District of Massachusetts IP Blog

Judge Gertner Construes Terms In Down Syndrome Testing Patent

PerkinElmer, inc. brought a declaratory judgment claim of non-infringement and invalidity of Intema Ltd.’s Patent No. 6,573,103 directed to testing for Down syndrome during pregnancy.  In her claim construction order, Judge Gertner construes disputed claim terms, mostly centered around integration of test results from different trimesters.  The highlights:

 

• The court favored the patentee in two disputes regarding how the file history limited terms in question (the court found that the file history was not limiting in those instances)
• The court three times relies on extrinsic evidence, a rare move in the post-Phillips world, all three times favoring the construction offered by the patentee.  In the first instance the parties offered constructions equally supported by the intrinsic evidence so the court turned to the extrinsic evidence.  The court favored the patentee’s expert supported construction over the plaintiff’s dictionary supported construction because the former was “more specific to the processes involved in this patent.”  In the second instance only the patentee offered extrinsic evidence to resolve an ambiguity.  In the third, the appropriate definition of a term was the broader one.
• Judge Gertner hinted at a challenge to the patentability of the invention, noting that such would have to wait for summary judgment but would “present an intriguing question” with a quick nod to the Supreme Court’s recent decision in Bilski.
• The order concludes with a chart of the adopted constructions, a very helpful practice adopted by a number of patent savvy judges. 

 Download Gertner Markman

 

PerkinElmer, Inc. v. Intema Ltd., 09-10176-NG (D. Mass. July 2, 2010)

Infringement Suit Filed As Competitor Gears Up For U.S. Sales

Genzyme Corp. (Cambridge, MA) has sued Anika Therapeutics, Inc. (Bedford, MA) for infringement of Patent No. 5,143,724, and 5,399,351 directed to a biocompatible viscoelastic gel slurry and method for using same.  In two parts, the complaint specifically targets Anika’s Monovisc® product for treating osteoarthritis. 

 

First, the complaint asserts infringement of the ‘724 patent as a result of the making, using, and offering to sell Monovisc in the U.S. for sale in Europe, Turkey, and Canada.  Second, the complaint seeks a declaratory judgment of infringement of the ‘724 and ‘351 patents as Anika gears up to sell Monovisc directly to the U.S. market as demonstrated by a Pre-Market Approval pending before the FDA and other activities.

 

Genzyme Corp. v. Anika Therapeutics, Inc., 10-11146-NG (D. Mass. July 7, 2010)

Barrier Manufacturers In Dispute Over ZIP Marks

Zipwall, LLC (Arlington, MA) has sued Melino Enterprises, Inc. (Cranston, RI) for trademark infringement.  Zipwall sells barrier systems and components using “Zip” based marks, for which Zipwall owns a number of federal trademark registrations and applications including ZIPWALL®, ZIPHOOK®, ZIPRAIL, ZIPPPOLE, and ZIP. 

 

Melino currently offers barrier-system doors under the mark ZIP-DOOR.  Zipwall accuses Melino of trademark infringement and unfair competition.

 

Zipwall, LLC v. Melino Enter., Inc., 10-11062-NG (D. Mass. June 22, 2010)

Inventor Brings Infringement Suit on Expired Caller ID Patent

Romek Figa d/b/a Abraham & Son (Hanover, MA) has sued High Tech Computer Corp. (“HTC”) (Taiwan) and its U.S. affiliates and importer for infringement of Patent No. 4,924,496
(which expired on May 12, 2008) directed to a caller ID system and accusing HTC and its related entities of importing and selling a variety of infringing mobile telephones including several associated with T-Mobile and Cingular.

 

Frustrated by slow correspondence between the parties dating from 2005 through 2008, and no doubt knowing that damages were only going down, Figa finally brought suit.  Though if Figa knew of the infringement as early as 2005, is it possible he knew or should have known prior to Apr. 5, 2004, more than six years prior to filing suit?  I smell a laches dispute.

 

Side note: the claims of this patent, while written in means-plus-function language, are awfully broad.

 

Romek Figa d/b/a Abraham & Son v. High Tech Computer Corp., 10-10575-NG (D. Mass. Apr. 6, 2010)

Honeywell Sues Former Suitor For Patent Infringement

In a verified complaint, Honeywell Int’l, Inc. (Morristown, NJ) sued Memsic, Inc. (Andover, MA) for infringement of Patent No. 5,247,278 directed to a magnetic field sensing device.  The story apparently goes like this: 

 

First Mesmic offered to purchase Honeywell’s magnetic sensor business but Honeywell declined.  Then Mesmic offered to license Honeywell’s magnetic sensor technology but Honeywell declined.  Then Mesmic began offering its own line of magnetic sensors, so Honeywell sued.

 

Honeywell Int’l, Inc. v. Memsic, Inc., 10-10528-NG (D. Mass. Mar. 30, 2010)

Pro Se Infringer’s Appeal Fails

Robert Gentile, an individual inventor, had sued Sun Products and its owner for infringement of Patent No. 5,722,906 directed to a street hockey ball filled with antifreeze.  Following summary judgment of infringement and no invalidity a bench trial was held on willfulness and damages.  Prior to the trial the defendants’ counsel withdrew and no new counsel made an appearance.  The court entered default judgment against Sun Products while its owner proceeded pro se.  Following the trial the court found that the owner had either destroyed or withheld records regarding infringing sales and that his infringement was willful.  He was ordered to pay ~ $630k in damages, which was tripled due to willfulness.  The plaintiff was also awarded $180k in attorneys’ fees.  (See http://bostonipblog.typepad.com/dmass-ip-blog/2010/02/judge-gertner-awards-attorneys-fees-in-patent-case.html)

 

In a non-precedential opinion, the Federal Circuit affirmed Judge Gertner’s order denying the owner’s motion for a new trial, which asserted a variety of grounds that the appeals court rejected, including one that amounted to taking pity on him because he was pro se.  Though no costs were awarded.

 

http://www.cafc.uscourts.gov/opinions/09-1529.pdf

 

Gentile v. Sun Prods, Inc., 2009-1529 (Fed. Cir. Apr. 6, 2010)

Judge Gertner Awards Attorneys' Fees In Patent Case

Judge Gertner awarded close to $180k in attorneys’ fees and costs following a patent case that involved both willful infringement and bad faith litigation tactics.  The award reflected a blended rate of $351 per hour for just over 500 hours of work which counsel noted was well below the average for patent cases in Boston where less than $1 million was at risk.

 

Although the decision itself doesn’t give many details about the bad acts (other court papers are referenced for specifics) the order is noteworthy simply because of the rarity of such fee awards.

 

Gentile v. Sun Hockey, Inc., 05-11885-NG (D. Mass. Jan. 20, 2010)

File Sharing Is Not Fair Use

In a long awaited and lengthy opinion, Judge Gertner has laid out her reasons for a previous ruling that the actions of Joel Tenenbaum, found liable by a jury for copyright infringement to the tune of $675,000 for unauthorized sharing of 30 songs files, were not protected by the fair use defense.

 

Tenenbaum’s counsel, Harvard Law Professor Charles Nesson, had moved to add the defense at the tail end of the case.  The amendment was allowed, and Prof. Nesson mounted a vigorous defense that Tenenbaum’s file sharing was protected by fair use.  Judge Gertner ruled pre-trial that fair use would not be presented to the jury.  The reasons are set forth in yesterday’s opinion.

 

As Judge Gertner notes in the memorandum, she did everything she could to allow Tenenbaum to mount a fair use defense, including suggesting arguments tailored to the facts of this case that might have some merit.  But counsel for the defendant “mounted a broadside attack,” arguing that fair use should encompass all file sharing for private enjoyment.  The Court noted that the defense as raised ran so counter to well established precedent that nothing save for rewriting the copyright laws could have stretched fair use that far.

 

Scattered throughout the opinion are instances of the court expressing its frustrations with defense counsel.  In particular, the opinion:

 

-takes defense counsel to task for questionable conduct during the case including the late addition of the fair use defense, general missed deadlines, ignored rules, and even illegal recording of counsel and the court without consent.

 

-notes that in an amicus brief filed before Prof. Nesson represented Tenenbaum, Prof. Nesson remarked that the fair-use arguments are “very weak.”

 

The opinion retraces the history of the fair use in some detail, including its status as an equitable defense, its presentation to juries, and its application to arguably “non-commercial” uses.  The court then walks through the defense and why it does not excuse Tenenbaum’s use of the works in question.

 

The court winds up the opinion with a brief recitation of hypothetical scenarios where fair use might apply to someone who engaged in unauthorized file sharing, but concludes with its ruling pretrial, that not all file sharing is fair use and summary judgment in favor of the plaintiffs on the defense is appropriate.

 

http://pacer.mad.uscourts.gov/dc/cgi-bin/recentops.pl?filename=gertner/pdf/tenenbaumfairusedec7th09finalng.pdf

 

Sony BMG Music Entm’t v. Tenenbaum, 07-11446-NG (Dec. 7, 2009)