D. Mass. Patent Litigation Update: June 2024

This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

In DS Advanced Enterprises v. Ledvance LLC, No. 24-cv-11155, Magistrate Judge Levenson denied Plaintiff’s request to waive the Local Rules’ requirement of local counsel and denied without prejudice the application to admit its out-of-state attorney pro hac vice. The Court also granted the pro hac vice application of Defendants’ counsel over Plaintiff counsel’s objection.

The Local Rules require the simultaneous appearance of local counsel for an attorney seeking pro hac vice admission. Plaintiff moved to waive this requirement, arguing good cause exists due to its lawyer’s years of experience practicing patent law and familiarity with both the facts of the case and relevant law. The Court denied the request for three reasons. First, the Court noted that Plaintiff’s counsel’s adjudicated failure to adhere to a prior court’s local rules where counsel referenced his limited litigation experience as an excuse contradicted his argument for waiver of local counsel. Second, the Court observed that Plaintiff’s motion violated the conferral requirement of Local Rule 7.1, finding that oversight and supervision by local counsel is necessary. Third, the Court disregarded Plaintiff’s reference to the expense associated with obtaining local counsel, finding that Plaintiff only presented oblique comments and did not show it was unable to pay the additional costs.

Plaintiff also opposed Defendant’s pro hac vice application, arguing that its counsel violated the Massachusetts Rules of Professional Conduct by making misrepresentations to Plaintiff’s counsel and the Court by indicating Defendant would not oppose the pro hac vice admission of Plaintiff’s counsel, but then opposing Plaintiff’s request for waiver. The Court found no inconsistency in Defendant’s positions and allowed the admission of its counsel.

In its conclusion, the Court cautioned that “Plaintiff seems to have mistaken the obligation to advocate zealously for one’s client for a license to make unfounded ad personam attacks on opposing counsel. I remind Plaintiff that zealous advocacy must be tempered by judgment and candor. More pointedly, frivolous submissions are subject to sanction.”

In Ocean Semiconductor LLC v. Analog Devices, Inc., 20-cv-12310, Judge Saris denied Ocean’s leave to amend its preliminary infringement contentions—served on Analog Devices (ADI) over a year prior—to add six new claim charts related to over sixty new accused instrumentalities. Ocean based this request on a newly discovered research report primarily consisting of five websites listing companies across various industries.

Local Rule 16.6 requires the patentee to disclose infringement claim charts that identify each accused product and/or method and provide an element-by-element description of where and how each element of each asserted claim is found in each accused product or method. The patentee can amend or supplement only by leave of court upon a timely showing of good cause. To determine whether good cause existed, the Court considered the movant’s diligence and any prejudice to the opposing party. Specifically, the Court looked for circumstances to indicate discovery of nonpublic information that was not discovered or located, despite diligent efforts, before service of the infringement claim charts.

Ocean argued good cause because of its discovery of the alleged connection between ADI and third-party suppliers, which it argued ADI failed to disclose. The Court denied Ocean’s request, finding that of the two public websites Ocean pointed to, did not mention ADI and the second had listed the identified information publicly for over a decade. In sum, the Court found that the newly discovered websites underlying Ocean’s requests did not actually identify any of the companies whose products Ocean sought to add to its infringement theories as ADI suppliers, and thus Ocean had not shown good cause. Finding no showing of good cause, the Court declined to consider whether the request was prejudicial to ADI.

In OssiFi-Mab LLC v. Amgen Inc., No. 20-cv-12310, Judge Casper construed three claim terms in patents related to methods of treating osteoporosis patients with a combination of two classes of drugs.

“being treated with”

The Court examined the plain language meaning of terms, specification disclosure, and the possible creation of conflict with other claims, to reject Plaintiff’s proposed construction because “the temporal scope of the term ‘being’ cannot stretch so far as to mean ‘at the time the method is beginning, having been undergoing treatment with.’” The Court also rejected Defendant’s proposed “during the course of treatment” language as overly restrictive, construing the term as “during treatment with.”

“administering . . . sequentially with” / “serially administered”

Plaintiff urged the Court to construe these terms as “administered such that administration of one drug follows completion of the course of treatment with the other drug.” Defendant contended that the terms were indefinite, arguing one of ordinary skill in the art could not know how close together or far apart the two medications need to be administered to fall within the scope of the claims. The Court found that objective boundaries as to temporal proximity existed, and credited the statement of Plaintiff’s expert that sequential treatment is where “administration of the second drug follows the first, such that administration of the two drugs are part of a larger treatment regimen with a common therapeutic objective.” (Emphasis in original.) The Court adopted Plaintiff’s proposed constructions with the additional underlined clarification:

administered such that administration of [one drug] follows completion of the course of treatment with [the other drug], as part of a larger treatment regimen with a common therapeutic objective.