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With Seagate Overturned, More Careful Analysis of Competitor Patents May Be A Good Idea 06/14/2016

Posted by Morse Barnes-Brown Pendleton in Client News, Intellectual Property, New Resources.
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Sean D. Detweiler (SDD)By: Sean D. Detweiler

The U.S. Supreme Court has just issued a decision in two unrelated cases[1] that overturns the 2007 Federal Circuit ruling[2], known as “Seagate”. The Supreme Court considers Seagate to be “unduly rigid” and overly limiting as to the potential for enhanced damages in patent infringement cases.

Since 2007, under the now-overturned-Seagate-analysis, a patent infringer could more easily avoid paying treble, or otherwise enhanced damages for their infringing activity, by simply demonstrating that they had not acted in an “objectively reckless” manner regarding their infringing activities. This essentially meant that a patent infringer could escape paying higher damages as long as they could present virtually any form of explanation or reason as to why they did not consider their activity to be infringing. This could even, in some instances, include asserting a defense during the patent infringement trial that they ultimately lost, with nothing else such as a non-infringement opinion or other legal analysis.

Now in 2016, based on this overturned decision, a court can assess enhanced damages under 35 U.S.C. §284, including treble damages, for patent infringement activities at the discretion of the court. This decision eliminates the more rigid test requirements of Seagate, which means courts can now assess enhanced damages more often for less egregious infringing activities.

How does this affect you? The Supreme Court decision did not go so far as to specify whether willful infringement is required for an enhanced damages award (vs. a requirement that the infringement be “egregious”). As such, in a patent infringement case where infringement is found, the court will take into account all evidence and at its discretion decide at the end of a trial whether the patent infringer should be on the hook for enhanced damages or not. Many had interpreted the Seagate ruling of 2007 as reducing the need for non-infringement opinions to be drafted by attorneys as a protection against enhanced damages should infringement be found.

Whether or not you had that view in 2007, it is clear that now with Seagate being overruled you may want to more carefully consider whether you should obtain at least a legal memorandum or analysis, if not a full-fledged legal opinion, from your patent attorney if you are concerned about a competitor patent and whether your product may infringe. If nothing else, it appears that in light of this Supreme Court decision such documents from your attorney will now do more to protect you from enhanced damages, including treble damages, if you are found to infringe another’s patents.

For more information concerning this issue, please contact Sean D. Detweiler.

[1] Halo Electronics, Inc. v. Pulse Electronics, Inc., U.S., No. 14-1513, 6/13/2016; Stryker Corp. v. Zimmer, U.S., No. 14-1520, 6/13/2016

[2] In re Seagate Technology, LLC, 497 F. 3d 1360

Is Software Patentable? 03/03/2016

Posted by Morse Barnes-Brown Pendleton in Computer Software & Hardware, Intellectual Property, Legal Developments.
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M0846496By: Brian J. Assessor

On June 19, 2014, the Supreme Court’s decision in Alice Corp. v. CLS Bank International sent shockwaves through many areas of patent law and, as a result of that decision, patent attorneys, inventors, and companies working in the computer and software space are wondering “is software patentable?” and, if so, “what type of software is patentable?”. The impact of this case should be a primary consideration for anyone filing a patent application related to software, even those who were not previously aware of the Alice Corp. decision.

Read the full article.

Learn more about our Patent Team.

MBBP Attorney to Host Office Hours at TechSandBox 1/28/2016 01/22/2016

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events.
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Sean D. Detweiler (SDD)On  Thursday, January 28, MBBP Attorney Sean Detweiler will host Office Hours at TechSandBox to help answer your patent and strategy questions.

Office Hours provides access to experts in topics such as intellectual property, business formation, benefits, taxes, marketing, sales, funding, IT and technology commercialization. Sean will be available for one-on-one, 45 minute sessions from 1:00PM- 5:00PM. This event will be offered probono for TechSandBox members and to non-members as space allows.

Sign up today to reserve your time slot by visiting TechSandBox!

MBBP Attorneys to Present at Upcoming Program, “Constructing a Solid Provisional Patent” 10/13/2015

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events.
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Patent Attorney Sean DetweilerOn Monday, October 19, Registered Patent Attorneys Sean D. Detweiler and Dr. Stanley F. Chalvire will present at a program hosted by TechSandBox for its Life Sciences SIG, “Constructing a Solid Provisional Patent.” Joining Sean and Stan are two Life Science CEOs. Learn from them first hand and save time, money, and anguish!

To learn more or to register for the event, please visit TechSandBox.

Patent Attorney Stan Chalvire

Tips for Caring for Your Patent Garden During Economic Winter 02/20/2015

Posted by Morse Barnes-Brown Pendleton in Intellectual Property, New Resources.
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Illustration - SLV058H (M0003309)There’s snow on the ground, snow on the MBTA tracks, snow on the roofs….it feels like winter will never end!  But inevitably it will, and we’ll once again have warm spring breezes, singing birds and blooming tulips to refresh our spirits.  In the meantime, while your real garden sleeps beneath the snow, this is the perfect opportunity to consider tending your patent garden to ensure that it flourishes for years to come.

Here are 5 tips from Patent Attorney Lisa Warren. Feel free to contact Lisa with questions about your patent portfolio.

Andrew Bunin to Panel BPLA Event 04/05/2013

Posted by Morse Barnes-Brown Pendleton in Attorney News, Events.
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Patent Attorney Andrew BuninOn Wednesday, April 17th MBBP Attorney Andrew Bunin, a former patent examiner, is sitting as a panelist for a Boston Patent Law Association event titled “Communicating with the USPTO – How to (hopefully) obtain favorable results when interacting with examiners and the USPTO“. The event is meant to provide some insight into how the Patent Office operates on a day-to-day basis. Andrew, along with three other panelists, will discuss how changes to laws and the Manual of Patent Examining Procedure (MPEP) affect the patent examiners, office actions, and interviews as well as how this insight can be used to obtain more favorable results when dealing with examiners and the USPTO.

To learn more about this event or to register, please visit the BPLA.

International Design Patent Application 12/19/2012

Posted by Morse Barnes-Brown Pendleton in Legal Developments.
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Patent Attorney Sean DetweilerBy: Sean D. Detweiler

Earlier this month, Congress passed S. 3486: Patent Law Treaties Implementation Act of 2012 (H.R. 6432 was previously passed by the House). The Act, if signed by the President, would allow those in the US to file a single international design patent application for international registration with the U.S. Patent & Trademark Office (instead of requiring separate filings in multiple countries). The Act would also change the term of a design patent from 14 to 15 years from the date of issuance, and provides for the publication of the international design application (also expanding Provisional Rights to such published application). Design patents cover the “ornamental” features of “articles of manufacture”. The bill may be tracked here.

For more information on this topic, please contact Sean D. Detweiler.

MBBP Welcomes Three New Attorneys 10/12/2011

Posted by Morse Barnes-Brown Pendleton in Attorney News, MBBP news.
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Labor and Employment Attorney Maura MaloneMBBP is pleased to announce the addition of three new attorneys, Maura Malone, David Fazzolare and Scott Bleier who have joined the firm as associates. Maura concentrates her practice in labor and employment law. Prior to joining Morse, Barnes-Brown & Pendleton, she worked for Malone Law LLC and served as a pro-tempore administrative law judge for the Mississippi Department of Unemployment Security, where she adjudicated unemployment benefits hearings.

Patent Attorney David FazzolareDavid is a registered patent attorney whose practice focuses on the strategic development of worldwide intellectual property portfolios, with a particular focus on preparing and prosecuting patent and trademark applications in the areas of biotechnology, pharmaceuticals and medical devices. He has experience performing intellectual property due diligence, including prior art searching, and patentability, freedom-to-operate, and non-infringement analyses. Prior to joining MBBP, David worked as a patent attorney and associate at Greenberg Traurig, LLP, and as a patent agent at Myriad Genetics, Inc.

Corporate Attorney Scott BleierScott is a corporate attorney whose practice focuses in the areas of general corporate and securities law with a special emphasis on private securities offerings, venture capital transactions, private equity financings and mergers and acquisitions, as well as general corporate representation of emerging growth companies ranging from start-ups to publicly held entities.

His experience includes representation of entrepreneurs and companies in the IT services, Internet and software fields in both domestic and international transactions. Prior to joining MBBP, he served as an associate in the corporate practice group at DLA Piper LLP (US) and in the business practice group at Testa, Hurwitz & Thibeault LLP.

Please feel free to contact Maura, David or Scott directly.

Leahy-Smith America Invents Act Approved by House of Representatives and Senate 09/09/2011

Posted by Morse Barnes-Brown Pendleton in Legal Developments.
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Patent Attorney Sean DetweilerBy: Sean Detweiler

On Thursday, September 8th, the US Senate voted 89-9 to approve the Leahy-Smith America Invents Act (HR 1249). This bill was previously approved by the House, and therefore now heads to President Obama’s desk for his signature, likely some time next week. The bill makes many changes to existing US patent law, including switching America to a first-to-file system rather than a first-to-invent system for patent applications, bringing America in line with virtually all other patent systems in the rest of the world. Other reforms include giving the USPTO authority to set fees for the patent application process, a reigning in of false-marking lawsuits, and an addition of various reviews and processes to clarify any patentability questions of patents post-grant. This bill represents the most sweeping change to patent law in decades.

For more information on this bill, please contact Sean Detweiler.

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