Tile, Inc. v. S&W Dealz et al. (D. Mass. 20-cv-10712).

Tile sued S&W Dealz in April for trademark infringement.  After S&W Dealz failed to answer the complaint or to oppose Tile’s motion for entry of default, Judge Burroughs granted Tile’s motion.  As a result of the default, the willfulness allegations of the complaint are deemed to be true, so S&W Dealz is deemed to have willfully infringed.  Tile sought $500,000 in willfulness damages for each of the two trademarks in suit, primarily to serve as a deterrent to future infringer (Tile apparently acknowledged the low likelihood of recovering any money from S&W Dealz).  Judge Burroughs acknowledged that Tile could opt for statutory damages, but the statutory damages provision was intended to provide compensation to the plaintiff and serve as a deterrent against future willful infringement, but noted that the statutory damage provision was not intended to provide plaintiff with a windfall.  She awarded $50,000 per mark, for a total of $100,000.  She also granted Tile’s request for a permanent injunction.

Tile, Inc. v. S&W Dealz et al. (20-cv-10712).

Tile, which sells Bluetooth devices that can be attached to phones, car keys and the like and can be used to find the item to which it has been attached, sued S&W Dealz and Trend Goods, accusing them of infringing its federally-registered “TILE” trademark through their sale of Tile products through on-line commerce sites including Amazon.com.  Tile sells its products through authorized resellers, who are limited in the locations and websites that they can offer the products.  Authorized resellers are also prohibited from selling or otherwise diverting Tile products to any other party for subsequent resale.  While the defendants sell Tile products (apparently liquidated or used), their sale outside of the authorized network are non-genuine in that they are not new (despite being so listed) and do not come with Tile’s warranty.  Tile asserted trademark infringement unfair competition and false advertising under the Lanham Act, as well as state law unfair competition.

Tile’s complaint acknowledged that Tile did not know the name and address of either defendant, but did know the Amazon seller identification number for each.  Accordingly, the same day that Tile filed the complaint, it filed a motion for alternative service of process, seeking leave to serve them through Amazon’s electronic mail service that the defendants use to communicate with customers.  Under Massachusetts state law, which the Federal Rules refer to as an allowable means of service, service by alternative means can be used when a plaintiff cannot find the defendant, the last and usual abode of the defendant, or an agent on whom service can be made.  So long as the alternative means of service is reasonably calculated, under the circumstances, to give notice of the pendency of the action and afford them an opportunity to respond, due process is met.  Judge Burroughs, who is assigned to the case, agreed and granted the motion for alternative service.

Sonohm Licensing LLC v. Superlogics, Inc. (20-cv-10642).

Sonohm accuses Superlogics of infringing two patents, U.S. 6,651,207, related to improved voice quality in cordless communications utilizing frequency hopping, and U.S. 7,106,705, which is directed to methods and systems for transmitting data for multiple services via jointly used physical channels. The ‘207 patent is expired, while the ‘705 patent remains in effect only through May 2021. According to the assignment records of the PTO, Sonohm acquired both patents in September 2019, after the ‘207 patent had expired. Since then, Sonohm has filed seventeen infringement suits involving the two patents, nine of which settled within about six months. The case has been assigned to Judge Burroughs.

ViaTech Technologies, Inc. v. Adobe, Inc. (19-cv-11177).

Florida corporation ViaTech brought suit against Adobe in May, 2019, accusing Adobe of infringing its U.S. Patent No. 6,920,567, entitled “System and Embedded License Control Mechanism for the Creation and Distribution of Digital Content Files and Enforcement of Licensed Use of Digital Content Files.” Venue was based on Adobe having offices in Massachusetts (despite having a principal place of business in California), as well as having allegedly infringed the patent in Massachusetts, both through its Massachusetts offices and through its on-line store. ViaTech itself was originally a Massachusetts corporation, ViaTech Inc., which merged into ViaTech Technologies in 2000. The three inventors on the ‘567 patent all reside in Massachusetts, although ViaTech has no Massachusetts employees. Adobe moved to dismiss the complaint, while also moving to transfer, and agreed to delay a decision on the dismissal pending the outcome of the transfer motion.

ViaTech’s authority to transact business in Massachusetts was revoked in 2012, for failure to file annual reports. On May 20, 2019, ViaTech filed annual reports for 2009 through 2018, seeking reinstatement, and four days later ViaTech filed suit against Adobe before reinstatement was granted. Judge Burroughs granted Adobe’s motion to transfer venue, but transferred to Adobe’s alternative selection, Delaware, rather than Northern California where Adobe is headquartered. She first noted that venue disputes in patent cases are governed by the law of the regional circuit rather than the Federal Circuit. She noted that Massachusetts was not ViaTech’s principal place of business and that vViaTech lacked ability to do business in the Commonwealth when the case was filed. The presumption in favor of ViaTech’s choice of forum was further diminished by the fact that ViaTech had twice brought suit on the same patent in the District of Delaware. This last fact also weighed against the convenience of ViaTech in litigating in Massachusetts, as it demonstrated ViaTech’s ability and willingness to do so in Delaware. Because both parties are incorporated in Delaware, Judge Burroughs determined that it was a more appropriate venue.

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.