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

By S. James Boumil, III, Joseph Capraro and Patrick Niedermeier on Posted in Patent Eligibility, Patent Prosecution, Software, Subject Matter Eligibility, USPTO

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

By Gourdin Sirles on Posted in Connecticut, Consumer Goods, Damages, Injunctions, Trademarks and Trade Dress

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

By Patrick Niedermeier on Posted in Inter-Partes Review, Internet, Invalidity, Inventorship, Massachusetts, Software, Summary Judgment

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

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

By Kimberly Li on Posted in Consumer Goods, Massachusetts, Motion to Dismiss, Procedure/Jurisdiction, 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

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

By Gourdin Sirles on Posted in Connecticut, Consumer Goods, Invalidity, Prior Art, Reexamination

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

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Inventorship Claim in Disease Treatment Patent Dispute Survives Motion to Dismiss

By Patrick Niedermeier on Posted in Biotechnology, Inventorship, Massachusetts, 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

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

By Kimberly Li on Posted in Ethics, Massachusetts

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

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