District of Massachusetts IP Blog

Oral Argument Held on Appeal of Preliminary Injunction

In October 2011 Judge Gorton entered an injunction against Amphastar regarding methods for manufacturing generic enoxaparin.  Amphastar appealed, and the Federal Circuit heard argument on January 24, 2012.  A recording of the argument can be found below.

Momenta Pharm., Inc. v. Amphastar Pharm., Inc., 2012-1062 (Fed. Cir. Jan. 24, 2012)

Download 2012-1062

Full PI Issued Against Generic Pharma After TRO

Momenta Pharm. sued a number of competitor drug manufacturers who were about to launch products that Momenta felt were infringing its Patent Nos. 7,575,886 and 7,790,466 directed to methods of manufacturing the drug in question.  Judge Gorton issued, then extended, a TRO to prevent the use of the accused methods pending a full preliminary injunction hearing.  Following preliminary discovery during this time, the claim on the ‘466 patent was dropped.  A full hearing was eventually held, and an injunction on the ‘886 patent was ordered. 

Judge Gorton issued a detailed memorandum walking through the various arguments (including one related to the Hatch-Waxman safe harbor).  He felt that the plaintiff had met the four-factors required to get a PI, and so entered one. 

Momenta Pharm., Inc. v. Amphastar Pharm., Inc., 11-11681-NMG (D. Mass. Oct. 28, 2011)

TRO Granted And Extended Against Generic Drug Ramp-Up

Momenta Pharm. sued a number of defendants for patent infringement related to a generic version of one of Momenta’s patented drugs.  Because no sales had yet occurred, Judge Gorton granted a two-week temporary restraining order against the defendants, with a full preliminary injunction hearing scheduled for the end of the two-week period. 

After the hearing Judge Gorton extended the injunction by seven days during which the court asked the plaintiff for extra briefing regarding one claim term in dispute. 

Momenta Pharm., Inc. v. Amphastar Pharm., Inc., 11-11681-NMG (D. Mass. Oct. 7 and 21, 2011)

Stipulated Injunction Mitigates Prejudice From Stay

Gryphon Networks had sued a former employee and his new employer for patent infringement, trade secret misappropriation, breach of contract, unfair competition, etc.  The case was stayed by Magistrate Bowler pending the reexamination of the patent-in-suit.  Following that order the parties stipulated to a preliminary injunction prohibiting the defendant from selling the accused product.  I wonder what transpired to get the defendant to agree to the injunction. 

Gryphon Networks Corp. v. Contact Center Compliance Corp., 10-10258-MBB (D. Mass. Sep. 30, 2011)

MAN CANs Canned

Plum Island Soap Co. had sued Danielle and Company, Inc. for infringement of the trademark MAN CAN for tins of beauty products aimed at men.  Because the court found that the products as sold were “uncannily alike”, and there was likely to be confusion with regard to the marks, it entered a preliminary injunction.  Defendant was not enjoined from selling redesigned products without the name “can” and without confusingly similar labels.  The defendant did, however, have to contact all of its vendors, tell them to stop selling, and offer them refunds. 

Plum Island Soap Co. v. Danielle and Company, Inc., 11-11033-NMG (D. Mass. August 19, 2011)

TRO Granted In Knee Treatment Case

In April 2011 Genzyme twice sued Seikagaku Corp. and affiliates for patent infringement related to the defendants’ Gel-One product.  Genzyme also moved for a preliminary injunction.  Perhaps because the PI was taking too long, Genzyme also moved for a temporary restraining order preventing sales of the Gel-One product while the PI was under consideration.  That motion for TRO (good for an initial 14 days) was granted by Judge Woodlock (the case was originally assigned to Judge Casper but reassigned given the earlier cases).  The product was approved by the FDA on March 22, 2011, but sales had not begun as of the first complaint.  Now they're prohibited.  Absent a renewed order from the court, they’ll be ok again on October 17. 

Genzyme Corp. v. Seikagaku Corp., 11-10636-DPW (D. Mass. Oct. 3, 2011)

Quick Trial Leads to Infringement Verdict

After filing a complaint in April and moving for a preliminary injunction, Hologic was granted an expedited trial on the merits by Judge Young (as is his practice) against IZI Medical Products.  Hologic originally accused IZI of patent and trade dress infringement but by the time the case went to the jury in mid-July, the case was pared down to infringement of three claims.  The jury returned a verdict for Hologic on two out of three claims.  Post trial motions are sure to follow, and while they are unlikely to change the outcome in front of Judge Young, it has been known to happen.

Hologic, Inc. v. IZI Medical Products, LLC., 11-10619-WGY (D. Mass. Jul. 13, 2011)

Trademark Injunction Overturned Due To Delay

The First Circuit reversed a preliminary injunction granted by Judge O’Toole last February ordering Voice of the Arab World to cease using the mark MDTV in connection with medical related internet programming or services.  Reversal was ordered based on excessive delays, and the fact that VOAW’s use of the mark was known for 10 years prior to bringing suit. 

The injunction was originally based on use by VOAW that began in 2009 when the wording on its website changed.  The 1st Circuit held, however, that the course of dealings between the parties during the previous years (over several years they had tried to come to a resolution regarding VOAW’s use of the mark to no avail) outweighed the “minimal likelihood of qualitatively new harm arising from those revisions.”      

Defendant Enjoined From Using Competitor’s Customer Lists

Cheaters never prosper.  Particularly when caught red-handed and hauled into federal court. 

In this decision by Judge Casper (her first noted by this blog), Topcon Medical, an optical device company, was enjoined from using plaintiff Optos’ customer list, surreptitiously supplied by a former Optos employee who was hired, then fired (post-lawsuit) by Topcon.  Optos accused the employee of breach of his employment agreement and accused both the employee and Topcon of trade secret misappropriation.  Optos had been clued in to the shenanigans by a former Topcon employee who leaked several damning emails.  (Oops.) 

The defendants moved to dismiss for lack of personal jurisdiction, but that motion was denied.  Most of the requested injunction was granted but the court refused to enjoin Topcon from contacting all the Optos customers on the list in question because some were customers of other Topcon products which did not compete with Optos’ products. 

Optos v. Topcon Medical Sys., Inc., 10-12016-DJC (D. Mass. Mar. 7, 2011)

Injunction Entered Against Social Media Search App

Back in December Boathouse Group, Inc. sued TigerLogic Corp. for infringing Boathouse’s POSTPOST trademark for use with a social media search applications.  Boathouse moved for a preliminary injunction, which Judge Gorton allowed.  As the application for registration of the wasn’t filed until the defendant started using it, it was treated by the court as unregistered. 

The dispute came down to seniority of use.