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

Egenera accused Cisco of infringing the ‘430 patent, which names Egenera employee Peter Schulter as one of the inventors. When Cisco sought inter partes review on the basis of a 2000 reference, Egenera sought to swear behind the reference (under the first-to-invent rule, as the invention predates the AIA’s first-to-file system). Egenera relied on a document authored by inventor Max Smith, that Egenera asserts fully described the claimed invention. This document, however, pre-dates Schulter’s employment with Egenera. Egenera successfully petitioned to have Schulter removed as an inventor, and filed a declaration from Schulter stating that he was erroneously named. Cicso contended that Schulter should have been named as an inventor, and that by his removal the patent is invalid.

Judge Stearns agreed with Cisco that, should Schulter be determined to have contributed to the invention, Egenera could not petition to have him restored as an inventor under the doctrine of judicial estoppel, as such a claim would be inconsistent with Egenera’s assertion that he was incorrectly named. Judge Stearns determined, however, that while Schulter authored a pre-critical date document on a virtual LAN proxy that potentially read on a means-plus-function term in the claims, his authorship alone was not enough to determine, as a matter of law, that he conceived of the virtual LAN proxy or that the virtual LAN proxy was claimed via the means-plus-function limitation. Accordingly, he denied the cross motions for summary judgment on inventorship.

RICPI Communications LLC v. Simoco EMEA Ltd. (18-cv-12469).

Texas’ RICPI sued Simoco, a UK company, accusing Simoco of infringing its US 7,333,806 patent, titled “System and Method for Enabling Two-Way Radio Communications over a Computer Network.” RICPI asserts that Simoco’s XD Solutions digital two-way radio products infringe both system and method claims of the ‘806 patent both directly and through inducement. The case is assigned to Judge Talwani.

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

As a part of its defense to this patent infringement lawsuit, MSRI sought inter partes review in 2016. The patent emerged with most claims deemed valid. MSRI then challenged the validity of the patent over additional prior art references. MSRI sought to get around the estoppel provided by 35 USC 315(e)(2), which proscribes assertions of invalidity on grounds that were raised or could reasonably have been raised during the IPR, by providing declarations and search results from two outside search firms and asserting that these reasonable searches did not uncover the new references and thus the validity challenge could not reasonably have been raised. Magistrate Judge Bowler granted in part and denied in part MRSI’s motion to quash subpoenas issued by Palomar to the two search firms. She found that the searches were, at a minimum, subject to work-product protection, but that MSRI had waived such protection by affirmatively relying on the search results and affidavits in their opposition to Palomar’s motion for partial summary judgment. She determined that Palomar was entitled to discovery from the two firms, but that some of Palomar’s requests were overbroad and/or covered unrelated subject matter. Accordingly, while not quashing the subpoenas, she limited the subpoenas to specifics of the actual searches performed for MSRI.

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

Magistrate Judge Boal granted in part and denied in part SiOnyx’s motion to compel testimony and documents concerning Hamamatsu’s customer agreements. Hamamatsu had previously been compelled to produce sales agreements pertaining to the accused products. SiOnyx asserts that as a result of that production, it learned that Hamamatsu had actively negotiated with a major (sealed) customer of SiOnyx during the course of the litigation. SiOnyx sought additional depositions concerning the late-produced agreements as well as documents concerning the agreements. Judge Boal found SiOnyx’s requests overly broad, in that they covered not only the newly-discovered information but also topics that SiOnyx could have covered in prior depositions, but acknowledged that SiOnyx was entitled to some additional discovery as a result of the late production She ordered Hamamatsu to respond to depositions by written question pursuant to FRCP 31.

Excel Dryer, Inc. v. Penson & Co. LLC (18-cv-30179).

Excel Dryer accuses Penson & CO. of infringing its trade dress in its XLERATOR restroom air hand dryer. Excel asserts that its patented hand dryer has achieved considerable success, and that it has a distinctive shape and appearance that is associated with Excel.

Excel Dryer.png

Excel further asserts that it has already established secondary meaning of its trade dress in a prior proceeding before the International Trade Commission, in which Penson was a respondent, and both a General Exclusion Order and a Cease and Desist Order were entered prohibiting importation of the accused hand dryers. Excel brings charges of trade dress infringement and violation of C. 93A.

Luxottica Group SpA et al. v. Shun Hao Gift Shop LLC et al. (18-cv-12374) and Super Discounts, Inc. et al. (18-cv-12375).

Eyeglass manufacturer Luxottica (and, with respect to Shun Hao, Oakley Inc.) filed trademark infringement suits against Hyde Park retailers Shun Hao and Super Discounts, accusing them of selling counterfeit Ray-Ban and Oakley sunglasses. Luxottica sells RAY-BAN sunglasses through LensCrafters, Pearle Vision and ILORI, as well as other entities throughout the world, and Oakley has likewise sold sunglasses bearing the OAKLEY or “O” mark through its own and affiliated stores worldwide. Plaintiffs have engaged, at least recently, in investigating retailers throughout the country and enforcing their trademarks through litigation, with a large number of suits having been filed elsewhere. Apparently, their investigators have now hit Massachusetts, with these suits at the vanguard. They bring a single count for trademark counterfeiting, and seek exemplary damages as well as monetary and injunctive relief.

Deetz Family, LLC v. Rust-Oleum Corp. (16-cv-10790).

Dayton Deetz, the sole inventor on a pair of patents relating to magnetic additives for paint, ranted a non-exclusive license to Rust-Oleum in 2005. Deetz asserts that Rust-Oleum failed to make the minimum payments under the license in 2006-2010, and stopped making payments altogether on 2010, leading Deetz to terminate the license. Deetz then filed suit, asserting in addition to breach of contract that Rust-Oleum was continuing to use the patented technology and associated know-how that was transferred as a part of the 2005 license. Deetz then moved to disqualify Rust-Oleum’s litigation counsel, saying that his role in negotiating the 2005 license renders him a likely necessary witness, which would leave him unable to serve as counsel at trial. Judge Hillman denied the motion, noting that Deetz had not put forth any evidence beyond conclusory statements that the attorney was actually involved in the negotiations. Further, as it appeared that the negotiations were primarily (if not entirely) between Deetz and a Rust-Oleum employee, both of whom who would be available to testify. Absent some argument (not presented by Deetz) that the attorney held some unique knowledge that the other two could not provide, the attorney’s testimony would not be “necessary,” but would rather likely be cumulative. Accordingly, Deetz did not satisfy the burden of demonstrating that the attorney was likely to be a necessary witness.