New England IP Blog

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

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

Cold to Mootness Challenge, But Warm to Inequitable Conduct Defenses

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 invalidity, and because Brooklands sought attorneys’ fees on related grounds, the court did not moot the inequitable conduct counterclaim, and instead issued summary judgment of no inequitable conduct on the merits. Continue Reading