New England IP Blog

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

Category Archives: Massachusetts

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First-Filed Rule Prompts Dismissal of Heated Products Case in Favor of Warmer Venue

By Kimberly Li on Posted in Consumer Goods, Massachusetts, Motion to Dismiss, Procedure/Jurisdiction, 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

Inventorship Claim in Disease Treatment Patent Dispute Survives Motion to Dismiss

By Patrick Niedermeier on Posted in Biotechnology, Inventorship, Massachusetts, 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

Court Disqualifies Law Firm in Patent Suit, Finding No Quick Fix for Rule 1.7 Violation

By Kimberly Li on Posted in Ethics, Massachusetts
Chief Judge Saris in the District of Massachusetts recently granted a motion to disqualify the Sunstein law firm from representing Altova in a patent suit against Syncro Soft, upon finding that the conflict was foreseeable based on the history of the parties’ interactions and their status as direct competitors.  Both companies operate in the market … Continue Reading

Massachusetts Passes Non-Compete Reform Law

By Mark W. Batten, Samantha Regenbogen and Laura Franks on Posted in Massachusetts, Trade Secrets
On August 10, 2018, Massachusetts Governor Charlie Baker signed into law a bill making significant reforms to Massachusetts’ law regarding non-compete agreements, as well as adopting the Uniform Trade Secrets Act (“UTSA”) (joining 48 other states as well as DC in adopting the UTSA at least in part, and leaving New York as the lone … Continue Reading

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

New Local Patent Rules May Speed Up Patent Litigation In Massachusetts

By Safraz Ishmael and Kimberly Li on 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 … Continue Reading

Cold to Mootness Challenge, But Warm to Inequitable Conduct Defenses

By Kimberly Li on Posted in Attorneys’ Fees, Health Care, Inequitable Conduct, Massachusetts
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

By S. James Boumil, III on Posted in Consumer Goods, Copyright, Massachusetts, Motion to Dismiss
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

By Gourdin Sirles on Posted in Attorneys’ Fees, Internet, Massachusetts
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

By James Anderson on Posted in Health Care, Massachusetts, Procedure/Jurisdiction
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

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

First-to-File Rule Brings Venue of Camera Patent Fight into Focus

By Patrick Niedermeier on Posted in Electronics, Jurisdiction, Massachusetts, Motion to Transfer, Stays
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

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

Subpoenas on Customers Blocked in MRI Patent Case

By Alexander Roan on Posted in Health Care, Massachusetts, Medical Devices
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

Judge Talwani Dismisses Diagnostic Patent Infringement Case under Section 101

By Julio Mendez on Posted in Biotechnology, Massachusetts, Patent Eligibility, Subject Matter Eligibility
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

Early Summary Judgment Denied in Stapler Patent Lawsuit

By S. James Boumil, III on Posted in Consumer Goods, Massachusetts, Summary Judgment
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

By James Anderson on Posted in Consumer Goods, Massachusetts, Motion to Dismiss
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

By Patrick Niedermeier on Posted in Electronics, Improper Venue, Massachusetts, Motion to Dismiss
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

By Scott Bertulli on Posted in Internet, Massachusetts, Software, Subject Matter Eligibility, Summary Judgment
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

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

By Patrick Niedermeier on Posted in Health Care, Judgment on the Pleadings, Massachusetts, Medical Devices, Subject Matter Eligibility
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

By S. James Boumil, III on Posted in Electronics, Massachusetts, Software, Trademarks and Trade Dress
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

By Gourdin Sirles on Posted in Massachusetts, Procedure/Jurisdiction, Software
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

By Patrick Niedermeier on Posted in Biotechnology, Claims, Construction & Drafting, Health Care, Massachusetts
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
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