New England IP Blog

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

USPTO Announces 2019 Revised Patent Subject Matter Eligibility Guidance

On January 4, 2019, the United States Patent and Trademark Office (“USPTO”) released a significant, much-awaited revision to its patentable subject matter eligibility guidance.1  The “2019 Revised Patent Subject Matter Eligibility Guidance” (the “Guidance”) changes the USPTO’s administrative procedures for determining whether a patent claim is directed to a judicial exception (e.g., a law of nature, natural phenomenon, or abstract idea) and thus ineligible for patent protection.  The Guidance comes in response to numerous stakeholders’ calls for clarification of the patent examination process under 35 U.S.C. § 101 and consistent application of court precedent by patent examiners.  It is effective as of January 7, 2019. Continue Reading

Defendants in Vineyard Vines Trademark Dispute Hit with Liquidated Damages and Attorneys’ Fees

In a recent decision out of the District of Connecticut, defendants MacBeth Collection, L.L.C, its affiliates, and owner found themselves in hot water when Judge Merriam determined they violated a permanent injunction barring the sale of certain products accused of trademark infringement. At issue was defendants’ whale-themed merchandise, which Vineyard Vines accused of misappropriating Vineyard Vines’ whale logo.

Vineyard Vines, LLC v. MacBeth Collection, L.L.C. et al., No. 14-cv-01096,Dkt. No. 1-2 (Complaint), Ex. E.

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Court Sends Networking Patent Inventorship Dispute to Bench Trial

In order to qualify as an inventor on a U.S. patent, a person must contribute to the conception of the invention as embodied in one or more of the claims—merely building or implementing the already-conceived technology is not enough.  And, the failure to include every actual inventor invalidates the subject patent.  In a recent case out of Massachusetts, the court was faced with resolving an inventorship dispute involving a computer networking patent. Continue Reading

First-Filed Rule Prompts Dismissal of Heated Products Case in Favor of Warmer Venue

In a recent order allowing a defendant’s motion to dismiss a case involving heated products and heat pack technology, Judge Sorokin clarified a specific application of the first-filed rule.

In the case at hand, Schawbel Technologies LLC v. The Heat Factory USA, Inc., the plaintiff Schawbel alleged breach of an asset purchase agreement (Count I); alleged patent infringement involving heated insole, battery pack, and heat pack technology (Count II); and also sought declaratory judgment that its license agreement with the defendant The Heat Factory had terminated (Count III).  Counts I and III were first brought in California state court prior to the instant case at the U.S. District Court for the District of Massachusetts. Continue Reading

Gun Trigger Patent Lawsuit Misfire Does Not Warrant “Exceptional Case” Finding

After a lengthy and circuitous patent proceeding between plaintiff O.F. Mossberg & Sons (“Mossberg”) and defendants Timney Triggers, LLC and its related manufacturing entity (collectively, “Timney”), which ultimately resulted in Mossberg voluntarily dismissing the action, Judge Bolden of the District of Connecticut recently determined that the case was not “exceptional” such as to warrant awarding Timney’s attorneys’ fees.

The case began in 2012, when Mossberg filed a lawsuit against Timney alleging infringement of U.S. Patent No. 7,293,385 (the “’385 Patent”), directed to a “Modular Trigger Group for Firearms and Firearm Having a Modular Trigger Group.” The accused product was Timney’s own “specialized aftermarket gun triggers.” Timney quickly went on the offensive, filing a request for inter partes reexamination of the ’385 Patent with the USPTO (the court stayed the litigation pending the outcome). During the reexamination, the USPTO rejected several claims over the prior art, and Mossberg then canceled those claims and added new ones. Then, in a likely unexpected turn of events, the USPTO issued a final agency action determining it lacked jurisdiction to conduct the reexamination due to a failure to identify the real party in interest. Continue Reading

Inventorship Claim in Disease Treatment Patent Dispute Survives Motion to Dismiss

Determining who qualifies as an inventor on a patent application requires careful attention to the facts surrounding each person’s contribution to conception of the invention, as embodied in the patent claims.  In one recent case out of Massachusetts, the court evaluated a complex set of circumstances to resolve an inventorship dispute involving a collaboration between scientists on use of stem cells to treat autoimmune diseases. Continue Reading

Court Disqualifies Law Firm in Patent Suit, Finding No Quick Fix for Rule 1.7 Violation

Chief Judge Saris in the District of Massachusetts recently granted a motion to disqualify the Sunstein law firm from representing Altova in a patent suit against Syncro Soft, upon finding that the conflict was foreseeable based on the history of the parties’ interactions and their status as direct competitors.  Both companies operate in the market for extensible markup language (“XML”) editor software.  Altova alleged that version 19.0 of Syncro Soft’s OXYGEN XML Editor Software, which includes a feature called “Quick Fix” that automatically fixes problems such as missing required attributes or invalid elements, infringes U.S. Patent No. 9,501,456 (“the ‘456 patent”). Continue Reading

Massachusetts Passes Non-Compete Reform Law

On August 10, 2018, Massachusetts Governor Charlie Baker signed into law a bill making significant reforms to Massachusetts’ law regarding non-compete agreements, as well as adopting the Uniform Trade Secrets Act (“UTSA”) (joining 48 other states as well as DC in adopting the UTSA at least in part, and leaving New York as the lone state to not have adopted any version of the UTSA). The reform comes at the tail end of the 2018 legislative session and after several years of failed attempts at passing non-compete reform. Although Massachusetts lawyers should read the legislation in full and consult with counsel to prepare for the laws to take effect on October 1, 2018, the following post provides a summary of notable provisions in the non-compete legislation.

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Massachusetts Governor Vetoes Proposed Anti-Patent Troll Legislation

Massachusetts governor Charlie Baker vetoed proposed legislation intended to combat assertions of patent infringement made in bad faith against state businesses and residents.  The proposal was included as part of a $1.15b economic development bill (S.2625), portions of which Baker signed into law on August 10.  According to, Baker explained in a letter to lawmakers that the patent troll reform section “is not narrowly tailored and is likely to have unintended consequences for Massachusetts residents, companies, and educational institutions.” Continue Reading

False Patent Marking Counterclaim Dismissed for Failure to Plead Deceptive Intent with Particularity

In a recent decision involving a dispute between head-to-head competitors in the market for “poster boards and poster board accessory products,” Judge Bolden in the District of Connecticut dismissed defendant Royal Consumer Products, LLC’s (“Royal”) counterclaim for false patent marking for failure to plead the claim with sufficient particularity.

According to the decision, Plaintiff ArtSkills, Inc. (“ArtSkills”) “develops and sells poster boards and poster board accessory products,” including a “Trifold Display Board with Header.”  ArtSkills claimed that its Trifold Board is “a patented display board of the type used to display information for presentation,” and is “uniquely designed to remain securely closed and undamaged until ready for use” because of its “key advantage” of using “a single sheet of material, including three display panels and a header panel . . . .” Continue Reading