New England IP Blog

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

Scope of Brain Imaging Patent Dispute Comes into Focus

Judge Stearns recently clarified the scope of an almost five-year-old multi-district patent dispute in the District of Massachusetts.  Since early 2013, Judge Stearns has presided over NeuroGrafix’ allegations of patent infringement after ten actions encompassing dozens of defendants were consolidated in the District of Massachusetts.  In the suit relevant to Judge Stearns’ most recent order, NeuroGrafix alleged that defendant Brainlab infringed U.S. Pat. No. 5,560,360, entitled “Image Neurography and Diffusion Anisotropy Imaging.”

The Court’s recent order stemmed from a dispute over whether plaintiff NeuroGrafix disclaimed all but one asserted claim in the action.  Continue Reading

Federal Circuit Holds That IPR Time-Bar Determinations Can Be Appealed

Earlier this week, the Federal Circuit issued an en banc opinion in Wi-Fi One v. Broadcom that holds the PTAB’s determinations of whether an IPR petition was timely filed under 35 U.S.C. § 315(b) are appealable.  In reaching this decision, the en banc court overruled an earlier panel’s decision that such time-bar determinations are final and nonappealable under § 314(d), paving the way for parties in future IPR disputes to raise the timeliness issue on appeal. Continue Reading

Patenting the Blockchain

Last year’s spike in the valuation of bitcoin has much of the technology world focused on blockchain, the distributed database ledger technology behind bitcoin and many other cryptocurrencies.  Lost behind the scenes, however, is a rush by some in the industry to patent inventions relating to the blockchain technology itself.  These moves come with controversy in an industry known for its culture of open-source practices. Continue Reading

Anticipation Bounces Back Electronic Return Receipt Patent as Invalid

Although patentees may delight at the allowance of broad claims in their granted patents, those same claims prove more difficult to defend against invalidity arguments at trial. A recent decision from a Massachusetts court underscores this tightrope walk, and serves as a warning that claims drafted too loosely—while allowed by the USPTO—can leave the patent at risk for invalidation by anticipation. Continue Reading

Jury Verdict Overturned in Pepcid® Dispute After Court Finds Insufficient Evidence of Infringement

Last year, a jury awarded Brigham and Women’s Hospital (“BWH”) approximately $10 million after it found that defendant Perrigo Company’s (“Perrigo”) generic version of Pepcid® Complete® willfully infringed BWH’s patent. After the verdict, Perrigo filed a renewed motion for judgment as a matter of law or a new trial under Fed. R. Civ. P. 50(d) and 59(d). Although the District Court initially denied the motion on timeliness grounds, the Federal Circuit reversed on that issue and “instructed the court to consider the pending post-judgment motions.”

Recently, the District Court entered its order on the merits of Perrigo’s post-trial motion, vacating the jury’s finding of infringement as a matter of law and undoubtedly providing Perrigo with some “sustained,” if not “immediate” relief from last year’s verdict. Continue Reading

First-to-File Rule Brings Venue of Camera Patent Fight into Focus

Federal courts have long honored the age-old principle of “first come, first served”—when presented with two competing lawsuits involving the same parties in different courts, priority is generally awarded to the first-filed lawsuit with a few, specifically-defined exceptions.  In one recent decision, a Massachusetts court shuttered a declaratory judgment plaintiff’s request for resolution of the issue of venue, instead deferring to the Texas court where the defendant had first filed its patent infringement action. Continue Reading

Three Years of Alice: Federal Circuit Cases Upholding Patent Eligibility Under Alice Step 2

This post follows our previous post summarizing Federal Circuit cases upholding software patent claims on Alice Step 1 grounds.  Here, Step 2 decisions are explored in more detail, with a focus on additional lessons learned during the Step 2 analysis.

Surviving Step 2—which requires that the claims include “significantly more” than the abstract idea itself—often hinges on a factor that is found in, but is typically not the focus of, the Step 1 cases: whether the claim elements give rise to an inventive concept when considered as an ordered combination, including how the elements function in the particular arrangement claimed.  Indeed, at least three of the four cases below depend on the “ordered combination” analysis, showing that this is a key hallmark of patent eligibility on Step 2 grounds. Continue Reading

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