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

As this patent and breach of contract case nears trial, Judge Saylor granted SiOnyx’ motion to amend its complaint to remove assertions of the ‘591 patent. SiOnyx asserts that, through late-produced discovery, the products accused of infringing this patent were still under development, and that a final configuration of these products was not likely to be set prior to trial. Hamamatsu had not filed counterclaims relating to the ‘591 patent, and would suffer no legal prejudice from the withdrawal of the claim. The dismissal of the ‘591 claims is with prejudice as to any products that had been accused during the proceeding, but not as against products developed in the future.

Judge Saylor also dealt with the parties’ competing motions to exclude testimony from an opposing expert. SiOnyx has accused Hamamatsu of violating a nondisclosure agreement, obtaining patents on SiOnyx’s technology without naming SiOnyx personnel as inventors, and infringing SiOnyx patents. SiOnyx sought to preclude testimony from a technical expert of Hamamatsu for failing to consider objective indicia of non-obviousness, which would render the report unreliable as applying an incorrect legal standard. Judge Saylor determined, however, that the expert’s statement that he had “not seen any evidence of secondary consideration” did not mean that he had not considered secondary factors. Accordingly, he denied SiOnyx’s motion. Hamamatsu, for its part, sought to entirely preclude SiOnyx’s damages expert, who is intended to testify as to damages for breach of contract, unjust enrichment, and patent damages. On the breach of contract claim, the expert relied on a non-binding memorandum of understanding between SiOnyx and Nikon to determine the damages from the loss of that opportunity, which Hamamatsu asserted to be too speculative. Judge Saylor found that, for the most part, the expert had relied not just on the memorandum but also on correspondence between SiOnyx and Nikon and other evidence in coming to her conclusions. Judge Saylor did exclude testimony on damages resulting from a proposed extension of the contract contemplated by the memorandum of understanding, because there was no discussion of pricing terms or the length of any potential extension in the memorandum, making the opinion on the loss of the extension too speculative. He also excluded testimony on SiOnyx’s theory that, had it entered into the Nikon agreement and developed a chip for Nikon, it would have been able to leverage that development in reducing the cost of development of the next generation chip by nearly $1 million. The Judge accepted that such a reduction on R&D costs could be the basis for damages, but felt that the steps used to determine the dollar figure were too attenuated and speculative. He denied Hamamatsu’s request with respect to breach of contract damages that Hamamatsu itself would have paid had it not breached the agreement and instead have licensed the technology, finding that the other SiOnyx agreements relied upon were not so different from the structure that Hamamatsu had discussed as to form an insufficient basis. With respect to the unjust enrichment claim, Mamamatsu objected to testimony on profits it incurred beyond the expiration of the nondisclosure agreement; Judge Saylor found that Hamamatsu had failed to support the notion that damages must end upon expiration of the NDA, and refused to exclude this testimony. Finally, he refused to preclude testimony on patent damages, finding that the expert’s opinions were adequately supported and that any disputes as to the calculations could be dealt with on cross-examination.

Boise Cascade Co. v. New England Treatment Access, LLC (19-cv-10738).

Boise Cascade, a large lumber, wood and paper, has utilized a graphic of a tree in a circle as a trademark since 1964, and has held federal registrations for the mark since 1981. Boise Cascade logoBoise Cascade accuses NE Treatment Access of infringing this mark through sales of marijuana products utilizing a similar graphic. 44831408_196018227991194_7314578353284483997_nBoise Cascade brings counts for federal and common law trademark infringement, false designation of origin, dilution under Massachusetts law, injury to business reputation, and unfair business practices. The case is before Judge Gorton.

Kaspersky Lab, Inc. v. Greater Boston Authentication Solutions, LLC (19-cv-10735).

Kaspersky filed suit against GBAS seeking a declaration that it does not infringe three GBAS patents related to remote authorization to unlock electronic data. In October of last year, GBAS had filed suit accusing Kaspersky of infringing the three patents; GBAS never, however, actually served the complaint, and instead dismissed it without prejudice at the 90-day service date. The patents have since expired. Kaspersky notes that GBAS acquired the three patents sometime in 2017, and has filed twelve complaints asserting these patents, with all of them voluntarily dismissed before any accused infringers filed a responsive pleading. Kaspersky suggests that GBAS has sought nuisance-level damages, a classic patent troll tactic. Kaspersky further asserts that GBAS knows that Kaspersky does not infringe because arguments made during prosecution foreclose a claim construction that would cover Kaspersky’s software. To that end, Kaspersky seeks a declaration of non-infringement and a finding that the case is exceptional under 35 U.S.C. § 285, entitling them to attorneys’ fees.

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

CardioNet and InfoBionic have been in litigation for several years on various patents and trade secret claims relating to cardiac monitoring devices – in one of these cases, Judge Talwani struck down CardioNet’s 7,941,207 patent as being directed to ineligible subject matter. In the present case, CardioNet seeks to sever two of the patents that were likewise deemed to cover non-patentable subject matter from the case to permit an immediate appeal of that finding. InfoBionic sought to file an exhibit (a letter from InfoBionic to CardioNet making clear that InfoBionic viewed the remaining infringement claims to lack a good-faith basis for assertion) to its opposition to the motion to sever under seal. The letter is asserted to contain sensitive information that was exchanged as a part of an on-going arbitration proceeding on a trade secret misappropriation claim between CardioNet and a former employee who is now working for InfoBionic. CardioNet did not oppose the motion to seal, but Judge Talwani denied the request without prejudice, noting the presumptive right of the public to have access to judicial documents and finding that InfoBionic had not met the burden of showing that impoundment would not violate this presumptive right. She gave InfoBionic the option of filing the letter on the public docket with sensitive material redacted, thus keeping the material out of the purview of the things she would consider in ruling on the motion, or providing further explanation as to why the sensitive material merited consideration of the court.

In my experience, both in managing this blog and in practice before her, Judge Talwani scrutinizes motions to seal documents with great care. Litigants must ensure that they provide appropriate and specific information as to the sensitive nature and the harm that would result from public disclosure when seeking to impound information that they ask the court to rely upon, even where the opposing party assents to impoundment.

ACQIS, LLC v. EMC Corp. (14-cv-13560).

ACQIS accused EMC of infringing eleven patents relating to consoles containing computer peripherals, such as a keyboard, mouse, display and disk drive, into which a core computer module having the CPU, memory, I/O and hard drive) can be inserted to form a complete PC. EMC filed a number of affirmative defenses, including alleging that the complaint failed to state a claim on which relief could be granted. In July 2018, ACQIS moved for summary judgment on that defense, asserting that failure to state a claim is not a proper affirmative defense under the Federal Rules of Civil Procedure as well as EMC’s purported failure to identify a factual or legal basis for the defense when the parties met and conferred on the issue. Judge Burroughs denied that motion, finding that the viability of pleading failure to state a claim as an affirmative defense was, in the circumstances of the case, “purely academic” and that resolution of the question would not impact the litigation or entitle either party to judgment as a matter of law on any issue.

Oakley, Inc. v. Kim (19-cv-10651).

Oakley accuses Kyong Kim and his retail business known as “It’s All About the Accessories” of selling counterfeit Oakley sunglasses. Oakley investigators visited Kim’s locations at the Northshore Mall in Peabody and the Cambridgeside Galleria (just down the street from my office in Cambridge) in February, and purchased sunglasses bearing Oakley trademarks that are asserted to be counterfeit. Oakley claims trademark counterfeiting and seeks injunctive and monetary relief. The case is before Judge Burroughs.

Intellectual Ventures I, LLC et al. v. Lenovo Group Ltd. et al. (16-cv-10860).

Following invalidation of independent claim 1 (and a number of other claims) of the sole asserted patent in an inter partes review, Lenovo moved for summary judgment of invalidity of the sole asserted claim of the patent. Lenovo asserted both collateral estoppel and that there was no genuine issue of fact that the claim was obvious. Judge Saris ruled that estoppel applied and granted Lenovo’s motion. The asserted patent related to symmetric multiprocessor or shared-memory multiprocessor systems. Claim 1, which was invalidated by the PTAB, recited the system in some detail; claim 11, the sole asserted claim, added that the system further comprised the microprocessors and the memory device of the system, without further limitation. Notably, claim 11 was not challenged during the IPR. Lenovo asserted that collateral estoppel should apply because Intellectual Ventures could not show that the additional limitations of claim 11 “materially alter the question of invalidity.” Noting that the Federal Circuit had determined that issue preclusion applies to an invalidity finding before the PTAB despite the different standards of proof and of claim construction between the PTAB and district court, Judge Saris determined that estoppel applies. She indicated that the claims need not be identical for estoppel to apply, merely that the issues be the same. As claim 1 had been fully adjudicated, the sole question was whether the differences between claim 1 and claim 11 alter the infringement analysis in a meaningful way – Judge Saris determined that it did not. Claim 1 included limitations on the interfaces between microprocessors and memory devices. Claim 11 merely affirmatively claimed the microprocessors and memory devices. The PTAB had determined that the prior art reference relied upon disclosed microprocessors and memory devices, meaning that the claim did not add anything to the invalidity analysis that had not been determined before the PTAB.