This week in Other Barks & Bites: OpenAI explains its defensive patent strategy in a short blog post; GlaxoSmithKline sues Moderna for patent infringement related to the COVID-19 vaccine; and patent offices from the European Union, Japan, and the United States meet to discuss collaborative strategies for sustainable innovation.

Bites

Biotech Startup Wins Injunction in Trade Secret Case

On Thursday, October 17, Trilobio, Inc. won an injunction against its former employee, Keoni Gandall and his company, Nanala, LLC, in the U.S. District Court for the Northern District of California. According to the decision, Trilobio alleged that “Gandall accessed Trilobio’s most sensitive documents and data—including data he was unauthorized to access, like CEO Roya Amini-Naieni’s work email account and Google Drive,” after he was terminated, and subsequently formed Nanala. Although the judge denied Trilobio’s request for “full disk forensic imaging” of all of Gandall’s personal accounts and electronic devices, it granted a temporary restraining order and expedited discovery.

Microsoft Files Opposition to Startup’s Lawsuit Accusing Big Tech Firms of Suppressing Patent Licensing Fees

On Wednesday, October 16, Microsoft filed an opposition to startup company Xocket’s patent infringement lawsuit that accused Microsoft and Nvidia of setting up an illegal buyers’ cartel to deflate the price to license semiconductor patents. Microsoft asked the court to dismiss the lawsuit because it “fails at the threshold because of   its complete failure to demonstrate any threat of irreparable harm or any hope of showing a likelihood of success on the merits.” Importantly, Microsoft asserts that Xockets does not produce any products that are similar to those that the buyers sought to license. 

GlaxoSmithKline Sues Moderna for Patent Infringement Related to COVID and RSV Vaccines

On Tuesday, October 15, GlaxoSmithKline sued Moderna for patent infringement accusing its competitor’s COVID-19 vaccine Spikevax and RSV vaccine mRESVIA of infringing on its mRNA patents. GlaxoSmithKline asked the Delaware court for damages related to the “manufacture, use, sale, marketing, offer for sale, and/or importation” of the two vaccines. The British firm has recently filed similar lawsuits against Pfizer and BioNTech. On Wednesday, October 16, Moderna was also sued by Northwestern University for infringement related to the Spikevax vaccine.

Court Denies Defendant’s Request in Gilead Anticounterfeiting Case

On Saturday, October 12, a New York district court denied a request to stay discovery from a defendant accused of counterfeiting Gilead Science’s HIV medication. The defendant Irina Polvanova asked the court to stay discovery until sentencing in a concurrent court is complete. Polvanova allegedly “supervised, ratified, and/or personally participated in the trafficking of counterfeit Gilead medications.”

Open AI Outlines Defensive Approach to Exercising Its Patent Rights

On Friday, October 11, OpenAI published a short blog post titled “Our Approach to Patents” that outlines the company’s purported defensive approach to patent rights. The short post ends with “we pledge to only use our patents defensively, so long as a party does not threaten or assert a claim, initiate a proceeding, help someone else in such activities against us, or engage in activities that harm us or our users”. OpenAI began as a non-profit in 2015 but has since transitioned to a for-profit model and is owned 49% by Microsoft.

Barks

National Inventors Hall of Fame Awards Announced

Four student teams have won the National Inventors Hall of Fame’s 2024 Collegiate Inventors Competition®, with the first place Undergraduate award going to an invention by a team from the University of Wisconsin–Madison called the Nerve Ninja, “a solution for safer surgeries,” and first place Graduate award to an invention titled Nutrient-Stabilizing Materials from the Massachusetts Institute of Technology. The two runners up teams hailed from Johns Hopkins University and the University of Illinois Urbana-Champaign. According to the press release, the competition was established in 1990 by the National Inventors Hall of Fame and is sponsored by the USPTO.

EU Court Rules Third-Party Modding of Video Games Does Not Break Copyright Law

On Thursday, October 17, the European Court of Justice ruled that a third-party company that allowed video game players extra in-game options did not break EU copyright law. The ruling on third-party mods of video games potentially opens the door for the multimillion-dollar industry to grow. According to the report by Lawyers Week, “the directive protects only the intellectual creation as it is reflected in the text of the computer program’s source code and object code. On the other hand, the directive does not protect the functionalities of the program or the elements by means of which users make use of such functionalities, unless they allow that program to be reproduced or subsequent[ly] created.”

Biofuel Company Awarded Over $600 Million in Damages in Trade Secrets Case Against Phillips 66

On Wednesday, October 16, a California jury awarded biofuel company Propel Fuels $604.9 million in damages as a result of its trade secrets misappropriation case against Phillips 66. The jury found that the Phillips 66 renewable fuels business had been developed from trade secrets obtained from Propel Fuels. “Propel did what many innovators cannot do—it stood up to a much larger adversary and persevered through a long process to vindicate its rights,” said Michael Ng of the global disputes and investigations firm Kobre & Kim, lead counsel for Propel.

Court Rules Cuban Company Cannot File Trademark Infringement Lawsuit Due to Embargo

On Tuesday, October 15, a U.S. district court ruled that the U.S. trade embargo against Cuba prevents a Cuban company from filing a lawsuit for trademark infringement in the United States. Cubaexport, the company that sells Havana Club alongside a French company, has been attempting to file a lawsuit against Bacardi for trademark infringement. The dispute stems from the Cuban Revolution when Bacardi was ousted from the island nation.

Patent Offices from U.S., EU, and Japan Meet to Discuss Sustainable Innovation

On Monday, October 14, the Trilateral Offices, the patent offices representing the European Union, Japan, and the United States, met in Tokyo for the 42nd annual Trilateral Conference. The offices focused on how they can collaborate to meet the United Nations’ Sustainable Development Goal (SDG) 9: “Build resilient infrastructure, promote sustainable industrialization and foster innovation.” European Patent Office President António Campinos said, “to tackle today’s challenges, we need to leverage the full potential of every technology at our disposal. Harnessing the power of invention means empowering every idea to reach the market — because a sustainable future is within reach when all inventors, from every corner, can shape it.”

This Week on Wall Street

FTC Finalizes Click-to-Cancel Rule

On Wednesday, October 16, the Federal Trade Commission (FTC) announced its final “click-to-cancel” rule that would require subscription sellers to make it as easy to cancel as it was to sign up for their services. The rule will go into effect in 180 days. “Too often, businesses make people jump through endless hoops just to cancel a subscription,” said Commission Chair Lina M. Khan. “The FTC’s rule will end these tricks and traps, saving Americans time and money. Nobody should be stuck paying for a service they no longer want.” 

EV Chipmaker Wolfspeed Set to Receive $750 Million from CHIPS Act

On Tuesday, October 15, electric vehicle chipmaker Wolfspeed and the Department of Commerce announced the North Carolina company will receive $750 million in in CHIPS and Science Act funding. At the same time, Wolfspeed also announced that it will receive an additional $750 million of funding from private equity firms. Wolfspeed CEO, Gregg Lowe, said, “to reach this milestone under the U.S. CHIPS and Science Act is an incredible achievement in Wolfspeed’s long-term growth strategy, and we believe today’s announcement is a testament to the market-leading quality of Wolfspeed products and significance of Wolfspeed to broader U.S. economic and national security interests.”

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2023 are announcing quarterly earnings next week (2023 rank in parentheses):

• Monday: SAP SE (83)
• Tuesday: Alphabet (8), RTX (13), Texas Instruments (34), General Motors (45), Verizon (75), 3M Company (104), Danaher Corporation (175)
• Wednesday: IBM (3), Boeing (47), T-Mobile (58), AT&T (72), Boston Scientific (96), Thermo Fischer Scientific (169), ServiceNow (261)
• Thursday: Amazon (18), Honeywell (44), Mastercard (144)
• Friday: Sanofi (215)