District of Massachusetts IP Blog

Another Claim Construction in PhosLo GelCaps Case

Fresenius Medical Care has sued various competitors for infringement of Patent Nos. 6,875,445 and 6,576,665 relating to drugs used to treat renal failure.  In a previous decision involving the case against Paddock Labs. and Amneal Pharm., Judge Stearns construed claim terms from the subject patents.  He has done so again in the case against Lupin and Zydus.  Unsurprisingly, Judge Stearns did not reconstrue previously addressed claim terms.  Instead he focused on terms such as “compression”, “caplet”, “capsule”, “optimizing” and other dosage delivering terms.  The opinion may be worthwhile reading for those who frequently litigate in the pharma space.

Fresenius Medical Care Holdings, Inc. v. Lupin Ltd., 10-11856-RGS (D. Mass. June 11, 2012)

Another RNAI Patent Dispute Can Go Forward

In the latest chapter of a long running dispute involving RNA interference (aka gene silencing), the University of Utah filed suit against officials of the University of Massachusetts and a number of other parties (just after those parties themselves had settled their internal dispute) to have one of Utah’s professors named as an inventor on two potentially very valuable patents.  The defendants moved to dismiss on two grounds, (1) claiming that any dispute between U. Utah and U. Mass. officials belongs exclusively before the Supreme Court pursuant to 28 U.S.C. § 1251(a), and (2) the claims of inventorship are not plausible.

Both motions were denied.  Judge Saris (who has been saddled with these cases for years) ruled that the dispute in federal court was proper because, among other reasons, the relief requested was prospective rather than one seeking damages (and therefore fell within an exception to exclusive Supreme Court jurisdiction).  Judge Saris also ruled that the complaint alleged sufficient facts to survive the challenge under Rule 12(b)(6). 

University of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften e.V., 11-10484-PBS (June 11, 2012)

True Fight Over True Fit

True Fit Corp. (Woburn, MA) has sued True & Co. (San Francisco, CA) for trademark infringement related to the use of the word TRUE for “personal matching services for apparel”.  Plaintiff owns a registration for FIND YOUR TRUE FIT and has applications for a number of other marks such as SHOP TRUE TO YOU, TRUE TO YOU, TRUE FIT, etc.  Defendant uses the mark TRUE (and has applied for registration of same) for personalized matching services for bras and related products.

True Fit Corp. v. True & Co., 12-11006-GAO (D. Mass. June 6, 2012)

Not The Original Platter

Herb Reed Enterprises (Arlington, MA) has sued Cape Entertainment, Inc. (Coconut Creek, FL) and its owner for trademark infringement relating to use of HERB REED AND THE PLATTERS. The plaintiff alleges ownership of the rights to the mark dating back to the founding of the original musical group in the 1950s. Defendants are accused of promoting a different band under the same name (as the plaintiff discovered when a dissatisfied customer reported the defendants’ activities).

Herb Reed Enterprises LLC v. Cape Entertainment, Inc., 12-11004-MBB (D. Mass. June 6, 2012)

Motions Disposed Of Zobel Style

Two heated patent cases involving a surgical endoscopic cutting device are pending before Judge Zobel on slightly different schedules.  In five pages Judge Zobel ruled on five dispositive motions and one motion for claim construction across both the cases.  After reviewing the “voluminous submissions”, as she commonly does, she denied the dispositive motions and handed down constructions with little fanfare.  For those who practice before Judge Zobel, I commend you to the final line of her order: “The court anticipates no further dispositive motions by either party.”

Smith & Nephew, Inc. v. Hologic, Inc., 10-10951-RWZ (D. Mass. June 5, 2012)

Smith & Nephew, Inc. v. Hologic, Inc., 11-12064-RWZ

Some Costs, No Fees, Awarded to Prevailing Patent Defendant

Following a drawn out patent dispute (the history of which can be found in the decision) Judge Gorton denied a motion of attorneys’ fees to a successful defendant after ruling the case was not exceptional.  Costs were awarded, but many categories of costs were disallowed for various failings.  The ruling is a good review of what you can and can’t recover as costs, and how to properly go about requesting the same. 

Haemonetics Corp. v. Fenwal, Inc., 05-12572-NMG, 09-12107-NMG (D. Mass. May 10, 2012)

Facebook Complaint Dismissed

After suing a host of defendants, a pro se plaintiff’s case against the chroniclers of Facebook has come to an end. The plaintiff, who was a student at Harvard at the same time as Mark Zuckerberg, alleged copyright infringement, defamation, and a variety of other wrongs. Magistrate Judge Collings, in an expansive opinion, analyzes each of them and orders them dismissed with prejudice.

Greenspan v. Random House, Inc., 11-12000-RBC (D. Mass. May 9, 2012)

Bad Lawyering Does No Favors

After several reexaminations, trial is approaching on a patent suit involving laser catheter systems.  The parties filed cross-motions on various points, some of which were allowed.  The opinion is an interesting read, if for no other reason than to confirm that judges really don’t like it when briefs make overwrought arguments or repeat arguments previously made and disposed of.  Such as the defendants here, who Judge Gorton called out for seeking a “ninth bite at the apple.”

Even potentially meritorious arguments, such as a laches defense (which the court noted “was the only [equitable defense] which merits extended discussion”) suffered due to defendant’s tactics.  The motion for summary judgment of laches was denied despite several mutli-year gaps prior to suit.  The court held against the defendant its motions for stay pending reexamination as well as its tendency to overstate facts and undersupport arguments.

Fun practice tip from Judge Gorton:  “Defendant should be made aware that hyperbolic statements and frequent capitalization, bolding and underlining throughout its briefs have the opposite of their intended effect.”  So there you go.

Cardiofocus, Inc. v. Cardiogenesis Corp., 08-10285-NMG (April 19, 2012)