District of Massachusetts IP Blog

Inequitable Conduct Finding Vacated After Therasense

In May 2011 Judge Saris ruled that a patent directed to three-dimensional scanning was unenforceable due to inequitable conduct.  Following the Federal Circuit’s tightening of inequitable conduct in its Therasense decision, Judge Saris vacated her earlier decision, holding that the facts of the case did not meet the hightened standard, noting that her previous findings of materiality had been “cast to dust.”

In addition Judge Saris granted summary judgment in favor of the patentee on 93A and Walker-Process anti-trust counterclaims and granted summary judgment in favor of the accused infringer of non-infringement of the resurrected patent.  A motion for summary judgment of non-infringement of a second asserted patent was denied. 

Metris U.S.A. Inc. v. Faro Tech., Inc., 08-11187-PBS (D. Mass. Sep. 19, 2011)

Bad Faith Possible In Cranberry Spat

The world’s largest cranberry companies don’t get along.  In the present case Ocean Spray sued Decas for infringement of Ocean Spray’s patent on a processing method which yields minimal excess syrup.  Decas counterclaimed for, among other things, tortious interference, abuse of process, and anti-trust violations stemming from Ocean Spray’s assertions of its patent rights during a competitive bidding process (which allegedly led to Decas failing to win the bid). 

Judge Zobel denied summary judgment on those counterclaims saying that there is a genuine dispute of fact regarding whether Ocean Spray had sufficient information to assert its patent rights in good faith (and thus avail itself of the Noerr-Pennington immunity). 

Ocean Spray Cranberries, Inc. v. Decas Cranberry Products, Inc., 08-11738-RWZ (D. Mass. Apr. 8, 2011)

Antitrust Claims In Ion Beam Implantation Fight Pared Down

Following briefing to Magistrate Judge Dein as well as briefing on objections to her conclusions, Judge Gertner adopted the Report and Recommendations dismissing two claims, one alleging misleading the PTO, the other alleging conspiracy to monopolize.

 

This case stems from an infringement suit involving Patent No. 7,301,156, originally brought by Varian.  In that suit Advanced Ion asserted a number of antitrust counterclaims which were dismissed without prejudice for insufficient pleading.  [See here for a discussion of a cost award in that case.]  Instead of moving to re-plead its counterclaims, Advanced Ion chose to file them in this separate action asserting (in more detailed pleading) Walker Process claims, sham litigation claims for monopolization, and conspiracy to monopolize.

 

Following another motion to dismiss Magistrate Judge Dein recommended dismissing claims relying on fraud before the PTO regarding one set of (mis-)representations but not dismissing claims relying on a second set of omissions.  The lengthy opinion is detailed and very fact specific, but carefully walks through the alleged facts and weighs them against the appropriate pleading requirements, including those heightened by Rule 9(b).

 

Advanced Ion Beam Tech., Inc. v. Varian Semiconductor Equipment Assoc., Inc., 09-11448-NG-JGD (D. Mass. July 2, 2010)