New England IP Blog

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

Sunrise’s Infringement Complaint Gets the Green Light


In a recent opinion out of the District of Massachusetts, the court ordered that a patent infringement dispute between two Massachusetts-based competitors in the lighting systems industry would be allowed to proceed. This was despite a challenge to the sufficiency of the pleadings in the patent owner’s complaint.

The patent owner, Sunrise Technologies, asserted a patent directed to the monitoring and control of systems such as lighting systems through the formation of a mesh network of wirelessly linked communication nodes mounted to utility poles.  Sunrise alleged that defendant Cimcon Lighting infringed the patent directly, indirectly, and contributorily through the manufacture, sale, and marketing of its competing line of lighting controllers. Sunrise also made a willful infringement allegation against Cimcon. Continue Reading

Future and Unreleased Products Can’t Drive Litigation


In a recent decision out of the District of Massachusetts, Judge Talwani provided litigants with insights into patent subject matter jurisdiction in declaratory judgment actions. Here the patent owner, US Carburetion, had lost previous motions to throw the case out due to lack of declaratory judgment jurisdiction. But after repeatedly asserting that it does not want to enforce its patents against Gen-Connect, and filing a permanent irrevocable convent stating as such, the Court agreed to dismiss the case. Continue Reading

Federal Circuit Turns up the Heat on PTAB on Motions to Amend

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The U.S. Court of Appeals for the Federal Circuit is increasingly scrutinizing the handling of Motions to Amend in Inter Partes Review (IPR) proceedings at the Patent Trial and Appeal Board (“PTAB,” or the “Board”). One case on this issue, In re Aqua Products, Inc., is currently pending before the full Federal Circuit. The court recently granted a petition for rehearing en banc to consider two questions:

  1. When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?
  2. When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim; if so, where would the burden of persuasion, or a burden of production, lie?

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Clean Bill of Health for Tuberculosis Testing Patents in Eligibility Challenge


After the Supreme Court’s recent decisions in Alice, Mayo, and Myriad that narrowed the bounds of patentable subject matter, defendants have routinely asked courts to invalidate patents in certain technology areas—such as software and biotechnology—as patent ineligible. A recent decision out of the District of Massachusetts offers a prescription for success for patentees in surviving such an eligibility challenge. In that case, the court denied a defendant’s motion to dismiss an infringement complaint concerning patents for tuberculosis testing methods. Continue Reading

Accused Infringer Puts the Screws on Patentee

screw_schematic_webWe wrote recently about a summary judgment decision in which Judge Indira Talwani found certain asserted claims of two patents on a type of breakable screw to be obvious in light of the prior art. This ruling came even though the patentee had produced some evidence of copying, and even though the accused infringer had not shown a motivation to combine. The case provides useful insights into the law on patent obviousness, and this post expands on the obviousness issues in more detail.

In a lengthy opinion addressing a number of different issues, Judge Talwani first ruled that several other claims in each of the patents were anticipated by the prior art, which included two examples of previously-available breakable screws. The specific claims at issue here, however, were deemed not anticipated because they added additional elements, such as describing particular lengths for a non-threaded screw portion. Continue Reading

Final Judgment Prescribed For Antibody Patent After Double Patenting Decision

patent dispute-8We previously wrote about Judge Wolf’s decision to invalidate Janssen Biotech, Inc.’s (“Janssen”) biopharmaceutical patent (U.S. Patent No. 6,284,471 (the “’471 Patent”)), based on the doctrine of obviousness-type double patenting.

Celltrion Healthcare Co. Inc. (“Celltrion”) subsequently moved the court for an entry of final judgment dismissing Janssen’s infringement claims premised on the ’471 Patent.  While Celltrion’s request may seem straightforward given that the court invalidated the ’471 Patent, it was not a guarantee.  Other claims still remain in the case, and under Fed. R. Civ. P. 54(b), the court “may” enter a final judgment dismissing less than all claims in the action only if it determines “that there is no just reason for delay.” Continue Reading

Accused Infringer Secures Patent Invalidity in Eyeglass Screw Case

eyeglasses-3Declaratory judgment actions can be a useful way for entities threatened with patent infringement to go on the offensive.  In one such matter in the District of Massachusetts, a declaratory judgment plaintiff turned the tables on a patentee by invalidating two patents relating to eyeglass screw technology at the summary judgment stage.

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