New England IP Blog

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

Massachusetts Passes Non-Compete Reform Law

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 state to not have adopted any version of the UTSA). The reform comes at the tail end of the 2018 legislative session and after several years of failed attempts at passing non-compete reform. Although Massachusetts lawyers should read the legislation in full and consult with counsel to prepare for the laws to take effect on October 1, 2018, the following post provides a summary of notable provisions in the non-compete legislation.

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Massachusetts Governor Vetoes Proposed Anti-Patent Troll Legislation

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, Baker explained in a letter to lawmakers that the patent troll reform section “is not narrowly tailored and is likely to have unintended consequences for Massachusetts residents, companies, and educational institutions.” 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, Inc. (“ArtSkills”) “develops and sells poster boards and poster board accessory products,” including a “Trifold Display Board with Header.”  ArtSkills claimed that its Trifold Board is “a patented display board of the type used to display information for presentation,” and is “uniquely designed to remain securely closed and undamaged until ready for use” because of its “key advantage” of using “a single sheet of material, including three display panels and a header panel . . . .” 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 holder could not receive lost profits stemming from overseas activity.

The patents-in-suit, each owned by plaintiff WesternGeco, involve technology for surveying the ocean floor using lateral steering.  Defendant ION developed a competing system that infringed WesternGeco’s patents; ION manufactured components for its system in the U.S., then shipped the components overseas to foreign companies which assembled and used the infringing system.  After losing a number of survey contracts to ION’s system, WesternGeco sued ION for infringement under Sections 271(f)(1) and (f)(2) of the Patent Act.  A jury subsequently found ION liable and awarded WesternGeco nearly $95 million in lost profits damages.  On appeal, the Federal Circuit reversed the lost profits award—concluding that Section 271(f) should be interpreted to exclude recovery of damages from lost foreign sales because it does not apply to extraterritorial activities. Continue Reading

New Local Patent Rules May Speed Up Patent Litigation In 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 patent cases filed in the district ended up taking 3 or more years to reach trial. Additionally, patent case schedules issued in the district were often criticized as slowly paced and lacking in certainty. And so plaintiffs looking for a quick and certain resolution tended to file their cases elsewhere.

Change appears to be here, however, as effective June 1, 2018, the District of Massachusetts amended its Local Rule 16.6 to provide for mandatory patent rules and scheduling. The prior local rules suggested a schedule for patent proceedings that parties could use in their scheduling orders, but left it up to the parties to agree to certain deadlines in the proposed order. The amended rules, however, require that the assigned judge set a trial date that is within 2 years of the initial scheduling conference (a court hearing that usually takes place within months of the complaint filing), and set certain other patent-specific deadlines on dates calculated from the initial scheduling conference date. 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

Summary Judgment Stalemate in Copyright Spat Between Former Collaborators

The Institute of Electrical and Electronics Engineers, Inc. (“IEEE”) is the well-known engineering standards organization often cited in patent litigations to inform issues ranging from claim construction to the state of the art. A recent decision from the District of New Hampshire gives an inside look at how the IEEE’s standards are made, and perhaps provides a cautionary tale about escalating disagreements in a typically-collaborative setting. Continue Reading