New England IP Blog

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

Amended Contentions Deemed Timely Served Due to Parties’ Misunderstanding

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Under some circumstances, party error can excuse late-filed amendments to infringement and invalidity contentions, according to a recent decision by Judge F. Dennis Saylor IV. Approximately five years ago, plaintiff DataTern, Inc. (“DataTern”) filed a patent infringement suit against defendant MicroStrategy, Inc. (“MicroStrategy”) over a patent claiming a “method for interfacing an object oriented software application with a relational database.” Continue Reading

Court Denies Attempt to Prevent “Plain and Ordinary” Claim Construction Proposals

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The presumption that claim terms should be interpreted using their plain and ordinary meaning, absent express intent to the contrary, has long been a staple in claim construction. Parties often submit proposed constructions that ask the court to give certain terms their ordinary and customary meaning—the meaning that the terms would have to those skilled in the art at the time of invention. In a recent case from the District of Massachusetts that involves patents relating to tuberculosis testing methods and kits, the defendants tried to bar the plaintiff from submitting such plain and ordinary construction proposals. However, the court instead prescribed a solution in favor of the plaintiff. Continue Reading

Life Sciences at the PTAB


Later this month, the Boston Bar Association and the Boston Patent Law Association will jointly host a panel discussion on the recent rise of life science litigation at the U.S. Patent Office’s Patent Trial and Appeal Board (“PTAB”). The panel, to be moderated by Proskauer’s Andrej Barbic, promises to, “explore the rise in life science litigation at the PTAB in the past few years, unique aspects of these new proceedings for life science patents, and strategies for dealing with multi-front litigation.”

The panel is scheduled to take place on Wednesday, April 26, 2017, from 12:00 pm – 1:30 pm, at 16 Beacon Street, Boston, MA.  More information about the panel and the panelists can be found here.

Cheerleader Uniform Designs Protectable Under Copyright Act


The Supreme Court recently held in Star Athletica, L.L.C. v. Varsity Brands, Inc., that the designs on certain cheerleader uniforms may be protected copyrights. The 6-2 decision clarified the test to be applied when determining whether a feature incorporated into the design of a useful article would be eligible for copyright protection. Continue Reading

Copyright Plaintiff Allowed to Subpoena ISP to Discover Defendant’s Name

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A recent decision from the District of Connecticut is part of a series of copyright cases where a plaintiff, unable to identify the accused infringer except by the Internet Protocol (or “IP) address used at the time of the alleged infringement, has sought and received pre-service leave to serve a subpoena upon the Internet Service Provider (or “ISP”) associated with that IP address to enable service of process. But, as described below, the nature of the accused infringement here – illegal distribution of pornography – caused the court to impose significant limitations on the requested subpoena. Continue Reading

Mobile Payment Patent Remains Legal Tender after Alice Challenge

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In the post-Alice world, patents that relate in any material way to financial processes or systems have come under increased attacks in the early stages of infringement litigation—as defendants aim to secure a cheap and fast exit from the controversy. While such challenges are often successful, such an outcome is not guaranteed. In one recent case, a Rhode Island court upheld patent claims relating to mobile payment processing as reciting eligible subject matter under Alice. Continue Reading

Supreme Court Rejects Laches Defense in Patent Cases

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The U.S. Supreme Court ruled this week that laches is not a defense in the majority of patent cases. Justice Alito, writing for the 7-1 majority, found the application of laches to patent disputes incompatible with the six-year statute of limitations found in 35 U.S.C. § 286.

The decision arose out of a dispute between two competitors in the market for adult incontinence products. In October 2003, SCA Hygiene sent an infringement notice letter to its competitor, First Quality; it filed suit against First Quality nearly seven years later, in August 2010. First Quality then moved for summary judgment, arguing that laches barred SCA Hygiene’s claim. The District Court and the Federal Circuit both agreed: because SCA had waited over six years before filing suit, its case was barred by laches and should be dismissed. Continue Reading