Palomar Technologies, Inc. v. MRSI Systems, LLC (18-cv-10236).

Judge Saylor denied MRSI’s motion to compel more detailed infringement contentions. This case was originally brought in 2015 in the Southern District of California, with Palomar asserting infringement of U.S. Patent No. 6,776,327. In 2016, the case was stayed pending resolution of an IPR proceeding filed by MRSI; the case resumed progress when most of the claims were deemed valid by the PTO. In August 2017, MRSI moved to transfer venue to the District of Massachusetts in light of the TC Heartland decision on patent venue, and the case was transferred in February of this year. In denied the motion to compel, Judge Saylor noted that the district’s new local patent rules do not apply to this case, as the scheduling order was issued prior to June 1, 2018, that the prior applicable rule did not require any particular level of detail for infringement contentions, and that the scheduling order itself required only an identification of the claims asserted, products that are accused of infringing those claims, and whether the infringement is literal or by equivalents. While he noted that the contentions are skeletal, Judge Saylor determined that they met the requirements of the applicable rule and the scheduling order, and he indicated that at the early stage of the proceeding, there is no requirement for the claim construction contentions sought by MRSI.

Janssen Biotech, Inc. v. Cellitrion Healthcare Co., Ltd. Et al. (17-cv-11008).

In an order at the end of July, Judge Wolf granted Cellitron’s motion for summary judgment of non-infringement of U.S. Patent No. 7,598,083, the sole patent remaining in this litigation. Janssen’s initial focus had been on a different patent that was found invalid for obviousness-type double patenting. Janssen then shifted focus to allegations that the Defendants infringed the ‘083 patent under the doctrine of equivalents. The ‘083 patent covers compositions for preparing cell culture medium suitable for ultimately producing infliximab, which Janssen sells under the brand name “Remicade.” The asserted claims recite 61 different ingredients, each at a range of concentrations. Only 52 are actually required by the claim to be present, as the remaining 9 have a lower concentration limit of 0. It is undisputed that the accused composition includes all 52 required ingredients, but not all fall within the claimed range. Defendants moved for summary judgment on the grounds that the hypothetical claim that would literally cover the accused composition would ensnare the prior art, which would serve to prohibit application of the doctrine of equivalents. Judge Wolf agreed, finding that this hypothetical claim, while not anticipated, would have been obvious to one of ordinary skill in the art. Janssen, as the party asserting the doctrine of equivalents, bore the burden of proving that the scope of equivalents sought would have been patentable over the prior art, a burden they could not meet. Judge Wolf determined that the claimed composition merely substituted several ingredients of the prior art compositions with known alternatives, which performed in accordance with their previously-established function in providing nutrients to cells. Additionally, while Janssen presented sufficient evidence to permit a finder of fact to determine that the Defendants had copied Janssen’s composition (one of the Graham factors that evidences non-obviousness), this factor would not, even if proven, be enough to overcome the strong prima facie case of obviousness of the hypothetical claim. Accordingly, judgment was entered in favor of the Defendants.

Monsarrat v. Zaiger (17-cv-10356).

Jonathan Monsarrat filed suit in March 2017, alleging copyright infringement through Zaiger’s use of a photograph of Monsarrat that had been altered to suggest Monsarrat was a pedophile. The original claim was dismissed (twice)as time barred, as the complaint made clear that Monsarrat knew about the posting of the photograph as early as 2012. The proposed amended complaint sought to add defamation claims resulting from a republishing of the photograph along with a report that Monsarrat had been arrested for serving underage teens alcohol during a party at his apartment. Monsarrat alleged that this posting caused a potential investor in his video game company to withdraw. Unfortunately for Monsarrat, while no charges were ultimately filed, he actually had been arrested for serving alcohol minors, meaning that the statement was true. While a true statement can serve as the basis for a defamation claim if actual malice can be proven, if the maker of the statement subjectively believed the statement to be true, no claim can be had. Here, the story of Monsarrat’s arrest was published in the Boston Globe, providing reason for Zaiger to believe the story (which, of course, was technically true). Because of this, and because the proposed amended pleading did not resolve the statute of limitations issue, Magistrate Judge Bowler recommended that Monsarrat’s motion to amend his pleading be denied as futile. Judge Bowler granted Monsarrat’s motion for judgment on the pleadings and dismissed Zaiger’s counterclaim for misrepresentation of a copyright claim under 17 U.S.C. § 512(f). Zaiger’s counsel had previously withdrawn in light of Zaiger’s non-responsiveness to communications; Zaiger had since failed to show for a hearing or respond to an order to show cause why judgment on the pleadings should not be granted, which demonstrated a disregard of the court and the litigation.

Sazerac Brands, LLC et al. v. MS Walker, Inc. (18-cv-11708).

Sazerac Brands sells flavored liquor under the name DR. MCGILLICUDDY’S, Sazerac alleges that DR. MCGILLICUDDY’S is particularly popular in Massachusetts, with its “Mentholmint” flavor being the most popular shot in the Commonwealth across all distilled spirits (it also comes in Apple Pie, Butterscotch, Cherry, Coffee, Peach, Peppermint, Raw Vanilla, Root Beer and Wild Grape, for the discriminating palate). mcgillicuddyheadSazerac uses a design made up of a portrait of Dr. McGillicuddy, sporting a moustache and bowtie against a sepia background, and has used this design widely on the bottles themselves, as well as in their web presence, tap handles, signs, stand up displays, and the like.  A considerable amount of their marketing material emphasizes the moustache, although a number of different moustache styles are employed. Sazerac owns a registration on a design mark that depicts said doctor sitting at a small table topped with bottles of spirits, with his arm around a dog.  mcgillicuddy registrationSazerac does not, apparently, have a registration on the actual design used on their bottles, but asserts common law rights in that design, as well as a state registration in Massachusetts.

Sazerac asserts that MS Walker recently began selling a similar product, MAURICE’S distilled spirits in “Mentholated Mint” and “Root Beer” flavors, 6042_Maurice_750mlusing a confusingly similar mark of a portrait of a turn-of-the-century style man with a moustache and bowtie against a sepia background. Sazerac asserts that these similarities, along with the use of other turn-of-the-century elements, use of the design on a product bearing a possessive personal name that begins with the letter “M,” and use of an uncommon “menthol” formative flavor name, infringes on the registered design mark, on the Massachusetts registration, and on Sazerac’s common law trademark rights, and also claims dilution under M.G.L. ch. 110H § 13.

Desktop Metal, Inc. v. Markforged, Inc. et al. (18-cv-10524).

The patent claims of this multi-claim lawsuit surrounding 3-D metal printing were bifurcated, and a jury trial on the patent claims was held in late July. The jury returned a verdict finding the two asserted patents valid but not infringed. The remaining trade secret, breach of contract, and unfair competition claims will be tried at a later date.

Hillside Plastics, Inc. v. Dominion & Grimm USA, Inc. et al. (17-cv-30037).

Hillside owns a trademark registration for the design of its “Sugarhill Jug” plastic maple syrup jugs, and accuses Dominion of violating that trade dress. Dominion moved for judgment on the pleadings, on the grounds that the trade dress was invalid as functional.

Sugarhill Jug

The trademark application had, in fact, initially been refused because of functionality concerns, but Hillside was able to overcome the refusal with evidence of the many alternative designs for syrup jugs. Dominion, once a Hillside distributor, began offering the accused jugs in 2016. Magistrate Judge Robertson recommended denial of Dominion’s motion. She noted that, as the trade dress is registered and incontestable, Dominion bears the burden of demonstrating functionality. Further, functionality is a question of fact, and Dominion was unable to demonstrate through the pleadings that the designs were factually functional. Judge Robertson did grant Dominion’s motion to stay discovery pending appeal of her recommendation to the District Court judge.

Balor Audio LLC. v. Avid Technology, Inc. (18-cv-11662) and v. Mark of the Unicorn, Inc. (18-cv-11663).

Plano Texas company Balor Audio sued Avid Technology and Mark of the Unicorn in separate suits, alleging infringement of U.S. Patent No. 8,649,891, which covers audio signal generation. Avid’s Pro Tools software and Mark of the Unicorn’s Digital Performer software, both of which allows users to record, mix and master audio, stand accused. The Avid case is assigned to Magistrate Judge Dein, while the Mark of the Unicorn matter is before Judge Talwani.