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

Supreme Court Opens the Floodgates for Foreign Lost Profits Damages

By Patrick Niedermeier on July 16, 2018 Posted in Damages, Energy, Supreme Court

In a 7-2 decision issued late last month, the U.S. Supreme Court ruled that patentees can recover damages resulting from the exportation of certain components to foreign jurisdictions, where those components are then incorporated into an infringing system used outside of the United States. The Court’s decision reversed a Federal Circuit ruling that the patent holder could not receive lost profits stemming from overseas activity.

The patents-in-suit, each owned by plaintiff WesternGeco, involve technology for surveying the ocean floor using lateral steering. Defendant ION developed a competing system that infringed WesternGeco’s patents; ION manufactured components for its system in the U.S., then shipped the components overseas to foreign companies which assembled and used the infringing system. After losing a number of survey contracts to ION’s system, WesternGeco sued ION for infringement under Sections 271(f)(1) and (f)(2) of the Patent Act. A jury subsequently found ION liable and awarded WesternGeco nearly $95 million in lost profits damages. On appeal, the Federal Circuit reversed the lost profits award—concluding that Section 271(f) should be interpreted to exclude recovery of damages from lost foreign sales because it does not apply to extraterritorial activities. Continue Reading

New Local Patent Rules May Speed Up Patent Litigation In Massachusetts

By Safraz Ishmael and Kimberly Li on June 27, 2018 Posted in Current Affairs, Massachusetts

Massachusetts is home to one of America’s chief innovation hubs. Yet, historically, the District of Massachusetts has seen relatively few patent cases when compared to other high-tech venues around the country. While there are several reasons that may explain this dearth of patent cases, factors many have pointed to include that a large number of patent cases filed in the district ended up taking 3 or more years to reach trial. Additionally, patent case schedules issued in the district were often criticized as slowly paced and lacking in certainty. And so plaintiffs looking for a quick and certain resolution tended to file their cases elsewhere.

Change appears to be here, however, as effective June 1, 2018, the District of Massachusetts amended its Local Rule 16.6 to provide for mandatory patent rules and scheduling. The prior local rules suggested a schedule for patent proceedings that parties could use in their scheduling orders, but left it up to the parties to agree to certain deadlines in the proposed order. The amended rules, however, require that the assigned judge set a trial date that is within 2 years of the initial scheduling conference (a court hearing that usually takes place within months of the complaint filing), and set certain other patent-specific deadlines on dates calculated from the initial scheduling conference date. Continue Reading

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

By Gourdin Sirles on June 21, 2018 Posted in Attorneys’ Fees, Attorneys’ Fees & Ethics, Software

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

Judge: Saylor

Summary Judgment Stalemate in Copyright Spat Between Former Collaborators

By Gourdin Sirles on June 11, 2018 Posted in Attorneys’ Fees & Ethics, Copyright, License, New Hampshire, Summary Judgment

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

Judge: McAuliffe

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

By Patrick Niedermeier on May 9, 2018 Posted in Claims, Construction & Drafting, Patent Office, Software, Subject Matter Eligibility, USPTO

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

By Andrej Barbic and Gourdin Sirles on April 26, 2018 Posted in AIA, Inter-Partes Review, Software, Supreme Court

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

By Safraz Ishmael on April 25, 2018 Posted in AIA, Energy, Inter-Partes Review, Supreme Court

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