New England IP Blog

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

Category Archives: Declaratory Judgment

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Close Shave on Whether Cease and Desist Letter Creates DJ Jurisdiction

Rather than wait around for the hammer to fall, companies under threat of an intellectual property lawsuit sometimes choose to file a declaratory judgment complaint. Such “DJ” complaints usually ask the court to clear the air and decide the issue in the filer’s favor. Declaratory judgment filers are often motivated by the fact that they can … Continue Reading

Future and Unreleased Products Can’t Drive Litigation

In a recent decision out of the District of Massachusetts, Judge Talwani provided litigants with insights into patent subject matter jurisdiction in declaratory judgment actions. Here the patent owner, US Carburetion, had lost previous motions to throw the case out due to lack of declaratory judgment jurisdiction. But after repeatedly asserting that it does not want to … Continue Reading

Accused Infringer Secures Patent Invalidity in Eyeglass Screw Case

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

Lights Out for Invalidity and Unenforceability Counterclaims After PTAB Invalidates Design Patent

Flipping the switch on the last remaining claims in the case, a Massachusetts Court recently dismissed as moot two defendants’ counterclaims for declaratory judgment of invalidity and unenforceability following a PTAB decision invalidating the asserted patent. In 2013, Maureen Reddy sued defendants Lowe’s and Evolution Lighting for infringement of U.S. Design Patent No. D677,423, alleging … Continue Reading

In Onboard Wi-Fi Case, Covenant Not To Sue Has Wide Range

Judge Jeffrey Alker Meyer of the District of Connecticut recently released an opinion that is significant to litigants on either side of a covenant not to sue. In a complex case with a host of claims and counterclaims asserted among the parties, the patentee’s grant of a covenant not to sue on the asserted patent … Continue Reading

Wisp of a Possibility of Gas Kit Lawsuit May Establish Declaratory Judgment Jurisdiction

In a recent case concerning propane gas kits used as an alternative fuel conversion system, the District of Massachusetts found that declaratory judgment jurisdiction exists, even though the parties in the case had entered into an extended covenant not to sue. The opinion reasoned that because the accused infringer, New England Gen-Connect, is presently making and selling the accused products and … Continue Reading

Foreign Corporations and the Long Arm of the Law

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

Biosimilars Update

Novartis came one step closer to becoming the first company to offer a biosimilar drug for sale in the United States. Last month, an independent panel voted 14-0 to recommend FDA approval of Sandoz’s (Novartis’ generics division) application for its proposed ZarxioTM cancer drug – a generic version of Amgen’s patented Neupogen®. The decision is … Continue Reading

FairWarning: Your Patent May Be Invalid

In a new case before Judge Douglas Woodlock, Massachusetts-based Iatric Systems filed for a declaratory judgment that a patent held by FairWarning, a Florida company, is invalid. Iatric and FairWarning are competitors marketing computer software designed to alert health care facilities to potential violations of patient privacy.  The patent at issue, U.S. Patent No. 8.578,500, … Continue Reading
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