New England IP Blog

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

Supreme Court Limits Foreign Reach of the U.S. Patent Act


The supply from the United States of a single component of an invention, for assembly of the invention abroad, is not patent infringement under Section 271(f)(1) of the Patent Act. This is according to a unanimous ruling yesterday by the United States Supreme Court.

The court found significant limitations on the reach of Section 271(f)(1), a law that states that it is an act of patent infringement to supply from the United States, “all or a substantial portion of the components of a patented invention,” to induce the combination of such components abroad. In reaching its decision, the court analyzed the phrase, “substantial portion,” in the law, and concluded that the phrase refers to the the number of components exported, not the relative importance of the exported components to the invention as a whole. Continue Reading

Judge Young Addresses Possibility Versus Plausibility in Patent Pleadings


Judge Young granted a plaintiff leave to file an amended complaint that satisfactorily pushed its claim from merely possible to plausible, in a recent opinion from the District of Massachusetts. The analysis is instructive to prospective plaintiffs as to the threshold showing of use that must be made to sufficiently support a patent infringement claim.

In the original complaint, the President and Fellows of Harvard College alleged that Micron Technologies, LLC infringed two of Harvard’s patents covering methods and materials for completing atomic layer deposition (“ALD”). ALD is a process used in the fabrication of semiconductor devices by which a substrate is formed using thin film deposition. Harvard alleged that Micron uses certain precursors and processes, as claimed by its two asserted patents, to manufacture its semiconductor chips using ALD.  Continue Reading

Privilege Claims Validated in Counterfeit Detection Dispute


In a recent decision, Magistrate Judge Kelley addressed the legitimacy of withholding third party communications under the common interest doctrine. The case involved plaintiff Crane Security Technologies, Inc. (“Crane”) – the exclusive supplier of banknote paper for United States currency – and defendant Rolling Optics, AB (“RO”) – that, among other things, manufactures 3D micro-optic foils for use on product packaging to “assure the genuineness of a branded product.” Crane alleged that RO’s 3D micro-optic foils infringed patents directed to an “optical system” that prevents counterfeiting. Continue Reading

Even in Light of Reexam, Court Declines to Stay Brite-Strike Patent Litigation


For defendants in patent infringement cases, the strategy of filing for reexamination of the patent-in-suit with the U.S. Patent Office is a common tactic to short-circuit costly litigation—as defendants typically request a stay of the litigation while the reexam proceeds. Such stays, however, are not automatic but instead left up to the court’s discretion. In one recent case, a Massachusetts court brightened the plaintiff’s day by denying the defendant’s motion to stay.

Plaintiff Brite-Strike is a manufacturer of tactical flashlights, and holds a patent on a flashlight with a unique user-operated switch. Plaintiff Telebrands, a marketing company, is the exclusive licensee of Brite-Strike’s patent. In August 2016, Plaintiffs filed a patent infringement suit against E. Mishan & Sons (“Emson”), a manufacturer that produces competing flashlight products. Emson subsequently asserted several defenses and counterclaims, and also filed with the USPTO a request for reexamination of the patent-in-suit. Based on that request, Emson moved the court for a stay of the litigation. Continue Reading

Rampage’s Patent Suit Inks a Partial Victory in Surviving Motion to Dismiss


Judge Allison Burroughs of the District of Massachusetts recently issued a decision that provides much-needed insight into pleading standards in patent cases. With the demise of Form 18 of the Federal Rules of Civil Procedure, litigants have been faced with a number of questions concerning the level of detail a plaintiff needs to include in a patent complaint – and interestingly, it appears that direct infringement may at times be more difficult to plead than indirect infringement.  Continue Reading

The Federal Circuit’s Standing Requirement to Appeal Patent Office Decisions

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In a recent landmark decision, the Court of Appeals for the Federal Circuit announced that not all inter partes review (“IPR”) proceedings at the U.S. Patent Office can be appealed. While anyone can file an IPR petition, not all persons can appeal. For petitioners without standing, i.e., an “injury in fact,” the Patent Office’s Patent Trial and Appeal Board (“PTAB”) is the last and final stop.

In most cases, standing is not a problem when appealing a final written decision from the PTAB. In a typical proceeding, the petitioner would file for an IPR after being sued for infringement, or threatened with such a suit. In such a case, there is unquestionably an “actual case or controversy,” the fundamental requirement for standing in the federal courts. Those circumstances were not present, however, when petitioner, Phigenix, Inc. used the IPR process as leverage to encourage the respondent, ImmunoGen, Inc., to license one of its patents.  Continue Reading

No Stay Pending IPR in Brewing Patent Dispute


District court patent defendants often request a parallel inter partes review (“IPR”) proceeding at the U.S. Patent Office to challenge the validity of the patent at issue. As such IPR proceedings have the potential to kill the patent, district courts have more often than not stayed their proceedings while they wait on the outcome of the parallel IPR proceeding at the Patent Office. That was not the case, however, in a dispute in the District of Massachusetts between two competitors in the coffee brewing systems industry. In a case involving Keurig Green Mountain and Touch Coffee & Beverages, Judge Denise Casper denied a request for stay pending resolution of a parallel IPR. Continue Reading