Radio Entrepreneurs Interview

I had the fortune of speaking with Jeffery Davis on the Radio Entrepreneur about the state of intellectual property litigation in Massachusetts, including the change in the number of new filings and the rise in trade secret claims. Radio Entrepreneurs interviews a broad range of people to expose innovative and fast moving companies and create a knowledge pool for enrichment of the entrepreneurial community. You can listen to my interview here.

D. Mass. Adopts New Procedures for Handling Highly Sensitive Documents

The District of Massachusetts has joined a number of other federal courts in adopting new procedures for the filing, service and management of highly sensitive documents. These measures are being taken in response to the recent disclosure of wide-spread breaches of governmental and private computer systems. Where a party intends to file a document containing highly sensitive information, they must file a motion under seal requesting to treat the document as highly sensitive. The document in question must not be filed electronically along with the motion. Instead, two copies of the document must be delivered to the Clerk’s Office, securely packaged and labelled HIGHLY SENSITIVE DOCUMENT. The Clerk’s Office will maintain the document in a secure paper filing system. The document must be served on the other parties by any manner specified in Fed. R. Civ. P. 5(b)(2) other than by service through the Court’s electronic filing system. If a party believes that highly sensitive information has been electronically filed, the party may move to have the information removed from the electronic filing system.

Other federal courts have adopted, or are in the process of adopting, similar procedures, albeit some with slight variations (e.g., D. New Hampshire requires the filing on the electronic record of redacted versions of subject documents).

My Article on Protecting Trade Secrets While Collaborating Remotely Published in Mass. Lawyers Weekly.

A recent case in Delaware found that a business could not claim as a trade secret information that was discussed on Zoom conferences where the company did not utilize security features provided by the application, including virtual waiting rooms and unique passwords for each separate meeting. Given the work-from-home revolution of the Covid era (and the similarity of Massachusetts and Delaware trade secret law), businesses should be aware of this decision and its implications. You can read more about this in this article I wrote that was published in Massachusetts Lawyers Weekly

Bio-Rad Laboratories, Inc. v. Stilla Technologies, Inc. et al (D. Mass. 19-cv-11587). of the company

Judge Young partially denied Bio-Rad’s motion for a protective order in this patent infringement case. Bio-Rad had objected to several of the topics designated in Stilla’s notice of deposition of the company pursuant to Rule 30(b)(6). Judge Young determined that, other than assertions of attorney-client and work product privileges, Bio-Rad’s objections were overruled as to specific topics, but were otherwise sustained.

Of interest, Judge Young noted that he was “troubled by Bio-Rad’s apparently reflexive and possibly overbroad assertion of the attorney-client privilege” in the case, and states that “it is an open question in this circuit whether assertion of the attorney client privilege warrants drawing a negative inference.” He indicated that he would not sustain an assertion of privilege as to any document that was not included in a privilege log stating with particularity the grounds for the assertion of privilege.

This is not his first admonishment regarding discovery issues in this case. He had previously warned the parties that, where discovery had been requested and refused, he would strictly restrict the non-producing party from relying on such undisclosed evidence.

Panoramic Stock Images, Ltd. d/b/a Panoramic Images v. Alcove Realty, LLC (D. Mass. 21-cv-10054).

Panoramic Images, a stock image business that specializes in wide and large-format panoramic photographs, accuses Somerville-based Alcove Realty of using one of Panoramic Images on its website without permission. Panoramic Images says that Alcove included a panoramic photograph of the Boston skyline, taken from across the harbor, at the top of each page on Alcove’s site. Panoramic Images further claims that Alcove ignored two cease and desist letters sent over the summer of 2020, leading to the filing of the lawsuit.

Uniloc 2017 LLC v. Paychex, Inc. (D. Mass. 19-cv-11272).

Judge Stearns granted Paychex’s motion to dismiss Uniloc’s patent infringement claims for lack of standing. Uniloc obtained the patents by assignment from IBM, but the assignment reserved to IBM the right to sublicense the patents to IBM’s strategic partners, which included customers of IBM or its subsidiaries that had purchased at least $10 million in products or services over the five years prior to the assignment. Paychex provided uncontroverted evidence that it met that criteria. While Paychex did not assert that IBM had, in fact, sublicensed the patents to Paychex, Judge Stearns noted that the mere ability to obtain a sublicense divests an exclusive licensee of standing because the exclusive licensee has no exclusionary right with respect to the accused infringer. He denied Paychex’s motion for fees, however, finding that the substantial amount of discovery required by Paychex to determine it had made the requisite volume of sales made Uniloc’s maintenance of the claim reasonable enough to not be exceptional.

This is the second such Uniloc case to be dismissed by judge Stearns on standing grounds. He granted Alamai’s similar motion just over a year ago.

Playdate PDX, LLC v. In Grace, LLC (D. Mass. 20-cv-12186).

Playdate, an Oregon business that provides entertainment, food and beverage services for children. Playdate registered the marks PLAYDATE PDX in 2013, PLAYDATE in 2014, and PLAYDATE SEA in 2014. Playdate has licensed the marks to entities in multiple states, although not yet in Massachusetts. Playdate asserts that Seekonk’s In Grace operates as “Play Date,” and that In Grace advertises its children’s entertainment and café services via a website at Playdate says that In Grace adopted its d/b/a name after Playdate had acquired protectible rights in the PLAYDATE marks. Playdate asserts that In Grace had agreed to stop using the mark in response to a 2018 cease and desist letter, but nevertheless has continued using the infringing mark. Playdate asserts federal and common law trademark infringement, false designation of origin, and unfair and deceptive trade practices under c. 93A.

RSCC Wire & Cable LLC v. Prysmian Cable and Systems USA, LLC (D. Mass. 20cv-12219).

RSCC is the owner of U.S. Patent No. 7,399,115, which is directed to fire resistant cable splices. The patented technology allows builders to splice cables that are required to survive certain fire and heat conditions to ensure power to vital equipment such as smoke ventilation fans, fire alarms, and the like in the event of a fire. RCC alleges that Prysmian had previously made bids for projects that would have resulted in infringement of the ‘115 patent, but had not won any contracts In May, however, RSCC learned that Prysmian had launched a new fire-resistant cable splice that used ceramifiable tape, as claimed in the patent. RSCC states that the use of such tape in a splice would result in infringement, and that Prysmian had been awarded several contracts based on the availability of this product. RSCC alleges direct, contributory and induced infringement.

SimpliSafe, Inc. v. SkyBell Technologies, Inc. et al. (D. Mass. 20-cv-12288).

SimpliSafe filed a complaint against SkyBell, SB IP Holdings, LLC, and Eyetalk365, LLC, seeking declaratory judgment of noninfringement and invalidity of U.S. Patents 10,674,120, 10,523,906, 10,200,660, 10, 097, 796, 10,097,797, 9, 485, 478, and 9, 432,638. SimpliSafe is a Boston-based security system company that specializes in DIY/self-monitored security systems. SimpliSafe says that the defendants accused SimpliSafe’s Video Doorbell Pro and SimpliCam of infringing the subject patents by letter of December 16, 2020. The defendants also petitioned the ITC to institute an investigation relating to the importation of the accused devices in December. The asserted patents are directed to video doorbells and cameras that can be viewed via smartphones and the like, and permit livestreaming from the cameras. According to the complaint, while the patents claim pendency to a 2002 provisional application, there was a break in the chain of co-pendency that results in all of the asserted patents being not entitled to claim priority to that date, meaning that the applications filed prior to the break serve as prior art to the asserted patents. SimpliSafe asserts that this results in the patents being invalid, and separately asserts that the accused products do not infringe the patents.

JT IP Holdings, LLC et al. v. Florence et al. (D. Mass. 20-cv-10433).

JT IP filed suit against FloPack and its founders, accusing them of various misdeeds in connection with the establishment of JT IP and the ownership and inventorship of a patent that JT IP intended to use. JT IP brought a number of claims, including one for patent infringement, and FloPack sought to dismiss all counts. Earlier this fall, Judge Talwani denied FloPack’s motion with respect to all counts save the Lanham Act claim. JT IP asserted that FloPack was making false statements regarding its ownership of the ‘563 patent that tended to deceive the public in violation of section 43(a) of the Act. JT IP’s allegations were supported primarily by bare factual allegations recited “on information and belief.” Judge Talwani determined that the allegations did not survive a Twombly analysis because the facts pled were not peculiarly within the possession and control of FloPack and the allegations so pled were not sufficiently based on factual information that made the inference of culpability probable. In response to a request for admissions, FloPack asserted that it was not making or selling the accused product, which JT IP acknowledged to the Court in a joint status report. JT IP further admitted that they do not at this time have any information to the contrary. Accordingly, Judge Talwani has granted FloPack’s motion to dismiss the infringement claim, albeit without prejudice.