New England IP Blog

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

Category Archives: Issues

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Federal Circuit Holds That IPR Time-Bar Determinations Can Be Appealed

Earlier this week, the Federal Circuit issued an en banc opinion in Wi-Fi One v. Broadcom that holds the PTAB’s determinations of whether an IPR petition was timely filed under 35 U.S.C. § 315(b) are appealable.  In reaching this decision, the en banc court overruled an earlier panel’s decision that such time-bar determinations are final and nonappealable … 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

Three Years of Alice: Federal Circuit Cases Upholding Patent Eligibility Under Alice Step 2

This post follows our previous post summarizing Federal Circuit cases upholding software patent claims on Alice Step 1 grounds.  Here, Step 2 decisions are explored in more detail, with a focus on additional lessons learned during the Step 2 analysis. Surviving Step 2—which requires that the claims include “significantly more” than the abstract idea itself—often … 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

BPLA Panel with Judge Young on Reverse Payments after Actavis

On October 26, the Boston Patent Law Association will host a panel featuring Judge William Young to discuss the legal landscape following the Supreme Court’s  2014 opinion in Actavis v. FTC. In that case, the Supreme Court held that large and unexplained payments in the settlement of Hatch-Waxman patent lawsuits may raise antitrust issues. The BPLA panel is … Continue Reading

Three Years of Alice: Federal Circuit Cases Upholding Patent Eligibility Under Alice Step 1

It has now been over three years since the U.S. Supreme Court handed down its transformative patent decision in Alice Corp. v. CLS Bank.  During that time, the Federal Circuit has issued only a precious few decisions upholding the validity of software patent claims.  Thus, it is critical that patent applicants and practitioners understand the … Continue Reading

Barbic to Host Webinar on Recent Patent Eligibility Decisions

Recent decisions in patent cases from the Supreme Court, Federal Circuit and the Patent Trial and Appeal Board (PTAB) continue to shape the patent litigation landscape. Additionally, the United States Patent and Trademark Office (USPTO) occasionally updates its patent eligibility guidance to illustrate how patent examiners should evaluate claims for patent subject matter eligibility under … Continue Reading

Judge Talwani Dismisses Diagnostic Patent Infringement Case under Section 101

In a recent patent infringement case relating to a method for diagnosing a neuro-muscular disorder, Judge Indira Talwani in the District of Massachusetts found the asserted patent claims to be patent ineligible because the claims were directed to a naturally occurring interaction. The case involved Athena Diagnostics and its licensees who sought to enforce U.S. … Continue Reading

Court Bounces Untimely Extrinsic Evidence in Claim Construction Phase

In order to carry out the “just, speedy, and inexpensive determination” of the cases before them, courts rely on scheduling orders to ensure that cases move forward in a timely and efficient manner.  In patent cases, where there are several complex phases—including claim construction and expert depositions—the deadlines set forth in the scheduling order must … Continue Reading

Early Summary Judgment Denied in Stapler Patent Lawsuit

Judge Gorton in the District of Massachusetts recently denied an early summary judgment motion filed in a patent infringement suit, holding the motion to be premature on two grounds. First, a scheduled claim construction hearing had yet to occur, rendering a proper infringement analysis impossible. Second, material issues of fact remained regarding an estoppel claim. The decision serves as … Continue Reading

“Ruff” Start for Defendant in Pet Ramp Patent Dispute

Judge Saylor of the United States District Court for the District of Massachusetts recently narrowed the counterclaims and affirmative defenses available to a defendant in a consumer products dispute. The decision highlights not only the importance of pleading sufficient facts to meet the applicable standard, but also the potential effect of a parties’ representations when … Continue Reading

Massachusetts Court Decides to Transfer Case in View of TC Heartland Venue Standard

Less than two months ago, the Supreme Court handed down its decision in TC Heartland v. Kraft Food Group Brands LLC—which significantly changed the way that venue in patent infringement cases would be determined.  Under TC Heartland, infringement actions can only be filed where the defendant is incorporated, or where the defendant has committed acts of … Continue Reading

Computer-Based Publishing Patent Goes Offline after Alice Inquiry

In a recent order from the District of Massachusetts, the court granted a defendant’s motion for summary judgment in a patent infringement dispute, finding the asserted patent claims invalid under 35 U.S.C. § 101. The court’s underlying analysis is particularly instructive for its application of the Alice two-part framework to claims that are directed to computerized systems … Continue Reading

Planned Motion to Dismiss Insufficient to Extend Rule 26(f) Deadlines

In an ongoing patent infringement case involving patents for floor-mounted electrical outlet housings, a federal court in Connecticut recently denied a Joint Motion for a Discovery Dispute Conference, signaling the court’s hesitation to delay the initiation of discovery pursuant to Rule 26(f) merely because a defendant represents that it intends to move to dismiss a … Continue Reading

Some Cardiac Monitoring Patents Beat Alice Challenge, While Others Fail to Survive

In the time since Alice changed the landscape of patent eligibility for certain types of inventions, the Federal Circuit has begun pumping out opinions interpreting this landmark Supreme Court case. The expanding body of law has enabled lower courts to find their rhythm when utilizing the Alice test to determine subject matter eligibility. In one recent … Continue Reading

Pre-Sale Use of Data Storage Trademark Not Enough to Secure Priority Rights

A Massachusetts federal court recently found multiple early uses of a sought-after trademark insufficient to confer priority of rights.  The dispute concerned two technology companies, Nexsan and EMC, each seeking to use the UNITY mark in connection with their computer data storage technologies. The Court held that EMC’s pre-sale uses did not establish “use in commerce” and … Continue Reading

Amended Contentions Deemed Timely Served Due to Parties’ Misunderstanding

Under some circumstances, party error can excuse late-filed amendments to infringement and invalidity contentions, according to a recent decision by Judge F. Dennis Saylor IV. Approximately five years ago, plaintiff DataTern, Inc. (“DataTern”) filed a patent infringement suit against defendant MicroStrategy, Inc. (“MicroStrategy”) over a patent claiming a “method for interfacing an object oriented software application … Continue Reading

Court Denies Attempt to Prevent “Plain and Ordinary” Claim Construction Proposals

The presumption that claim terms should be interpreted using their plain and ordinary meaning, absent express intent to the contrary, has long been a staple in claim construction. Parties often submit proposed constructions that ask the court to give certain terms their ordinary and customary meaning—the meaning that the terms would have to those skilled in … Continue Reading

Life Sciences at the PTAB

Later this month, the Boston Bar Association and the Boston Patent Law Association will jointly host a panel discussion on the recent rise of life science litigation at the U.S. Patent Office’s Patent Trial and Appeal Board (“PTAB”). The panel, to be moderated by Proskauer’s Andrej Barbic, promises to, “explore the rise in life science litigation at the PTAB in … Continue Reading

Cheerleader Uniform Designs Protectable Under Copyright Act

The Supreme Court recently held in Star Athletica, L.L.C. v. Varsity Brands, Inc., that the designs on certain cheerleader uniforms may be protected copyrights. The 6-2 decision clarified the test to be applied when determining whether a feature incorporated into the design of a useful article would be eligible for copyright protection.… Continue Reading
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