As a part of its defense to this patent infringement lawsuit, MSRI sought inter partes review in 2016. The patent emerged with most claims deemed valid. MSRI then challenged the validity of the patent over additional prior art references. MSRI sought to get around the estoppel provided by 35 USC 315(e)(2), which proscribes assertions of invalidity on grounds that were raised or could reasonably have been raised during the IPR, by providing declarations and search results from two outside search firms and asserting that these reasonable searches did not uncover the new references and thus the validity challenge could not reasonably have been raised. Magistrate Judge Bowler granted in part and denied in part MRSI’s motion to quash subpoenas issued by Palomar to the two search firms. She found that the searches were, at a minimum, subject to work-product protection, but that MSRI had waived such protection by affirmatively relying on the search results and affidavits in their opposition to Palomar’s motion for partial summary judgment. She determined that Palomar was entitled to discovery from the two firms, but that some of Palomar’s requests were overbroad and/or covered unrelated subject matter. Accordingly, while not quashing the subpoenas, she limited the subpoenas to specifics of the actual searches performed for MSRI.
Jonathan Monsarrat filed suit in March 2017, alleging copyright infringement through Zaiger’s use of a photograph of Monsarrat that had been altered to suggest Monsarrat was a pedophile. The original claim was dismissed (twice)as time barred, as the complaint made clear that Monsarrat knew about the posting of the photograph as early as 2012. The proposed amended complaint sought to add defamation claims resulting from a republishing of the photograph along with a report that Monsarrat had been arrested for serving underage teens alcohol during a party at his apartment. Monsarrat alleged that this posting caused a potential investor in his video game company to withdraw. Unfortunately for Monsarrat, while no charges were ultimately filed, he actually had been arrested for serving alcohol minors, meaning that the statement was true. While a true statement can serve as the basis for a defamation claim if actual malice can be proven, if the maker of the statement subjectively believed the statement to be true, no claim can be had. Here, the story of Monsarrat’s arrest was published in the Boston Globe, providing reason for Zaiger to believe the story (which, of course, was technically true). Because of this, and because the proposed amended pleading did not resolve the statute of limitations issue, Magistrate Judge Bowler recommended that Monsarrat’s motion to amend his pleading be denied as futile. Judge Bowler granted Monsarrat’s motion for judgment on the pleadings and dismissed Zaiger’s counterclaim for misrepresentation of a copyright claim under 17 U.S.C. § 512(f). Zaiger’s counsel had previously withdrawn in light of Zaiger’s non-responsiveness to communications; Zaiger had since failed to show for a hearing or respond to an order to show cause why judgment on the pleadings should not be granted, which demonstrated a disregard of the court and the litigation.