On January 4, 2019, the United States Patent and Trademark Office (“USPTO”) released a significant, much-awaited revision to its patentable subject matter eligibility guidance.1 The “2019 Revised Patent Subject Matter Eligibility Guidance” (the “Guidance”) changes the USPTO’s administrative procedures for determining whether a patent claim is directed to a judicial exception (e.g., a
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Defendants in Vineyard Vines Trademark Dispute Hit with Liquidated Damages and Attorneys’ Fees
In a recent decision out of the District of Connecticut, defendants MacBeth Collection, L.L.C, its affiliates, and owner found themselves in hot water when Judge Merriam determined they violated a permanent injunction barring the sale of certain products accused of trademark infringement. At issue was defendants’ whale-themed merchandise, which Vineyard Vines accused of misappropriating Vineyard
Court Sends Networking Patent Inventorship Dispute to Bench Trial
In order to qualify as an inventor on a U.S. patent, a person must contribute to the conception of the invention as embodied in one or more of the claims—merely building or implementing the already-conceived technology is not enough. And, the failure to include every actual inventor invalidates the subject patent. In a recent case
First-Filed Rule Prompts Dismissal of Heated Products Case in Favor of Warmer Venue
In a recent order allowing a defendant’s motion to dismiss a case involving heated products and heat pack technology, Judge Sorokin clarified a specific application of the first-filed rule.
In the case at hand, Schawbel Technologies LLC v. The Heat Factory USA, Inc., the plaintiff Schawbel alleged breach of an asset purchase agreement (Count I); alleged patent infringement
Gun Trigger Patent Lawsuit Misfire Does Not Warrant “Exceptional Case” Finding
After a lengthy and circuitous patent proceeding between plaintiff O.F. Mossberg & Sons (“Mossberg”) and defendants Timney Triggers, LLC and its related manufacturing entity (collectively, “Timney”), which ultimately resulted in Mossberg voluntarily dismissing the action, Judge Bolden of the District of Connecticut recently determined that the case was not “exceptional” such as to warrant awarding
Inventorship Claim in Disease Treatment Patent Dispute Survives Motion to Dismiss
Determining who qualifies as an inventor on a patent application requires careful attention to the facts surrounding each person’s contribution to conception of the invention, as embodied in the patent claims. In one recent case out of Massachusetts, the court evaluated a complex set of circumstances to resolve an inventorship dispute involving a collaboration between
Court Disqualifies Law Firm in Patent Suit, Finding No Quick Fix for Rule 1.7 Violation
Chief Judge Saris in the District of Massachusetts recently granted a motion to disqualify the Sunstein law firm from representing Altova in a patent suit against Syncro Soft, upon finding that the conflict was foreseeable based on the history of the parties’ interactions and their status as direct competitors. Both companies operate in the market
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
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 MassLive.com, Baker explained in a letter
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,