Judge Saylor denied Abiomed’s motion for a protective order prohibiting discovery of foreign sales of products whose components were exported from the United States and assembled abroad. Abiomed had sought to preclude this information because Maquet had not specifically pled 35 U.S.C. § 271(f) as a basis for infringement. Noting that the limits on discovery set forth in Rule 26 may encompass matters that could bear on any issue that “is or may be in the case,” Judge Saylor determined that discovery as to worldwide sales is potentially relevant to damages. He stated that the order concerns only discoverability, and that he was taking no position on whether a claim under 271(f) was properly pled or on whether the resulting discovery would ultimately be admissible at trial. Judge Saylor further denied Abiomed’s motion to compel discovery from the Getinge Group, a consortium of companies that includes Maquet and that is owned by Getinge AB, a Swedish company. Getinge AB had initially been named as a defendant in Abiomed’s declaratory judgment complaint, but had successfully moved to dismiss because it’s lack of ownership of the subject patents meant that it lacked standing to defend such claims. Abiomed then had sought information and documents related to patent transactions, assessments, valuations and licenses held by Getinge Group entities located outside of the United States. Judge Saylor determined that the documents were not in the possession, custody or control of Maquet, because the fact that Maquet is a subsidiary of and shares a legal services department with Getinge was insufficient to establish that Maquet is an alter ego of Getinge.
Fantastic Sams accuses former Georgia franchisee Talukders of continuing to use Fantastic Sams’ trademarks following termination of the franchise agreement. Talukders became a franchisee in 2017, when it purchased the salon of a Sams franchisee. As part of the franchise agreement, Talkuders would be permitted to only offer, use and sell products and services that were prescribed or approved by Sams. According to the complaint, Fantastic Sams terminated the franchise agreement for cause when it discovered that Talukders was operating “unlicensed medical spas” in the franchised salons. Rather than cease using the registered marks, Sams asserts that Talukders transferred ownership of the salons to co-defendants Paula Gomez and Michelle Scott, who continue to use the “Fantastic Sams” marks or a “Fantastic Salon and Spa” mark that is asserted to be confusingly similar. Fantastic Sams asserts trademark infringement, unfair competition and breach of contract, and seeks specific performance on the contract claim.
John Epstein again sued Miller Brothers Furniture for copyright infringement related to the unauthorized use of promotional material he created for the company. Epstein had filed suit in April, alleging breach of contract in addition to copyright infringement, and Miller Brothers counterclaimed with interference with advantageous business relations and unfair competition claims. Epstein sought to add a second registration by amended complaint, but subsequently withdrew the amended complaint because the second registration had not issued prior to the initial filing of the complaint. This new complaint alleges infringement of both the new registration and the registration that was asserted in the original complaint, meaning the first registration is being asserted in both cases (although joinder of the two cases would resolve that issue). As with the initial case, this case is before Judge Mastroianni.
Uniloc 2017, a non-practicing entity affiliated with the original Uniloc, sued Paychex, Akamai and athenahealth, accusing each of infringing a pair of patents relating to the management and distribution of application programs to target stations on a network. The patents originally belonged to IBM, and have an odd chain of title through the PTO’s assignment page – it appears that Uniloc assigned a security interest in the patents to Fortress Credit Co. in 2014 without having first obtained title from IBM – that assignment (to Uniloc Luxembourg S.A.) was executed in 2016. The patents each claim priority to a December 1998 filing, so both have expired. The cases are all before Judge Stearns.
In 2018, Nike sued Puma on seven patents related to knitted uppers for athletic shoes, and subsequently added another three newly-issued patents. Puma sought inter partes review on five of the patents and moved to stay the case pending resolution of these IPR’s, asserting that it would file another two IPR requests as soon as the rules permitted (i.e., no sooner than nine months after issuance). Judge Sorokin denied Puma’s motion to stay, noting that Puma had failed to seek post-grant review despite being in a position to do so, and that the PTO had not yet actually instituted any of the requested IPR’s. His denial was expressly based “on the present record,” suggesting that he would consider a follow-on motion when the remaining requests are filed and the PTO has acted on them.
Judge Stearns denied Samsung’s motion to dismiss for failure to state a claim, agreeing that the complaint meets the Twombly “plausibility” standard because it states the patents alleged to be infringed and the acts by which they are allegedly infringed. Rain Computing asserts that Samsung’s delivery of their apps to end user devices via an app store that requires registration and subscription to use, which are asserted to infringe Rain’s patent directed to methods and systems for delivering software to client terminals based on a subscription service. Judge Stearns held that the Federal Rules of Civil Procedure, even as explained by Twombly, “do not require a plaintiff to plead facts establishing that each element of an asserted claim is met.” This holding seems to be inconsistent with a pair of prior D. Mass. cases (Rampage v. Global Graphics, Judge Burroughs, and Sunrise Techs. V. Cimcon Lighting, Judge Gorton) that held that a patent plaintiff “must allege that defendant’s product practices all the elements of at least one of the claims of the subject patent.” It will be interesting to see whether Samsung will challenge this decision down the road.
Minden Pictures accuses Lynn company Kate-Den, which does business as “Dennis the Mennis Pest Control,” of willful copyright infringement and violation of the Digital Millennium Copyright Act. Minden asserts itself to be the premier provider of rights-managed wildlife and nature stock photographs, including photos taken by Michael Durham. Minden says that Kate-Den uses Durham photographs on its website, removed the copyright management information associated with the photographs, and have failed to respond to cease and desist letters from Minden. The case is before Judge Zobel.