Be it fair use in copyright, government liability in patent cases, ethics or substantive patent law issues, a number of pending cases for the second half of 2022 address important aspects of intellectual property law, say Cadwalader's Dorothy R. Auth and Howard Wizenfeld. They spotlight cases involving Andy Warhol art and Moderna's Covid-19 vaccine, among others.
As we reach the mid-point of 2022, practitioners are eagerly watching the court dockets for several high-impact cases related to intellectual property issues likely to be decided in the second half of 2022.
These decisions are expected to provide guidance in several areas of IP law, including fair use of copyrights, government contractor defenses, patent-eligible inventions, and the enablement requirement. Below is a thumbnail sketch of the current cases to watch and issues to consider.
Judges and Artistic Interpretation
What does it mean to "transform" an original work enough such that one may invoke the fair use doctrine as a defense to a copyright infringement claim? The US Supreme Court recently granted review of a decision from the US Court of Appeals for the Second Circuit in Andy Warhol Foundation for the Visual Arts Inc. v. Goldsmith that could provide definitive guidance to this question.
In his "Prince Series" artwork, Andy Warhol doctored celebrity photographer Lynn Goldsmith's copyrighted photograph of Prince multiple times—all without requesting permission for its use. Goldsmith sued for copyright infringement but lost in district court, where the artwork was found to be "transformative" because it freshly portrayed Prince as an "iconic, larger-than-life figure" compared to the original work's depiction of Prince as "vulnerable."
The Second Circuit reversed, however, ruling that the judge should not have assumed the "role of art critic" by trying "to ascertain the intent behind or meaning" of the artwork. The Andy Warhol Foundation (AWF) petitioned for certiorari. Lynn Goldsmith challenged the appeal by asserting that the Second Circuit applied the correct standard, i.e., transformativeness requires examining both the meaning and purpose of a work. In AWF's most recent briefing, it argued the Second Circuit's decision deviates from Supreme Court precedent, which otherwise permits establishing transformativeness by exclusively assessing whether a new work provides a novel meaning.
In this much anticipated decision, the Supreme Court may address this alleged inconsistency and rule on whether a court is allowed to consider solely the meaning of and intent behind the work in order to establish its transformativeness.
Moderna: Government Contractor Against Covid
Moderna's Covid-19 vaccine isn't the only innovation the company has propounded in recent times. In a filing at the US District Court for the District of Delaware, Moderna has put forth a novel defense theory in responding to patent infringement claims brought by Arbutus Biopharma and Genevant Sciences.
Moderna moved to dismiss the complaint on the novel theory that its infringement allegations are directed to the wrong party; the appropriate party to sue is the US.
Moderna's defense applies a little-used federal statute requiring patent owners to seek redress "against the United States" for patent infringement by a government contractor, 28 U.S. Code § 1498. Nearly a century ago, this provision was added to specifically prevent patent infringement suits from interfering with a contractor's ability to supply war materials to the government.
Moderna invoked the Covid-19 pandemic as a situation precisely within the spirit of the protections of Section 1498 because the country is at war—against Covid. Because the US government conscripted Moderna into the "war" effort against Covid, Moderna believes its status as a government contractor inoculates it against patent infringement lawsuits, like this one.
This case may set precedent for others who assisted the government in the Covid response.
Amgen's Antibodies at Issue
A longstanding patent infringement dispute between Amgen and Sanofi may finally be resolved if the Supreme Court grants certiorari to address the enablement standard for patents.
The case arises from Amgen's breakthrough patents to antibodies that dramatically lower cholesterol and Sanofi's alleged patent infringement. The patents are directed to a genus of antibodies defined by a function—specifically, the capacity of the antibodies to bind the naturally-occurring PCSK9 antigen, which inhibits the body's ability to remove cholesterol.
The issue is whether the specification provides enough information to teach the skilled person how to "make and use" these claimed functions without undue experimentation. Despite the inclusion of 26 structural examples, the Federal Circuit held the specification did not sufficiently describe the functions of these structures, thus raising the question of whether undue experimentation was required to practice the claims.
OpenSky—Where Are the Ethics?
"I determine that Director review of [the Patent Trial and Appeal] Board's Institution Decision is appropriate because this case raises novel issues of law and policy." With these words, Katherine Vidal, the new director of the U.S. Patent and Trademark Office, stunningly self-authorized for the first time a sua sponte review of a PTAB decision to institute an inter partesreview (IPR).
In 2021, VLSI Technology LLC (VLSI) was awarded $2.18 billion in a patent infringement lawsuit filed against Intel Corp. But almost immediately thereafter, two newly- (and curiously-) created entities, OpenSky Industries LLC and Patent Quality Assurance LLC popped up and filed IPRs challenging the validity of these same patents.
One of OpenSky's attorneys, Christopher Ivey, wrote an email to opposing counsel which may implicate him in a reverse patent trolling scheme in which he offered to throw the case by not paying OpenSky's own expert in the IPR if VLSI paid OpenSky a sum of money, thereby forcing OpenSky to "admit defeat."
This unique fact pattern presents novel issues of law and policy, potentially exposing how some IPR petitions are but thinly-veiled attempts to extort money from patent holders (sometimes called reverse patent trolling). While Vidal has the power to review final agency decisions per the Supreme Court's Arthrex v. Smith & Nephew decision, it is not clear she has the power to review a PTAB's decision to initiate an IPR. This case is worth watching to see whether she may have tread beyond her authority.
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