CardioNet, LLC et al. v. InfoBionic, Inc. (15-cv-11803).

CadioNet sought to sever the patents that were found to be directed to ineligible subject matter from the remainder of the case, which remains to go to trial, so that the ruling on the two patents could be immediately appealed. Judge Talwani determined that, given the posture of the case, Fed. R. Civ. P. 54(b) should apply, rather than Rule 21 as had been argued by CardioNet. Noting the “long-settled and prudential policy against the scattershot disposition of litigation,” Judge Talwani determined that CardioNet’s decision to bring all four patent claims in a single action, “presumably based on its view that the claims are related and involve common sets of fact and law,” mitigate against entry of separate judgment on the two invalidated patents. She did note that CardioNet had a different pair of related patents that were invalidated on Alice grounds at the District Court level (also by Judge Talwani), and that she would likely have granted severance if CardioNet had sought it at the time the appeal on those patents was filed; but as the appeal in that case has been fully briefed, severing the claims in the current case would result in three different litigation tracks. Accordingly, CardioNet’s motion to sever was denied.

Tyger Manufacturing LLC v. Jacobs (19-cv-11732).

Tyger manufacturing sued Timothy Jacobs, who is said to do business as The Glass Blunt Store or G.B.S., accusing Jacobs of infringing Tyger’s copyright in “loading instructions” for glass smoking products having a screw-like insert that allows for the removal of spent ash. Tyger asserts that the instructions are included with four different G.B.S. products and are found throughout the G.B.S. website, and seeks injunctive relief and an accounting of sales of the four products. It is unclear why Tyger, a California company, sued Jacobs, who is alleged to have a principal place of business in Denver, in Massachusetts; personal jurisdiction and venue are alleged solely on alleged sales of products into the Commonwealth. Tyger is represented in the case by Massachusetts counsel, but has filed lawsuits over the past several years in a number of different jurisdictions, and appears to have already sued Jacobs in his home state of Colorado in 2018, accusing him of infringing design and utility patents relating to glass smoking devices. In October 2018, that complaint was amended to bring copyright infringement counts, although it appears that while an application had been filed, the copyright registration had not yet issued as of the amended complaint. That case subsequently settled.

Holistic Technologies, LLC v. Lumina Group Inc. (19-cv-11677).

Holistic Technologies filed suit against Lumina Group, seeking a declaration that it does not infringe Lumina’s TENDLITE product trade dress. The TENDLITE is a therapy device that uses red light to treat skin conditions such as wrinkles, scars, and the like. Holistic markets its own red light therapy device, the Quantum Rejuvenation device.

In late July, Holistic received a cease-and-desist letter from Quantum, asserting trade dress infringement and asserting that Holistic had copied Lumina’s advertising and packaging. Holistic denies copying the advertising and packaging, and asserts that the product design is generic, has not acquired distinctiveness, and thus unprotectible. Holistic further alleges that Lumina had the Quantum Rejuvenation product removed from Amazon and Google by asserting infringement of Lumina’s trademark in bad faith – Holistic used the mark to reference the Lumina product in a comparative advertisement, which would not constitute infringement. Lumina further posted on Holistic’s Amazon page that Holistic was running inaccurate and illegal advertisements, and is alleged to have posted negative reviews of the Holistic product. Finally, Holistic asserts that Lumina falsely claims that the TENDLITE is patented. In addition to the declaratory judgment claim, Holistic brings affirmative claims of unfair competition, false patent marking and violation of 93A. Holistic seeks an award of Lumina’s profits for the unfair competition claim, as well as its damages and attorneys’ fees. Judge Talwani has the case.

Broadcast Music, Inc. et al. v. Matthews Maries, LLC d/b/a The Establishment, et al. (19-cv-11682).

BMI, an entity that manages licensing and copyright fees for 14 million copyrighted musical compositions, filed suit against The Establishment, a bar/restaurant/function room in Chelmsford, as well as its manager and members. According to the complaint, BMI had reached out to The Establishment more than 40 times in the past year, demanding that the bar either cease and desist the public performance of BMI-controlled music or pay the appropriate license permitting such performance. When no response was received, BMI filed suit, alleging infringement of eight BMI-controlled songs on April 26, 2019. BMI seeks statutory damages plus attorneys’ fees.

Brigham and Women’s Hospital, Inc. et al. v. Perrigo Company et al. (13-cv-11640).

Following the Federal Circuit’s affirmance of JMOL that the patent-in-suit was not infringed, Perrigo sought $90,637.02 in costs. Brigham and Women’s objected to virtually all of the requested costs and asserted that the case should be treated as a “mixed-result” case because Brigham “prevailed” on every issue save infringement (i.e., prevailed on standing, laches, invalidity, marking and damages). Judge Zobel rejected this argument, finding that Brigham had not prevailed on its sole claim of infringement and that, as a result, Perrigo was entitled to costs under F.R.C.P. 54(d). Judge Zobel did not award the full amount sought, however; she denied pro hac vice motion fees as not allowable in this district, denied costs associated with depositions that were not used in trial or in the post-trial briefing and denied all costs associated with videotaping or obtaining rough transcripts, finding these costs were not taxable absent prior permission. She also denied costs associated with the use of realtime transcripts, finding these to also not be “necessary” within the meaning of 28 U.S.C. § 1920(2). Judge Zobel refused to award $35,298 in costs associated with the use of a graphic designer to prepare charts, figures and demonstratives used at trial, based on both the excess amount of time spent in their preparation and a lack of evidence supporting these costs. Finally, Brigham’s had, in its motion seeking refusal of the Bill of Costs, sought expert witness fees under F.R.C.P. 26(b)(4)(E), which generally requires a party seeking expert discovery to pay the expert for the time spent in responding. Judge Zobel noted that expert discovery had concluded three years earlier with neither party seeking fees, and denied the request as untimely. In total, she awarded $22,843.48 to Perrigo.

Egenera, Inc. v. Cisco Systems, Inc. (16-cv-11613).

Judge Stearns denied Cisco’s motion for attorneys’ fees under § 285. Cisco asserted that the case became exceptional on August 17, 2016, when Egenera, in a parallel IPR proceeding, submitted a declaration from one of its employees stating that he had been erroneously named as an inventor. Egenera removed him as an inventor so that it could rely on an internal document that pre-dated his employment to swear behind a reference. The patent was subsequently invalidated for failure to name all inventors when Judge Stearns construed the claims and determined that the employee had made an inventive contribution. According to Cisco, Egenera at that point had thoroughly reviewed the inventorship issue and should have realized, at least as of the claim construction order, that the employee was improperly removed. While agreeing that Egenera’s investigation was “wanting,” Judge Stearns found that the survival of the inventorship dispute through summary judgment meant that the case did not rise to exceptional.

Cisco’s Bill of Costs was denied in part. He allowed costs related to professionally produced video deposition clips and trial demonstratives, noting that the prevalence of witness credibility issues necessitated their use, but found the requested amount of $60,341 for a three-day trial excessive by half. He further cut summons and subpoena costs to eliminate the excess fees charged for emergency or urgent service.

This is the second case I have seen in recent days in which exceptionality was tied to amenability to summary judgment – Judge Saylor denied a request for fees because the plaintiff had not sought summary judgment. I do not that the grant of summary judgment does not automatically result in a finding of exceptionality, however, and hope that this recent small trend does not become a de facto precedent for the award of attorneys’ fees, as I can envision cases that, while having issues of fact in dispute, still rise to the level of exceptionality, and would hate to see arguments to that effect precluded.

SiOnyx, LLC et al. v. Hamamatsu Photonics K.K., et al. (15-cv-13488).

Closing out this dispute, at least at the District Court, Final Judgement was entered awarding SiOnyx:

  • $1,377,109 in contractual and unjust enrichment damages plus $1,752,017 in pre-judgment interest for a total of $3,129,126;
  • post-judgment interest at 2.4% pursuant to 28 U.S.C. §1961, with an accounting of post-verdict sales to occur;
  • judgment that the ‘467 patent was willfully infringed;
  • addition of Dr. James Carey as co-inventor of the ‘467 patent;
  • ownership of nine U.S. patents; and
  • a permanent injunction barring infringement of all ten patents by Hamamatsu.

Let the appellate process begin…