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

This case involves allegations that Cisco infringed patents related to configuring, deploying and maintaining enterprise and application servers. Earlier in the litigation, the court determined that one of the patents was directed to ineligible subject matter, and Egenera dismissed a second without prejudice following institution of inter partes review. The court held a three day bench trial on the sole issue of whether Peter Schulter, an Egenera employee, should have remained listed as an inventor of the sole remaining patent-in-suit. Schulter was removed as an inventor after Egenera relied on an internal document that predated his being hired to swear behind prior art in the IPR (which, as it turns out, was not instituted with respect to the patent). Judge Stearns found that his removal was improper. He noted that none of the named inventors, including Schulter, reviewed the internal document before signing the declarations that accompanied the change of inventor petition, instead relying on Egenera’s management and counsel that the removal of Schulter was proper.

Later, the court construed the term “logic to modify said receiver to transmit said modified messages to the external communication network and to the external storage network” as a means-plus-function limitation. After reviewing internal documentation, including reviews of Schulter, the court determined that Schulter contributed to the means identified in the specification that were swept into the claim by means of 112(6). Judge Stearns identified passages in the specification that were taken from a state-of-development document authored by Schulter that post-dated Schulter’s employment and to which he contributed. Judge Stearns further considered testimony from one of the other inventors that the last-state-of-development document that pre-dated Schulter’s employment did not include information contained in the patent. Further, Egenera hired Schulter specifically to work on the servers covered by the patent This evidence was sufficient to overcome Schulter’s testimony that he was not an inventor, which was not corroborated by any contemporaneous evidence. As the court had already determined that judicial estoppel prevented Egenera from seeking to re-add Schulter as an inventor, the patent was deemed invalid, closing the case.

Medacta International SA et al. v. ConforMIS, Inc. (19-cv-11160).

Medacta makes and sells orthopedic and neurosurgical medical devices, including joint replacement products sold under the “MyKnee” mark. Medacta has a federal registration on a stylized version of the mark, in which the letter “M” is formed by two angled triangles.  myknee texas orthopedics.jpg

While not yet incontestable, Medacta has filed the § 1065 declaration that should lead to incontestability. Medacta asserts that Conformis’ use of “#ThisIsMyKnee” in connection with advertisements for orthopedic products constitutes both federal and common law service mark infringement, as well as false designation of origin and dilution under Massachusetts law.

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Medacta seeks injunctive relief and monetary damages, and asserts that the infringement is willful, despite making no allegations of having brought the issue to ConforMIS prior to filing suit. Judge Young has the case.

Earthwatch Institute, Inc. v. DigitalGlobe, Inc. (19-cv-11142).

Earthwatch is a non-profit corporation that supports scientific research through “citizen science.” Under this approach, Earthwatch joins ordinary citizens who are concerned about environmental issues together with world-class scientists to conduct environmental surveys and research, such as tracking chimpanzees through the Ugandan forests. Earthwatch has been in existence since 1971, and has won numerous awards and achieved many scientific publications of its work. Earthwatch has operated under a number of federally-registered EARTHWATCH marks in a variety of classes, which have become incontestible. DigitalGlobe is a Colorado company that offers high-resolution satellite imagery of the globe for, among other things, environmental monitoring. Among the products offered by DigitalGlobe is a customizable subscription service under the name “EARTHWATCH.” Earthwatch asserts that DigitalGlobe is thereby infringing its trademarks under both federal and common law, and moreover that the infringement is willful – DigitalGlobe initially operated as “EarthWatch Incorporated,” and changed its corporate name after a cease and desist demand from Earthwatch. In addition to the trademark counts, Earthwatch asserts violation of Ch. 93A. Earthwatch has been a client of my firm, Lando & Anastasi, for many years, and the case was filed by my colleagues Nate Harris and Peter Lando. The case is before Judge Woodlock.

Al Cass, Inc. v. American Way Marketing, LLC (19-cv-11125).

Al Cass makes and sells lubricating oil for musical instruments under the “AL CASS FAST” mark – I fondly remember the distinct smell of their valve oil from my trumpet-playing days in elementary school. The company has been selling this oil for sixty years, after developing the formulation at the request of jazz trumpeter Dizzy Gillespie, and have used the AL CASS FAST mark since the Sixties. For the past thirty years or so, the oil was sold in these bottles, which Al Cass asserts to be its own trade dress.al-cass-2740-fast-valve-oil-1214762573_1200x1200  American Way Marketing (AWM) also makes and sells valve oil (including, at least in the past, Al Cass oil) and in early 2018 offered to buy All Cass, which Al Cass declined. Al Cass asserts that while the offer was being made, an AMW affiliate filed a federal trademark application for “AL CASS FAST” for lubricant oil for use with brass or metal musical instruments. AMW expressly abandoned this application in September following a demand to do so by Al Cass, but subsequently filed an application for “SUPERSLICK FAST.” Al Cass says that AMW sells their oil in bottles that are too similar to the Al Cass bottles.superslick fast

Al Cass further alleges that AMW has told distributors and customers that Al Cass was no longer selling its FAST oil, saying that the Al Cass oil “is currently unavailable and future ETA is unknown.” Al Cass brings counts for federal, state and common law trademark infringement, trade dress infringement, false advertising, under the Lanham Act and state law, and unfair business practices.

KCG Technologies, LLC v. CarMax Auto Superstores, Inc. et al. (19-cv-11101).

KCG is the assignee of U.S. Patent 9,671,955, directed to a virtual smart phone on a car-mounted display KCG claims that CarMax induces infringement of this patent through sales of used cars having CarPlay®, NissanConnect®, Android Auto, and Toyota Sync/EntunesTM technology, the cars including owner’s manuals with instruction on these technologies. Both direct and indirect infringement are asserted.

S&S Corporation of Myrtle Beach v. Cool Hand Luke, Inc., d/b/a The Bowery Bar (19-cv-11103).

S&S operates a restaurant and pub known as The Bowery (which serves the “8th Wonder of the World,” a full pound hamburger) just off the beach in Myrtle Beach. The establishment has been open since 1944, and registered the BOWERY mark in 1987. Cool Hand Luke opened an establishment it calls “The Bowery Bar” in Dorchester, Massachusetts in 2018. Cool Hand Luke itself has an application for THE BOWERY BAR for restaurant services, which is currently under rejection for likelihood of confusion with S&S’ BOWERY trademark. S&S brings claims of service mark infringement, false designation of origin, common law trademark infringement, and violation of Ch. 93A, and seeks injunctive relief, an accounting of profits, trebling of damages and an award of attorney’s fees, and (oddly) a separate demand for damages in the amount of at least $200,000 without explanation as to why that particular number was sought.

Getty Images (US), Inc. v. Her Campus Media, LLC (19-cv-11084).

On-line image licensing company Getty Images accuses Her Campus Media of widespread copyright infringement for accepting and publishing articles containing unlicensed images controlled by Getty. Her Campus Media, an often-accused business that solicits college women to submit articles for publication, is said to have wrongfully used thousands of Getty images over the last two years alone, many taken by professional photographers with expensive and difficult to obtain access to events like the Grammys and MTV Music Video Awards. Getty seeks the greater of actual and statutory damages and a finding of willful infringement. The case is before Judge Sorokin.