New England IP Blog

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

Barbic to Host Webinar on Recent Patent Eligibility Decisions

Recent decisions in patent cases from the Supreme Court, Federal Circuit and the Patent Trial and Appeal Board (PTAB) continue to shape the patent litigation landscape. Additionally, the United States Patent and Trademark Office (USPTO) occasionally updates its patent eligibility guidance to illustrate how patent examiners should evaluate claims for patent subject matter eligibility under 35 U.S.C. § 101. On Thursday, September 28, Proskauer’s Andrej Barbic will be hosting a webinar addressing some of the more significant developments with respect to patent eligibility, with a focus on the impact on the life sciences industry. The webinar is through the Knowledge Group and is scheduled for Thursday, September 28, 2017, from 3:00 pm – 4:00 pm EST.

Judge Talwani Dismisses Diagnostic Patent Infringement Case under Section 101

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. Patent No. 7,267,820 (the “‘820 patent”) against Mayo Collaborative Services, LLC, d/b/a Mayo Medical Laboratories, and Mayo Clinic (“Mayo”). At the outset, Mayo moved to dismiss the complaint alleging that the ‘820 patent was patent-ineligible for applying well-known techniques to a law of nature. Continue Reading

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.