New England IP Blog

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

Category Archives: Infringement/Willfulness

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Massachusetts Governor Vetoes Proposed Anti-Patent Troll Legislation

By Patrick Niedermeier on Posted in Current Affairs, Infringement, Massachusetts
Massachusetts governor Charlie Baker vetoed proposed legislation intended to combat assertions of patent infringement made in bad faith against state businesses and residents.  The proposal was included as part of a $1.15b economic development bill (S.2625), portions of which Baker signed into law on August 10.  According to MassLive.com, Baker explained in a letter to … Continue Reading

False Patent Marking Counterclaim Dismissed for Failure to Plead Deceptive Intent with Particularity

By Gourdin Sirles on Posted in Connecticut, Consumer Goods, Design Patents, Direct Infringement
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

Anticipation Bounces Back Electronic Return Receipt Patent as Invalid

By Kimberly Li on Posted in Anticipation, Claims, Construction & Drafting, Declaratory Judgment, Infringement, Internet, Massachusetts, Software, Summary Judgment
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

By Gourdin Sirles on Posted in Biotechnology, Direct Infringement, Massachusetts, Pharmaceuticals
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

Court Extinguishes Parties’ Motions to Strike in LED Patent Dispute

By Xin Hu Rasmussen on Posted in Defenses, Direct Infringement, Electronics, Inducement, Massachusetts, Motion to Dismiss, Motion to Strike, Willfulness
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

Summary Judgment Shot Down in Rifle Patent Lawsuit

By Xin Hu Rasmussen on Posted in Claims, Construction & Drafting, Infringement, Manufacturing, New Hampshire, Sports
In a recent patent case concerning hunting rifles, Judge McCafferty in the District of New Hampshire granted the defendant’s motion for summary judgment with respect to literal infringement of a patent on a rifle handguard, but denied the motion with respect to infringement under the doctrine of equivalents. The case arose when the plaintiff, Davies Innovations, Inc., the owner of a U.S. patent … Continue Reading

Supreme Court Limits Foreign Reach of the U.S. Patent Act

By Safraz Ishmael and Alexander Roan on Posted in Biotechnology, Infringement, Supreme Court
The supply from the United States of a single component of an invention, for assembly of the invention abroad, is not patent infringement under Section 271(f)(1) of the Patent Act. This is according to a unanimous ruling yesterday by the United States Supreme Court. The court found significant limitations on the reach of Section 271(f)(1), a law … Continue Reading

Heartburn for Defense After Jury Verdict in Pepcid® Dispute

By Gourdin Sirles on Posted in Anticipation, Biotechnology, Damages, Inducement, Infringement, Massachusetts, Obviousness, Willfulness
The recent jury verdict in a dispute over a generic version of the heartburn medication Pepcid® Complete® would be enough for anyone to reach for a few tablets of the accused product. After an eight day trial presided over by Judge Zobel, a Massachusetts jury last week returned a verdict for Plaintiffs Brigham and Women’s … Continue Reading

Sunrise’s Infringement Complaint Gets the Green Light

By James Anderson on Posted in Building/Construction, Contributory Infringement, Electronics, Inducement, Infringement/Willfulness, Massachusetts, Willfulness
In a recent opinion out of the District of Massachusetts, the court ordered that a patent infringement dispute between two Massachusetts-based competitors in the lighting systems industry would be allowed to proceed. This was despite a challenge to the sufficiency of the pleadings in the patent owner’s complaint. The patent owner, Sunrise Technologies, asserted a patent directed to the monitoring … Continue Reading

Accused Infringer Secures Patent Invalidity in Eyeglass Screw Case

By Patrick Niedermeier on Posted in Declaratory Judgment, Expert Testimony, Infringement, Infringement/Willfulness, Invalidity, Manufacturing, Massachusetts, Obviousness, Ownership, Prior Art, Procedure/Jurisdiction, Summary Judgment
Declaratory judgment actions can be a useful way for entities threatened with patent infringement to go on the offensive.  In one such matter in the District of Massachusetts, a declaratory judgment plaintiff turned the tables on a patentee by invalidating two patents relating to eyeglass screw technology at the summary judgment stage.… Continue Reading

Edible Arrangements’ Trademark Case Bears Fruit

By Hang (Helena) Zheng and Laura Stafford on Posted in Connecticut, Food and Beverage, Infringement/Willfulness, Internet, Summary Judgment, Trademarks and Trade Dress
In a recent decision, Judge Vanessa L. Bryant shed some light on a significant new issue: trademark infringement in the world of internet keyword advertising. In a case with important implications for online marketing strategies, Judge Bryant denied Provide Commerce’s request for partial summary judgment against trademark owner Edible Arrangements, which had filed a suit … Continue Reading

Halo Shines Bright in D. Mass.

By Brendan Cox on Posted in Damages, Electronics, Massachusetts, Opinions of Counsel, Willfulness
A recent order from the District of Massachusetts sheds light on how the Supreme Court’s June 2016 decision in Halo Electronics v. Pulse Electronics is being interpreted by the district courts. The Memorandum and Order by Chief Judge Patti B. Saris denied a request for enhanced damages by plaintiff, Trustees of Boston University (“BU”). BU moved for enhanced damages after … Continue Reading

Hyper-Divergence: Halo and the Preliminary Injunction Requirement for Enhanced Damages

By William Dalsen on Posted in Infringement, Injunctions, Massachusetts, Software, Willfulness
A recent report and recommendation issued in the District of Massachusetts is one of the first cases to interpret – and arguably, to extend – the Supreme Court’s recent decision on willful infringement, Halo Electronics, Inc. v. Pulse Electronics, Inc. In Simplivity Corporation v. Springpath, Inc., plaintiff Simplivity alleged infringement of U.S. Patent No. 8,478,799, … Continue Reading

LED Dispute Blazes Through Summary Judgment

By Gourdin Sirles on Posted in Direct Infringement, Electronics, Massachusetts, Summary Judgment
A recent decision from Judge Stearns sheds new light on a dispute between Lexington Luminance (“Lexington”) and Google over LED technology. The dispute began in November, 2012, when Lexington accused Google of infringing U.S. Patent No. 6,936,851 (the “’851 Patent”), entitled “Semiconductor Light-Emitting Device and Method for Manufacturing Same.” In particular, Lexington accused the LEDs … Continue Reading

Sensor Maker Cannot Shake Infringement Suit on Summary Judgment

By Micah Miller on Posted in Claims, Construction & Drafting, Defenses, Direct Infringement, Disclaimer, Electronics, Infringement, Invalidity, New Hampshire, Procedure/Jurisdiction, Summary Judgment, Validity
A New Hampshire District Court recently denied defendant sensor makers’ attempt to tilt the case in their favor by denying summary judgment of invalidity and non-infringement. SignalQuest asserted three patents relating to tilt and vibration sensors against the defendants. During the case, the U.S. Patent Office instituted ex parte reexaminations for each of the patents, … Continue Reading

Plaintiff Secures Sweeping Jury Verdict in Hotly-Contested Patent Fight

By Patrick Niedermeier on Posted in Contributory Infringement, Direct Infringement, Enablement, Health Care, Indefiniteness, Inducement, Massachusetts, Medical Devices, Obviousness, Prior Art
In a long-running patent fight involving two medical device manufacturers, a Massachusetts jury determined last week that the defendant Kaz had infringed two of plaintiff Exergen’s patents relating to temporal thermometers, and that the patents are not invalid. The jury also awarded Exergen nearly $15 million in damages.… Continue Reading

Plaintiff Avoids Headache of Having Its Thermometer Patent Invalidated at Summary Judgment

By Patrick Niedermeier on Posted in Enablement, Health Care, Infringement, Infringement/Willfulness, Massachusetts, Medical Devices, Obviousness, Prior Art, Procedure/Jurisdiction, Summary Judgment, Validity, Willfulness
In a recent District of Massachusetts case, a defendant attempted to use the crucible of summary judgment to invalidate the plaintiff’s body temperature detection patents. But, as shown in the Court’s ruling, sometimes that strategy does not produce the desired results.… Continue Reading

Summary Judgment Ruling Not a Pretty Picture for Massachusetts Copyright Plaintiff

By Brendan Cox on Posted in Copyright, Infringement/Willfulness, Internet, Massachusetts, Trademarks and Trade Dress
A recent decision from the District of Massachusetts demonstrates the difficulties that can arise when attempting to protect copyrighted works displayed on the internet.  The July 29, 2015 order issued by the Honorable Patti B. Saris, granted defendants Orgill, Inc. (“Orgill”) and Farm & City Supply, LLC (“FSC”) a split ruling on their summary judgment … Continue Reading

Conflicting Expert Opinions Prevent Summary Judgment

By Laura Stafford on Posted in Direct Infringement, Electronics, Infringement/Willfulness, Manufacturing, Massachusetts
A recent summary judgment opinion by Judge Patti B. Saris highlights the importance of expert testimony in substantiating factual disputes and withstanding summary judgment. In denying both parties’ motions for summary judgment on infringement, Judge Saris relied heavily on the opposing opinions of the parties’ experts. Here, Boston University sued Everlight Electronics, a manufacturer of light-emitting … Continue Reading

U.S. Supreme Court Further Clarifies Indirect Infringement Standards

By Justin Daniels on Posted in Attorneys’ Fees & Ethics, Contributory Infringement, Defenses, Inducement, Infringement, Supreme Court, Validity
The Supreme Court in the last several years has taken an activist approach to the area of patent law, granting certiorari in many more cases than in prior years and often reversing the Federal Circuit. If there was one theme running through those decisions, it is that the Court is trying to bring more certainty and … Continue Reading

Foreign Corporations and the Long Arm of the Law

By Brendan Cox on Posted in Declaratory Judgment, Electronics, Infringement, Massachusetts, Procedure/Jurisdiction
Can foreign corporations avoid the long arm of the law? A recent order in a Massachusetts declaratory judgment patent case suggests that the answer may be, “sometimes.” The case began when Venmill Industries, Inc. filed a complaint in Massachusetts federal court seeking a declaratory judgment of non-infringement of U.S. Patent No. 8,342,905, titled, “Optical Disk Restoration … Continue Reading

Google Remains on the Hook After Summary Judgment Denied

By Micah Miller on Posted in Contributory Infringement, Electronics, Indefiniteness, Infringement/Willfulness, Massachusetts, Software, Validity
Judge Rya W. Zobel’s recent decision denying a set of Google’s summary judgment motions has cleared the way for trial. Skyhook initially sued Google for infringement of thirteen patents. Currently, eight patents remain at issue: U.S. Patent Nos. 7,433,694 (the “’694 patent”); 7,474,897 (the “’897 patent”); 7,856,234 (the “’234 patent”); 8,031,657 (the “’657 patent”); 8,054,219 … Continue Reading

Protegrity’s “Bare Bones” Allegations Result in Dismissal, Again

By Micah Miller on Posted in Connecticut, Contributory Infringement, Infringement, Procedure/Jurisdiction, Software, Willfulness
In yet another case in the District of Connecticut, Protegrity has seen its claims for indirect and willful infringement dismissed because, according to the court, its complaint did not plead sufficient facts. District Judge Robert Chatigny granted AJB Software’s motion to dismiss, agreeing with AJB that the “bare bones” allegations in Protegrity’s complaint were insufficient … Continue Reading

In Thermometer Case, Reliance on Opinion of Counsel May Waive Privilege – But Only to a Certain Degree

By Nathan Harris on Posted in Infringement/Willfulness, Massachusetts, Medical Devices, Opinions of Counsel, Willfulness
How do you defend yourself against charges of willful patent infringement? Companies finding themselves facing such an allegation often use the defense that they relied on a pre-lawsuit opinion from a lawyer that the company does not infringe valid patents. Such an opinion, if it exists, can be a strong piece of defensive evidence, because … Continue Reading
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