Teva Pharmaceuticals Int’l GmbH v. Eli Lilly & Co. (17-cv-12087).

Teva sued Eli Lilly, accusing it of infringing five Teva patents covering humanized monoclonal antibodies that can be used to treat migrane sufferers. This month, Teva submitted a Biologics License Application (“BLA”) to the FDA seeking approval to market their product, known as “fremanezumab.”  Eli Lilly recently stated that it had filed its own BLA for a monoclonal antibody, to be called “Galcanezumab,” that targets the same peptide that Teva’s product targets.  Based on Eli Lilly’s completion of Phase III clinical trial, its filing of the BLA, and its extensive press statements that it intends to make and sell the product upon receiving approval, Teva asserts that its cause of action is ripe for consideration by the courts.  Regarding venue (Eli Lilly is not alleged to be a Massachusetts corporation), Teva asserts that Eli Lilly is registered to do business in the Commonwealth, has a registered agent and a Foreign Corporation Certificate of Registration in the Commonwealth, described its business in Massachusetts as “pharmaceutical manufacturing and sales” in 2017 Annual Report filed with the state, and employs consultants and sales people in Massachusetts to work with Massachusetts health care providers.  Moreover, Eli Lilly is asserted to have a facility in Cambridge (in a building, coincidentally, that resides directly behind my firm’s office in Kendall Square) at which it does research and development work, including work on delivery of biologics and pain treatment, which Teva suggests meets the “committed acts of infringement” part of the patent venue statute.

RW IP Holdings, LLC v. Standard Innovation Corp. (17-cv-12060).

RW IP Holdings sued Standard Innovation Corp. for infringement of U.S. Patent No. 6,028,531, “Terminal Units for a Mobile Communications System” by its sales of We-Vibe® adult toys that can be controlled remotely through a smartphone or the like. Direct, contributory and induced infringement are alleged, and damages, enhancement for willfulness, and attorneys’ fees are sought; no injunction is being sought however, as it appears the patent (which has a priority date of October 12, 1996) has expired.

Potentially of interest, Standard Innovation is alleged to be a Canadian corporation located in Ontario. While the complaint alleges advertising and sales into Massachusetts, there are no allegations that Standard Innovation has a regular and established place of business in the state.  At present, it is unclear whether the venue requirements of TC Heartland will apply to foreign corporations, which previously could be sued in any venue in which personal jurisdiction could be established – the TC Heartland decision notes that the Court was not expressing an opinion on the subject.  It will be interesting to see whether a venue challenge is made in this case.

Microsoft Corp. v. Teratech Corp. d/b/a Terason et al. (17-cv-12038).

Microsoft sued Terason and its president, Alice Chiang, for copyright and trademark infringement, false designation of origin, and unfair competition related to allegedly pirated versions of Microsoft software being advertised and distributed by Terason. Microsoft alleges that Terason customers purchase the software without being aware that it is not legally licensed by Microsoft.  Terason manufactures color portable ultrasound equipment, and (according to the complaint) thousands of activations and attempted activations of Windows 10 and Windows 7 software occurred over the past six years from an IP address assigned to Terason.  The product keys for these activations were either used more times than authorized by the applicable license or were used to activate software outside of the region for which they were authorized.  Microsoft alleges that Chiang personally participated in or had the right to direct and control these activities and received a direct financial benefit from these activities, justifying personal liability either directly or under principles of secondary liability such as respondeat superior, vicarious liability and contributory infringement. The case is before Judge Gorton.

INBLF Annual Meeting

I am in San Francisco for the next few days, at the International Network of Boutique and International Law Firms (INBLF) Annual Meeting.  This is a vetted network of boutique law firms that together provide a full range of legal services, while providing the focus on client service that comes with a smaller firm that focuses on a particular area of law.  My firm, Lando & Anastasi, is the intellectual property firm of the Boston chapter of the INBLF.  I will be posting on IP events in D. Mass. while I am here, but the posts may go up later in the day than is typical.

Hybrid Audio, LLC v. ASUS Computer International, Inc. et al. (16-cv-10643).

Judge Zobel allowed Hybrid Audio’s motion to transfer this case to the Northern District of California and denied ASUS’ motion to dismiss.  The ASUS defendants are a Taiwanese corporation and its U.S. subsidiary, which is incorporated in and resides in California.  The parties agreed that venue in Massachusetts is no longer proper, pursuant to TC Heartland; the real action in this issue was ASUS’ desire that the case be dismissed, forcing Hybrid Audio to refile in California – as the asserted patent expired prior to the filing of the lawsuit, and ASUS’ first notice of infringement was on January 5, 2011, refiling would eliminate ten months of damages that were available pursuant to the six-year limit on damages set forth in 35 U.S.C. § 286.  Hybrid Audio sought to have the case transferred “in the interest of justice.”  Judge Zobel endorsed Hybrid’s motion, rather than authoring an opinion of her own.

Amax, Inc. v. ACCO Brands Corporation (16-cv-10695).

Judge Gorton issued a claim construction order in a case involving allegations that ACCO’s Swingline Quick Touch Full Strip and Quick Touch Compact staplers.

Swingline Stapler

In virtually each instance, Judge Gorton refused to read limitations into the claims and sided with Amax.  Of particular interest, Judge Gorton declined to consider whether the claims were indefinite at the claim construction phase of the litigation; as a part of this, it appears that Judge Gorton laid out an outdated legal standard for proving indefiniteness.  Under the Supreme Court’s 2014 Nautilis decision, indefiniteness exists if a patent’s claims, “read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”  Judge Gorton’s analysis, however, asserted that ACCO must show that a “skilled artisan could not discern the bounds of the claim,” and that to be found indefinite, “the claim must be ‘insolubly ambiguous,’” citing to the Federal Circuit’s pre-Nautilis 2008 Halliburton Energy decision.  It should be interesting to see how this issue progresses.

True Value Company v. TrueValue POS, Inc. (17-cv-40135).

Hardware giant True Value Company (“TVC”) sued TrueValue POS (“TV POS”) for federal and common law trademark infringement, dilution and unfair competition. TVC is a member-owned cooperative made up of 4500 independently-owned and operated retail stores, thousands of which are known as TRUE VALUE stores.  TVC has registered TRUE VALUE for a variety of goods and services, including certain retail store services, indicia of membership in an association of retail hardware stores, provision of advertising services, wholesale purchasing services, and credit card services.  They have been using the TRUE VALUE mark since 1954, and assert that the mark is famous.  TVC asserts that TV POS began using the mark in 2013 or 2014 in its domain name (www.truevaluepos.com) in connection with Point Of Sale software and systems for restaurant, retail and credit card services.  TVC seeks injunctive, monetary damages and attorneys’ fees, as well as a finding that the case is exceptional pursuant to 15 U.S.C. § 1117, which allows for statutory and treble damages.