IP Blog

Latest firm news

Russia Authorizes Infringement of Patents Owned by Holders Associated with “Unfriendly” Countries

Earlier this month in Moscow, Russia’s Chairman of Government Mishustin released a decree effectively allowing patent infringement within the country. The decree amends Russia’s method for determining the amount of compensation paid to a patent owner in the case of infringement. Of course, this news comes in the wake of President Vladimir Putin’s invasion of Ukraine in late February, for which the international community has imposed heavy sanctions on Russia.

Specifically, the decree revises Russian intellectual property law so that, if patent holders are “associated with foreign states who commit unfriendly actions against Russian legal entities and individuals” then “the amount of compensation is 0 percent of the actual proceeds” gained by infringers. In the words of the Russian government, an infringer enabled by this amendment is a “person who exercised the right to use an invention, utility model or industrial design without the consent of the patent owner . . . .” Patent holders may fall within this unprotected class if they are a citizen of an “unfriendly” state, or if such a state is their place of registration, primary business activity, or primary profit from business activity. The list of “unfriendly” countries includes the United States, Canada, the United Kingdom, Japan, South Korea, Australia, all European Union member countries, and, of course, Ukraine.

Patent Infringement in the COVID-19 Pandemic: mRNA Vaccines Take Center Stage

On February 28, 2022, Arbutus Biopharma Corporation and Genevant Sciences GmbH (collectively the “Plaintiffs”) sued Moderna, Inc. and ModernaTX, Inc. (collectively “Moderna”) in the U.S. District Court for the District of Delaware, alleging Moderna had infringed upon six of Plaintiffs’ issued patents in the creation of its COVID-19 mRNA vaccine. This suit marks the first major patent infringement action in the now-rapidly developing landscape of mRNA vaccines.

In its complaint, Plaintiffs alleged, inter alia, that Moderna was able to produce its mRNA vaccine for COVID-19 in “record speed” because it unlawfully used the technologies in U.S. Patent Nos. 8,058,069, 8,492,359, 8,822,668,  9,364,435, 9,504,651, and 11,141,378, which are collectively directed to a lipid nanoparticle (“LNP”) delivery platform that aids in the uptake of specific mRNA sequences into human cells (and without which the uptake of such sequences and eventual production of important proteins would be stymied by the human immune system). Furthermore, the complaint alleges that Moderna was “well aware” of Plaintiffs’ issued patents, as it had “licensed them for other product programs . . . but chose not to do so for its COVID-19 vaccine,” and unsuccessfully “attempted to invalidate several of [Plaintiffs’] patents” through inter partes review (IPR) proceedings.

Plaintiffs did not seek a preliminary injunction—as they claimed they did not want to “impede the sale or manufacture of Moderna’s life-saving vaccine”—but rather only requested damages, stating that “[a]ll Plaintiffs seek is the compensation due to them under the patent laws of the United States and as a matter of simple fairness.” If Plaintiffs prove to be successful in their suit, the resulting damages could total in the tens of billions of dollars.

This case is Arbutus Biopharma Corp. et al. v. Moderna, Inc. et al., Case No. 1:22-cv-00252. The complaint can be found at the following link: https://fingfx.thomsonreuters.com/gfx/legaldocs/zgpomzkbzpd/IP%20MODERNA%20PATENTS%20complaint.pdf

New USPTO Director Nominated

Yesterday, Kathi Vidal was officially nominated by the President as the next Under Secretary for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO). Vidal currently practices in Silicon Valley and has extensive patent litigation experience. If her nomination is confirmed by the Senate, Vidal will only be the third woman to lead the USPTO. Vidal’s nomination comes noticeably later than those made by other recent U.S. Presidents, and Commissioner for Patents Drew Hirshfeld has been performing the Director’s duties on a temporary basis since former Director Andrei Iancu’s resignation in January 2021. However, the Senate is not expected to vote for at least a few months on whether to confirm Vidal.


New rules concerning ex parte patent appeals are set to take effect Dec. 10, 2008.  In response to their publication in June 2008, many in the field are characterizing them as making the process more costly and cumbersome, while proponents claim they provide much needed standardization to the process.  (Article Here)


Microsoft was recently awarded U.S. Patent  7,415,666 for a Method and System for navigating paginated content in page-based increments which has some up in arms at the notion that Microsoft could patent ‘Page-Up’ and ‘Page-Down’  keystrokes. (link)  However, as you consider the outrage, remember that patents are much more than what is set forth in their titles and abstracts, and a true understanding of what is covered can only result from ‘paging down’ through the text of the patent to the claims.  They are the starting point for revealing the true scope of a patent, which in most cases is much more nuanced than what may originally be thought. 


Earlier this year, Gibson Guitar Corp. became involved in litigation related to the enforcement of its patents against the makers and retailers of the GUITAR HERO video game.   With the emergence of the GUITAR HERO video game into the popular culture, the results of this litigation could have interesting consequences.  Here is one of the first news articles on this topic:   www.msnbc.msn.com/id/23732204/


The Supreme Court of the United States has decided to review the federal appellate court decision of In re Bilski, a seminal decision concerning method patents, in which the Court of Appeals for the Federal Circuit proposed a “machine-or-transformation” test for determining whether a process or method was capable of being patented. 

The Supreme Court’s docket reveals that the “Questions Presented” for this appeal (as framed by the party seeking review, in this case the patent applicant), are the following:

Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.”  35 U.S.C. § 273.

John Fulton, Jr.  contributed to this blog entry.


As noted below, On October 30, 2009, the United States Court of Appeals for the Federal Circuit rejected a business-method patent on the basis of the machine-or-transformation test (opinion). The widely varying dissents of the en banc decision suggest much contradiction among the respective justices, from comments indicating that either the majority goes too far or not far enough in restricting the use of these patents. Meritorious arguments submitted by amicus also advocate a multitude of policy considerations. On June 1st, the Supreme Court grantedcertiorari to review the decision, perhaps in response to the extent of the important implications that this case entails.

Those seeking to expand business-method patents cite economics as a “useful art” and explain that these patents encourage innovation and produce tangible results. Conversely, opponents indicate that the patents curtail the free-flow of information and claim abstract ideas, both contrary to the goals of patent protection. Certainly, the Court will seek to balance the interests of both inventors and the public, which benefits from the increased societal knowledge that patents provide. But, as of now, the Court of Appeals’ decision seemingly puts the property rights of many business-method patent-holders in jeopardy with both the legal and business worlds taking note and this being heralded by some as “The most important patent case in 50 years” (link). 

Sebastian Ohanian Contributed to this Entry.


In April of 2009, a federal jury in the District of Rhode Island determined that Microsoft Corp. had infringed U.S. Patent Number 5,490,216 (the ‘216 patent). Accordingly, the jury found that Microsoft owed $388 Million in damages to Uniloc USA, Inc. and Uniloc Singapore Private Limited, who held rights in the ‘216 patent.  For a general article on this case, click here.

Given that an asserted patent such as the‘216 patent can be subject to a wide variety of attacks during litigation, when such patents survive litigation and are found to be infringed, they may point to good examples of claim drafting — especially when enormously large amounts of damages were at stake. 


Many titles were bestowed upon Michael Jackson during his lifetime, but one not commonly associated with him was “inventor”.  

But indeed, The King of Pop is listed as a co-inventor of United States Patent Number 5,255,452, entitled “METHOD AND MEANS FOR CREATING ANTI-GRAVITY ILLUSION”, and covering shoes of the type worn while performing dance routines in his hit single “Smooth Criminal”, where he famously incorporated a 45-degree lean in the choreography.


read more…