Will a years-long patent dispute prevent the development and release of a potential COVID-19 vaccine?

Moderna has been among multiple companies that have been quickly developing a potential vaccine for COVID-19. In mid-July, the biotechnology company announced that initial trials for the vaccine had found no serious side effects in human volunteers. The vaccine, known as mRNA-1273, is a novel lipid nanoparticle encapsulated mRNA that encodes for a full length, prefusion, stabilized spike protein of SARS-CoV-2. Essentially, the lipid nanoparticle carries the mRNA that encodes for whatever antigen that it is delivering (in this case, the antigen for COVID-19). Other vaccines, on the other hand, use a weakened or hollowed-out virus to act as a vector to transport the antigen payload into the body.

Moderna did not create the lipid nanoparticle technology but instead licensed it from a small company, Acuitas. However, Acuitas did not own the technology but, in turn, had licensed it from Arbutus Biopharma. The Arbutus license terminated in 2016, causing Acuitas to file a lawsuit against it. Arbutus then countersued arguing its deal with Acuitas did not cover Acuitas’ rights to license the technology to third parties, including Moderna. Acuitas and Arbutus settled out of court but the settlement terminated Acuitas’ right to use or sublicense the lipid nanoparticle technology going forward. Moderna has no other rights to Arbutus’ broad suite of lipid nanoparticle technology.

Last year, Moderna successfully overturned one legacy patent held by Arbutus and invalidated the broadest claim of another. In the most recent challenge, which is the third in a series of cases brought by Moderna against Arbutus, Moderna attempted to invalidate United States Patent No. 8,058,069, which describes “lipid formulations or nucleic acid delivery.” Specifically, Moderna filed a petition for inter partes review of the patent. Inter partes review is a trial proceeding conducted at the United States Patent and Trademark Office Patent Trial and Appeal Board to review the patentability of one or more claims in a patent on the grounds of novelty or obviousness.

The crux of Moderna’s position was that the ‘069 patent described obvious, non-novel concepts and therefore, was not worthy of patent protection. To support this position, Modern relied upon the testimony of an expert who contended that a person of ordinary skill in the art for the ‘069 patent would have specific experience with lipid particle formulation and use in the context of delivering therapeutic nucleic acid payloads and further contended that the ‘069 patent was obvious and not novel. Modern also supplied previous international patent applications and publications that support this viewpoint.

For a patent claim to be anticipated, that is, not novel, each claim element must be disclosed in a single prior art reference and the claimed combination of those elements must also be disclosed in that same reference. Prior art comprises any and all information that has been made available to the public in any form prior to the filing date of a patent. A patent claim is obvious when the differences between the claimed subject matter and the prior art as such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art to which the subject matter pertains.

Ultimately, the Patent Trial and Appeal Board ruled against Moderna in determining that Moderna had not demonstrated that all of the claims of the ‘069 patent were unpatentable as obvious or anticipated. In particular, the Board found that the teachings of the patent application and publications did not anticipate or otherwise render obvious a nucleic acid-lipid particle containing each of the recited lipid components within the claimed ranges. While the Board’s decision was final, any party to the proceeding may seek judicial review thereof.

Modern publicly claims the recent ruling will not affect its continued development of the vaccine. In particular, the company contends that its proprietary lipid nanoparticle  technology and process have advanced well beyond the technology described in the Arbutus patents and is therefore, not covered by these patents. This is a similar sentiment to what Moderna’s chief executive officer stated in 2016 Forbes article. At that time, the CEO downplayed its loss of its Acuitas license in asserting that the licensed technology “was just okay” and that Moderna’s own method of creating nanoparticle lipids was better than the Acuitas version. Recently, Moderna has further stated that it is unaware of any other significant intellectual property impediments for any products it intends to commercialize, including mRNA-1273.

Will Tiffany & Co. be required to pay a Thai jewelry company damages resulting from a 2016 pink sapphire and diamond bracelet that allegedly infringes the company’s utility patent for a “Color Changing Multiple Stone Setting”?

A lawsuit was recently filed in the United States District Court for the Southern District of New York against Tiffany & Co. for patent infringement. The complaint, filed by Jacob’s Jewelry Co. Ltd. cites its utility patent, United States Patent No. 9,609,923, for a “Color Changing Multiple Stone Setting.” At issue is a nearly $1 million pink sapphire and diamond bracelet from Tiffany & Co.’s 2016 Masterpieces Collection. While Jacob’s Jewelry claims to have been making and marketing color changing jewelry since several years prior to the issuance of its patent, the jewelry products covered by the patent allegedly “have proved to be commercially successful and valuable to Jacob’s.”

The patent asserted by Jacob’s Jewelry was filed on January 25, 2011 and granted on April 4, 2017. In the background, the applicant explains that jewelry is often created so as to enhance the appearance of individual gems contained therein. For instance, complementary stones are often mounted relative to a center stone so as to reflect or refract light in a manner that enhances the natural beauty of the center stone. Another means of accomplishing jewelry with an enhanced appearance is by way of color changing jewelry. Such pieces comprise stones that exhibit a color change when viewed in different lighting conditions, such as incandescent light, fluorescent light, sunny outdoors, cloudy outdoors, or shady outdoors. Moreover, certain stones are used to accomplish this, including alexandrite, iolite, sapphire, and garnet. Alternatively, some jewelry makers apply a coating to gems which changes color depending on the viewing angle of the observer.

In its most basic form, the patent asserted by Jacob’s Jewelry comprises three color-changing surfaces, including a first stone, a second stone, and a third stone, each set on a different plane and perpendicular to one another. The stones may be set on a base formed of a single piece or that which is formed by joining several separate pieces. Each of the first, second, and third stones face outward (presumably so as to be visible to an observer and the wearer) and change to different colors as the viewing angle changes. Further, the stones are capable of two- or three-color changes.

Utility patents protect the functional aspects of an invention and are the most common type of patent applications. Utility patents provide broad protection for multiple different variations of a product. On the other hand, design patents cover only the ornamental design of a patent. However, design patents are less expensive than utility patents and often receive protection more quickly than do utility patents. That being said, design patents can be relatively easy to design around so as to avoid infringement. In this manner, different variations of a product are typically not protected by a design patent.

Patent infringement occurs when one makes, uses, offers to sell, or sells something that contains every element of a patented claim or its equivalent while the patent is in effect. Patent infringement is willful when the complained of conduct is done deliberately and intentionally and with knowledge of the patent. If found liable for willful patent infringement, a defendant may be held liable for up to three times the amount of damages. Jacob’s Jewelry alleges Tiffany & Co. not only infringes its patent but does so willfully and deliberately. In particular, Jacob’s previously contacted Tiffany & Co. regarding the alleged infringement. According to Jacob’s, Tiffany & Co. “has not denied the [bracelet] do not infringe on the [] Patent.” Further, because Tiffany & Co. has been made aware of these accusations but has “taken no action to cease their knowing infringement,” its actions are intentional.

In the complaint, Jacob’s Jewelry seeks not only a judgment of infringement by Tiffany & Co., but also that such alleged acts of infringement be held willful and deliberate. The plaintiff also desires Tiffany & Co. to be enjoined from further infringement of the patent, which should not be problematic (should Jacob’s prevail) since the complained-of piece was from Tiffany & Co.’s 2016 collection. Jacob’s further seeks attorney’s fees, costs, and damages in the form of a reasonable royalty. Reasonable royalty is calculated as the royalty that Tiffany & Co. would have agreed to pay had there been no infringement suit but instead, a prior agreement between the parties. While no answer has been filed by Tiffany & Co. yet, according to the complaint, the 182-year old jewelry brand’s position is that the patent at issue is invalid in light of the Cartier Tourmaline brooch dating back to the 1940’s.

Are Internet domain names capable of being trademarked?

Booking.com maintains a travel reservation website under the same name. Beginning in 2012, the company filed four applications to register the mark “Booking.com” in standard character as well as in stylized forms. The United States Patent and Trademark Office (USPTO) examining attorney assigned to the travel reservation company’s applications concluded that the term “Booking.com” is generic for the services at issue and is therefore unregistrable. In particular, the USPTO Trademark Trial and Appeal Board (TTAB) noted that “booking” means “making travel reservations” and “.com” signifies a commercial website. In this manner, “Booking.com” is understood by consumers as referring to “an online reservation service for travel, tours, and lodgings,” which are the precise services offered by the applicant. The TTAB further observed that even if “Booking.com” is descriptive, instead of generic, it lacks secondary meaning and therefore, remains unregistrable.

Following the USPTO’s denial of registration, Booking.com sought review in the United States District Court for the Eastern District of Virginia. In so doing, Booking.com presented new evidence of the relevant consumer perception of its mark. As a result, the District Court held that, unlike just “booking,” “Booking.com” is not generic but instead, descriptive. Further, the District Court concluded that “Booking.com” had acquired secondary meaning as to online hotel reservation services. The USPTO appealed the District Court’s conclusion but the Court of Appeals for the Fourth Circuit affirmed the decision and rejected the USPTO’s assertion that the combination of a generic term with “.com” is necessarily generic.

Trademarks distinguish one producer’s goods or services from those of another and thereby allow consumers to distinguish among competing producers. To be registrable on the principal register, a mark must be capable of serving this distinguishing function. Trademarks fall within five categories: fanciful, arbitrary, suggestive, descriptive, or generic. Fanciful, arbitrary, and suggestive marks are capable of registration because they are considered “inherently distinctive.”

On the other hand, descriptive marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services offered under the mark. Descriptive marks are not eligible for registration on the principal register absent a showing of secondary meaning. Secondary meaning means that a descriptive mark has achieved significance in the minds of the public as identifying the particular applicant’s goods or services.

A generic mark is the name of the product or service itself and by its nature, is incapable of distinguishing one producer’s goods or services from those of others. As such, ordinarily, generic marks are not eligible for protection as trademarks nor for federal trademark registration. Overall, however, eligibility for trademark registration turns on the mark’s ability to distinguish goods and services in commerce. Moreover, for compound terms, the inquiry is based on the term’s meaning as a whole and not its parts in isolation. The ultimate inquiry is the consumer’s perception of the mark, that is, the primary significance of the mark  to the relevant public.

In insisting that Booking.com’s proposed mark was generic, the USPTO’s position was that “Booking.com” or any generic.com mark is ineligible for registration regardless of consumers’ perception thereof. The USPTO cited the oft-repeated principle that regardless of the amount of resources devoted to promoting merchandise under a generic term, competitors cannot be deprived of the right to call an article by its name. For instance, the USPTO compared the present situation to that in which “company” may be added as a suffix to an otherwise generic term. In such instance, a generic designation of an association, partnership, or other entity does not confer trademark eligibility.

The Supreme Court rejected the USPTO’s comprehensive rule, finding that it not only contravenes the USPTO’s past practice, it also disregards consumer perception. The Court determined that a term styled “generic.com” is generic for a particular class of goods or services only if the term has that meaning to consumers. Differently, in this case, consumers do not perceive the term “Booking.com” to indicate only online hotel reservation services but instead, recognize that this domain is associated with a specific entity.

Can Los Angeles-based Japanese restaurant “The Hand Roll Bar Experience” be held liable to Sushi Nozawa Group for trademark infringement?

            Sushi Nozawa Group filed a lawsuit in the United States District Court for the Central District of California against The Hand Roll Bar Experience, or HRB, alleging trademark infringement and unfair competition. The owners of Sushi Nozawa Group operate Sugarfish, Nozawa Bar, and KazuNori, which uses the slogan “The Original Hand Roll Bar.” The group alleges that Downtown Los Angeles Japanese hand roll bar is liable for infringing their trademark in this phrase.

            Sushi Nozawa was founded by its namesake chef Kazunori Nozawa. KazuNori creates specially crafted sushi hand rolls and deems itself the first of its kind in the United States. Sushi Nozawa currently owns standard character registration for “The Original Hand Roll Bar” and a design mark registration for “The Original Hand Roll Bar Founded 2014 Los Angeles” as applied to “restaurant services.” Both marks were applied for in 2015 but Sushi Nozawa claims to have first used both marks in 2014.

            The Hand Roll Bar Experience has advertised a similar “hand roll bar” and plans to operate two Los Angeles restaurants specializing in the same. In February 2019, HRB filed a trademark application for “HRB” as applied to “restaurant services featuring hand rolls.” This application remains an intent to use application, meaning that the applicant has yet to use the mark in commerce in connection with the applied-for services. However, the application received no rejections from the trademark examining attorney and published for opposition a few months after filing.

            Within the United States Patent and Trademark Office, there exist two separate trademark registers, the Principal and the Supplemental. Most commonly, when new trademark applications are approved, they issue to the Principal Register. Under certain circumstances, trademark applications may instead issue to the Supplemental Register. For instance, descriptive marks, that is, marks which merely describe an ingredient, quality, characteristic, function, feature, purpose, or use of a product or service offered under the mark, must go on the Supplemental Register.

            The Principal Register provides a presumption of validity of a trademark as well as protection for distinctive marks. Distinctive marks are those which, by their nature, serve a source-identifying function. In this manner, marks on the Principal Register enjoy a presumption of ownership, in addition to constructive notice to junior users. On the other hand, the Supplemental Register provides protection for nondistinctive marks but no presumption of validity. A Supplemental Register trademark owner is therefore required to prove the validity of its mark. Similarly, there is no presumption of ownership nor constructive notice for marks on the Supplemental Register.

            Notably, both of Sushi Nozawa’s registrations exist on the Supplemental Register. During prosecution of these trademark applications, the trademark examining attorney refused registration on the Principal Register asserting that the applied-for marks merely describe various characteristics and the nature of the applicant’s services, namely, restaurant services. The examining attorney claimed that “Hand Roll” indicates one of the items featured at the applicant’s restaurant, as demonstrated by a specimen submitted by Sushi Nozawa. In addition, “Bar” is defined as “a small place that serves a particular type of food” and, therefore, indicates the nature of the applicant’s restaurant. Moreover, “original” is merely a laudatory term that, by itself, describes that the goods or services being offered are the first of their kind.

            More recently, in November 2019, Sushi Nozawa filed new trademark applications for “The Original Hand Roll Bar” and “The Original Hand Roll Bar Founded 2014 Los Angeles” seeking registration on the Principal Register. In so doing, the restaurant group alleged that both marks had acquired distinctiveness based on its continuous use of the marks for five years. Acquired distinctiveness means that the mark has gained secondary meaning in the minds of consumers in that the mark has come to identify not only the goods or services, but also the source of those goods or services.

            In response, the trademark examiner disagreed with the applicant’s assertion of acquired distinctiveness and noted that to support its claim, Sushi Nozawa must submit additional evidence such as advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies which link the mark to its source. While Sushi Nozawa responded by submitting more than one hundred pages evidencing its extensive use of the mark, the examining attorney nonetheless maintained its rejection and required the group to disclaim “Hand Roll Bar” asserting that this portion of the mark is unregistrable. As such, Sushi Nozawa agreed to this amendment.

            After Sushi Nozawa filed its complaint, HRB moved to dismiss the claims asserting that HRB’s use of any protected marks creates no likelihood of confusion or, alternatively, qualifies as fair use. At the pleading stage of litigation, a plaintiff fails to sufficiently allege likelihood of confusion when the marks are clearly dissimilar or the channels in which the marks are used are completely unrelated. The court noted certain differentiating characteristics between the disputed marks but that both marks prominently use “hand roll bar” in the same channels of trade and geographic location. As a result, the court determined that confusion may exist amongst consumers who enjoy hand roll sushi. Further, the court agreed with Sushi Nozawa that the fair use defense is not available at the pleading stage of litigation.

            The co-founder of Sushi Nozawa Group, Jerry Greenberg, publicly stated that it created the concept of a sushi restaurant dedicated to hand rolls in the United States. Greenberg also stated that HRB has copied KazuNori rather than using an original idea. Moreover, Sushi Nozawa Group claims to have reached out to HRB prior to its opening to resolve the issue and the two companies purportedly reached an agreement that would not require litigation. However, according to Greenberg, HRB did not follow through on commitments made.

            Also publicly, the HRB team released a statement that the case is “a classic example of a deep pocket business attempting to crush a newcomer in the industry because it is afraid of legitimate competition.” Further, the newcomer officially stated that it has not infringed any of Sushi Nozawa’s trademarks and that it is confident it will prevail on the merits. In this manner, HRB points to the fact that Sushi Nozawa’s registrations are not on the Principal Register and that it was required to disclaim “Hand Roll Bar” in its marks.