Sensitech, Inc. v. Grupo OFAS, SA de CV et al. (19-cv-12554).

Sensitech, a maker of monitoring devices for monitoring and maintaining manufacturing and storage conditions, sued its former Mexican distributor Grupo, accusing Grupo OFAS of trademark infringement and breach of contract. The agreement by which OFAS would distribute certain Sensitech products in Mexico terminated on November 30, 2015; at that point, OFAS was obliged to return all Sensitech IP and make all payments due. Sensitech asserts that OFAS never made the required payments and continues to use Sensitech trademarks and hold itself out as a licensed Sensitech distributor, and was using shell companies to try to obtain additional Sensitech products. Sensitech alleges a 93A violation in addition to the Lanham Act and contract causes of action. The case is before Judge Burroughs.

iRobot Corporation v. SharkNinja Operating LLC et al. (19-cv-12125).

Judge Burroughs denied iRobot’s motion for a preliminary injunction barring sales of accused Shark IQ Robot vacuum cleaners alleged to infringe two iRobot patents (while the complaint identified a total of six patents, iRobot did not assert the other four patents-in-suit in its motion for a preliminary injunction). The two patents covered robotic vacuums that could travel to their base stations to recharge and, once charged, resume cleaning where they left off as well as robotic cleaners that could self-empty into the base station. SharkNinja asserted that it knew of the two patents and that they designed the Shark IQ Robot to avoid infringement of these claims – by placing the service opening (through which self-emptying occurs) in a location different from that required by the claims. This argument required construction of the phrase “bottom portion,” which the specification and prosecution history suggested would be limited to only the bottom surface, as SharkNinja suggested. Judge Burroughs found that this at least raised a substantial question as to whether the IQ Robot infringed the ‘048 patent. Similarly, SharkNinja’s products do not detect a weak battery and then seek to recharge – instead, they simply run on a 60-minute timer and recharge at the end of the 60-minute cycle, regardless of charge state. iRobot pointed to language in the specification that indicated that a timer could be used to predetermine a time period before recharging “without determining which energy level subsequence” the robot is operating in. Judge Burroughs looked to the plain meaning of the claim phrase “detect a need to recharge” and determined that it required the robot to take an action in order to determine whether there is a need to charge itself, which the Shark IQ Robots do not do. Accordingly, iRobot’s request for a preliminary injunction was denied.

Smartling, Inc. v. Skawa Innovation Ltd. (14-cv-13106).

Smartling asserted that Skawa’s “EASYLING” mark infringed its “SMARTLING” mark and sought to cancel the mark pursuant to 15 U.S.C. § 1115. In June, however, the jury found for Skawa on all counts. Undeterred, Smartling moved the TTAB to reopen its petition to cancel Skawa’s mark on the same grounds, leading Skawa to ask the Court to order dismissal of Smartling’s petition. Judge Burroughs denied Skawa’s motion, finding that while § 1115 gives the court the power to order the TTAB to cancel a mark or register a mark, it does not empower the court to order the TTAB to dismiss a cancellation proceeding. She further noted that Skawa can (and has) asserted res judicata before the TTAB, who can reach their own conclusion.

iRobot Corp. v. SharkNinja Operating LLC et al. (19-cv-12125).

iRobot accuses SharkNinja of infringing six iRobot patents relating to robotic vacuum cleaners by sales of SharkNinja’s IQ Robot line of products. iRobot asserts that these patents cover features such as robotically mapping a user’s home to permit scheduling of cleaning of different rooms at different times, automatically returning to its base to recharge when the battery runs low, and automatically emptying itself into the base, which can store multiple bins worth of debris. These features are said to be incorporated in iRobot’s Roomba i7+ vacuum. iRobot notes that SharkNinja specifically touts these patented features, claiming in advertising that the Shark IQ Robot offers the same technology at “half the price of iRobot i7+.” iRobot seeks preliminary and permanent injunctive relief and a finding of willfulness. Judge Burroughs has the case.

Ohio State Innovation Foundation v. Akamai Technologies, Inc. (19-cv-11528).

Ohio State Innovation Foundation, which holds title to intellectual property developed by and for The Ohio State University, brought suit against Akamai, accusing the company of infringing U.S. Patent No. 9,531,522, which covers systems and methods for proactive resource allocation by which an algorithm monitors mobile user device history to automatically provide information that any particular user repeatedly requests during off-peak hours. Dr. El Gamal, the lead inventor and OSU professor, approached Akamai in 2013 about licensing the patent. Dr. El Gamal’s company, Inmobly, Inc., executed an NDA with Akamai and provided demonstration software. Akamai ultimately turned down the license, and subsequently filed its own patent application on similar technology. OSU filed suit when Akamai released its version.

Akamai moved to dismiss the complaint pursuant to Rule 12(b)(6), asserting that OSU did not (and could not) make a plausible assertion that Akamai’s software involves the machine learning required by the claims of the ‘522 patent. Judge Burroughs disagreed, however, finding Akamai’s own publications describing its software map out to the ‘522 specification and identify “machine-learning-based algorithms,” and that therefore the complaint states a legally sufficient claim of patent infringement. Accordingly, she denied Akamai’s motion.

ACQIS, LLC v. EMC Corp. (14-cv-13560).

ACQIS accused EMC of infringing eleven patents relating to consoles containing computer peripherals, such as a keyboard, mouse, display and disk drive, into which a core computer module having the CPU, memory, I/O and hard drive) can be inserted to form a complete PC. EMC filed a number of affirmative defenses, including alleging that the complaint failed to state a claim on which relief could be granted. In July 2018, ACQIS moved for summary judgment on that defense, asserting that failure to state a claim is not a proper affirmative defense under the Federal Rules of Civil Procedure as well as EMC’s purported failure to identify a factual or legal basis for the defense when the parties met and conferred on the issue. Judge Burroughs denied that motion, finding that the viability of pleading failure to state a claim as an affirmative defense was, in the circumstances of the case, “purely academic” and that resolution of the question would not impact the litigation or entitle either party to judgment as a matter of law on any issue.

Oakley, Inc. v. Kim (19-cv-10651).

Oakley accuses Kyong Kim and his retail business known as “It’s All About the Accessories” of selling counterfeit Oakley sunglasses. Oakley investigators visited Kim’s locations at the Northshore Mall in Peabody and the Cambridgeside Galleria (just down the street from my office in Cambridge) in February, and purchased sunglasses bearing Oakley trademarks that are asserted to be counterfeit. Oakley claims trademark counterfeiting and seeks injunctive and monetary relief. The case is before Judge Burroughs.