District of Massachusetts IP Blog

Knee Treatments Accused. Again.

For the second time in two weeks, Genzyme Corp. (Cambridge, MA) has sued Seikagaku Corp. (Tokyo, Japan) and its affiliates.  Last time it was for a declaratory judgment that the defendants’ Gel-One® product recently approved by the FDA will infringe Genzyme’s Patent No. 5,399,351 relating to biocompatible viscoelastic gel slurries.  This time it’s for a declaratory judgment that the same product will infringe Genzyme’s Patent No. 7,931,030 (issued on the same day as the complaint).  This new case was assigned to Judge Woodlock, who took over the previous case from Judge Casper. 

Genzyme also sued Anika Therapeutics, Inc. (Bedford, MA) for a declaratory judgment that Anika’s Monovisc® product (FDA approval pending) will infringe the ‘030 patent.  Genzyme had also previously sued Anika for infringement of the ‘351 patent and for infringement of Patent No. 5,143,724.  Judge Casper got the new Anika case.  Maybe it will find its way to Judge Woodlock.  The previous Anika case is assigned to Judge Gertner, who is leaving the bench in a few months. 

Genzyme Corp. v. Seikagaku Corp., 11-10704-DPW (D. Mass. Apr. 26, 2011)

Genzyme Corp. v. Anika Therapeutics, Inc., 11-10705-DJC (D. Mass. Apr. 26, 2011)

Expired Caller ID Patent Taken for Another Spin

Romek Figa d/b/a Abraham & Son (Hanover, MA) has sued Sony Ericsson (Durham, NC) and AT&T Mobility (Atlanta, GA) for infringement of Patent No. 4,924,496 (expired on May 12, 2008) directed to an automated incoming call display system.  Eight series of Sony phones are accused. 

This is Figa’s second D. Mass. case on this patent in just under a year.

Figa v. Sony Ericsson Mobile Communications (USA), Inc., 11-10379-NG (D. Mass. Mar. 4, 2011)

Changes Coming to D. Mass.

As noted previously, Judge Gertner has announced her intention to retire on September 1.  When Judge Gertner's successor is confirmed Judge Saylor will move to Boston and the new judge will sit in Worcester.

Judge Ponsor has announced that he will take senior status in August, creating a vacancy in Springfield.

Denise J. Casper will be joining the bench shortly, succeeding Judge Reginald C. Lindsay who passed away in 2009.

Flowmeter Claims Not Indefinite

Micro Motion and Krohne are involved in a dispute over whether Krohne infringes Micro Motion’s Patent No. 6,487,507 directed to a remote signal conditioner for a coriolis flowmeter.  In this order Judge Gertner construed two claim terms and denied a motion to hold the patent invalid on indefiniteness grounds. 

The two construed terms are “intrinsically safe” and “protection circuitry.”  The court found that the first term was sufficiently understandable within the technology and disclosure of the patent that it was not indefinite.  The court also found that because the second term did not invoke means-plus-function treatment, the defendant’s attempts to invalidate on indefiniteness grounds failed. 

Micro Motion, Inc. v. Krohne, Inc., 09-10319-NG (D. Mass. Feb. 3, 2011)

Gertner Declines to Exercise Jurisdiction Over Moderately Interactive Website

In 2009 Sportschannel New England filed a declaratory judgment action against Fancaster, Inc. and its president related to Sportschannel’s use of the mark FANCASTER.  Fancaster and its president moved to dismiss or transfer for lack of subject matter and personal jurisdiction.  Judge Gertner granted the motion to dismiss for lack of personal jurisdiction and thus did not reach the other questions. 

The most interesting aspect of this case is the court’s decision that the defendant’s interactive website, accessible to Massachusetts residents, did not result in a purposeful availment of Mass. jurisdiction.   

The defendants should feel lucky that they drew Judge Gertner for this case.  Judge Gertner is known to be a technology savvy judge, not only for her understanding of tech related issues but also for her incorporation of new technologies into her daily life.  She was one of the first judges to incorporate permanent video technology into her courtroom, she favors simultaneous webcasting of courtroom activities (a point with which the First Circuit disagrees), and she received some publicity a number of years ago when she start openly blogging.  She could well be considered a “judicial early adopter.” 

Her technical understanding (which is correct in my opinion) allowed her to understand the difference between active commercial websites and more passive, but still somewhat interactive, websites. 

The opinion’s money quote (opinion at 13):

Judge Gertner to Retire

According to this article in the Boston Globe, Judge Gertner will be retiring from the bench on September 1, 2011.

Malpractice Case Moved to Defendants’ Home Court

Cold Spring Harbor Lab. (Cold Spring Harbor, NY) originally sued law firm Ropes & Gray, LLP (Boston, MA) and one of its former attorneys in the Eastern District of New York (as case no. 10-00661-ADS-AKT, filed Feb. 16, 2010) for malpractice related claims.  

The complaint alleges that the attorney copied portions of a third party’s patent application into certain applications for CSHL without CSHL’s knowledge and that the copying led to substantial delays in the prosecution of CSHL’s patent applications.  The similarities were discovered by an examiner, leading to much prosecution consternation.  The claims are still pending (with new counsel) but the complaint alleges lost revenue for the period (so far) that CSHL has been without patent rights. 

The case was recently transferred to D. Mass. following a motion filed by R&G.

Cold Spring Harbor Lab. v. Ropes & Gray, LLP, 11-10128-NG (D. Mass. Jan. 25, 2011)

Coach Goes After Cape Cod Cell-Phone Retailer

Coach, Inc. (New York, NY) has sued Global Cellular (Hyannis, MA) and its owner for trademark infringement, copyright infringement, and a host of other claims, related to allegedly counterfeit Coach branded cell phone covers being sold at the defendants’ store at the Cape Cod Mall.  The complaint alleges that defendants’ products are sold for $15, Genuine Coach cell phone covers are sold for $60, and that the defendants are not authorized suppliers of authentic Coach goods. 

The complaint does not mention any cease and desist communications.  This is not surprising since the 22 page document seems designed to scare the living daylights out of the small retailer.  

Download Coachcomplaint

Coach, Inc. v. Global Cellular, 10-11887-NG (D. Mass. Nov. 3, 2010)

BMI Suffers “Incalculable Damage” By Another Bar Playing Songs Without Permission

BMI (New York, NY) and a variety of rights holders and artists have sued Ulster, Inc., operator of O’Neill’s (Salem, MA) and its managers / officers for copyright infringement.  BMI alleges that O’Neill’s played five songs from the BMI repertoire without permission.

 

Business establishments shouldn’t be playing copyrighted songs without permission.  But I’m not sure that “defendants’ entire course of conduct” (the complaint only alleges the playing of the five songs) is “causing plaintiffs great and incalculable damage.”  It’s that kind of rhetoric, and the attitude that goes with it, that gives BMI a bad name.

 

Broadcast Music, Inc. v. Ulster, Inc., 10-11107-NG (D. Mass. July 1, 2010)

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)