FH Cann & Associates, Inc. v. McKinney (D. Mass. 20-cv-11180).

Debt collection company FH Cann filed an additional lawsuit in which a debtor, Carlos McKinney, has claimed copyright infringement for Cann’s use of his name in its collection efforts.  McKinney filed a notice of dispute that demanded a number of things from Cann that the complaint contends are not required by law, such as additional documentation and verification under oath that the claims are valid.  This demand included language stating that Cann’s failure to provide the demanded information within 30 days would result in a waiver of Cann’s right to collect the debt, which Cann contends is not valid.  The demand includes a statement that McKinney declares “under penalty of perjury without the United States that the above statements are the truth…” (emphasis added).  Finally, the demand included an invoice for $500,000 for the alleged breach of McKinney’s common law copyright in his name., and to authorize McKinney to file a UCC-1 Financing Statement asserting a lien for that amount on Cann’s assets.  This document purported to be notarized in Georgia, but Cann asserts that the alleged notary is not licensed in Georgia and that the notarization is fraudulent.  Cann seeks declaratory and injunctive relief as well as damages for tortious interference with business relations.

While it seems unlikely for two such claims to arise in such a short period of time, Cann asserts that the documents provided by McKinney evidence a “number of fraudulent theories circulating on the internet and by various militia and ‘sovereign nation’ groups” to avoid debt collection and defraud creditors.  This case is before Judge Saylor.

Onyx Enterprises International, Corp. v. ID Parts LLC (D. Mass. 20-cv-11253).

Onyx, which sells auto parts and accessories under its “iD®” mark, accuses ID Parts of copying this mark in connection with sales of auto parts to benefit from the name recognition and good will associated with the mark and to mislead consumers into believing that ID Parts’ website, www.idparts.com, is associated with Onyx.  Onyx, a pure online retailer, began selling through its www.CARiD.com website in 2008. Since then, Onyx says it’s iD® line has grown into one of the largest online retailers of automotive products in the country, receiving over 10 million visitors monthly.  Onyx holds registrations for several stylized “iD” marks as well as “CARiD,” “BOATiD,” “CAMPERiD,” “MOTORCYCLEiD,” “POWERSPORTSiD,” “RACINGiD,” “RECREATIONiD,” “STREETiD,” “TOOLSiD” and “TRUCKiD.”  Onyx asserts that ID Parts took on that name at the end of 2009, with full knowledge of Onyx’s rights in the “iD” marks, and in 2014 sought registration of a stylized mark consisting of the term “id” contained within a circle.  That registration was refused due to a likelihood of confusion with Onyx’s “iD” mark, and ultimately the application was abandoned.  Despite this, and despite receiving two cease and desist letters from Onyx, ID Parts has continued using the mark and domain name.  Onyx asserts trademark infringement, unfair competition and false designation of origin under the Lanham Act and Massachusetts common law, dilution, cybersquatting, and deceptive trade practices under M.G.L. c. 93(a) § 2.  Judge Zobel has the case.

FH Cann & Associates, Inc. et al. v. Moorman (D. Mass. 20-cv-11251).

FH Cann, a debt collection company, sought to collect defendant and North Carolina resident Troy Moorman’s past due student loan debt.  In response, Moorman mailed a packet of documents to FH Cann that included an affidavit claiming that he had a “common law copyright” and had trademarked his name and another purporting to establish a security interest in all of FH Cann’s assets, which FH Cann says included a forged signature on behalf of FH Cann.  Moorman subsequently sent an invoice to FH Cann seeking $500,000 for Cann’s use of Moorman’s name.  He then filed a UCC-1 statement with the Secretary of the Commonwealth, purporting to place a $500,000 lien on the home of co-plaintiffs Sherri and Frank Cann, owners of FH Cann.  Cann seeks declaratory judgment that Moorman has no copyright or trademark rights in his name, that the purported contract, lien and UCC statement are not valid, injunctive relief preventing continuations of Moorman’s behavior, a decree granting the Cann’s quiet title in the house on which Moorman purports to have a lien, and actual and punitive damages resulting from the lien under a conversion or trespass to chattel theory.  Judge Woodlock has the pleasure of unwinding this case.

Tile, Inc. v. S&W Dealz et al. (D. Mass. 20-cv-10712).

Tile sued S&W Dealz in April for trademark infringement.  After S&W Dealz failed to answer the complaint or to oppose Tile’s motion for entry of default, Judge Burroughs granted Tile’s motion.  As a result of the default, the willfulness allegations of the complaint are deemed to be true, so S&W Dealz is deemed to have willfully infringed.  Tile sought $500,000 in willfulness damages for each of the two trademarks in suit, primarily to serve as a deterrent to future infringer (Tile apparently acknowledged the low likelihood of recovering any money from S&W Dealz).  Judge Burroughs acknowledged that Tile could opt for statutory damages, but the statutory damages provision was intended to provide compensation to the plaintiff and serve as a deterrent against future willful infringement, but noted that the statutory damage provision was not intended to provide plaintiff with a windfall.  She awarded $50,000 per mark, for a total of $100,000.  She also granted Tile’s request for a permanent injunction.

Singular Computing LLC v. Google LLC (D. Mass. 19-cv-12551).

Judge Saylor denied Google’s motion to dismiss on Alice grounds, finding the asserted patents claimed patentable subject matter.  Singular filed suit in 2019, accusing Google of infringing three patents relating to computer system architecture that utilizes low precision/high dynamic range processing elements.  Judge Saylor analyzed the patentability of the claims in accordance with Alice’s two-step procedure, looking to whether the claims are directed to a patent-ineligible concept that is so abstract as to risk disproportionately tying up the use of the underlying idea, and if so, whether the claims include an inventive concept that is sufficient to ensure the patent in practice amounts to significantly more than a claim on the ineligible concept itself.

Judge Saylor noted that the Supreme Court in Alice had discussed improvements to the functioning of a computer at step two of the inquiry, these types of inventions are not inherently abstract and can be analyzed in the initial step of the inquiry – whether the focus of the claims is on the specific asserted improvement in computer capabilities – in which case the claims are directed to patentable subject matter.  He rejected Google’s assertion that the claims were directed to LPHDR arithmetic generally, noting that the claims define the terms “low precision” and “high dynamic range” precisely so as not to cover LPHDR generally.  While not expressly construing these terms, judge Saylor noted that when the meaning of a claim term is in dispute in a motion to dismiss, the court must adopt the non-moving party’s construction in analyzing the motion.  He further noted that, even subject to Singular’s proposed constructions, the claims may still abstractly cover LPHDR math within that range and thus prove ineligible, but that such a determination would require development of the factual record.

Judge Saylor further noted that, even if the claims were directed to an abstract idea, the remainder of the limitations set forth sufficient non-conventional computer structure to render the claims eligible, at least on the record before it.  He did note that, as with the first Alice step, subsequent development of the factual record might change his mind with regard to the second step, which could be asserted on summary judgment.

Plastipak Packaging, Inc. v. Ice River Springs Water Co. Inc. et al. (D. Mass. 19-cv-11193).

After Plastipak accused Ice River of infringing ten patents relating to manufacturing lighter-weight plastic bottles, Ice River asserted that four limitations, present in some or all of the asserted claims, were indefinite.  Judge Talwani disagreed, finding that the claims and specification adequately defined the meets and bounds of each term.

 Ice River sought a finding that the term “neck portion” was indefinite because the claim language defined the portion as “including” several features but did not define where the neck portion began.  Judge Talwani noted that the claims consistently indicate that the neck portion extends upwardly from a lower portion, and found the specification and figures resolved any possible ambiguity by clarifying that the neck portion did not extend below the support flange.  She further noted that this limitation had been found definite in litigation against a different company by the Eastern District of Virginia, and refused to interpret the term to encompass more based on extrinsic evidence describing generic bottles, finding that Plastipak had acted as its own lexicographer in defining the term in the specification.  Interestingly, Plastipak had itself initially included a portion of the bottle below the flange as a part of the neck portion in an initial patent-related disclosure filed in this litigation, and subsequently amended the disclosure to exclude the portion below the flange.  Ice River asserted that this showed that Plastipak itself couldn’t discern the meets and bounds of the term, but Judge Talwani discounted it as a mistake, likely made not by Plastipak but instead by its counsel, and noted that it had been corrected without reliance or benefit on the initial disclosure.

Judge Talwani found the term “the filling occurring substantially adjacent to where the container is formed” to be definite, rejecting Ice River’s assertion that the specification must provide specific, measurable limitations to describe “substantially adjacent.” She noted that the specification described “conventional ‘blow-and-fill’ operations, including those in which a container is filled just after formation… in close proximity to where the container is formed,” which could be a single integrated machine or two machines “that are adjacent or in close proximity to one another.”  This was distinguished from other conventional methods in which the formed bottles are shipped to a separate location to be filled.  As these conventional methods are well-known in the art, the terms is sufficiently definite.

Finally, Judge Talwani determined that two other terms relating to portions of the bottle were, while “not a testament to clarity,” sufficiently spelled out in the specification to survive an indefiniteness challenge.

Marpac, LLC d/b/a Yogasleep v. 1st Avenue Superstore (D. Mass. 20-cv-11091).

Yogasleep sells white noise sound machines under a variety of registered trademarks, including Yogasleep®, Dohm®, Dohm Elite®, Hushh®, Rohm® and Whish® accuses 1st Avenue of trademark infringement, unfair competition and false designation of origin in connection with 1st Avenue’s sales of Yogasleep products through online commerce sites such as Amazon.  The complaint characterizes the accused products as being “non-genuine, potentially stolen or counterfeit,” and asserts that advertising such products as “new” deceives customers.  Because 1st Avenue is not a licensed retailer and it is unclear how it obtains Yogasleep products, Yogasleep’s warranty may not apply to 1st Avenue-sold products.  Yogasleep further points to a negative review on Amazon that cited 1st Avenue’s lack of customer service as evidence of harm to Yogasleep’s good will.  Judge Wolf has the case.

Intellectual Property Development, Inc. v. Boise Cascade Engineered Wood Products et al. (D. Mass. 19-cv-10228).

Intellectual Property Development (“IPD”) sued Warren Trask Company, Inc., National Lumber Co. and others in state court.  After the case was removed to Federal court, Judge Gorton referred all pretrial matters to Magistrate Judge Boal.  Both defendants asserted counterclaims seeking declaratory judgment of non-infringement and invalidity of certain patents, and National Lumber asserted state law claims against and Glenn Robbell, IDP’s CEO and the sole inventor and apparent owner of the two patents.  In December, IPD’s and Robbell’s attorney moved to withdraw from representation, citing breakdown of communications, fundamental disagreements over the handling of the litigation, and failure of the plaintiffs to pay for legal services.  This motion was granted in January.  Trask and National Lumber each then moved for sanctions and dismissal, citing the plaintiffs’ continuous failures to engage in discovery, to provide a list of claim terms to be construed or file a claim construction brief, and failure to participate in conferences regarding claim construction.  The motions also noted that plaintiffs had failed to obtain new counsel, and that IDP, being a corporation, could not represent itself pro se.  Judge Boal recommended dismissing IDP’s claims and entering default judgment against IDP, noting that the corporation had been given four months to find new counsel and had been warned of the consequences of failure to so do.  She recommended denial of the motion with respect to Robbell, who (as an individual) can represent himself pro se, and declined to recommend other sanctions against Robbell.

Plastipak Packaging, Inc. v. Ice River Springs Water Co. Inc. et al. (D. Mass. 19-cv-11193).

Judge Talwani denied Ice River’s motion to compel additional information relating to the conception, diligence and reduction to practice the claimed invention.  Ice River asserted that the responses and documents provided failed to explain what transpired in the eight months between conception and reduction to practice.  Judge Talwani indicated that the response answered the question posed by the interrogatory, and noted that Plastipak would be limited to the evidence disclosed in its responses at trial.  She further noted that, where Plastipak’s counsel certified that they had performed a reasonably diligent search and Ice River can point to nothing more than a suspicion that unproduced documents exists, Ice River is not entitled to an order compelling more.

Judge Talwani denied Ice River’s motion to compel documents that were produced by a third party in an earlier litigation with Plastipak and were deemed confidential under a protective order in that case.  She had previously entered a protective order shielding these documents from production but requiring Plastipak to identify all such documents in a privilege log.  Judge Talwani determined that Ice River would have to subpoena the third party, who could then move to quash, and a determination could then be made as to the need for their production. 

Judge Talwani denied Ice River’s motion to compel the production of all prior art in Plastipak’s possession.  Ice River had requested all “material” prior art, and Plastipak had produced only references cited on the face of the subject patent, taking the position that anything not cited to the PTO was not material, particularly with respect to confidential materials in its possession. While Judge Talwani did not find this interpretation of the request to be unreasonable, she noted that non-public materials can be material at least with respect to obviousness.  Accordingly, while not granting Ice River’s motion, she allowed Ice River to rephrase the request to make clear what information it sought.  Judge Talwani had earlier struck Ice River’s invalidity contentions, finding them non-compliant with Local Rule 16.6.  Ice River had cited 163 prior art references and more than 3000 exemplary obviousness combinations, but had not provided claim charts for roughly half of the references and not articulating specific reasons to make the obviousness combinations.  Because Ice River had relied on the scheduling order, which it contended modified the Local Rule, Judge Talwani allowed Ice River leave to refile its disclosures.  Given that the invalidity contentions remained pending, Ice River would not be prejudiced by the delay in the production of any additional art.

Robert Bosch LLC d/b/a Bosch v. Lincoln Diesel Specialties, LLC (D. Mass. 20-cv-11033).

Bosch makes fuel injectors and related car parts and sells them through a network of authorized distributers and authorized internet dealers.  The distributers are permitted to sell only to the authorized Internet dealers, who can only sell to end-users through designated websites.  The authorized resellers are further authorized to provide aftermarket service and warranties for Bosch products, such as maintenance, diagnostic and repair services.  Bosch asserts that Lincoln Diesel sells both new and remanufactured parts that it identifies as OEM Bosch Parts, but that Lincoln Diesel is not an authorized reseller of Bosch.  The complaint asserts that Lincoln Diesel obtains Bosch products as used products that have already been sold, at liquidation, or through importation from other regions of the world, and obtained or attempted to obtain products from authorized Bosch distributors or resellers in violation of the authorized parties’ agreements with Bosch.  Bosch asserts trademark infringement, tortious interference with contractual relations, and unfair competition under the laws of multiple states.  The case is before Judge Zobel.