New England IP Blog

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

Massachusetts Court Decides to Transfer Case in View of TC Heartland Venue Standard

Less than two months ago, the Supreme Court handed down its decision in TC Heartland v. Kraft Food Group Brands LLC—which significantly changed the way that venue in patent infringement cases would be determined.  Under TC Heartland, infringement actions can only be filed where the defendant is incorporated, or where the defendant has committed acts of infringement and has a regular and established place of business.  Since TC Heartland was decided, the district courts have been flooded with motions to transfer cases to different venues.

In what could be the first post-TC Heartland venue decision rendered there, a District of Massachusetts court recently granted a defendant’s motion to transfer a patent infringement case to New Jersey.  The plaintiff had originally sued the defendant for patent infringement in the Eastern District of Texas, despite the fact that the defendant is a Delaware corporation with its principal place of business in Newark, New Jersey.  Soon thereafter, the defendant moved to transfer the case to the District of New Jersey—but while that motion was pending, the parties instead agreed to transfer the case to Massachusetts, a venue that was proper under pre-TC Heartland case law. Continue Reading

Capraro to Chair Patents for Financial Services Summit in NY

Proskauer partner Joe Capraro will serve as event chair for the 14th annual Patents for Financial Services Summit in New York City on July 19-20.  Joe will provide opening remarks to the IP counsel in attendance, a recap of the first day of the conference, and moderate a panel of Federal Court justices entitled, “View from the Bench:  Review of the Past Year in Patent Law.”

In addition, partner Kim Mottley will moderate a panel discussion, “Analyzing Recent Cases Before the Supreme Court,” and patent counsel Patrick Niedermeier will host a roundtable discussion on “Encouraging Innovation and Invention Disclosures within your Organization.”

This will mark Joe’s 11th consecutive year participating in the conference, at which Proskauer has been a longtime sponsor. For further information about the event, please visit the event website.

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

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