New England IP Blog

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

“Blatant and Unapologetic” Judge Shopping Warrants “Exceptional Case” Determination

In a dramatic conclusion to the nearly seven year old patent litigation between Datatern and Microstrategy (including a number of Microstrategy’s customers), Judge Saylor in the District of Massachusetts recently awarded attorneys’ fees based on Datatern’s “blatant and unapologetic” judge shopping in the early stages of the case. Continue Reading

Summary Judgment Stalemate in Copyright Spat Between Former Collaborators

The Institute of Electrical and Electronics Engineers, Inc. (“IEEE”) is the well-known engineering standards organization often cited in patent litigations to inform issues ranging from claim construction to the state of the art. A recent decision from the District of New Hampshire gives an inside look at how the IEEE’s standards are made, and perhaps provides a cautionary tale about escalating disagreements in a typically-collaborative setting. Continue Reading

USPTO Updates Patent Eligibility Guidance in View of Federal Circuit Berkheimer Opinion

The U.S. Patent and Trademark Office (USPTO) recently issued a memorandum to its patent examining corps that changes the way examiners should evaluate the question of whether a claim element is “well-understood, routine, conventional” when making a § 101 eligibility determination.  The changes outlined in the memo were prompted by the recent Federal Circuit decision in Berkheimer v. HP, Inc., which held the above question is an issue of fact that, if disputed, precludes a finding of subject matter ineligibility at the pleading or summary judgment stages.  In the memo, the USPTO provides a new framework for how examiners are to formulate § 101 rejections using Step 2B of the Alice/Mayo analysis when a claim element potentially represents well-understood, routine, conventional activity. Continue Reading

Supreme Court Rules That PTAB Must Review In IPRs All Challenged Claims, Or None At All

In its second opinion this week with wide-ranging implications for the inter-partes review (“IPR”) process, the Supreme Court on Tuesday addressed whether the Patent Trial and Appeal Board (“PTAB”) has the authority to institute review on a sub-set of claims from a challenger’s petition. In a 5-4 decision penned by Justice Gorsuch, the Supreme Court said no. Now, the PTAB has a binary choice – review all of the challenged claims, or none of them. Continue Reading

In Face of Separation of Powers Challenge, Supreme Court Upholds Patent Office Inter Partes Review

Some call it the patent death squad. Others laud it as a powerful weapon in the battle against patent trolls. Whatever one’s opinion on the matter, the Supreme Court yesterday found that the U.S. Patent Office’s inter partes review (“IPR”) proceeding, a process that can invalidate patents many years after they issue, does not violate Article III of the Constitution.

The case was brought to the Supreme Court by Oil States Energy Services, LLC, an oilfield services company. Oil States argued that the Patent Office, an institution of the executive branch of the government, should not be deciding disputes on whether an issued patent should be invalidated, as this power is vested exclusively in the judicial branch of the government by Article III. In other words, the independent federal courts should be handling these patent validity disputes, not the Patent Office that issued the patent. Continue Reading

Plaintiff Torpedoed with Attorneys’ Fees for “Objectively Unreasonable” Copyright Claim

In a recent decision from the District of Connecticut, Judge Meyer awarded attorneys’ fees against a plaintiff who the court found brought an “objectively unreasonable” copyright infringement claim based on an unpublished work of non-fiction.

Plaintiff Joseph Leary’s 2013 action alleged that a book written by defendants Roy Manstan (“Manstan”) and Frederic Frese (“Frese”), and published by Westholm Publishing, LLC, infringed plaintiff’s manuscript about a Revolutionary War-era submarine called the “Turtle.” According to the Court’s earlier summary judgment order, reported by us here, plaintiff and Frese worked together in the 1970s to create a replica of the “Turtle,” and in the intervening decades plaintiff drafted a manuscript “weaving together a biography of Bushnell [the original builder of the sub], historical information about the Turtle, and plaintiff’s own experience building a replica of the Turtle.” Continue Reading

Court Makes Motion to Dismiss in Trademark Dispute Magically Disappear

A basic tenet of litigation is that the court must have personal jurisdiction over the parties to the case.  In one recent decision, an out-of-state defendant in a trademark infringement dispute could not use a motion to dismiss to escape from the reach of the District of Connecticut court.  The court found sufficient evidence to show that it had personal jurisdiction over the defendant, and that the plaintiff’s complaint had properly stated a claim for relief.

Plaintiff Communico, based in Connecticut, holds two registered U.S. trademarks—“MAGIC” and “THE MAGIC OF CUSTOMER RELATIONS”—in the field of course materials and educational services.  Defendant DecisionWise, a Utah company offering employee-training programs for customer relations and communication, later began using the marks “MAGIC” and “Engagement Magic” in connection with its services, both on its website and in the title of a published book. Continue Reading

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