District of Massachusetts IP Blog

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)

No Joint Inventorship for Parallel Researchers

Two doctors sued The General Hospital Corp. seeking under 35 U.S.C. § 256 to be added to two patents related to the discovery of a particular genetic mutation associated with Familial Dysautonomia.  Judge Casper granted summary judgment for the defendants because § 256 was inappropriate to grant the remedy sought by the plaintiffs.  The plaintiffs could not be added as co-inventors because they fell short of meeting the clear and convincing burden to prove their co-inventorship.  Specifically, there was no proof that the plaintiffs collaborated with the named inventors, a requirement of joint inventors.  The proper action was a determination of priority in an interference proceeding pursuant to 35 U.S.C. § 135 and thus the claim under § 256 was dismissed.

This case has a nice rundown of how different cases have used § 256 to deal with inventorship issues, both with collaboration, and without.

Rubin v. The General Hospital Corp., 09-10040-DJC (D. Mass. Apr. 28, 2011)

Weapons Manufacturer Loads Another Round

An individual has brought suit against his former employer Atlantic Research Marketing Systems (West Bridgewater, MA) and another weapons manufacturer Samson Manuf. Corp. (Whately, MA) for patent infringement and a determination of patent priority pursuant to 35 U.S.C. §§ 146 and 291. 

This case is the latest in a long running series of disputes over firearms , in particular a modular hand grip which attaches to firearms.  Let’s step back a bit and review before we get into the details of this complaint. 

Exhausted Tool Company DJs Aggressive Inventor

Irwin Industrial Tool Co. d/b/a Lenox (NC, but with operations in East Longmeadow, MA) has sued Bibow Indus., Inc. (NY) and its owner for declaratory judgment of validity of three Lenox patents (7,373,947; 7,415,988; and 7,195,031) directed to storage systems / protective devices for air acetylene gas tanks and declaratory judgment of non-infringement of two Bibow patents (6,976,502 and 7,588,276). 

The complaint arises from what it complains are Bibow’s attempts to “extract money from Lenox for years.”  A previous suit between the two companies, originally filed by Bibow in Florida but transferred to Mass. was resolved in Lenox’s favor on summary judgment when the court ruled that Lenox did not infringe Bibow’s patents.  (D. Mass. 06-30136-MAP.)  Since that case, Lenox alleges that Bibow refuses to leave Lenox alone and has repeatedly pestered Lenox and its parent company, asserting that Lenox’s patents are based on his work (making him an owner of their patents), and even applying to work at Lenox(!). 

Lenox seeks a declaration that Bibow is not an inventor of their patents as well as a declaration that Lenox does not infringe Bibow’s patents.

One side thought. 

Action to Correct Inventorship Need Not Invoke 102(f)

In an action pitting two doctors against The General Hospital Corp. (TGH) the doctors sought to correct inventorship of a patent under 35 U.S.C. § 256. They also sought to have the patent invalidated under 35 U.S.C. § 102(f). TGH sought to dismiss the § 102(f) action on the grounds that § 102(f) only provides a defense to patent infringement, not an affirmative cause of action. The plaintiffs opposed, but only because they were under the misunderstanding that they needed to plead § 102(f) in order to seek correction of the patent.

After a hearing where it was determined that inventorship was all that was at stake, Magistrate Judge Collings recommended dismissing the § 102(f) count because it was duplicative of the § 256 action, citing several Federal Circuit cases.

Rubin v. The General Hospital Corp., 09-10040-PBS (D. Mass. Nov. 1, 2010)

Dispute Over Patent Ownership Dismissed Under Forum Selection Clause

Flatspikes, LLC and its owner brought a multi-count complaint against Softspikes, LLC in a dispute involving patent ownership rights, licensing fees, etc.  The original asset purchase agreement between the parties contained a forum selection clause requiring any disputes to be brought in Maryland. 

 

In a short and to-the-point order, Judge Zobel ruled that the forum selection clause was valid (even though none of the parties were located in Maryland), and that the majority of counts in the complaint related to the subject matter of the agreement and therefore must be brought in Maryland.  Those counts were dismissed.  The counts not subject to the forum selection clause were also dismissed, though for other grounds including failure to state a claim.  The court also ordered the plaintiff to show cause why counts against certain individuals should not be dismissed due to plaintiff’s failure to serve those individuals within the 120 days allowed by Fed. R. Civ. P. 4(m).

 

Curley v. Softspikes, LLC, 09-11451-RWZ (D. Mass. June 21, 2010)

Judge Young Resolves Multiple Motions In LED Patent Infringement Case

In an ongoing dispute between Gertrude Neumark Rothschild and Cree, Inc. (the case was originally pending in the S.D.N.Y. before being assigned to Judge Young sitting by designation and then transferred by joint motion to D. Mass.), Rothschild accuses Cree of infringement of Patent Nos. 4,904,618 and 5,252,499 directed to methods for producing LEDs. 

 

The parties brought various motions including a motion to dismiss for lack of standing, motions for claim construction, and motions for summary judgment.  Judge Young dealt with them all in an omnibus 100 page opinion found here.  The decision starts with an explanation of the technology behind LEDs and the semiconductors used to build them and then walks through the legal issues one by one.

 

Cree moves to dismiss arguing that because the inventions were made by Rothschild when she was an employee of Philips, Philips owns the rights and Rothschild lacks standing to sue.  This motion was denied due to a dispute of fact over whether the relevant concepts were invented after Rothschild left Philips (who was a defendant in this case prior to settling and had insinuated in certain documents that it had no claim on the patents).  The decision noted that the ultimate burden to prove standing lay with the plaintiff, despite Rothschild’s repeated invocation of the “presumption of ownership,” a concept Judge Young rejected as an improper rephrasing of the presumption of validity:  “In essence, the so-called presumption of ownership is a misnomer.”  (See here for another instance of Judge Young’s frustration with the word “presumption” in patent jurisprudence.)

 

On claim construction, Judge Young refused to alter the constructions provided by Judge Connor earlier in the case finding that they were appropriate and did not imply certain requirements as suggested by Cree.  The Judge also denied the additional constructions proposed by Rothschild.

 

Disputes of fact prevented summary judgment on anticipation, failure to enable, and failure to name co-inventors.  Though summary judgment of no anticipation entered with regard to one asserted reference.  (Mirroring his actions in the Ambit case, which resulted from his decision on expert testimony in the NewRiver case, Judge Young almost entered summary judgment of no anticipation by other references sua sponte, but Cree created a fact dispute with a late expert submission; Judge Young acknowledged the submission was late but allowed it since it came after the general notice of Judge Young new practice provided in Ambit and NewRiver.)

 

Summary judgment of no inequitable conduct was granted with regard to some issues but denied as to others.  Summary judgment of no infringement was denied due to disputes of material fact.

 

Gertrude Neumark Rothschild v. Cree, Inc., 10-10133-WGY (May 13, 2010)