New England IP Blog

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

Rampage’s Patent Suit Inks a Partial Victory in Surviving Motion to Dismiss


Judge Allison Burroughs of the District of Massachusetts recently issued a decision that provides much-needed insight into pleading standards in patent cases. With the demise of Form 18 of the Federal Rules of Civil Procedure, litigants have been faced with a number of questions concerning the level of detail a plaintiff needs to include in a patent complaint – and interestingly, it appears that direct infringement may at times be more difficult to plead than indirect infringement.  Continue Reading

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

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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 Appeal Board (“PTAB”) is the last and final stop.

In most cases, standing is not a problem when appealing a final written decision from the PTAB. In a typical proceeding, the petitioner would file for an IPR after being sued for infringement, or threatened with such a suit. In such a case, there is unquestionably an “actual case or controversy,” the fundamental requirement for standing in the federal courts. Those circumstances were not present, however, when petitioner, Phigenix, Inc. used the IPR process as leverage to encourage the respondent, ImmunoGen, Inc., to license one of its patents.  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 parallel IPR proceeding at the Patent Office. That was not the case, however, in a dispute in the District of Massachusetts between two competitors in the coffee brewing systems industry. In a case involving Keurig Green Mountain and Touch Coffee & Beverages, Judge Denise Casper denied a request for stay pending resolution of a parallel IPR. Continue Reading

2017 Innovation All Stars Gala this Thursday


Some of Boston’s brightest technology and innovation leaders will be honored on Thursday, January 12, at the 2017 Innovation All-Stars Gala hosted by the Boston Business Journal. Among this year’s honorees are Ken Schwaber of and Joe Caruso of Bantam Group, both of whom will be receiving the Innovation All-Stars Lifetime Achievement Award.

Court Throws Out Back Massager Trade Dress Infringement Claims on Motion to Dismiss

As the first-filed paper in nearly any litigation, the complaint is typically subject to rigorous scrutiny from the named defendant to identify any flaws that may dispatch the case via a motion to dismiss. A plaintiff in the District of Connecticut recently felt this pain, as its complaint was dismissed under Rule 12(b)(6) for failing to allege sufficient facts in support of its trade dress infringement and unfair competition claims. Continue Reading

Heartburn for Defense After Jury Verdict in Pepcid® Dispute

D_-Mass_-Bench-300x210The recent jury verdict in a dispute over a generic version of the heartburn medication Pepcid® Complete® would be enough for anyone to reach for a few tablets of the accused product. After an eight day trial presided over by Judge Zobel, a Massachusetts jury last week returned a verdict for Plaintiffs Brigham and Women’s Hospital and Investors Bio-Tech, L.P. (collectively, “BWH”). It found the asserted patent valid and infringed, and awarded approximately $10 million to BWH.

The dispute began in 2013, when BWH filed a complaint against Defendants Perrigo Company and L. Perrigo Company (collectively, “Perrigo”) alleging that their generic version of Pepcid® Complete® directly and indirectly infringed BWH’s U.S. Patent No. 5,229,137 (the “’137 Patent”). As the patent expired before the suit, BWH sought past damages beginning as early as 2008 – when the accused product first hit the shelves. BWH also sought a finding of willfulness, based in part on Perrigo’s alleged comments about the ’137 Patent during the application process for the generic drug, and in a separate legal proceeding. Continue Reading

Close Shave on Whether Cease and Desist Letter Creates DJ Jurisdiction


Rather than wait around for the hammer to fall, companies under threat of an intellectual property lawsuit sometimes choose to file a declaratory judgment complaint. Such “DJ” complaints usually ask the court to clear the air and decide the issue in the filer’s favor. Declaratory judgment filers are often motivated by the fact that they can choose the court that resolves the lawsuit.

Simoniz USA, Inc. (“Simoniz”), a company that sells cleaning products, filed such a DJ complaint in the District of Connecticut, asking that the court resolve a trademark dispute that it says arose from a “cease and desist ” email it received from Dollar Shave Club (“DSC”), a company that sells personal care products including shaving razors. The email asked Simoniz to stop using the mark DOLLAR CLEAN CLUB in Europe and the United States. The court nevertheless dismissed the declaratory judgment action, finding that the trademark controversy was not of sufficient immediacy and reality to warrant its intervention. Continue Reading