New England IP Blog

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

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

USPTO Updates Patent Eligibility Guidance in View of Federal Circuit Berkheimer Opinion

The U.S. Patent and Trademark Office (USPTO) recently issued a memorandum to its patent examining corps that changes the way examiners should evaluate the question of whether a claim element is “well-understood, routine, conventional” when making a § 101 eligibility determination.  The changes outlined in the memo were prompted by the recent Federal Circuit decision in Berkheimer v. HP, Inc., which held the above question is an issue of fact that, if disputed, precludes a finding of subject matter ineligibility at the pleading or summary judgment stages.  In the memo, the USPTO provides a new framework for how examiners are to formulate § 101 rejections using Step 2B of the Alice/Mayo analysis when a claim element potentially represents well-understood, routine, conventional activity. Continue Reading

Supreme Court Rules That PTAB Must Review In IPRs All Challenged Claims, Or None At All

In its second opinion this week with wide-ranging implications for the inter-partes review (“IPR”) process, the Supreme Court on Tuesday addressed whether the Patent Trial and Appeal Board (“PTAB”) has the authority to institute review on a sub-set of claims from a challenger’s petition. In a 5-4 decision penned by Justice Gorsuch, the Supreme Court said no. Now, the PTAB has a binary choice – review all of the challenged claims, or none of them. Continue Reading

In Face of Separation of Powers Challenge, Supreme Court Upholds Patent Office Inter Partes Review

Some call it the patent death squad. Others laud it as a powerful weapon in the battle against patent trolls. Whatever one’s opinion on the matter, the Supreme Court yesterday found that the U.S. Patent Office’s inter partes review (“IPR”) proceeding, a process that can invalidate patents many years after they issue, does not violate Article III of the Constitution.

The case was brought to the Supreme Court by Oil States Energy Services, LLC, an oilfield services company. Oil States argued that the Patent Office, an institution of the executive branch of the government, should not be deciding disputes on whether an issued patent should be invalidated, as this power is vested exclusively in the judicial branch of the government by Article III. In other words, the independent federal courts should be handling these patent validity disputes, not the Patent Office that issued the patent. Continue Reading

Plaintiff Torpedoed with Attorneys’ Fees for “Objectively Unreasonable” Copyright Claim

In a recent decision from the District of Connecticut, Judge Meyer awarded attorneys’ fees against a plaintiff who the court found brought an “objectively unreasonable” copyright infringement claim based on an unpublished work of non-fiction.

Plaintiff Joseph Leary’s 2013 action alleged that a book written by defendants Roy Manstan (“Manstan”) and Frederic Frese (“Frese”), and published by Westholm Publishing, LLC, infringed plaintiff’s manuscript about a Revolutionary War-era submarine called the “Turtle.” According to the Court’s earlier summary judgment order, reported by us here, plaintiff and Frese worked together in the 1970s to create a replica of the “Turtle,” and in the intervening decades plaintiff drafted a manuscript “weaving together a biography of Bushnell [the original builder of the sub], historical information about the Turtle, and plaintiff’s own experience building a replica of the Turtle.” Continue Reading

Court Makes Motion to Dismiss in Trademark Dispute Magically Disappear

A basic tenet of litigation is that the court must have personal jurisdiction over the parties to the case.  In one recent decision, an out-of-state defendant in a trademark infringement dispute could not use a motion to dismiss to escape from the reach of the District of Connecticut court.  The court found sufficient evidence to show that it had personal jurisdiction over the defendant, and that the plaintiff’s complaint had properly stated a claim for relief.

Plaintiff Communico, based in Connecticut, holds two registered U.S. trademarks—“MAGIC” and “THE MAGIC OF CUSTOMER RELATIONS”—in the field of course materials and educational services.  Defendant DecisionWise, a Utah company offering employee-training programs for customer relations and communication, later began using the marks “MAGIC” and “Engagement Magic” in connection with its services, both on its website and in the title of a published book. Continue Reading

Complaint Sheltered From Dismissal In Patent Row Over Personal Tents

A recent opinion from Judge Shea in the District of Connecticut sheds important light on the sufficiency of pleadings in declaratory judgment patent cases.  Noting that declaratory judgment actions are of particular importance in the intellectual property sphere, Judge Shea denied a motion to dismiss a complaint – even though the complaint included patents issued after the action was filed, and contained only a comparatively simple allegation of invalidity.

The case involves a dispute between Anthem, an online retailer of sporting goods and equipment, and Under the Weather, a company that develops, designs, and sells “sportspods,” or small personal tents intended for use during outdoor sporting events played in bad weather.  Initially, Under the Weather sold its products through Anthem’s online marketplace.  Ultimately, however, the parties’ business relationship fell apart; Anthem then began selling similar products made by a different manufacturer.  According to Anthem, Under the Weather subsequently threatened suit against it, alleging that the similar products Anthem was selling infringed its patents on “sportspod” devices. Continue Reading

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