patent internally consistent,'" citing Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379–80 (Fed. Cir. 2001).  Judge Dyk's use of the specification to support his claim construction was also inconsistent with the practice of the Court, inter alia, because this excerpt is devoid of language that renders such "general statements" limiting, as set forth, for example, in Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). Considering the specification as a whole, the panel notes that it contains "specific disclosures regarding bispecific, chimeric, and humanized antibodies and methods of production thereof," all of which rebut the District Court's construction.  The specification also expressly discloses methods for producing humanized or chimeric antibodies which are also inconsistent with Judge Dyk's claim construction.

    Finally, the Federal Circuit considered the prosecution history and concluded that it did not support the District Court's claim construction based on prosecution history disclaimer.  According to the panel, the disclaimer perceived by Judge Dyk was not "sufficiently clear and unmistakable" to amount to clear disclaimer, citing 3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir. 2013). The District Court's construction was also inconsistent with allowance of claim 4, which expressly recites bispecific antibody fragments.

    The panel concludes by mandating the construction to be used on remand, wherein "antibody" is construed to mean "an immunoglobulin molecule having a specific amino acid sequence comprising two heavy chains (H chains) and two light chains (L chains)."

    Turning to construction of the phrase "antibody fragments," the Federal Circuit held Judge Dyk erred in his construction of this term, and held that on remand the phrase be construed to mean "[a] portion of an immunoglobulin molecule having a specific amino acid sequence comprising two heavy chains (H chains) and two light chains (L chains)."  The Federal Circuit based its finding of error on the District Court's reliance on a portion of the specification that recited:

    The term factor IX/IXa activating antibodies and antibody derivatives may also include . . . e.g., "technically modified antibodies" such as synthetic antibodies, chimeric or humanized antibodies, or mixtures thereof, or antibody fragments which partially or completely lack the constant region, e.g. Fv, Fab., Fab' or F(ab) etc.

    The error was in confining claims to specific embodiments recited in the specification, about which the opinion states the court "has repeatedly warned against," citing Thorner v. Sony Comput. Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).  The panel also notes that the specification contained language ("may also include," "e.g.," "such as," and "etc.") indicting that the patentee did not intend to provide a limiting definition of the phrase "antibody fragments."

    Thus, the Federal Circuit remanded the action back to the District Court, awarding costs to Baxalta.

    Baxalta Inc. v. Genentech, Inc. (Fed. Cir. 2020)
    Panel: Circuit Judges Moore, Plager, and Wallach
    (note: after oral argument, Judge Plager replaced Judge Stoll, who recused)
    Opinion by Circuit Judge Moore

  • CalendarSeptember 1, 2020 – IPWatchdog Virtual CON2020 – Keynote: Andrei Iancu, Under Secretary of Commerce for Intellectual Property & Director of the USPTO (IPWatchdog) – 12:05 pm (ET)

    September 1, 2020 – IPWatchdog Virtual CON2020 – Litigating Patents in Texas: Trends, Best Practices and Differences Between Districts – 12:45 pm (ET)

    September 1, 2020 – IPWatchdog Virtual CON2020 – Patents at the PTAB: How the Times Have Changed (or Not) – 2:15 pm (ET)

    September 2, 2020 – IPWatchdog Virtual CON2020 – Keynote: Chief Judge Paul Michel (CAFC, ret.) – 12:05 pm (ET)

    September 2, 2020 – IPWatchdog Virtual CON2020 – The Future of the CAFC: Is the Court Still Relevant? – 12:45 pm (ET)

    September 2, 2020 – IPWatchdog Virtual CON2020 – Strategies for Protecting Artificial Intelligence and Machine Learning post-Alice – 2:15 pm (ET)

    September 3, 2020 – IPWatchdog Virtual CON2020 – Keynote: Raymond Millien, Chief IP Officer & CEO, Volvo Car Ventures – 12:05 pm (ET)

    September 3, 2020 – IPWatchdog Virtual CON2020 – In Search of Injunctive Relief in Patent Infringement Litigation – 12:45 pm (ET)

    September 3, 2020 – IPWatchdog Virtual CON2020 – IP Transactions & Portfolio Management: Finding What You Need & Backfilling a Portfolio – 2:15 pm (ET)

    September 8, 2020 – IPWatchdog Virtual CON2020 – The Current State of Patent Eligibility Caselaw – 12:30 pm (ET)

    September 8, 2020 – IPWatchdog Virtual CON2020 – A Bridge of Tears for Life Sciences – 12:45 pm (ET)

    September 8, 2020 – IPWatchdog Virtual CON2020 – Hatch-Waxman and IPR Strategy – 2:15 pm (ET)

    September 9, 2020 – IPWatchdog Virtual CON2020 – Keynote: Tricia Thompkins, EVP, General Counsel and Secretary, Perry Ellis International, Inc. – 12:30 pm (ET)

    September 9, 2020 – IPWatchdog Virtual CON2020 – Leveraging Intellectual Property to Raise Structured Capital in Life Sciences – 12:30 pm (ET)

    September 9, 2020 – IPWatchdog Virtual CON2020 – IP as an Asset Class: Valuing Assets in Support of Monetization Strategy – 12:45 pm (ET)

    September 9, 2020 – IPWatchdog Virtual CON2020 – Litigation Finance: Funding Patent Infringement Litigation – 2:15 pm (ET)

    September 11, 2020 – IP, Technology & Social Justice in the Age of Coronavirus (Center for Intellectual Property, Information & Privacy Law at UIC John Marshall Law School and Institute for Intellectual Property & Social Justice) – 7:40 am to 3:00 pm (CT)

    September 14, 2020 – IPWatchdog Virtual CON2020 – Enforcing & Licensing 5G SEPs: An Innovator’s Perspective – 12:45 pm (ET)

    September 14, 2020 – IPWatchdog Virtual CON2020 – High-Tech Patent Litigation Trends: 101 and the Return of Competitor Lawsuits – 2:15 pm (ET)

    September 14, 2020 – IPWatchdog Virtual CON2020 – Preparing and Prosecuting Patents that Hold up to Challenge – 3:45 pm (ET)

    September 15, 2020 – "Traps for the Unwary Prosecutor: What Practitioners Should Know About US and European Patent Practice" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    September 15, 2020 – IPWatchdog Virtual CON2020 – Keynote: Rochelle Blaustein, Associate General Counsel, Technology Transfer & Intellectual Property, United States Department of Energy – 12:05 pm (ET)

    September 15, 2020 – IPWatchdog Virtual CON2020 – The Growing Importance of Trade Secret Protection – 12:30 pm (ET)

    September 15, 2020 – IPWatchdog Virtual CON2020 – Identifying, Valuing and Protecting Trade Secrets in the 21st Century – 12:45 pm (ET)

    September 15, 2020 – IPWatchdog Virtual CON2020 – The Gender Gap: Addressing STEM Education, Funding & Inventorship – 2:15 pm (ET)

    September 16, 2020 – IPWatchdog Virtual CON2020 – Ethics for IP Attorneys – 1:50 pm (ET)

    September 17, 2020 – IPWatchdog Virtual CON2020 – Keynote: Alden Abbott, General Counsel, FTC – 12:05 pm (ET)

    September 17, 2020 – IPWatchdog Virtual CON2020 – Efficiency in Draftsman Communications – 12:30 pm (ET)

    September 17, 2020 – IPWatchdog Virtual CON2020 – Enhancing Value Throughout the Patent Life Cycle – 2:00 pm (ET)

    September 17, 2020 – IPWatchdog Virtual CON2020 – Establishing a Patent Strategy for the Innovation Lifecycle – 2:15 pm (ET)

    September 23-24, 2020 – Summit on Biosimilars: Legal, Regulatory, and Commercial Strategies for the Innovator and Biosimilars Marketplace (American Conference Institute) – virtual conference

    September 23-24, 2020 – FDA Boot Camp (American Conference Institute) – virtual conference

    September 29, 2020 – IPWatchdog Virtual CON2020 – The Future of Monetization – 12:45 pm (ET)

    September 29, 2020 – IPWatchdog Virtual CON2020 – What Can Armor on WWII Planes & Honeybees Tell Us about Innovation Strategy? – 2:00 pm (ET)

    September 29, 2020 – IPWatchdog Virtual CON2020 – Everyone Wants to Be a Unicorn – But What About Patents? – 2:15 pm (ET)

    September 30, 2020 – IPWatchdog Virtual CON2020 – Keynote: Louis Foreman, CEO, Enventys Partners, founder of Edison Nation – 12:05 pm (ET)

    September 30, 2020 – IPWatchdog Virtual CON2020 – How China is Changing the Global Patent System – 12:45 pm (ET)

    September 30, 2020 – IPWatchdog Virtual CON2020 – Solutions for the U.S. Patent System – 2:15 pm (ET)

  • IPWatchdogIPWatchdog will be holding its Virtual CON2020 program from September 1 to September 30, 2020.  Among the patent-related online presentations being offered during the Virtual CON2020 program are:

    September 1

    • Keynote: Andrei Iancu, Under Secretary of Commerce for Intellectual Property & Director of the USPTO – 12:05 pm ET
    • Litigating Patents in Texas: Trends, Best Practices and Differences Between Districts – 12:45 pm ET
    • Patents at the PTAB: How the Times Have Changed (or Not) – 2:15 pm ET

    September 2

    • Keynote: Chief Judge Paul Michel (CAFC, ret.) – 12:05 pm ET
    • The Future of the CAFC: Is the Court Still Relevant? – 12:45 pm ET
    • Strategies for Protecting Artificial Intelligence and Machine Learning post-Alice – 2:15 pm ET

    September 3

    • Keynote: Raymond Millien, Chief IP Officer & CEO, Volvo Car Ventures – 12:05 pm ET
    • In Search of Injunctive Relief in Patent Infringement Litigation – 12:45 pm ET
    • IP Transactions & Portfolio Management: Finding What You Need & Backfilling a Portfolio – 2:15 pm ET

    September 8

    • The Current State of Patent Eligibility Caselaw – 12:30 pm ET
    • A Bridge of Tears for Life Sciences – panel with Patent Docs authors Donald Zuhn and Kevin Noonan; Sherry Knowles of Knowles IP Strategy; and Hans Sauer, Deputy General Counsel and Vice President for Intellectual Property for the Biotechnology Innovation Organization (BIO) – 12:45 pm ET
    • Hatch-Waxman and IPR Strategy – 2:15 pm ET

    September 9

    • Keynote: Tricia Thompkins, EVP, General Counsel and Secretary, Perry Ellis International, Inc. – 12:30 pm ET
    • Leveraging Intellectual Property to Raise Structured Capital in Life Sciences – 12:30 pm ET
    • IP as an Asset Class: Valuing Assets in Support of Monetization Strategy – 12:45 pm ET
    • Litigation Finance: Funding Patent Infringement Litigation – 2:15 pm ET

    September 14

    • Enforcing & Licensing 5G SEPs: An Innovator’s Perspective – 12:45 pm ET
    • High-Tech Patent Litigation Trends: 101 and the Return of Competitor Lawsuits – 2:15 pm ET
    • Preparing and Prosecuting Patents that Hold up to Challenge – 3:45 pm ET

    September 15

    • Keynote: Rochelle Blaustein, Associate General Counsel, Technology Transfer & Intellectual Property, United States Department of Energy – 12:05 pm ET
    • The Growing Importance of Trade Secret Protection – 12:30 pm ET
    • Identifying, Valuing and Protecting Trade Secrets in the 21st Century – 12:45 pm ET
    • The Gender Gap: Addressing STEM Education, Funding & Inventorship – 2:15 pm ET

    September 16

    • Ethics for IP Attorneys – 1:50 pm ET

    September 17

    • Keynote: Alden Abbott, General Counsel, FTC – 12:05 pm ET
    • Efficiency in Draftsman Communications – 12:30 pm ET
    • Enhancing Value Throughout the Patent Life Cycle – 2:00 pm ET
    • Establishing a Patent Strategy for the Innovation Lifecycle – 2:15 pm ET

    September 29

    • The Future of Monetization – 12:45 pm ET
    • What Can Armor on WWII Planes & Honeybees Tell Us about Innovation Strategy? – 2:00 pm ET
    • Everyone Wants to Be a Unicorn – But What About Patents? – 2:15 pm ET

    September 30

    • Keynote: Louis Foreman, CEO, Enventys Partners, founder of Edison Nation – 12:05 pm ET
    • How China is Changing the Global Patent System – 12:45 pm ET
    • Solutions for the U.S. Patent System – 2:15 pm ET

    Additional presentations may be added to the schedule above.  Information regarding those additional presentations as well as a complete agenda and list of speakers for and descriptions of all of the Virtual CON2020 presentations can be found here.  Registration for the Virtual CON2020 series is free.  Those interested in registering for the program can do so here.

  • By Kevin E. Noonan

    SARS-CoV-2Despite the challenges of addressing a previously unknown virus, development of an effective vaccine, soon, is a distinct possibility (see "Multiple Candidate Coronavirus Vaccines Being Developed According to WHO").  But as set forth in an article in Nature on Monday ("The unequal scramble for coronavirus vaccines — by the numbers") by Ewen Callaway, there is a legitimate concern that such vaccines may not be equitably accessible based on medical need.

    The issue is a practical one:  how to produce enough doses in a short enough time to be effective in stemming the pandemic and delivering these doses where they are most needed.  Some of this is simply math:  as the subtitle of the article notes, "[w]ealthy countries have already pre-ordered more than two billion doses").  These are, as may be expected, countries like the U.S.  ("By mid-August, the United States had secured 800 million doses of at least 6 vaccines in development, with an option to purchase around one billion more") and UK ("the world's highest per-capita buyer, with 340 million purchased:  around 5 doses for each citizen"), as well as EU nations and Japan, Brasil, and Indonesia.  These statistics are illustrated in a graphic provided in the Nature article.

    Of course, these statistics fly in the face of the need, recognized by public health officials, that the pandemic will not be quelled until it is eradicated globally; after all, the days when diseases like COVID-19 can be limited to one region of the globe ended with international air travel and global mobility.  The article captures these sentiments (and the realities behind them) by quoting Tedros Adhanom Ghebreyesus, the director of the World Health Organization (WHO) as saying "We need to prevent vaccine nationalism."

    And this form of at least attempted vaccine hoarding is not new; as the article notes something similar happened in 2009 with the H1N1 influenza vaccine, but the severity of the COVID-19 pandemic raises the stakes on this type of behavior dramatically.

    There are several international organizations mobilizing to reduce this threat, including Gavi ("a Geneva-based funder of vaccines for low-income countries"), the WHO, and the Coalition for Epidemic Preparedness Innovations (CEPI), "a fund based in Oslo that was created to finance and coordinate vaccines for outbreaks," in support of the COVAX facility in an effort obtain vaccine supplies for the rest of the world.  Their goal is 2 billion doses of COVID-19 vaccines, with half of that amount targeted to "92 low- and middle-income countries and economies (LMICS)" and the rest to 75 "wealthier" countries (these countries are expected to pay for these doses).  Efforts by the COVAX group to date have amounted to 300 million doses of the vaccine developed by the University of Oxford, according to Mr. Calloway's article.  But the estimated cost of the desired 2 billion doses ($18 billion, or $9/dose) makes financing the effort a daunting task.

    There are any number of ideas on how to address the problem, including (not unexpectedly) permitting countries to impose compulsory licenses that would enable manufacturers in each country to make the vaccine.  There are alternatives that vaccine makers could pursue (such as partnering with domestic manufacturers in each country having the industrial capacity to do so) but such schemes may be premature in view of the present non-existence of an effective vaccine.  And as the article notes, these are only effective if there are patents protecting the vaccine product; it is difficult if not impossible to impose such licenses on trade secrets for example.  With a firm grip on the realities of vaccine development not often heard in such debates, Mark Feinberg, head of the International AIDS Vaccine Initiative in New York City is quoted in the article as saying "Patents and intellectual property are not what's standing in the way of fair distribution of COVID-19 vaccines; rather, equitable access and affordable prices require collaboration between governments and vaccine makers."

    The article optimistically asserts that 10 billion doses could be available by the end of 2021; this would require that "all of the frontrunner candidate vaccines are approved" (emphasis added), which is unlikely, and Jeffrey Almond, who is a vaccinologist and visiting scholar at the University of Oxford is quoted in the article as saying such estimates are "a guestimate" based on assumptions that are "overly optimistic."  Other, perhaps more realistic estimates (produced by Airfinity, a London life-sciences market analytics firm) estimates 2-4 billion doses by the end of 2021.

    And of course the article reminds us that how many people these dose estimates will vaccinate depends on the number of doses needed; for many of these vaccines are expected to need 2 doses to provide effective immunity, although some companies (including Johnson & Johnson and AstraZeneca) are attempting to produce a one-dose vaccine.

    These efforts are perhaps almost as big a challenge as producing the vaccine, which is constrained by biology and understanding of that will be needed to make an effective vaccine.  Distribution involved logistics, industrial-scale manufacturing, and perhaps most importantly the international politics, which has not proven to be either predictable, reliable, or particularly transparent in recent times.  Nevertheless, as this Nature article illustrates, perhaps now is the best time to begin to address these issues; once a vaccine is available it will not get any easier.

  • By Kevin E. Noonan

    SARS-CoV-2In the face of the economic and social consequences of the severe acute respiratory syndrome coronavirus 2 (SARS-CoV-2) pandemic (COVID-19) and the difficulties attendant in behavioral modifications that could slow progress of the disease (quarantine, lock-down, social distancing, frequent hand washing, and the use of facemasks), the world's best hope for a chance to return to normalcy is the development of an effective vaccine.  The last disease against a virus for which a disease was developed was mumps (caused by Mumps orthorubulavirus) in the 1960's; that vaccine took more than four years to be developed.  Even with the advances in immunology and virology in the 50+ years since that time, producing an effective vaccine less than 12 months after the outbreak of the SARS-CoV-2 pandemic would be (more hopefully, will be) a scientific triumph or a genuine miracle (depending on how one explains the unexpected).

    As of August 13th, according to the World Health Organization (WHO), there are 29 candidate vaccines undergoing clinical evaluation, and another 138 candidates in preclinical studies.  Those in Phase 3 studies include two based on inactivated viruses, from the People's Republic of China (Sinovac and Sinopharm, the latter being developed by the Wuhan Institute of Biological Products and the Beijing Institute of Biological Products).  There are two RNA-based candidate vaccines:  the Moderna/NIAID vaccine and the BioNTech/Fosun Pharma/Pfizer vaccine, both of which are lipid nanoparticle encapsulated RNAs.  The candidate furthest along (by accounts in the press) is the University of Oxford/AstraZeneca vaccine, based on a non-replicating viral vector.

    There are two vaccine in Phase 2 clinical trials:  another non-replicating viral vector (Adenovirus Type 5) from the CanSino Biological Inc./Beijing Institute of Biotechnology, and a protein subunit vaccine from Anhui Zhifei Longcom Biopharmaceutical/Institute of Microbiology, Chinese Academy of Sciences.  There are ten in Phase 1/2, including four DNA-based vaccines (from Inovio Pharmaceuticals/ International Vaccine Institute, Osaka University/ AnGes/ Takara Bio, Cadila Healthcare Limited, and Genexine Consortium), protein subunit vaccines (from Kentucky Bioprocessing, Inc. and Novavax), RNA (Arcturus/Duke-NUS) and non-replicating viral vectors (Janssen Pharmaceutical Companies), as well as a vaccine based on whole virion inactivation (Bharat Biotech).

    The remaining 11 vaccines in Phase 1 include a vaccine based on a measles-based replicating viral vector (Institute Pasteur/Themis/Univ. of Pittsburg CVR/Merck Sharp & Dohme), a plant-derived virus-like particle (VLP)-based vaccine (Medicago Inc.) and non-replicating viral vectors (from Gamaleya Research Institute and ReiThera/LEUKOCARE/Univercells).  Clover Biopharmaceuticals Inc./GSK/Dynavax is developing a "native-like trimeric subunit Spike protein vaccine," and Medigen Vaccine Biologics Corporation/NIAID/Dynavax has a protein subunit vaccine in Phase 1 clinical trials, while Vaxine Pty Ltd/Medytox is developing a vaccine based on a recombinant Spike protein formulated with Admax™ adjuvant.  Curevac and the Imperial College of London have RNA-based vaccines in clinical trials.

    Administration of these vaccines is almost universally intramuscular, typically requiring more than one dose where the doses are separated by 14-28 days (some with as long as 56 days between doses); the Oxford/AstraZeneca vaccine is effective with a single dose.

    Of the 138 candidate vaccines in preclinical trials, 12 are DNA-based; 9 are inactivated virus; 3 comprise live, attenuated virus; 19 are non-replicating viral vectors, typically Adenovirus 5 or another adenovirus type; 50 comprise protein subunits, often the viral Spike protein; 17 are replicating viral vectors, using vesicular stomatitis virus, influenza virus, or other viruses; 16 are RNA vaccines, usually mRNA-based; and 12 comprise virus-like particles.

    The incredible amount of time, money, effort, and intelligence behind these efforts are likely to produce a vaccine, particularly because this virus, unlike viruses that have proven intractable to vaccination stratagems, such as human immunodeficiency virus III, apparently does not mutate at a particularly high frequency, and its Spike protein provides the effector that binds to angiotensin I converting enzyme 2 (ACE2) in most species that can be infected (see "Sequence Comparisons Illustrate Susceptibility to Coronavirus Infection").  When the vaccine will be available is the question, and (to the frustration of politicians, leaders, and the general public) a frustrating one; the only thing perhaps even more frustrating is the fear that a significant part of the public will refuse to be vaccinated, producing an enduring reservoir of this disease resulting in a perpetual pandemic.  Perhaps more rational heads will prevail on this issue, but if the past eight months are any guide this is becoming more and more unlikely, with parlous consequences for us all.

  • By Kevin E. Noonan

    SARS-CoV-2The pandemic caused by severe acute respiratory syndrome coronavirus 2 (SARS-CoV-2) is the most severe since the 1918 influenza pandemic (colloquially known as the Spanish Flu; see, J. Barry, The Great Influenza: The Story of the Deadliest Pandemic in History, Penguin Books; Revised ed. edition (October 4, 2005)).  The geographic origins of the virus in Wuhan, China is well-established for the pandemic, but the biological origin is less well understood (although bats are the most likely culprit).

    Coronaviruses have arisen in bats, pigs, and cattle and one species, HCov-OC43 from cattle or swine, was responsible for a human pandemic in the late 19th Century.  These viruses appear to be promiscuous, being transmitted from bats, cattle, or swine to humans and from humans to tigers and pigs.  One possible reason is that coronaviruses including SARS-CoV-2 infect human cells through binding of the viral Spike protein to angiotensin I converting enzyme 2 (ACE2), a protein highly conserved in mammals related to its endogenous functions regulating vasodilation and vasoconstriction as part of the renin–angiotensin system.  Adaptation of the virus to different hosts, accompanied by changes in Spike protein structure, have been seen in the masked palm civet, believed to be an intermediate host between bats and humans; in this instance, the virus mutated at two Spike protein sites to amino acids having higher affinity binding to human ACE2.  However, the role of the civet has not been definitively established, with the Malayan pangolin being another possible intermediate.  Comparisons between SARS-CoV-2 Spike protein binding sequence and ACE2 in vertebrate species shows conservation that may be related to susceptibility, suggests animal reservoirs and intermediates between bats (the native species) and humans, and illustrates the possibilities and likelihoods that SARS-CoV-2 may infect various species including endangered species.

    Recently, an international team of researchers* discussed these features of host-virus interaction in a paper entitled "Broad host range of SARS-CoV-2 predicted by comparative and structural analysis of ACE2 in vertebrates" in the Proceedings of the National Academy of Sciences.  These researchers compared the amino acid sequence believed to be involved in Spike:ACE2 binding in ACE2 proteins from 410 vertebrate species (252 mammals, 72 birds, 65 fishes, 17 reptiles, and 4 amphibians), finding the relationships and conservation between the 25 amino acid region of ACE2:

    SerGlnThrPheAspLysHisGluGluAspTyrGlnLeuAsnLeuMetTyrAsnAsnAsnLysGlyAspArgArg

    where amino acid residues shown in bold are binding "hotspots" constrained with regard to binding to SARS-CoV-2 Spike protein sequences; amino acids intervening between some of these residues are not shown.

    The authors constructed five categories of binding affinity (very low-low-medium-high-very high) based on the human ACE2 sequence and report that catarrhine primates ("Old World" monkeys, apes, and humans) were the only group in the very high category; other mammals (and only mammals) fell into the medium-to-high categories.  Very high binders show essentially no variants in amino acid sequence in the population at large (although there can be low levels of variability).  The high binding category showed from one to five variations in the sequence; the majority of these variants showed predominantly conservative substitutions and were found in "12 cetaceans (whales and dolphins), 7 rodents, 3 cervids (deer), 3 lemuriform primates, 2 representatives of the order Pilosa (giant anteater and southern tamandua), and 1 Old-World primate (Angola colobus)."  While the medium category showed between two to five variants, overlapping in number of variants with the high category, these variants arose more frequently at hotspot positions or were nonconservative substitutions; domestic cat, Siberian tiger, and other felids were found in this category, as well as several "New World" primates, cattle, bison, sheep, goat, water buffalo, Masai giraffe and Tibetan antelope, significant because domestication raises the possibility of zoonotic transfer to humans.  Low binding variants had a higher proportion of nonconservative substitutions (and somewhat paradoxically included bats), while the very low category showed up to 14 mismatches in the sequence, higher frequencies of nonconservative substitutions and more of these substitutions arising at hotspot residues; this category contained "[a]ll monotremes (n = 1) and marsupials (n = 4), birds (n = 72), fish (n = 65), amphibians (n = 4), and reptiles (n = 17)" including "Chinese pangolin, Sunda pangolin, and white-bellied pangolin."  A frequent mutation in all categories was Met -> Thr (with lower frequencies of Met -> Ser, Met -> Asn, and  Met -> Ala).

    These authors further reported the results of an analysis of variants in the ACE2 amino acid sequence believed to bind to the SARS-CoV-2 Spike protein; humans carrying variants that showed less effective binding were, unfortunately, very rare (<0.001) arising in ten of the twenty-five amino acid residues.  The researchers further reported that, when analyzed for expected effects on binding these assessments complemented the sequence identity analysis, where substitutions predicted to destabilize binding were less likely to arise in susceptible species.  Overall, they report "lack of major conformational changes between species" which they assert supports their choice of human ACE2 sequences as the "template" for performing their comparisons.  Generally, however, their comparisons showed that "[t]he majority of ACE2 codons are significantly conserved across vertebrates and across mammals" which they attribute to "its critical function in the renin-angiotensin system" in mammals.  Conversely, bats show higher degrees of variants that result in less favorable binding, providing perhaps an explanation of why these species are (relatively) resistant to (or at least tolerant of) the consequences of viral infection.

    Combining their survey information and molecular modeling based on crystallographic assessments, these authors report that several residues on the Spike protein were positively selected for binding, while residues within (set forth in italics in the sequence above) and outside the ACE2 sequence were positively selected for Spike protein binding.

    Figures 4A & 4B
    As explained in the paper:  "In ACE2 (wheat-colored, with binding interface residues in yellow), selected residues occur both outside the binding interface (dark blue) and inside the binding interface (red, labeled with one asterisk)" (see Figures 4A and 4B from paper; shown above).

    The authors caution that this evidence is "solely based on in silico analyses" and thus their conclusions need experimental validation.  Nevertheless, they note that "[f]ive out of six species with demonstrated susceptibility to SARS-CoV-2 infection score very high [rhesus macaque and cynomolgus macaque] or medium [domestic cat, tiger and golden hamster].  Both species susceptible to infection but asymptomatic scored low [dog and Egyptian rousette bat], and the three species resistant to infection scored either low [pig] or very low [mallard and red junglefowl]" (references omitted).  Ferrets, it seems, are an exception, scoring as low ACE2 binders but being susceptible to SARS-CoV-2 infection; while the authors provide speculations regarding why this is the case, there is no known basis for this discrepancy.  The high susceptibility of Old World monkeys suggest that monkeys indigenous to China might form a reservoir for the virus, but the same is true for cervids (deer) and some species of whale, and medium-scoring species (both domesticated animals and animals found in zoos) are also susceptible and hence may be animal reservoirs responsible for zoonotic infections in humans.  And while bats have been the most commonly attributed (or blamed) zoonotic transfer source, bat species show the highest degree of resistance to infection with SARS-CoV-2.

    With regard to pangolins, these authors state:

    Considerable controversy surrounds reports that pangolins can serve as an intermediate host for SARS-CoV-2, with some reports proposing that SARS-CoV-2 arose as a recombinant between bat and pangolin betacoronaviruses, while another study rejected that claim.  In our study, ACE2 of Chinese pangolin, Sunda pangolin, and white-bellied pangolin had low or very low binding score for SARS-CoV-2 S.  Binding of pangolin ACE2 to SARS-CoV-2 S was predicted using molecular binding simulations; however, neither experimental infection nor in vitro infection with SARS-CoV-2 has been reported for pangolins.  Further studies are necessary to resolve whether SARS-CoV2 S binds to pangolin ACE2 [citations omitted].

    The paper concludes with a discussion of an unexplored aspect of the pandemic:  the effects of SARS-CoV-2 on threatened species, particularly those under human care to prevent their extinction (an irony consistent with the zeitgeist of 2020).  Forty percent of the species scoring in the researchers' very high, high, and medium categories are also either vulnerable, endangered, or critically endangered list established by the International Union of Conservation of Nature (IUCN) Red List of Threatened Species; another five species are threatened and two are extinct in the wild.  These data suggest to these researchers that it would be prudent to enforce  guidelines to minimize potential human-animal transmission for these species; fortunately such guidelines have been established previously by such groups as the North American Association of Zoos and Aquariums, the American Association of Zoo Veterinarians, and the European Association of Zoo and Wildlife Veterinarians.

    While the social, economic, and political consequences of the SARS-CoV-2 pandemic continue to evolve, some comfort (perhaps) can be had in realizing that one consequence is an intense focus on solving the biological questions the infection has raised, with the hope that the results obtained with be beneficial in countering the effects of the virus on humanity.

    * The Genome Center, University of California, Davis; School of Biology and Environmental Science, University College Dublin; Graduate Program in Pharmaceutical Sciences and Pharmacogenomics, Quantitative Biosciences Consortium, University of California, San Francisco ; Gladstone Institute of Data Science and Biotechnology, San Francisco; Cancer Program, Broad Institute of MIT and Harvard; Genetic Perturbation Platform, Broad Institute of MIT and Harvard; Max Planck Institute of Molecular Cell Biology and Genetics, Dresden; Max Planck Institute for the Physics of Complex Systems, Dresden; Center for Systems Biology Dresden; Center for Species Survival, Smithsonian Conservation Biology Institute, National Zoological Park; Department of Computational Biology, School of Computer Science, Carnegie Mellon University; Department of Ecology, Tibetan Centre for Ecology and Conservation, Hubei Key Laboratory of Cell Homeostasis, College of Life Sciences, Wuhan University,; College of Science, Tibet University, Lhasa; Department of Epidemiology & Biostatistics, Institute for Computational Health Sciences, and Institute for Human Genetics, University of California, San Francisco; Chan Zuckerberg Biohub, San Francisco; San Diego Zoo Institute for Conservation Research; Department of Evolution, Behavior, and Ecology, Division of Biology, University of California San Diego; Department of Restorative Dentistry and Biomaterials Sciences, Harvard School of Dental Medicine; School of Dental Medicine, Case Western Reserve University; Marine Mammal Program, Department of Vertebrate Zoology, Smithsonian Institution; Science for Life Laboratory, Department of Medical Biochemistry and Microbiology, Uppsala University; Bioinformatics and Integrative Biology, University of Massachusetts Medical School; Program in Molecular Medicine, University of Massachusetts Medical School; and John Muir Institute for the Environment, University of California, Davis.