New England IP Blog

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

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 be understood and adhered to closely.  In one recent case, a defendant’s missed date led to a stern rebuke from the court and a loss of evidence. 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 a reminder that early summary judgment motions face the same high bar in disposing of key issues and will not be allowed where material facts remain in dispute. 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 responding to a motion to dismiss.

In late December 2016, Plaintiff PetEdge brought suit against Marketfleet Sourcing, Inc. d/b/a FrontPet for infringement of PetEdge’s patent directed to a “Folding Pet Ramp and Steps.” In response, Marketfleet filed an answer containing a number of affirmative defenses and alleging Non-infringement, Invalidity, and False Marking counterclaims. PetEdge subsequently moved to dismiss the counterclaims and certain affirmative defenses under Federal Rules of Civil Procedure 12(b)(6) and 12(f). 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 infringement and has a regular and established place of business.  Since TC Heartland was decided, the district courts have been flooded with motions to transfer cases to different venues.

In what could be the first post-TC Heartland venue decision rendered there, a District of Massachusetts court recently granted a defendant’s motion to transfer a patent infringement case to New Jersey.  The plaintiff had originally sued the defendant for patent infringement in the Eastern District of Texas, despite the fact that the defendant is a Delaware corporation with its principal place of business in Newark, New Jersey.  Soon thereafter, the defendant moved to transfer the case to the District of New Jersey—but while that motion was pending, the parties instead agreed to transfer the case to Massachusetts, a venue that was proper under pre-TC Heartland case law. Continue Reading

Capraro to Chair Patents for Financial Services Summit in NY

Proskauer partner Joe Capraro will serve as event chair for the 14th annual Patents for Financial Services Summit in New York City on July 19-20.  Joe will provide opening remarks to the IP counsel in attendance, a recap of the first day of the conference, and moderate a panel of Federal Court justices entitled, “View from the Bench:  Review of the Past Year in Patent Law.”

In addition, partner Kim Mottley will moderate a panel discussion, “Analyzing Recent Cases Before the Supreme Court,” and patent counsel Patrick Niedermeier will host a roundtable discussion on “Encouraging Innovation and Invention Disclosures within your Organization.”

This will mark Joe’s 11th consecutive year participating in the conference, at which Proskauer has been a longtime sponsor. For further information about the event, please visit the event website.

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 and methods for secure data sharing on the Internet. 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 plaintiff’s claim. Continue Reading