Volume 49, Issue 3
President's Message
By Rory P. Pheiffer,
Nutter McClennen & Fish
It’s hard to believe that our summers are winding down and that fall is basically upon us. I hope our members had an opportunity to find some time to enjoy summer in New England and/or traveled for enjoyment outside of New England. Whatever the case may be, I can attest that the summer has been chock-full of successful collaboration amongst members and others with common interests.
“Alone we can do so little; together we can do so much.”
Helen Keller
The unofficial kick-off to the BPLA Summer began with the
Judges Dinner
on May 31. As detailed in the newsletter, we dialed up a picture-perfect evening to honor the Federal judiciary, including 21 judges from the Federal Circuit, the District of Massachusetts, and, for the first time, the Patent Trial and Appeal Board (PTAB). We also recognized the collaboration that led to the implementation of the
new Local Rule 16.6
, which went into effect on June 1, honored this year’s recipient of the
BPLA Distinguished Public Service Award
The Honorable Judge F. Dennis Saylor, IV
, and listened to interesting and entertaining remarks from our keynote speaker,
Dr. Latanya Sweeney
. Thank you to our sponsors, the members of the judiciary and their guests, as well as our members and their guests, who attended, and those who helped the evening run smoothly.
On Friday, August 10,
Governor Charlie Baker signed into law
economic development bill
, which included adoption language for the
Uniform Trade Secrets
Act and language that restricts noncompete agreements. However, the Governor explicitly vetoed a section of that bill—Section 20—designed to create a new cause of action in the Commonwealth for “bad faith assertions of patent infringement,” which would have become a new section under
Chapter 93
claims. While you may know this development, what you may not know is that the BPLA was on the frontlines of this issue, and, through a collaborative effort with other interested parties, the BPLA helped put a “pause” on the adoption of this cause of action.
The issues arose rather quickly. The possibility of the new Chapter 93 cause of action was not brought to the Board’s attention until the beginning of August. After learning about some of the concerns of the proposed language of Section 20, and in particular some changes to the language in this version of Section 20 versus a previous version that was introduced in the Massachusetts senate in earlier legislative sessions, members of the BPLA Board became concerned that Section 20 may be implemented with too much haste. While the BPLA Board was not prepared to take a position about whether creating this cause of action was a good or bad idea, it did think more time was needed to adequately assess the merits of such a cause of action. The Board feared there may be unintended consequences if the legislation, as worded, was enacted.
The BPLA discussed this issue with other concerned parties and ultimately spoke with both Governor Baker’s office and Secretary Jay Ash’s office prior to the veto, recommending action be taken that would allow this portion of the legislation to be further vetted before enacting a new cause of action under Chapter 93. Subsequently, Governor Baker vetoed this section, reasoning that the language was not tailored narrowly enough and could have unintended consequences. Governor Baker and Senator Eric Lesser, the senator who championed the Section 20 provisions, have both indicated a desire to revisit this cause of action in the future. The BPLA plans to work with the offices of Governor Baker, Secretary Ash, and Senator Lesser to determine if creating a cause of action of this nature is advisable, and if so, what the language tied to such legislation should state. Collaborating together was central to getting the government to hit pause on this issue, and will again be key to consider the issue in the future.
Speaking of successes, our
once again found success, and this time against great odds.
As previously detailed
, the
Committee filed an
brief requesting that the Supreme Court grant a writ of certiorari in
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc
. Nine others did as well, including the
American Intellectual Property Law Association
(AIPLA), the
Intellectual Property Owners Association
(IPO), the
Massachusetts Biotechnology Council
, and the
Biotechnology Innovation Organization
(BIO). Having a writ of certiorari granted at the Supreme Court is extremely rare.
Empirical data
illustrates a success rate for all writ of certiorari petitions is less than five percent. Despite these odds, on June 25, 2018, the petition was granted. Congratulations to our
Committee, and the other organizations who also supported granting a writ of certiorari. Together we can do so much.
Many of our members were likely part of the 16,000+ attendees of the
BIO International Convention
this past June. For those who made time for two programs that piggybacked on the tail end of BIO, you surely were not disappointed with the content of the collaborative programs the BPLA organized with the European Patent Office (EPO). On June 7, our
International and Foreign Practice Committee
and our
Computer Law Committee
teamed with members of the EPO to put on a
morning workshop about technical inventions in European patent law
. The next day our
Biotechnology Committee
and our
Chemical Patent Practice Committee
teamed with members of the EPO to put on a
morning workshop about patenting biotech at the EPO
. By accounts from those who attended, the information exchange and discourse was top notch. Thank you to our committee chairs for working together with the EPO to put on such high quality events.
Patent Office Practice Committee
has been particularly hard at work this summer. On July 9, 2018, the Committee Co-Chairs
Jonathan B. Roses
(lead author),
Timothy V. Fisher
, and
Nicole A. Palmer
, in collaboration with
Contested Matters Committee
Andrej Barbic
Rachel L. Emsley
, and
Stephanie L. Schonewald
, and other members of the BPLA, submitted Comments on the
Notice of Proposed Rulemaking for Changes to PTAB Trial Claim Construction Standard
. In
the Comments
, the BPLA articulated, among other positions, that it did not oppose replacing the Broadest Reasonable Interpretation (BRI) Standard with the
Standard applied in federal district courts and International Trade Commission proceedings.
On August 20, 2018, the Committee Co-Chairs Fisher (lead author), Palmer, and Roses, in collaboration with other members of the BPLA, submitted Comments on
Changes in Examination Procedure Pertaining to Subject Matter Eligibility
. In
the Comments
, the BPLA indicated its support for the changes in examination procedure, and provided some suggestions for changes to the particulars of the examination procedure. Thank you to Tim, Jon, and Nicole, and the others involved in these two comment submissions. It truly was a team effort to tackle both comments.
I would be remiss if I did not thank all of those who helped make the return of the BPLA Summer Outing an enjoyable experience. Despite inclement weather, over 100 members and guests came to the New England Aquarium to celebrate BPLA
Family Day at the Aquarium
. You can read a bit more about the event, and see some pictures, in this issue of the newsletter. I owe a tremendous debt of gratitude to the many people at Nutter—particularly
Marissa McMahon
Colleen Bidgood
, and
Derek Roller
—as well as
Constance Brennan
for the BPLA, for their help in making this event worthwhile.
As we move into fall, there will be plenty of opportunities to benefit from the fruits of ongoing collaborations. In September, the
Trademarks and Unfair Competition Committee
is collaborating with the Trademark Trial and Appeal Board (TTAB)
to host an event at which TTAB Judge Peter Cataldo will be the featured speaker
, and the Contested Matters Committee is collaborating with
the Arthur J. Gajarsa Inn of Court
to host a
panel of judges that include a District Court judge, a PTAB judge, and The Honorable Arthur J. Gajarsa (Ret.) of the Federal Circuit.

Two of our more popular and well-known events will be hosted in October:
Making Connections in Boston’s IP Community
, which is hosted by the
Law School Committee
, and the
Invented Here!
Final Program
, which is hosted by the
Invented Here!
. Both of these events are the result of many hours of hard work with many members of the BPLA. And in November, we will again partner with the
World Intellectual Property Office
to host our
annual PCT and Madrid Protocol Seminar
. This year’s Seminar will be held in Concord, MA, carrying on our efforts to alternate this programming between the city and the suburbs.
As you can see, many members of the BPLA, and outside of the BPLA, are working together to achieve many successes—providing input on important legislation and administrative rules, and hosting wonderful educational and social events. Let’s use this fall to continue to find ways to work together, and in doing so, in the words of Helen Keller, continue to “do so much.”
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Table of Contents
2018 Ⓒ Boston Patent Law Association
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Table of Contents
Message from the President Rory P. Pheiffer
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< Back
Officers and Board of Governors
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2nd Annual Summit on Life Sciences IP Due Diligence
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Community Calendar
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10 Millionth Patent
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Supreme Court Allows Recovery of Profits Outside of US
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New District Of Massachusetts Local Rules
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BPLA Family Day at the Aquarium
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Message from the Editor-in-Chief
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Job listings
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BPLA Comments on Notice of Proposed Rulemaking for Changes to Patent Trial and Appeal Board Trial Claim Construction Standard
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Members on the Move
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Judges Dinner Summary
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Comments on Changes in Examination Procedure Pertaining to Subject Matter Eligibility
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9th Annual
Invented here!
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