Mitchell Repair Information Company, LLC v. Kevin Truong d/b/a Kevin Nguyen (19-cv-12388).

Mitchell Repair is the owner of the copyright in an automotive diagnostic software program series known as “Mitchell On-Demand.” The software is available for license from Mitchell Repair, either as a perpetual license or as a twelve-month, renewable license. In either case, the license is non-transferable. Mitchell asserts copyright infringement against Kevin Truong, asserting that Truong obtained an unauthorized version of the software and sold copies to service stations in towns north of Boston. Mitchell also asserts violation of c. 93A.

MedIdea, LLC v. DePuy Orthopaedics, Inc. (17-cv-11172).

MedIdea accused DePuy of infringing four patents related to knee replacements in Illinois, with the case transferred to Massachusetts in light of the TC Heartland decision. MedIdea conceded non-infringement on all but one claim following claim construction. In November, Judge Sorokin granted DePuy summary judgment of non-infringement on the sole remaining claim, finding that the claims as construed required multiple cam surfaces that were absent in the accused knee prosthetics. Judge Sorokin further construed the claim over MedIdea’s objection, finding that MedIdea’s post-construction amended contentions created issues that required further construction of the claim, and that in any event if the infringement issue related to a claim construction issue that the court had not yet resolved, the court was duty-bound to construe the term. He then determined that, while the claim itself did not so require, the intrinsic evidence taken as a whole required the claimed “points of cam action” to mean “convex surfaces,” in part because every embodiment of the specification showed convex cam surfaces. He acknowledged that this, standing alone, is not sufficient to so limit the claims, but found this fact to still have a bearing on the construction of the term, and that, combined with statements made by MedIdea in both the prosecution of the patents and in their initial complaint and contentions filed in the litigation (and since abandoned for MedIdea’s current theory of infringement), the claims should be so construed. In particular, in an IPR proceeding on the patents-in-suit. MedIdea characterized the “disclosed and claimed invention” as having points of cam action with convex surfaces – the use of “disclosed and claimed invention” estopped any argument that MedIdea was discussing only non-limiting examples. Notably, Judge Sorokin did not place any estoppel on DePuy based on their statements made in the IPR, because as the non-patentee, their statements did not become a part of the prosecution history of the patents and because their positions were not adopted by the Board and thus did not create a judicial estoppel situation.

MedIdea conceded that, under this claim construction, the accused prosthesis lacks multiple convex cam surfaces and thus does not infringe, resulting in summary judgment in favor of DePuy. Judge Sorokin subsequently entered final judgment of non-infringement and dismissed DePuy’s counterclaims without prejudice.

Epstein v. Bruce Furniture, Inc. (19-cv-30050).

John Epstein had sued Bruce Furniture for breach of contract and copyright infringement relating to an advertisement campaign that Epstein alleges he prepared for Bruce Furniture. Judge Mastroianni denied Bruce Furniture’s motion to dismiss, finding the complaint made clear that it was the specific content, arrangement, and phraseology of the advertisements, and not the ideas contained therein (such as interest-free financing), that was being asserted, and that such information is plausibly within the realm of copyright protection. He further found that the merger doctrine and the “scenes a faire” doctrine did not negate the substantial similarity alleged in the complaint.

Dunkin’ Donuts Franchising LLC et al. v. RMG Donuts, LLC et al. (19-cv-12395).

Dunkin’ Donuts Franchising filed suit against former franchisee RMG Donuts, who had operated a Dunkin’ Donuts franchise in Maverick Square, East Boston, as well as three individuals who, as members of RMG Donuts, executed a personal guarantee in connection with the franchise agreement. Dunkin’, which holds a number of registrations related to their business, asserts that RMG was run in a fashion not permitted by the franchise agreement, which established standards for health, food safety and sanitation that RMG is alleged to have failed to meet. Dunkin’ pointed to a November 2019 Facebook post regarding a pest infestation at the shop, and required that it be immediately closed. Pursuant to the franchise agreement, Dunkin’ provided notice to RMG that they had 24 hours to cure the issue, and terminated the franchise when the problem remained two days later, on November 21st. Dunkin’ asserts that despite this, RMG continued to operate the store using the Dunkin’ Donuts systems and trademarked materials. Dunkin’ asserts breach of contract, trademark and trade dress infringement, and unfair competition.

It appears that the store had been closed by the Boston Inspectional Services pending clean-up of the facility; Dunkin’ seeks to prevent its reopening under the Dunkin’ Donuts name.  Judge Sorokin has been assigned to the case.

Sanderson-MacLeod, Inc. v. Hobbs Medical, Inc. (19-cv-30013).

Judge Mastroianni granted Hobbs’ request for attorney’s fees pursuant to 35 U.S.C. § 285, finding the case to be exceptional. Judge Mastroianni dismissed the complaint for failing to provide sufficient factual detail or legal underpinning to state a claim on which relief could be granted. The complaint, which had already been amended once, failed to specify which products were accused of infringement, and failed to describe how any products infringed the patents, and was dismissed with prejudice. Noting that the pleading standards had been established years before the complaint was filed, and that Hobbs had notified Sanderson-MacLeod prior to filing its motion to dismiss of the legal issues it would present, but Sanderson-MacLeod failed to withdraw the complaint or move to further amend. Judge Mastroianni referred he case to Magistrate Judge Robertson to determine the fee award.

Canon, Inc. v. Avigilon USA Corporation, Inc. et al. (19-cv-10931).

Canon sued Avigilon earlier this year, accusing Avigilon of willfully infringing and inducing infringement of a Cannon patent covering transmission of video data. Judge Gorton has now granted Avigilon’s motion to dismiss the induced infringement and willful infringement allegations, finding that Canon’s complaint failed to plead facts sufficient to support an inference of actual pre-suit knowledge of the asserted patent by Avigilon, instead only making conclusory statements to that effect. Judge Gorton noted that there is a conflict between district courts as to whether an alleged inducer must be shown to have had knowledge of the patent prior to the filing of the lawsuit, with a minority of courts holding that post-suit knowledge (as through the complaint itself) of the asserted patent improperly bootstraps the knowledge to pre-suit acts, and more to the point, that the District of Massachusetts has limited the acceptability of knowledge through the filing of a complaint to later-amended complaints that expressly limit the inducement claims to post-filing conduct. He further found the same issues applied to the willfulness allegations, which also require proof of knowledge of the asserted patent. He therefore dismissed the inducement and willfulness claims without prejudice to allow Canon to appropriately amend the complaint, should circumstances permit.

Ethicon Endo-Surgery, Inc. et al. v. Covidien LP et al. (16-cv-12556).

Judge Sorokin denied Ethicon’s motion to strike portions of the trial testimony of Covidien’s technical expert that three prior art references did not render the asserted ‘310 patent invalid. While the expert offered arguments that had not previously been disclosed, Judge Sorokin noted that Covidien’s expert had been deposed prior to Ethicon’s, and that Covidien’s expert had therefore not had the opportunity to rebut the theories put forth by Ethicon’s expert, at least some of which came forth in deposition but were not present in the expert report. Noting that Ethicon had not alleged prejudice, the testimony was allowed to stand.