New England IP Blog

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

In Autoimmune Disorder Diagnosis Patent Case, Section 101 Motion to Dismiss Denied

pharmaceuticals-3In a recent decision from the District of Massachusetts, Judge Indira Talwani denied a motion to dismiss a patent suit under Rule 12(b)(6) for failure to state a claim due to patent ineligibility under 35 U.S.C. § 101 . In their motion, defendants Mayo Collaborative Services LLC and Mayo Clinic (collectively “Defendants”) argued that the patent asserted by Athena Diagnostics, Inc., Isis Innovation Limited, and Max-Planck-Gesellshaft zur Forderung der Wissenschaften e.V. (collectively “Plaintiffs”), was invalid under 35 U.S.C. § 101 “because the claimed method applies routine and conventional techniques to a law of nature.” Continue Reading

Double Patenting Decision Delivers Bitter Pill To Antibody Patent

patent dispute-3In a recent decision on obviousness-type double patenting, Judge Wolf shortened the shelf life of a dispute between Janssen Biotech, Inc. (“Janssen”) and Celltrion Healthcare Co. Inc. (“Celltrion”), relating to a biopharmaceutical patent covering a particular antibody.

In March, 2015, Janssen accused Celltrion of infringing (among other patents) U.S. Patent No. 6,284,471 (the “’471 Patent”), entitled “Anti-TNFα Antibodies and Assays Employing Anti-TNFα Antibodies.”  As is relevant here, Celltrion filed two motions for summary judgment challenging the validity of the ’471 Patent – both of which argued that, for separate reasons, the patent was invalid due to obviousness-type double patenting. Continue Reading

Need for Illumination of Maximum Recovery Rule Warrants Interlocutory Appeal

Chief Judge Patti B. Saris of the District of Massachusetts recently issued an order paving the way for the Trustees of Boston University to seek an interlocutory appeal to clarify the Maximum Recovery Rule for remittitur.

Back in November 2015, a jury awarded BU lump-sum damages of $9,300,000 from Epistar and $4,000,000 from Everlight after finding Epistar and Everlight infringed a patent related to semiconductor devices used in LED packages.  The Court later granted Epistar’s and Everlight’s motion for remittitur or a new trial on damages, finding the amounts of the lump-sum damages awards were not supported by the evidence in the record.  In determining the remitted damages, the Court applied the “Maximum Recovery Rule,” which allows a remittitur for the maximum recovery that is supported by the evidence.  Based on the trial evidence relating to lump-sums, the Court set the remitted damages at a $1 million lump-sum from Epistar and a $1 million lump-sum from Everlight. Continue Reading

AIPF 2016 Annual Meeting in Boston

Blog_Boston_Skyline_1The Association of Intellectual Property Firms (AIPF) is hosting its 2016 Annual Meeting in Boston. AIPF is an international association of independent specialty law firms that specialize in patent, trademark, and copyright law. This year’s meeting is titled “The Challenge of Change – IP Firms in the 21st Century,” and will bring together lawyers and corporate executives from around the world to engage in panel discussions and interactive roundtables on a wide range of topics, including the latest on U.S. and foreign patent office procedure, litigation strategy, and IP-related business challenges facing companies and industries.

The meeting will be held at the Omni Parker House Hotel from September 14-16. More information about the event can be found here.

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.

Continue Reading