District of Massachusetts IP Blog

Motions Disposed Of Zobel Style

Two heated patent cases involving a surgical endoscopic cutting device are pending before Judge Zobel on slightly different schedules.  In five pages Judge Zobel ruled on five dispositive motions and one motion for claim construction across both the cases.  After reviewing the “voluminous submissions”, as she commonly does, she denied the dispositive motions and handed down constructions with little fanfare.  For those who practice before Judge Zobel, I commend you to the final line of her order: “The court anticipates no further dispositive motions by either party.”

Smith & Nephew, Inc. v. Hologic, Inc., 10-10951-RWZ (D. Mass. June 5, 2012)

Smith & Nephew, Inc. v. Hologic, Inc., 11-12064-RWZ

Bad Lawyering Does No Favors

After several reexaminations, trial is approaching on a patent suit involving laser catheter systems.  The parties filed cross-motions on various points, some of which were allowed.  The opinion is an interesting read, if for no other reason than to confirm that judges really don’t like it when briefs make overwrought arguments or repeat arguments previously made and disposed of.  Such as the defendants here, who Judge Gorton called out for seeking a “ninth bite at the apple.”

Even potentially meritorious arguments, such as a laches defense (which the court noted “was the only [equitable defense] which merits extended discussion”) suffered due to defendant’s tactics.  The motion for summary judgment of laches was denied despite several mutli-year gaps prior to suit.  The court held against the defendant its motions for stay pending reexamination as well as its tendency to overstate facts and undersupport arguments.

Fun practice tip from Judge Gorton:  “Defendant should be made aware that hyperbolic statements and frequent capitalization, bolding and underlining throughout its briefs have the opposite of their intended effect.”  So there you go.

Cardiofocus, Inc. v. Cardiogenesis Corp., 08-10285-NMG (April 19, 2012)

Jurisdiction Lacking In Music Case

A copyright case with a curious factual background was dismissed for lack of jurisdiction following Judge Ponsor’s approval of Magistrate Judge Neiman’s report and recommendations.  The case stemmed from a group of musicians who alleged that defendant producers purloined subject works and failed to pay promised royalties.  Because much of the action happened in Puerto Rico, and there were limited contacts to Mass., the case was dismissed. 

Alicea, et al. v. LT’s Benjamin Records, et al., 11-30002-MAP (D. Mass. Oct. 6, 2011)

Affirmative Defenses Sent To Arbitration

Abbott is accusing Centocor of infringing several patents related to drugs used to treat reheumatoid arthritis.  (Another case between the parties involves drugs used to treat psoriasis.)  Abbott moved for judgment on the pleadings / summary judgment on a number of Centocor’s affirmative defenses.  Defenses for express license and implied license were removed due to an intervening arbitrator’s decision (and Centocor’s agreement that such defenses could not be raised).  The defense of equitable estoppel was referred to arbitration by Judge Saylor in view of a previous agreement between the parties. 

Abbott Biotechnology Ltd. v. Centocor Ortho Biotech, Inc., 09-40089-FDS (D. Mass. Oct. 3, 2011)

After Long Road Eyewear Patents Defeated

In 2002 Aspex Eyewear sued Altair Eyewear for infringement of three patents in the Southern District of New York.  After a claim construction ruling the district court granted Altair’s motion for summary judgment of non-infringement.  The claim construction was reversed by the Federal Circuit and the case was returned to the district court where it was reassigned to Judge Young sitting by designation (several D. Mass. judges have been doing this to assist the SDNY with its docket) and then officially transferred to D. Mass.  In the meantime, Altair petitioned to reexamine one of the patents, but the PTO allowed all the original claims.  Then things got going in front of Judge Young.

Holding Company Denied Lost Profits

Following claim construction, Judge O’Toole entertained motions for summary judgment by defendants in a patent case involving moveable beds.  Judge O’Toole denied summary judgment of non-infringement and invalidity, but granted summary judgment of no lost profits because the patentee had assigned the patent to a holding company that had no profits, a common rookie assignment mistake.  

Ascion, LLC v. Ruoey Lung Enterprise Corp., 09-10293-GAO (Sep. 28, 2011)

Ruoey Lung Enterprise Corp. v. Tempur-Pedic Int’l, Inc., 09-11550-GAO

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)

Mutually Agreed Claim Construction Terminates Case Years Later

Following a reversal by the Federal Circuit, Judge Gorton denied an attempt to revise claim constructions agreed upon by the parties in a dispute over blood separating centrifuges.  The defendant then moved for summary judgment of non-infringement.  Judge Gorton agreed that the devices were non-infringing and entered judgment, declining to reach the issue of whether the asserted claims were indefinite.  The case turned, as it always does, on claim construction: 

Down Syndrome Testing Patent Invalidated

PerkinElmer sued Intema alleging that Intema’s Patent No. 6,573,103 directed to prenatal Down syndrome testing, was not infringed and invalid.  The case was originally pending before Judge Gertner, who construed the claims.  Judge Saylor ruled on a number of dispositive motions (summarized in a handy table on page 10 of the opinion), ultimately holding the patent to be invalid as anticipated and obvious.  A few other interesting items were covered in the decision, including: 

Infringer Not Permitted to Challenge Rights Transfer

In October 2010 Judge Gorton ruled that reverse mortgage forms used by Brookline Bancorp infringed copyrights owned by Homeowner Options for Massachusetts Elders when Brookline used the forms after its license expired.  Judge Gorton granted a motion for reconsideration, but came to the same conclusion.  Specifically Judge Gorton ruled, among other things, that technical errors with the copyright registration and assignment were insufficient to avoid liability for infringement. 

Homeowner Options for Massachusetts Elders, Inc. v. Brookline Bancorp, Inc., 09-11790-NMG (D. Mass. May 12, 2011)