CardioNet, LLC et al. v. InfoBionic, Inc. (D. Mass. 15-cv-11803).

Judge Talwani sua sponte dismissed two patent infringement counts of CardioNet’s Third Amended Complaint after the two patents were held to cover unpatentable subject matter by the Patent Trial and Appeal Board.  Once the PTAB cancelled the patents, CardioNet lost any cause of action based on these patents, rendering the two counts moot.

Uniloc 2017 LLC v. athenahealth, Inc. (D. Mass. 19-cv-11278).

Uniloc 2017 sued athenahealth for patent infringement in 2019.  Now in discovery, Uniloc sought to have athenahelath’s source code produced to Uniloc’s expert in Dallas.  Athenahealth baulked, stating that its source code was highly valued and that disclosure in Dallas under the current COVID circumstances would involve undue risks.  Uniloc, meanwhile did not want to engage a new expert from the Boston area.  Judge Stearns, noting that both parties’ concerns were valid, denied Uniloc’s motion to compel production of the source code in Dallas and instead stayed the case until 2021.  He did indicate that he would consider lifting the stay if the parties could mutually agree on a solution before then.

LEGO A/S et al. v. OYO Toys, Inc. et al. (D. Ct/D. Mass. 19-01610).

Connecticut Federal Judge Bolden granted OYO Toys’ motion to transfer venue to Massachusetts.  LEGO sued OYO in Connecticut Federal Court, accusing it of copyright and trademark infringement, false designation of origin and violation of the Connecticut Unfair Trade Practices Act in connection with LEGO’s Minifigure characters.  OYO moved to dismiss for lack of personal jurisdiction or in the alternative to transfer.  Connecticut has a statute under which foreign corporations that do business in the state (which OYO does) without first obtaining a certificate of authenticity (which OYO lacks) “shall be subject to suit in this state by a resident of this state…”  The Court found that this did not apply, however, because neither of plaintiffs LEGO A/S or LEGO Juris A/S. private companies located in Denmark, are “residents” of Connecticut who could take advantage of the statute, and the two cannot “bootstrap” themselves into being able to invoke the statute by way of the residency of third plaintiff LEGO Systems, Inc.’s Connecticut place of business.  The Court further determined that OYO is not “conducting business” in Connecticut merely by selling figurines to national distributors who then bring them into Connecticut.  Similarly, OYO’s sales of figurines through its website falls below the “conducting business” standard of the statute because the sales were a very minor part of OYO’s overall sales and were not targeted specifically to Connecticut.  Rather than definitively find that Connecticut lacks personal jurisdiction over OYO, however, the Court instead opted to transfer the case to OYO’s home state of Massachusetts, and both personal jurisdiction and venue were certain to exist.  While the Plaintiffs’ choice of forum is normally granted considerable weight, where the claims are nationwide, and the owners of the copyrights and trademarks at issue are non-residents of the chosen forum, that weight is not controlling.  LEGO identified no Connecticut-based witnesses, while OYO identified both party and non-party witnesses located in Massachusetts, leading to the transfer.

Affordable Aerial Photography, Inc. v. Gorman Associates LLC d/b/a Golfliferealestate.com (D. Mass. 20-cv-11405).

Affordable Aerial Photography (“AAP”) provides high-end real estate photography services to brokers in South Florida, including photographs of real estate that abuts or is located on golf courses.  Golfliferealestate provides services to connect buyers with real estate opportunities in golfing communities.  AAP asserts that Golfliferealestate took one of its photographs, removed he copyright information from the photograph, and reproduced it on Golfliferealsestate’s website.  AAP asserts copyright infringement and removal of copyright management information, and seeks damages, injunctive relief, and attorney’s fees.  The case is before Judge Burroughs. 

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

Uniloc 2017 sued Paychex for allegedly infringing a pair of patents covering distribution of applications over a network.  In light of the COVID pandemic, Paychex sought to have all depositions taken remotely, with the sole exception that witnesses may have their attorney physically present.  Uniloc agreed that Paychex need not be physically present, but sought to have its own attorney on-site with the witness for each third-party witness and each Paychex witness.  Judge Stearns granted in part, determining that Uniloc may attend in person provided it takes appropriate COVID precautions and that the witness does not object.  He further granted Paychex’s request to take an additional three depositions over the ten allowed by local rule, due to the complexities of the ownership and assertion of the patents-in-suit by various entities and in furtherance of license and lack of standing defenses. 

Hanesbrands Inc. et al. v. Keds, LLC et al. (D. Mass. 20-cv-11354).

Hanesbrands (“Hanes”) accuses Keds and SR Holdings of infringing its “CHAMPION” brand.  Hanes and its predecessors in interest have used the CHAMPION brand for about 100 years on athletic clothing and uniforms, and asserts that it is one of the most recognized sportswear brands in history.  Keds owned rights to the CHAMPION mark for footwear, so when Hanes sought to expand into athletic footwear in 1987, it reached a coexistence agreement with Keds to share the brand with Keds for footwear only and only in the United States, Canada and Puerto Rico.  Under this agreement, Keds could utilize the mark for casual street and play time shoes, while Hanes could use the mark for athletic shoes.  The two businesses did not specifically allocate usage of the marks in other countries, with each free to pursue rights under the mark elsewhere.  Hanes asserts that it obtained superior rights in much of the world, and that it agreed in 2018 to hold off on asserting these rights against Keds in exchange for a promise to renegotiate the 1987 agreement to enhance Hanes’ rights in the US.  Hanes now asserts that Keds has refused to enter into negotiations, in an attempt to preserve the “moratorium” on Hanes’ enforcement abroad for as long as possible and in breach of that agreement.  Hanes asserts actual and anticipatory breach of contract, breach of the implied covenant of good fair and fair dealing and violation of 93A as well as trademark infringement, unfair competition, false association and trademark dilution based on usage of the CHAMPION mark beyond that permitted by the 1987 coexistence agreement and on Keds’ foreign use, which Hanes contends is driven from Keds’ U.S. headquarters

Fitzpatrick v. Kulesh et al. (D. Me. 20-cv-00247).

Brad Timothy Fitzpatrick, who does business as “207 Threads,” sells printed t-shirts and stickers bearing original designs.  He obtained a copyright registration on a recent design of a skull wearing a gas mask, surrounded by “Essential Worker COVID-19 2020.  He accuses Victoryia Kulesh, who does business through an Amazon storefront known as “Tuopedia,” and Katsiaryna Dulevich, who operates the storefront “Katyalike,” of selling stickers that infringe this design.  He asserts that Kulesh and Dulevich, who are each alleged to reside in Minsk, Belarus, consented to personal jurisdiction in Maine, although he does not indicate how.  Fitzpatrick claims the accused stickers are either direct copies or derivative works that infringe, and seeks monetary and injunctive relief.  Judge Woodcock has been assigned the case.

Juul Labs, Inc. v. Nikant 167, Inc. (D. Mass. 20-cv-11304).

Juul accuses Nikant of infringing four design patents related to vaporization cartridges.  Nikant, who allegedly conducts business through a store front called “City Smoke” on Newbury Street, sells ES JUUL COMPATIBLE PODS that are accused of infringement.  This case in one of 29 cases asserting the same patents filed last week.  The case is before Judge Gorton.

RS Means Company, LLC et al. v. SED Associates, Inc. et al. (D. Mass. 20-cv-10993).

Judge Casper granted RS Means’ motion for a preliminary injunction.  She noted that RS Means had purchased copies of its construction cost estimation books that were sold by Defendant Aaron Richardson of SED.  Judge Casper had previously entered a temporary retraining order prohibiting sales of the book by Defendants.  She reasoned that RS Means had demonstrated a likelihood of success on the merits of both the copyright and trademark allegations that supported the preliminary injunction.

Argov v. Simon & Schuster, Inc. et al (D. Mass. 20-cv-11284).

Author Sherry Argov asserts that she had an agreement with the predecessor of Simon & Schuster Digital Sales to publish and sell digital paperback hard-copies of her book Why Men Love Bitches.  The agreement required the payment of royalties on a per-copy basis.  The book was successful, selling more than 2 million copies between 2002 and Simon & Schuster’s 2016 acquisition of the company that had initially published the book.  Argov says that this agreement was violated by Simon & Schuster’s inclusion of the book in its sBook and eLending subscription programs and other all-inclusive bulk marketing platforms, which is expressly prohibited by the agreement and with no royalties paid to Argov.  Argov says that she waived an advanced payment in return for the clause prohibiting the inclusion of the book in bulk subscriptions.  She further asserts that some of the subscription s permit the downloading of her book without t the digital rights management information, allowing the book to be copied and further distributed due to the lack of encryption security.  Argov says that Simon & Schuster refused to withdraw the book from these subscription services and refused to provide an accounting of the number of views or downloads occurred through the subscription services.  Argov asserts copyright infringement, breach of contract and of the implied covenant of good faith and fair dealing, and violation of 93A.  She further seeks a declaration that the agreement with Simon & Schuster is terminated as a result of the breaches of the agreement.  Judge O’Toole has the case.