New England IP Blog

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

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.

Continue Reading

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.