New England IP Blog

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

Category Archives: Industry

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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 … 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 … Continue Reading

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 … 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 … 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 … 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 … 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, … Continue Reading

Supreme Court Opens the Floodgates for Foreign Lost Profits Damages

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 … Continue Reading

“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

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 … 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 … 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 … 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 … Continue Reading

Complaint Sheltered From Dismissal In Patent Row Over Personal Tents

A recent opinion from Judge Shea in the District of Connecticut sheds important light on the sufficiency of pleadings in declaratory judgment patent cases.  Noting that declaratory judgment actions are of particular importance in the intellectual property sphere, Judge Shea denied a motion to dismiss a complaint – even though the complaint included patents issued after the action … Continue Reading

Cold to Mootness Challenge, But Warm to Inequitable Conduct Defenses

In a recent opinion from the District of Massachusetts, Judge Woodlock provided a reading on the mootness of an inequitable conduct counterclaim, where the asserted claims of the thermometer patent at issue were previously invalidated in the same litigation.  Because the parties had already poured resources into addressing inequitable conduct as an alternate theory for patent … Continue Reading

Judge Saris Opines on Copyright Infringement in 3-D Greeting Card Case

On February 22, Chief Judge Saris in the District of Massachusetts issued an opinion on a motion to dismiss implicating several complex copyright infringement issues.  The Chief Judge’s ruling analyzed whether several allegedly infringing works could be considered “substantially similar” to the copyrighted works, as required to support a claim of copyright infringement.  The “substantial similarity” analysis produced different results … Continue Reading

Electronic Return Receipt Patent Dispute Dubbed “Exceptional Case” After Summary Judgment Award

In the long-standing patent dispute between Sophos and RPost, Judge Casper recently issued the oft-sought but rarely received award of attorneys’ fees, after finding that the case was “exceptional.” The suit began in 2013, when Sophos sought a declaratory judgment of non-infringement and invalidity against RPost’s patent, which was directed to a “system and method … Continue Reading

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, … 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 … 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 … 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) … 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 … Continue Reading

Court Extinguishes Parties’ Motions to Strike in LED Patent Dispute

Although motions to strike are generally difficult to win, when successful they can significantly dim the opposing party’s prospects for victory on particular claims or defenses.  In one recent patent infringement action out of Massachusetts, each party moved to strike certain elements of the other side’s pleadings–but the Court quickly snuffed out the dueling motions.… Continue Reading

Subpoenas on Customers Blocked in MRI Patent Case

In a recent multi-district case involving patent infringement allegations relating to MRI imaging, Judge Stearns granted motions for protective orders directed to untimely-served subpoenas on third party customers. The case stems from an action filed by NeuroGrafix and others against Brainlab, Inc., Brainlab AG, and Brainlab Medzinische Computersysteme GmbH (collectively, “Brainlab”), among other defendants, alleging infringement of its U.S. … Continue Reading
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