New England IP Blog

Covering intellectual property developments in New England, and other developments that impact New England companies.

Edible Arrangements’ Trademark Case Bears Fruit

edibles-3In a recent decision, Judge Vanessa L. Bryant shed some light on a significant new issue: trademark infringement in the world of internet keyword advertising. In a case with important implications for online marketing strategies, Judge Bryant denied Provide Commerce’s request for partial summary judgment against trademark owner Edible Arrangements, which had filed a suit for trademark infringement against one of its main competitors in fruit and gift basket sales.

With online advertising increasingly crucial to companies’ marketing strategies, many companies seek ways to ensure that their advertisements appear before as many interested consumers as possible. This sometimes takes the form of “bidding,” or paying fees to search engines to ensure that their advertisements appear when consumers search on particular relevant keywords. According to Edible Arrangements, Provide infringed Edible Arrangements’ trademark by placing “bids” on search terms that resemble Edible Arrangements’ mark, even though they do not describe any of Provide’s actual products. And Provide included in its ads terms very similar to Edible Arrangements’, such as “Edible Fruit Arrangements.” Edible Arrangements also asserted claims against Provide under the Anticyerbersquatting Consumer Protection Act, claiming that Provide engaged in “typosquatting” (a type of “cybersquatting”), or utilizing misspelled domain names similar to Edible Arrangements’ web address to direct traffic to Provide’s website. Continue Reading

Halo Shines Bright in D. Mass.

A recent order from the District of Massachusetts sheds light on how the Supreme Court’s June 2016 decision in Halo Electronics v. Pulse Electronics is being interpreted by the district courts. The Memorandum and Order by Chief Judge Patti B. Saris denied a request for enhanced damages by plaintiff, Trustees of Boston University (“BU”).

BU moved for enhanced damages after a jury found that defendants Everlight Electronics Co., Ltd. (“Everlight”), Epistar Corporation (“Epistar”), and Lite-On Inc. (“Lite-On”) infringed U.S. Patent No. 5,686,738 (the “’738 patent”), titled “Highly Insulating Monocrystalline Gallium Nitride This Films.” The jury also found that Epistar induced both Everlight and Lite-On’s infringement, and that both Epistar’s and Everlight’s infringement was willful. Continue Reading

Lights Out for Invalidity and Unenforceability Counterclaims After PTAB Invalidates Design Patent

bathroom lighting-4Flipping the switch on the last remaining claims in the case, a Massachusetts Court recently dismissed as moot two defendants’ counterclaims for declaratory judgment of invalidity and unenforceability following a PTAB decision invalidating the asserted patent.

In 2013, Maureen Reddy sued defendants Lowe’s and Evolution Lighting for infringement of U.S. Design Patent No. D677,423, alleging that Evolution Lighting made and sold Lowe’s infringing light shades. Defendants asserted counterclaims for declaratory judgment of non-infringement, invalidity, and unenforceability. Later, in September, 2015, the Court granted the defendants’ motion for summary judgment of non-infringement and denied defendants’ motions for summary judgment of invalidity as moot. Importantly, the Court construed the summary judgment motions as directed only to Reddy’s claims, leaving the defendants’ counterclaims for invalidity and unenforceability alive.

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Hyper-Divergence: Halo and the Preliminary Injunction Requirement for Enhanced Damages

server-3A recent report and recommendation issued in the District of Massachusetts is one of the first cases to interpret – and arguably, to extend – the Supreme Court’s recent decision on willful infringement, Halo Electronics, Inc. v. Pulse Electronics, Inc.

In Simplivity Corporation v. Springpath, Inc., plaintiff Simplivity alleged infringement of U.S. Patent No. 8,478,799, which allegedly claims a file system that improves upon traditional data storage architectures.  Simplivity describes itself as a company focused on efficient data storage and operations.  The defendant, Springpath, allegedly sells a solution that infringes the ’799 Patent.  Both companies claim to focus on “hyperconvergence” – the combination of data services related to computation, storage, networking, and virtualization in an hardware appliance. Continue Reading

LED Dispute Blazes Through Summary Judgment

LEDs-12A recent decision from Judge Stearns sheds new light on a dispute between Lexington Luminance (“Lexington”) and Google over LED technology.

The dispute began in November, 2012, when Lexington accused Google of infringing U.S. Patent No. 6,936,851 (the “’851 Patent”), entitled “Semiconductor Light-Emitting Device and Method for Manufacturing Same.” In particular, Lexington accused the LEDs in two Google Nexus phone models of infringement. The parties jointly stayed the case in 2014 pending the outcome of a Federal Circuit decision involving the ’851 Patent.  In 2015, after receiving the decision, the case was reopened. Shortly thereafter, Lexington served amended infringement contentions, and the Court issued its claim construction order. With these in hand, Google moved for summary judgment of noninfringement. Continue Reading

Rising Tide of State-Enacted Patent Reform

Mass. state house-1It started with Vermont in 2013. Since then, over half the states have enacted legislation aimed at curbing patent infringement suits from non-practicing entities. Now, the band may add another member: Massachusetts.

Taking a page from those who came before it, Massachusetts styles its bill as one for consumer and business protection, and targets entities engaged in “bad faith assertions of patent infringement.” In its current form, the bill allows the recipient of a believed bad faith infringement allegation to bring an action in state court for damages. The court may then consider a number of factors (outlined in the bill) in determining whether such allegation was, in fact, made in bad faith. Continue Reading

Forecast Unfavorable for Inventory Software Patent

financial-4Ever since the Supreme Court’s decision in Alice Corp. v. CLS Bank shifted the contours of patent-eligible subject matter, district courts have wielded the two-part test set forth in that decision to dispatch scores of business method patents as being directed to unpatentable abstract ideas.  In a recent example, the Massachusetts district court invalidated a patent relating to inventory forecasting software using the Alice test. Continue Reading