EcoFactor, Inc. v. Google LLC (19-cv-12322), Alarm.com Holdings, Inc. and Alarm.com (19-cv-12323), Schneider Electric SE and Schneider Electric USA, Inc. (19-cv-12326), Daikin America,Inc., Daikin Industries, Ltd., and Daikin North America LLC (19-cv-12324), Vivint, Inc. (19-cv-12327), and ecobee, Inc. and ecobee Ltd. (19-cv-12325).

California company EcoFactor, a provider of smart home energy products and services, brought several suits in Massachusetts, accusing a number of businesses of infringing patents relating to evaluating and improving efficiency in HVAC systems and to smart thermostats. These suits follow an October ITC complaint seeking to block importation of products accused of infringing these same patents.  The cases are presently spread between Judges Saylor, Sorokin, and Bowler.

Palomar Technologies, Inc. v. MRSI Systems, LLC (18-cv-10236).

Judge Saylor overruled Palomar’s objections to the Magistrate Judge Bowler’s order partially granting MRSI’s motion to compel, finding that her ruling was not clearly erroneous nor contrary to law. The discovery dispute surrounded the selection of search terms to search e-mail, that Palomar contended were over-broad and would result in a significant number of documents not related to the litigation and would result in the production sensitive personal information, in violation of the California state constitution. Judge Saylor found no reason that the constitution of the state should impact discovery in a federal case and based on federal, not California, law, and further determined that the argument was waived as not having been raised in the written responses to the discovery requests. Judge Saylor did, however, permit Palomar to submit for in camera review any specific documents for which it contends that the laws of California should control discovery (despite the case arising under federal patent law) and that the privacy concern was not waived.

Palomar Technologies, Inc. v. MRSI Systems, LLC (18-cv-10236).

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.

Monsarrat v. Zaiger (17-cv-10356).

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.