New England IP Blog

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

Computer-Based Publishing Patent Goes Offline after Alice Inquiry


In a recent order from the District of Massachusetts, the court granted a defendant’s motion for summary judgment in a patent infringement dispute, finding the asserted patent claims invalid under 35 U.S.C. § 101. The court’s underlying analysis is particularly instructive for its application of the Alice two-part framework to claims that are directed to computerized systems and methods for secure data sharing on the Internet. Continue Reading

Planned Motion to Dismiss Insufficient to Extend Rule 26(f) Deadlines

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In an ongoing patent infringement case involving patents for floor-mounted electrical outlet housings, a federal court in Connecticut recently denied a Joint Motion for a Discovery Dispute Conference, signaling the court’s hesitation to delay the initiation of discovery pursuant to Rule 26(f) merely because a defendant represents that it intends to move to dismiss a plaintiff’s claim. Continue Reading

Supreme Court Restricts Patent Venue


In a landmark decision, the Supreme Court unanimously overturned the Federal Circuit’s VE Holding opinion, which had permitted patent defendants to be sued in any forum in which they were subject to personal jurisdiction.  Now, patent cases can be brought in only one of two places: (1) the defendant’s state of incorporation; or (2) a district where infringing activity has occurred, and the defendant has a regular and established place of business. Continue Reading

Some Cardiac Monitoring Patents Beat Alice Challenge, While Others Fail to Survive


In the time since Alice changed the landscape of patent eligibility for certain types of inventions, the Federal Circuit has begun pumping out opinions interpreting this landmark Supreme Court case. The expanding body of law has enabled lower courts to find their rhythm when utilizing the Alice test to determine subject matter eligibility. In one recent Massachusetts case, the court tackled this issue in the context of a Rule 12(c) motion seeking to invalidate several medical device-related patents.  Continue Reading

Pre-Sale Use of Data Storage Trademark Not Enough to Secure Priority Rights


A Massachusetts federal court recently found multiple early uses of a sought-after trademark insufficient to confer priority of rights.  The dispute concerned two technology companies, Nexsan and EMC, each seeking to use the UNITY mark in connection with their computer data storage technologies. The Court held that EMC’s pre-sale uses did not establish “use in commerce” and thus did not confer trademark priority over Nexsan’s earlier filings. Continue Reading

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