Nike, Inc. v. Puma North America, Inc. (18-cv-10876).

Nike sued Puma for infringement of seven Nike patents covering shoes having knitted upper, and alleged that after it notified Puma about the patents prior to filing suit, Puma not only failed to cease making and selling the accused products, Puma also introduced new shoes to the market that infringed the patents. Puma moved to dismiss the claims with respect to two of the patents as directed to non-patentable subject matter, asserting that one was directed to the abstract idea of forming an outline pattern on a textile and does not disclose an inventive step towards achieving the outline pattern, and that the second is directed to the abstract idea of generating a visual pattern on a textile, which is nothing more than a non-patentable work of art. Judge Sorokin disagreed, finding that the claims, which were directed to tangible manufactured items (i.e., shoes) or to physical components thereof or methods of manufacturing the same, they passed muster under the first prong of the Mayo test as being directed to a statutorily provided category of patent-eligible subject matter. He further noted that, even if they did not, Puma had not met its burden of demonstrating by clear and convincing evidence that the claims lacked an inventive step that would meet the second prong of the Mayo test. Judge Sorokin also denied Puma’s motion to dismiss the willfulness charges, finding Puma’s suggestion that more must be pled than knowledge of the patent and continued infringement remained an open question (albeit one that other Massachusetts judges had found incorrect), but that Nike had sufficiently pled additional facts that would support a finding of willfulness.

Boston Heart Diagnostics Corp. v. GeneAlign, LLC (17-cv-11412).

Judge Talwani found GeneAlign in default after it failed to respond to Boston Heart Diagnostic’s patent infringement complaint and entered an injunction barring GeneAlign from making, using, selling or offering for sale any SLCO1B1 test. She further awarded BHD costs and fees totaling $15,641.49 after determining, taking the allegations of the complaint as true, that the case was exceptional under 35 U.S.C. § 285.

Acushnet Company v. Golf Gods Pty ltd. (18-cv-12093).

Acushnet, the maker of Titleist golf equipment, filed suit against Australia’s Golf Gods, accusing them of violating Titleist trademarks through Golf Gods’ sale of apparel bearing a “TITTIES” mark in the Titleist stylized script, “HOE V1” (instead of “PRO V1,” a Titleist golf ball), and a few other racy take-offs on Titleist marks. Titleist also asserts that golf balls sold by Golf Gods infringes the trade dress of Acushnet’s TITLEIST PRO V1 packaging.

Titleist asserts (and is almost certainly correct) that its marks are famous, and accuses Golf Gods of intentionally creating an “unwholesome and undesirable association” in consumers’ minds, thereby tarnishing the Titleist marks. Titleist asserts trademark infringement, false designation of origin, unfair competition, and trademark dilution under both state and federal law. Judge Boal has the case.

Purdue Pharma LP et al. v. Collegium Pharmaceutical, Inc. (15-cv-13099).

Judge Saylor granted Collegiums request for leave to file an amended answer pleading the reverse doctrine of equivalents as an affirmative defense. He found this defense not clearly futile, but expressly indicated that he was taking no position as to whether the reverse doctrine of equivalents is an affirmative defense that must be pled or whether it remains a viable legal doctrine.

Purdue Pharma LP et al. v. Collegium Pharmaceutical, Inc. (15-cv-13099).

Purdue alleges that Collegium infringed three patents relating to abuse-deterrent extended-release oxycodone by filing an NDA for Collegium’s XTAMPZA ER product. Collegium sought summary judgment of non-infringement on two theories – that its active ingredient (oxycodone myristate) is not the equivalent of Purdue’s oxycodone hydrochloride, and that Collegium’s product lacks the claimed “irritant.” Collegium also asserted that one of the patents should be deemed invalid under issue preclusion or collateral estoppel, based on a final judgment in a New York court that three related patents were invalid and the PTO’s requirement, during examination of the patents at issue, that a terminal disclaimer be filed to overcome obviousness-type double patenting over the related patents.

The invalidated claims from the prior litigation were all product-by-process claims; while the Judge in that case acknowledged the process was novel, the claims stood or fell based solely on the product limitations, which did not describe a patentably-distinct compound. In evaluating the collateral estoppel argument, Judge Saylor noted that it had not been applied by the District of Delaware in an infringement case involving one of the patents of this suit. Judge Saylor applied Federal Circuit law on the preclusion and estoppel issues, which allows for preclusion on patent invalidity where the differences between the unadjudicated and adjudicated claims do not materially alter the question of patentability. He determined that the PTO’s double patenting analysis fails to satisfy this requirement, and that Purdue’s filing of the terminal disclaimers (particularly while expressly indicating its lack of agreement with the rejections) could not be converted into an admission or acquiescence on the merits of the rejections. He also determined that the claims at issue included additional limitations that materially alter the patentability as compared with the previously-invalidated claims, as the new claims included limitations relevant to the process that were not considered in the New York litigation. Collegium asserted that these limitations were inherently present in the invalidated Purdue patents, but Judge Saylor declined to apply the doctrine of inherency where the references in question, related Purdue patents, would not qualify as prior art, and noted that in any event there were unresolved issues of material fact that precluded summary judgment on the issue. While rejecting the preclusion issue, Judge Saylor did note that the findings of fact by the New York court rendered the validity of at least some of the asserted claims doubtful.

Collegium next sought to apply prosecution history estoppel to preclude a finding of infringement by equivalents, asserting that Purdue had specifically distinguished its hydrochloride form of oxycodone over other forms of oxycodone. Judge Saylor, however, determined that the scope of disavowal extended not further than products including oxycodone free base and declined to estop the equivalency argument. He found factual issues as to whether the two forms were equivalent that precluded summary judgment of non-infringement.

Collegium sought judgment of non-infringement on method claims, asserting that it does on itself complete all of the method steps because its product is manufactured by two companies that it does not control; Judge Saylor determined that Collegium could not demonstrate an absence of material fact on this issue, and denied summary judgment. Collegium’s last effort was to escape infringement of two of the patents on the basis that the myristic acid it utilized in its product is not an “irritant,” but instead is included to dissolve the oxycodone base. Looking back to the construction of “irritant,” the Court noted that Purdue had disavowed from the scope of that term components that both served both as an irritant and provided some other benefit, such as serving as an excipient. Noting that Purdue concedes that myristic acid in the XTAMPZA ER provides an excipient function, Judge Saylor granted summary judgment of non-infringement of all claims requiring an irritant, which effectively resulted in non-infringement on two of the three asserted patents.

Greater Boston Authentication Solutions, LLC v. Kaspersky Lab, Inc. (18-cv-12045).

Greater Boston Authentication Solutions (“GBAS”) accuses Woburn’s Kaspersky of infringing three patents relating to remotely unlocking electronic data using cryptographic authentication. GBAS asserts that Kaspersky’s license activation and verification technology infringes the patents, either literally or through the doctrine of equivalence. Judge Young has the case.

Xiao Wei Yang Catering Linkage In Inner Mongolia Co., Ltd. et al. v. Inner Mongolia Xiao Wei Yang USA, Inc. et al. (15-cv-10114).

Judge Casper granted summary judgment in favor of the Defendants on the trademark infringement, false designation of origin, trademark dilution, unfair competition, and unfair and deceptive trade practices. The case arose over a dispute between a Chinese restaurant chain and a US company seeking to become a franchisee. The two entered an agreement whereby the US entity opened a restaurant using the Chinese companies’ “Little Lamb” trademark. Plaintiffs allege that the Defendants violated this agreement by not opening another restaurant within one year of opening the Boston restaurant, making their use of the mark infringing as unsanctioned. The Court disagreed, and further determined that the attempted rescission of the agreement by the Plaintiffs was not proper under the terms of the agreement. As the agreement authorized the use of the mark, infringement could not be found. In a footnote, Judge Casper also noted that the Plaintiffs had failed to produce any evidence of damages, and that no presumption of damages could be had under the Lanham Act, which would also support a denial of the motion for summary judgment. As the remainder of the claims for which summary judgment was sought relied on a finding of infringement, these claims were also denied. Summary judgment in the Defendants’ favor had already been granted on breach of contract, breach of implied covenant of good faith and fair dealing, fraudulent inducement and unjust enrichment claims, meaning that all of Plaintiffs’ claims have been denied.