New England IP Blog

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

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

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

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

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

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

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