New England IP Blog

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

Category Archives: Patent Office

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Barbic to Host Webinar on Recent Patent Eligibility Decisions

Recent decisions in patent cases from the Supreme Court, Federal Circuit and the Patent Trial and Appeal Board (PTAB) continue to shape the patent litigation landscape. Additionally, the United States Patent and Trademark Office (USPTO) occasionally updates its patent eligibility guidance to illustrate how patent examiners should evaluate claims for patent subject matter eligibility under … Continue Reading

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

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 … 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 … Continue Reading

Federal Circuit Turns up the Heat on PTAB on Motions to Amend

The U.S. Court of Appeals for the Federal Circuit is increasingly scrutinizing the handling of Motions to Amend in Inter Partes Review (IPR) proceedings at the Patent Trial and Appeal Board (“PTAB,” or the “Board”). One case on this issue, In re Aqua Products, Inc., is currently pending before the full Federal Circuit. The court recently … Continue Reading

Lights Out for Invalidity and Unenforceability Counterclaims After PTAB Invalidates Design Patent

Flipping 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 … Continue Reading

Tangle Between Hair Care Companies Stayed Pending IPR

Days after the PTAB instituted Inter Partes Review (IPR), Judge Alvin Thompson in the District of Connecticut has stayed a case between Conair and Tre Milano. Conair sued Tre Milano in October 2014, for infringing U.S. Patent No. 8,651,118, which relates to a hair styling device. On February 2, 2015, Tre Milano filed a petition … Continue Reading

Joint Defendants Succeed on Motion to Stay Pending Reexam

For defendants in patent infringement cases, moving to stay the case pending the outcome of a concurrent U.S. Patent Office reexamination proceeding is a fairly common building block that has the potential to streamline or even eliminate a costly and lengthy litigation. And, as one litigant that makes construction-grade joint systems recently found out, under the … Continue Reading

No Need to Wait to Stay: Epicor Obtains Litigation Stay After Requesting Covered Business Method Review

There is no need to wait for the Patent Office to institute a review.  According to a recent order from Magistrate Judge Margolis in the District of Connecticut, the district court may stay a patent litigation as long as the defendant has filed a petition at the Patent Office requesting a patent validity review under the … Continue Reading

Patent Office Chief of Staff in Boston to Present on White House Initiatives

The Boston Patent Law Association (www.bpla.org) announced that on September 16, 2014, it will host a presentation by the United States Patent and Trademark Office Chief of Staff Andrew Byrnes at the offices of Bingham McCutchen at One Federal Street Boston, MA.  Mr. Byrnes will discuss the Patent Office’s quality initiative and implementation of White … Continue Reading

Hurry Up if You Want to Wait

In a recent decision on a motion to stay litigation pending a Covered Business Method review filed by defendant Carecloud Corporation, District Judge Indira Talwani gave defendants good reason not to delay any petitions for patent office review. Established by the America Invents Act, Covered Business Method reviews may be filed by parties who have been … Continue Reading

Another Patentee’s Infringement Case Zapped Pending Inter Partes Review

Newly minted District Judge Leo T. Sorokin wasted no time halting Zond, LLC’s patent infringement suit against Advanced Micro Devices, Inc. and GlobalFoundries U.S., Inc., as well as various related foreign entities, in Massachusetts federal court, staying the case pending inter partes review of the asserted patents in the U.S. Patent and Trademark Office.  The case involves … Continue Reading

New Guidelines for a Motion to Stay an IPR

To stay or not to stay? That is the question.  Oftentimes, a company being sued for patent infringement on a patent being reviewed at the Patent Office would ask that the court stay the litigation and wait for the outcome of the Patent Office’s review.  The Patent Office’s new inter-partes review (“IPR”) proceeding essentially culminates … Continue Reading

Court Prescribes a Sedative for Patent Infringement Case by Boston Heart Diagnostics

District Judge F. Dennis Saylor IV anesthetized Boston Heart Diagnostics Corp.’s patent infringement suit against Health Diagnostics Laboratory, Inc. in Massachusetts federal court, staying the case pending an ex parte reexamination of the patent filed by Health Diagnostics. The case involves U.S. Patent No. 8,455,194, covering claims on diagnostic methods for detecting the susceptibility of an … Continue Reading
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