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)

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)

Judge Saris and First Circuit Affirm Fee Award

In a case stemming from the District of New Hampshire, the First Circuit affirmed an award of attorneys fees to a prevailing defendant in a copyright case.  The defendant had sought an award of over $200,000 but the district court awarded $35,000.  The First Circuit noted the district court’s broad discretion and affirmed the award despite the district court’s break from the traditional Lodestart method of computing fees.  The panel found the district court’s reasoning in its fifteen page opinion compelling, and affirmed the award.

Judge Saris of D. Mass. sat by designation on the panel.

T-Peg, Inc. v. Vermont Timber Works, Inc., 10-2234 (First Circuit, Feb. 16, 2012)

BET Sued By Spurned Photog

A Boston photographer is suing Black Entertainment Television, LLC (Washington, DC) for copyright infringement relating to use of photographs which the complaint alleges BET never paid for. 

Friedman v. Black Entertainment Television, LLC, 11-12208-PBS (D. Mass. Dec. 13, 2011)

Cambridge Law Firm Sues Client To Recover Unpaid Fees

Lando & Anastasi, LLP (a Cambridge, MA IP law firm) has sued Innovention Toys, LLC (Covington, LA) for breach of contract and quantum meruit for failing to pay legal fees associated with patent and trademark matters, including litigation against Walmart and Toys “R” Us.  The complaint alleges non-payment of over $500k. 

Lando & Anastasi, LLP v. Innovention Toys, LLC, 11-12103-PBS (D. Mass. Nov. 29, 2011)

ARMS Case Sent Back to Judge Saris

The various ARMS cases have been mentioned several times in this blog.  One of them went up to the Federal Circuit, which just issued its decision.  In it the Federal Circuit affirmed Judge Saris’ invalidation of ARMS’ Reissue Patent No. 39,465 (directed to a firearm handguard) for failing to meet the written description requirement, but it also vacated a million dollar jury verdict because of a potential jury taint issue.  The appeals court’s logic was as follows: 

Another Run Up The Pet Steps

PetEdge, Inc. (Beverly, MA) has sued LTD Commodities Holdings, Inc. (Bannockburn, IL) for infringement of Patent No. 7,621,236 directed to a folding pet ramp and steps.  A previous suit was filed at about this time last year against Hammacher Schlemmer. 

PetEdge, Inc. v. LTD Commodities Holdings, Inc., 11-11255-PBS (D. Mass. July 18, 2011)

Toe Sneaker Patents Enforced

Vibram S.p.A. and its U.S. subsidiary (Concord, MA) have sued Fila USA, Inc. (New York, NY) for infringement of Patent Nos. 7,805,860; D579,181; and D582,134 directed to footwear allowing “independent articulation of individual toes.”  You’ve probably seen them:

 

Vibram S.p.A. v. Fila USA, Inc., 11-11192-PBS (D. Mass. July 6, 2011)

3D Scanning Patent Held Unenforceable For Inequitable Conduct

Metris U.S.A. and 3D Scanners had sued Faro Technologies for infringement of Patent Nos. 6,611,617 and 7,313,264 related to three-dimensional scanning.  Following a trial, Judge Saris ruled that the ‘617 patent was unenforceable due to inequitable conduct.  The 66 page opinion lays out in great detail the facts that caused Judge Saris to issue such a rare finding. 

No 93A Liability for CAD Knockoff

Following a jury trial, Real View LLC and its founders were found not liable for copyright infringement, trade dress infringement, or interference with contract for their creation of computer-aided kitchen design software that deliberately mimicked the design of a similar program of 20-20 Technologies.  Real View was, however, found liable for copyright infringement for downloading an illegal copy of 20-20's program and was hit for over $1M in damages. 

Following trial, Judge Saris took up the question of whether Real View’s other activities (improperly accessing 20-20’s tutorial videos, copying 20-20’s marketing scheme, etc.) violated 93A.