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.

Pure Encapsulations, LLC v. Wind & Sky, Inc. et al. (19-cv-10127).

Pure Encapsulations sued Wind & Sky, which does business as “Wendy’s Wellness Supply” on Amazon, for Lanham Act and common law unfair competition, unfair and deceptive trade practices, and tortious interference with Pure Encapsulations’ agreements with its authorized resellers. The complaint is extremely similar to the one brought against Lean Living, down to identifying the same negative on-line reviews received for the defendants’ alleged bad acts (although the negative reviews on the defendants’ site differ from those of the prior complaint). Judge Burroughs has this case.