This is a four-month issue of the Patent and Trademark Bulletin for the District of Massachusetts following a hiatus for the 2009/2010 holiday season. In this issue:  

  • Judge Ponsor issues Markman ruling in laser probe case [1]  
  • Metris U.S.A., Inc. receives favorable claim construction in optical scanning patent [2]  
  • Court construes claim terms in patent infringement action brought by Sapidyne Instruments [2]  
  • Judge Young reverses jury verdict on obviousness and remands case for new trial, emphasizing that the mere ipse dixit of experts is not substantial evidence [3]  
  • Lack of a grant to practice the invention, although not dispositive, found to be a significant factor in finding that licensee lacked standing [4]  
  • Court threatens to enter summary judgment of non-obviousness sua sponte in patent dispute concerning internet on airlines [4]  
  • Motion to dismiss for lack of personal jurisdiction and to transfer granted in trademark infringement case [5]  
  • Performance Food Group Company preliminarily enjoined from using new name and logo [5]  
  • Court denies motion to enter preliminary injunction against Big Lots in connection with “Real Deal” advertising campaign [6]


American Medical Systems, Inc. v. Biolitec, Inc., C.A. No. 08-30061-MAP, Memorandum and Order Regarding Construction of Patent Claims (D. Mass. Oct. 28, 2009) (Ponsor, D.J.) [Claim Construction].

The District Court (Ponsor, D.J.) construed several disputed claim terms in a patent directed to a side-firing laser probe that delivers laser energy to prostate tissue to vaporize or ablate the tissue and reduce the size of the organ.

Plaintiffs American Medical Systems, Inc. and Laserscope, Inc. (collectively, “AMS”) brought suit against Biolitec, Inc. and related companies (collectively “Biolitec”) for infringement of U.S. Patent No. 5,428,699. (Note that two other cases involving these same parties and allegations of patent infringement were discussed in the February/March 2009 issue of this publication.) The ‘699 patent is generally directed to a side-firing laser system that utilizes a laser probe including a fiber-optic core surrounded by a cladding or sheath. Laser light travels along the fiber core before reflecting off a surface at an angle such that 90% of the laser energy or more passes through a particular area on the transmitting surface and ultimately hits the prostate tissue. Prior to the Markman hearing, the parties stipulated to the constructions of ten claim terms, leaving seven terms to be construed by the court.

In construing the claim term “transmitting surface,” the court rejected the definition provided by Biolitec because it excluded an embodiment of the patent. In particular, while Biolitec argued that a transmitting surface must lie on the outside of the cladding, the court found that one figure in the patent illustrated a transmitting surface that was located on the external surface of the transparent tube, and thus, should not be limited as Biolitec suggested.

The court similarly looked to intrinsic evidence to construe the claim terms “cladding,” “core cladding,” and “glass cladding.” AMS argued that the term “cladding” should be construed separately from the terms core and glass. But the court found that each claim always recited either core cladding or glass cladding, and never just cladding alone. Biolitec also argued that the terms core cladding and glass cladding should be construed identically. In support of its position, Biolitec pointed to the use of the “doped silica” in the specification as core cladding for a described experiment. This use, it asserted, necessarily meant that glass and core claddings were identical. The court, however, disagreed. The court stated that an experiment’s materials are necessarily particular, and as such, a chosen material for the experiment should not limit the invention to that material. It thus found Biolitec’s position too restrictive. The court ultimately adopted the construction of the term “glass cladding” from a another case involving the ‘699 patent in the District of Minnesota. In that case, however, the term “core cladding” was not construed and, therefore, the court was left to construe the claim term in view of the specification.

The court’s construction of the limitation related to “said reflecting surface…at least 1.4X greater than the first width” also deserves comment. The court found that limitation was indefinite because it lacked a necessary verb, leaving it open to multiple conflicting interpretations. Because the court may not rewrite the language of a claim so that it makes sense, it deemed the claim indefinite under the written description and enablement requirements of 35 U.S.C .§ 112, first paragraph.  

Metris U.S.A., Inc. v. Faro Technologies, Inc., C.A. No. 08-11187-PBS, Memorandum and Order (D. Mass. Oct. 22, 2009) (Saris, D.J.) [Claim Construction].

The District Court (Saris, D.J.) construed a disputed claim term in a patent related to optical scanning for 3D modeling. The dispute resulted from a suit brought by plaintiff Metris U.S.A., Inc. (“Metris”) against Faro Technologies, Inc. (“Faro”) alleging infringement of U.S. Patent No. 6,611,617, entitled “Scanning Apparatus and Method,” and U.S. Patent No. 7,313,264, entitled “Scanning Apparatus and Method.”

The parties were unable to agree on the meaning of the claim term “synchronization signal.” The dispute centered on whether the term required that the “synchronization signal” originated from a light detector (i.e., a camera). Claim 1 of the ‘617 patent recites “a trigger pulse generator for receiving the synchronization signal for the light detector defining the recording times thereof….” Faro argued that the term “synchronization signal” should be limited to “a series of electrical timed signals defined by the camera” because the phrase “defining the recording times” directly follows the term “light detector.” The court, however, agreed with Metris that the plain language of the claim indicates that the phrase “defining the recording times” modifies the term “synchronization signal.” The court further noted that the definition proposed by Faro excluded an embodiment described in the specification in which the synchronization signal went to the camera.

Thus, the court concluded that the term “synchronization signal” was not limited to signals generated by the camera, but instead broadly construed the term as “an electronic signal used to coordinate events or actions.”

Sapidyne Instruments, Inc. v. Gyros US, Inc., C.A. No. 08-11150-RWZ, Order Regarding Claim Construction (D. Mass. Nov. 25, 2009) (Zobel, D.J.) [Claim Construction].

The District Court (Zobel, D.J.) construed three disputed claim terms in patents related to assays. The dispute resulted from a suit brought by plaintiff Sapidyne Instruments, Inc. (“Sapidyne”) against Gyros US, Inc. (“Gyro”) alleging infringement of U.S. Patent No. 6,120,734, entitled “Assay System,” and U.S. Patent No. 6,664,114, entitled “Solid Phase Assay for Detection of Ligands.”

First, the parties agreed that the term “conduit means” was a means-plus-function claim. While the parties did not dispute the functionality of the term, they disagreed as to the corresponding structure. Sapidyne argued that the corresponding structure was a “hollow tube,” while Gyros argued that the corresponding structure was a “hollow passage through a lens.” Finding that each embodiment of the ‘734 patent defined the conduit as part of the lens, the court agreed with Gyros. In view of dependent claims that included a lens limitation, Sapidyne argued that the theory of claim differentiation supported its position. The court, however, held that the presumption of claim differentiation does not override the statutory requirement of 35 U.S.C. § 112 with respect to construing means-plus-function claims.

The court further supplemented the construction proposed by Gyros to include a requirement that the hollow passage be light-transparent. The court deemed this characterization of the conduit structure to be “necessary to perform the recited function.” Thus, the final construction of the term “conduit means” was “a light-transparent hollow passage through a lens.”

Second, two other dsiputed terms related to various contact time limitations as they applied to two different assay configurations. Gyros argued that the language related to the contact time should be construed to mean “less than about one minute.” Sapidyne countered by arguing that in some instances the contact time may exceed one minute. Sapidyne argued that a number of variables could affect the length of contact time such that the time exceeds one minute.

The court agreed with Sapidyne. Not only did the court refuse to read the limitation of “less than about one minute” into the claims, but it also found that the language of the claims related to the contact time was clear and did not need further construction.

NewRiver, Inc. v. Newkirk Products, Inc., C.A. No. 06-12146-WGY, Memorandum of Decision and Order (D. Mass. Dec. 16, 2009) (Young, D.J.) [JMOL, Obviousness, Expert Opinion].

The District Court (Young, D.J.), inter alia, ordered a new trial as to particular claims of the patent-in-suit, finding that the jury’s verdict regarding obviousness of the claims was not supported by substantial evidence in light of the court’s erroneous jury charge.

Plaintiff NewRiver, Inc. (“NewRiver”) sued the defendant Newkirk Products, Inc. (“Newkirk”) in an action for infringement of U.S. Patent No. 6,122,635 (the ‘635 patent”), titled “Mapping Compliance Information into Useable Format.” The patent was generally directed to a system for providing access to compliance information acquired from the Securities and Exchange Commission (“SEC”)’s” Electron Data Gathering, Analysis, and Retrieval (“EDGAR”) system database. After trial, the jury returned a verdict that Newkirk infringed claims 9-11 of the ‘635 patent, but that these claims were also invalid as being obvious. The jury also found that several other claims were also obvious though not infringed by the defendant. Subsequently, the parties engaged in post-trial briefing and this summary focuses on the court’s decision with respect to claims 9-11 of the ‘635 patent.

The issue before the court was whether the jury’s verdict regarding infringement and invalidity of claims 9-11 of the ‘635 patent was supported by “substantial evidence.” With regard to infringement, the Court found that the evidence of record was sufficient to maintain that Newkirk infringed claims 9-11.

However, the court found that substantial evidence did not support the jury’s verdict regarding the finding of obviousness. Newkirk argued that besides expert testimony, it offered evidence that New River’s own predecessor product acted as prior art to undermine the patentability of the claims at issue. The court, however, noted that New River provided undisputed witness testimony that the predecessor product specifically did not derive its data from the EDGAR database as required by claim 9. Accordingly, the court found that the evidence supporting the invalidity of claim 9 was primarily the testimony of Newkirk’s expert witness, who merely read the claims into evidence and concluded, in his opinion, that the claims are obvious to someone skilled in the art. The expert’s testimony failed to (i) identify any art that rendered claims 9-11 obvious, (ii) point out where any of the claims’ limitations were disclosed in the prior art, or (iii) show how the prior art references could be combined to render any of the claims obvious.

The court noted that while the expert testimony was admissible under Rules 704 and 705 of the Federal Rules of Evidence, the court was also bound by the Federal Circuit’s holding in Koito Mnfg. Co. v. Turn-Key-Tech, LLC, 281 F.3d 1142, 1149 (Fed. Cir. 2004). There, general and conclusory testimony was held inadequate to meet the “substantial evidence” standard. Koito effectively rendered opinions of qualified experts on the ultimate issues of anticipation, obviousness, and the doctrine of equivalents legally inadequate unless the bases for such opinions are spelled out on the record.

Thus, the court stated that “[i]n short, I botched the jury charge” by telling the jury it was open to them to believe what the experts, including Newkirk’s expert, had said. The expert’s opinion was fatally flawed since its bases were never explained. Absent the expert’s testimony, the jury had no basis to resolve the issue of obviousness as to claims 9-11 of the ‘635 patent. The court recognized that New River did not object to the expert testimony at the time that the testimony was offered or even during pre-verdict judgment as a matter of law, instead waiting till post-verdict briefing to cite Koito. Nonetheless, the court held that this procedural issue was not determinative.

The court then followed the First Circuit’s standard for granting new trials, and ordered a new trial before a properly charged jury on the issue of obviousness vel non of claims 9-11 of the ‘635 patent. The court also ordered a new trial as to infringement of claims 9-11 as well, noting such was only fair since the jury was fully empowered and engaged to determine the ultimate verdict on claims 9-11. The court also took the step of stating that in future cases it would sua sponte rule at the earliest possible moment on the adequacy of expert opinions proffered on the issues of obviousness, anticipation, written description, or doctrine of equivalents even in the absence of objection. It believed that such an approach is consistent both with Federal Circuit jurisprudence and with Federal Rule of Evidence 705, which permits the judge to require that the bases for a proffered expert opinion be laid out before the opinion is received.

E8 Pharmaceuticals LLC. v. Affymetrix, Inc., C.A. No. 09-10832-GAO, Opinion & Order (D. Mass. Jan. 13, 2010) (Young, D.J.) [Standing of Licensee].

This dispute regarding the standing of plaintiff arose from a suit brought by E8 Pharmaceuticals LLC (“E8”) and the Massachusetts Institute of Technology (“M.I.T.”) against defendants Affymetrix, Inc. (“Affymetrix”) alleging infringement of U.S. Patent No. 6,703,228, entitled “Methods and Products Related to Genotyping and DNA Analysis.”

M.I.T. is the assignee of the ‘228 patent. M.I.T. entered into an exclusive license with E8 in June 2008, granting E8 the right to sue infringers. In addition, the license provided that “M.I.T. hereby grants to [E8] for the TERM the right to grant to any SUBLICENSEE(S) a royalty-bearing prospective and/or retroactive license or covenant not to sue under the PATENT RIGHTS….”

Affymetrix moved to dismiss E8’s claims on the ground that E8 lacks standing. In a patent infringement action brought by a licensee, the inquiry is “whether a licensee has a sufficient ownership interest” in a patent to be entitled to sue for infringement. Propat Int’l. Corp. v. RPost, Inc., 473 F.3d 1187, 1188 (Fed. Cir. 2007). A licensee having exclusionary rights—but not all substantial rights to a patent—generally has standing, whereas a “bare licensee” lacking exclusionary rights and holding less than substantially all rights generally has no standing.

Affymetrix argued that the license failed to provide E8 the right to practice the invention—a fact defendant thought dispositive on the issue of standing. E8 countered that the right to practice was at least inferable through the grant of the right to sublicense (i.e., E8 argued that it could grant a sublicense to practice the invention to itself). Further, E8 argued that the license provision that “[E8] agrees (a) to the extent that [E8] is the sole entity licensed to manufacture LICENSED PRODUCTS (that is, [E8] having not sublicensed others to do so)…, then [E8] or the third party (as the case may be) that LICENSED PRODUCTS used or sold in the United States by that exclusive licensee/sublicensee of the PATENT RIGHTS will be manufactured substantially in the UNITED STATES” demonstrates that M.I.T. intended to grant a license to practice. The court, however, relied on the expressed scope of the grant clause to determine that the license failed to provide E8 the right to manufacture the licensed products.

Additionally, the court examined E8’s exclusionary rights under the ‘228 patent license. Because E8 was required to use “diligent efforts” to find sublicensees and to identify infringers and thus lacked the discretion to not grant sublicenses or pursue infringement, the court determined that the rights granted to E8 were substantially limited. Moreover, M.I.T. retained significant decision-making authority with regard to sublicenses, litigation, and subsequent assignments of E8’s interests. The court determined that the lack of a grant to practice the invention, though not dispositive, was significant in classifying the status of the licensee. In view of M.I.T.’s reserved rights and the limitations on E8’s right to exclude, E8 was a “bare licensee” and lacked standing to enforce the ‘228 patent. Affymetrix’ motion to dismiss E8 as a plaintiff was granted.

Ambit Corp. v. Delta Air Lines, Inc., C.A. No. 09-10217-WGY, Order (D. Mass. Jan. 22, 2010) (Young, D.J.) [Summary Judgment of Obviousness].

Ambit Corporation (“Ambit”) brought suit against Delta Air Lines, Inc. (“Delta”) alleging infringement of U.S. Patent No. 7,400,858, entitled “Radiative Focal Area Antenna Transmission Coupling Arrangement.” After construing a disputed claim term, the District Court (Young, D.J.) granted Delta’s motion for summary judgment of non-infringement of several of the asserted dependent claims of the ‘858 patent.

The court, however, denied Delta’s motion for summary judgment that the ‘858 patent is invalid as obvious under 35 U.S.C. §103. It determined that the evidence proffered by Delta was insufficient as a matter of law. Indeed, the court noted that Delta’s evidence of invalidity was so scant that the Court is considering entering summary judgment sua sponte that the ‘858 patent is valid. In requesting briefs on this matter, the court reminded the parties that a proponent of invalidity on the ground of obviousness must identify the prior art that renders the claim obvious, point out where all the claim limitations are disclosed in the prior art, and show how the prior art would render the claim obvious to a person of ordinary skill in the art at the time of the invention.


ANT v. Anthony McPartlin, C.A. No. 08-cv-11606-RWZ, Memorandum (D. Mass. Oct. 21, 2009) (Zobel, D.J.) [Jurisdiction and Venue].

The plaintiff, an entertainer residing in California and whose legal name is ANT, filed suit in the District Court of Massachusetts alleging trademark infringement and unfair competition in violation of the Lanham Act and violations of Massachusetts General Laws for Defendant’s use of plaintiff’s registered trademark ANT in ABC’s nationwide broadcast of “Wanna Bet.” The television show, which aired in Massachusetts on a local ABC affiliate, featured British comedians Anthony McPartlin and Declan Donnelly (“McPartlin and Donnelly”) who perform under the stage name “Ant and Dec.” In addition to McPartlin and Donnelly, the complaint named Gallowgate Holding Ltd. (“Gallowgate”), a rights holding company formed by McPartlin and Donnelly and incorporated in England, and The Gurin Company (“Gurin”), a California corporation which produced the television show and sold ABC the rights to “Wanna Bet.”

The defendants moved to dismiss for lack of personal jurisdiction, and the court granted the motion as to Gallowgate, McPartlin, and Donnelly because “[t]he record does not demonstrate that they had any involvement or knowledge concerning the sale to ABC and subsequent nationwide broadcast.” As to Gurin, however, the court denied the motion to dismiss, finding that the record demonstrates “a course of conduct, producing programs out of state but broadcasting in Massachusetts, which demonstrates that Gurin sold Wanna Bet to ABC with the knowledge that the show would air in this forum.” At bottom, the court found that the claim against Gurin arose out of Gurin’s forum-state activities (i.e., “[t]he broadcast of Wanna Bet in Massachusetts was a use in commerce likely to cause confusion”), that Gurin purposely availed itself of the national reach of ABC which included Massachusetts consumers, and that Gurin failed to present a compelling case that jurisdiction is unreasonable.

The court, however, granted Gurin’s motion for transfer of venue. Although there is a strong presumption in favor of a plaintiff’s choice of forum, that presumption is substantially diminished “where plaintiff brings suit outside of his home forum, in a forum in which no party, no witness, and no relevant documents can be found.” Because the claims did not arise uniquely in Massachusetts and both the plaintiff’s residence and Gurin’s principal place of business is California, Gurin’s motion to transfer the action to the Central District of California was granted.

TriMark USA, Inc. v. Performance Food Group Company, LLC, C.A. No. 09-11222-JGD, 2009 U.S. Dist. LEXIS 101529 (D. Mass Oct. 21, 2009) (Dein, U.S.M.J.)

The magistrate judge (Dien, U.S.M.J.) granted plaintiff TriMark USA, Inc.’s (“TriMark”) motion for preliminary injunction and enjoined the defendants Performance Food Group Company and Springfield Foodservice (collectively “Performance”) from using their new logo in connection with the advertising, offering for sale, or sale of their products and services.

TriMark is a foodservice supply and equipment distributor that has used its federally registered and incontestable design mark (“TriMark Logo”) since 2001. The TriMark Logo is made of three concentric, curved arcs that increase in size from left to right. Performance is primarily a food and beverage provider in the foodservice industry, but about 4% of its business is service-related sales that compete directly with TriMark. In June 2009, Performance announced a new name and a new logo (“Performance Logo”) for its service-related products. The Performance Logo consisted of three concentric, curved arcs that increase in size from left to right, which Performance claimed represented a “stylized P.” After settlement discussions failed, TriMark brought a motion for preliminary injunction against Performance.

The majority of the court’s opinion focused on TriMark’s likelihood of success, which in turn, focused on whether TriMark will be able to establish “likely confusion” between the trademarks.  

First, the court examined the similarity of the marks. After TriMark convinced the court that it often uses its logo unaccompanied by its name, the court and all of the parties agreed that the marks, standing alone, are substantially similar. However, Performance suggested that it would only use the Performance Logo next to the word “Performance.” Therefore, the court had to consider whether the logo placed next to the word “Trimark” or “Performance” would make a difference. The court looked at “the realities of the marketplace” and focused on the fact that that both TriMark and Performance had expanded by taking over other companies and both TriMark and Performance used a single logo for all of its companies. Thus, the court concluded that the use of the name was not likely to prevent confusion.

Next, the court considered the similarity of the goods. Catalogues revealed that the parties sell the same type of products, and sometimes, identical products. Moreover, despite the fact that only 4% of Performance’s products competes directly with TriMark’s products, that 4% created a significant amount of overlapping goods. Thus, the similarity of the goods was also likely to create confusion.

The court also found that the parties advertise and market their products in a similar manner since both companies advertise their services on websites and in catalogues, attend the same trade shows, are members of the same trade organizations, are featured in the same trade publications, and conduct in-person sales calls with the same customers. Performance argued that its customers, foodservice businesses, are sophisticated customers that will not be confused by similar marks. The court disagreed with Performance and found that many of the customers are not sophisticated corporations, but rather small, independent restaurants that buy items from both companies and are likely to be confused by such similar logos.

The court then found that proof of actual confusion was not necessary, that Performance acted recklessly, and that the TriMark logo was strong.

Stop & Shop Supermarket Co. LLC v. Big Lots Stores, Inc., C.A. No. 09-11113-RWZ (D. Mass. Nov. 19, 2009) [Preliminary Injunction].

Stop & Shop Supermarket Company LLC and Giant of Maryland LLC (collectively Stop & Shop) introduced a “Real Deal” marketing campaign, which used three marks to identify discounted products. Approximately six months later, Big Lots Stores, Inc., and Consolidated Property Holdings, Inc. (collectively “Big Lots”), who also sells groceries, began its own “Real Deal” advertising campaign. Stop & Shop sued Big Lots for trademark infringement and moved for a preliminary injunction. The District Court (Zobel, D.J.) analyzed Stop & Shop’s motion under the well-established, four-prong standard for a preliminary injunction. Because the court found Stop & Shop did not have a substantial likelihood of success, the court did not address the final three prongs of the standard.

To prevail on its trademark-infringement claim, Stop & Shop had to establish that at least one of its three marks is (1) entitled to protection and (2) that the allegedly infringing use is likely to cause consumer confusion. The court explained that trademark law protects marks based on the level of distinctiveness: the more distinctive the mark the greater the protection. There are five levels of distinctiveness: (1) generic (least distinctive), (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful (most distinctive).

“Real Deal”

The court held that Stop & Shop’s first mark—the phrase “Real Deal”—was used to convey the term’s literal English meaning (genuine bargain). It, therefore, concluded that the mark was not inherently distinctive; no imagination, thought, or perception was required to understand the mark. The mark was found to portray a characteristic and, thus, be only descriptive.

Descriptive marks only acquire trademark protection if the mark has a secondary meaning. And proof of a secondary meaning requires significant evidence that the mark’s association with Stop & Shop is the term’s dominant meaning. Although the court recognized that Stop & Shop intended to create an association between “Real Deal” and its brand, Stop & Shop could not present sufficient evidence to show a secondary meaning. A consumer survey showed that only 37% of Stop & Shop’s own customers were aware of “Real Deal.” The court found such a modest level of awareness, particularly among the targeted consumers, to not establish a secondary meaning. Thus, it held that “Real Deal” was not entitled to trademark protection.

Design Marks

Stop & Shop also used two design marks in its marketing campaign. These marks were found to consist of creative elements that required imagination, thought, and perception. The court went on to hold that these designs are suggestive marks entitled to trademark protection. The court next addressed whether Big Lots alleged infringement of the design marks is likely to cause customer confusion.

The court observed that both companies’ marks are circular and contained the phrase “Real Deal.” But Big Lots’ marks all included the term “Big Lots” and the two companies used different graphics, word layout, font, and coloring. The court found these distinctions significant, and ruled that the marks were not similar.

The weakness of Stop & Shop’s design marks also doomed the preliminary injunction. Although Stop & Shop’s design marks featured unique graphical designs, the court found the term “Real Deal” to be the most prominent feature of the marks. Ultimately, the court found that Stop & Shop was not likely to prevail on the merits and denied its motion for preliminary injunction.