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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

Sequenom Petitions Supreme Court to Clarify Scope of Mayo in Sequenom v. Ariosa 04/05/2016

Posted by Morse Barnes-Brown Pendleton in Intellectual Property, Legal Developments, Life Sciences, Medical Devices.
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M0846516Late last month, Sequenom, Inc. filed a Petition for Writ of Certiorari requesting the United States Supreme Court to clarify the scope of its Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) decision, as applied to Sequenom’s claimed inventions.  The Mayo decision, which held that a method correlating a drug dosage regimen and levels of the drug in the blood was an unpatentable law of nature, has had the profound effect of narrowing the scope of patent-eligible subject matter in the United States and has cast doubt on the validity and enforceability of previously-issued United States patents.

Sequenom’s discovery related to the discovery of cell-free fetal DNA circulating in maternal plasma, which was used to invent a test for detecting fetal genetic conditions in early pregnancy, and thereby avoid subjecting the mother to dangerous, invasive techniques such as amniocentesis.  The Federal Circuit agreed that Sequenom’s invention combined and utilized man-made tools of biotechnology in a new way that revolutionized prenatal care; however, in view of Mayo, such inventions were deemed patent-ineligible as a matter of law, since their new combination involved only a “natural phenomenon” and techniques that were “routine” or “conventional” on their own.

Despite the Federal Circuit’s reluctant holding that Sequenom’s claimed inventions were not patent-ineligible, multiple judges wrote separately to explain that while this result was probably not intended by Mayo, that decision controlled and only the Supreme Court could clarify Mayo’s reach to prevent a “crisis of patent law and medical innovation.”  Sequenom’s petition now asks the Supreme Court to clarify the scope of its Mayo decision in view of Sequenom’s claimed inventions, and to determine whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon; (2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery.

If the Supreme Court grants certiorari it will have a compelling set of facts before it to clarify the scope of Mayo, and we patiently await its decision, which will have high stakes for the life sciences community.

For more information, contact Patent Attorney Stan Chalvire.

MBBP Event: Unfair Competition and False Advertising 07/30/2014

Posted by Morse Barnes-Brown Pendleton in Events, Intellectual Property.
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Intellectual Property Attorney Sheri MasonOn August 12th MBBP is hosting a seminar on Unfair Competition/False Advertising: How the Supreme Court’s recent decisions impact false advertising claims against competitors. The Supreme Court recently issued two decisions, Lexmark International, Inc. v. Static Control Components, Inc. and POM Wonderful LLC v. Coca-Cola Co., which impact rights a party may have against competitors for false advertising claims under the Lanham Act. This seminar, presented by MBBP Trademark Attorney Sheri Mason, will discuss unfair competition and false advertising under the Lanham Act, the Lexmark International, Inc. v. Static Control Components, Inc.and POM Wonderful LLC v. Coca-Cola Co. decisions, and how these decisions may affect your rights against third parties.

To learn more or to register, please visit our events page.

For more information on false advertising, please feel free to contact Sheri directly.

Supreme Court Rules Aereo’s T.V. Streaming Services Violate Copyright Law 06/30/2014

Posted by Morse Barnes-Brown Pendleton in Intellectual Property.
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Intellectual Property Attorney Sheri MasonBy: Sheri Mason

On June 25, 2014, the U.S. Supreme Court ruled that Aereo, Inc.’s T.V. streaming services violate U.S. copyright law, reversing the Second Circuit’s decision that held that Aereo’s system (which consists of tiny antennas housed in a centralized location) “amounted to nothing more than a cloud-computing version of old fashion rabbit ears – a private transmission within the home.”

In a decision written by Justice Breyer, the Court reasoned that Aereo’s system does not provide a “private performance” similar to an off-site digital video recorder, but rather provides a “public performance” within the meaning of the Copyright Act’s “Transmit Clause” in violation of the major television networks’ copyrighted works.  To reach this decision the Court determined, first, that Aereo “performs” broadcast works because it allows its paid subscribers to watch T.V. programs at virtually the same time they are being broadcast, like CATV companies.  Second, the Court determined that Aereo transmits these works to “the public” because it communicates its transmissions “to a large number of people who are unrelated and unknown to each other.”

While there is concern that this ruling may impose copyright liability on other cloud-based technologies, the Supreme Court made clear that its ruling only applies to Aereo’s system and that Congress “did not intend to discourage or control the emergence or use of different kinds of technologies.”  Whether or not providers of other technologies violate the Transmit Clause – or other provisions of the Copyright Act – will need to be determined on a case-by-case basis.

The full opinion can be found here.

For more information on copyright law, please feel free to contact Sheri.

Supreme Court Expands Pool of Claimants in Whistleblower Case 03/07/2014

Posted by Morse Barnes-Brown Pendleton in Public Companies.
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Corporate Attorney Joseph MarrowBy: Joseph Marrow

On March 4, 2014, the United States Supreme Court issued its decision in a much anticipated whistleblower retaliation case. In its decision, Lawson v. FMR, LLC, No. 12-3, the Supreme Court expanded the coverage of an anti-retaliation claim under Sarbanes-Oxley Act of 2002 (SOX) to an employee of a privately-held contractor (the contractor provided investment management services to Fidelity mutual funds). Pursuant to the Dodd-Frank Act, the Securities and Exchange Commission established an award program for whistleblowers creating a new private right of action for employees in the financial services sector who suffer retaliation for disclosing information about fraudulent or unlawful conduct related to the offering or provision of a consumer financial product or service. The First Circuit had ruled that the anti-retaliation provision only applies to employees of public companies. In a 6 to 3 vote, the Supreme Court reversed the decision of the First Circuit in favor of expanding the coverage of the whistleblower statute to cover employees of a public company’s private contractors and subcontractors.

In Lawson v. FMR, the Supreme Court interpreted a provision of SOX, namely 18 U.S.C. Section 1514A protecting whistleblowers, which provides in part: “No [public] company …, or any officer, employee, contractor, subcontractor, or agent of such company, may discharge, demote, suspend, threaten, harass, or in any other manner discriminate against an employee in the terms and conditions of employment because of [whistleblowing or other protected activity].” The Supreme Court was faced with the question whether the protected class was simply limited to employees of the public company itself or would include “employees of privately held contractors and subcontractors – for example, investment advisers, law firms, accounting enterprises – who perform work for the public company?” Noting that SOX was enacted following the Enron scandal and in part in response to that scandal, the Supreme Court interpreted the statute as a response to a “concern about contractor conduct of the kind that contributed to Enron’s collapse.” As such, the Supreme Court held that a broader interpretation of the statute (to capture contractors that perform work for public companies) was warranted.

The implications of the Supreme Court’s decision are far reaching. The Supreme Court’s holding significantly expands the pool of potential whistleblower claimants. It remains to be seen whether the parade of horribles predicted by the dissent – resulting in a multitude of spurious claims – will come to fruition.

For more information on this topic please contact Joe Marrow.

Supreme Court Review of Whistleblower Case 12/17/2013

Posted by Morse Barnes-Brown Pendleton in Corporate.
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Corporate Attorney Joseph MarrowBy: Joseph Marrow

Recently, the United States Supreme Court heard oral argument in a whistleblower retaliation case. In Lawson v. FMR, LLC, the Supreme Court is faced with the question whether to expand the coverage of an anti-retaliation claim under Sarbanes-Oxley to an employee of a privately-held contractor (which provides investment management services to Fidelity mutual funds), a subsidiary of a public company. Pursuant to the Dodd-Frank Act, the Securities and Exchange Commission established an award program for whistleblowers creating a new private right of action for employees in the financial services sector who suffer retaliation for disclosing information about fraudulent or unlawful conduct related to the offering or provision of a consumer financial product or service. In the case on appeal to the Supreme Court, the First Circuit had ruled that the anti-retaliation provision only applies to employees of public companies. The Supreme Court must decide whether to expand the definition of the class protected by the statute to employees of privately-held companies. The decision is expected in the Spring of 2014.

For more information on this topic, please contact Joe.

Impact of the Supreme Court Striking Down the Defense of Marriage Act on Immigration 06/26/2013

Posted by Morse Barnes-Brown Pendleton in Client News, Immigration.
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Immigration Attorney Grant GodfreyBy: Grant Godfrey

On June 26, 2013, the Supreme Court struck down the federal 1996 Defense of Marriage Act (“DOMA”), ruling in a 5-4 decision that the law violates the rights of gays and lesbians and intrudes into states’ rights to define and regulate marriage. DOMA prohibits the federal government from recognizing same-sex marriages, even if they have been conducted in the 12 states and District of Columbia that allow them. The effect of DOMA is that it has denied the extension of over a thousand federal benefits to same-sex couples.

Since the cornerstone of Immigration Law, the Immigration and Nationality Act, is federal law, the Department of Homeland Security has been required under DOMA to prohibit same-sex couples from sponsoring each other for immigration benefits that heterosexual spouses are routinely granted, including derivative nonimmigrant visas (e.g. H-4 and L-2 status), Green Card sponsorship (e.g. as an immediate relative or as a derivative beneficiary of their spouse’s being granted a Green Card), and accelerated naturalization for Green Card holders who are living with their U.S. Citizen spouse.

The agency in charge of granting immigration benefits, the U.S. Citizenship and Immigration Services (“CIS”), has not yet issued a press release as to whether it will immediately begin granting these benefits to same-sex couples. We expect that there will be some delay as CIS drafts internal policy memoranda and we will provide updates on any important developments.

Please do not hesitate to contact the attorneys in our Immigration Practice with any questions about the impact of the Supreme Court striking down DOMA, or any other important immigration questions that you may have.

Massachusetts Supreme Judicial Court Upholds Right to Enforce Employment Arbitration Agreements 09/16/2011

Posted by Morse Barnes-Brown Pendleton in Attorney News, Employment, Legal Developments, MBBP news, New Resources.
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Employment Attorney Bob SheaMBBP Employment Attorney Bob Shea has written an article titled “Massachusetts Supreme Judicial Court Upholds Right to Enforce Employment Arbitration Agreements“. The article discusses a recent decision by the Massachusetts Supreme Judicial Cuort (“SJC”), Joulé, Inc. v. Simmons, 459 Mass. 88 (2011), in which the SJC upheld an employer’s right to compel an employee to arbitrate her gender and pregnancy discrimination claims while the Massachusetts Commission Against Discrimination (“MCAD”) processed her complaint. In so doing, the SJC refused to give the MCAD primary jurisdiction over the claims and instead ruled that, assuming the arbitration agreement was valid, the employer was entitled to proceed with arbitration of the dispute. The article analyzes the SJC’s rulings and the practical implications for employers.

To read the full article, please visit our employment resources page.

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