SiOnyx, LLC et al.v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

As this patent and breach of contract case nears trial, Judge Saylor granted SiOnyx’ motion to amend its complaint to remove assertions of the ‘591 patent. SiOnyx asserts that, through late-produced discovery, the products accused of infringing this patent were still under development, and that a final configuration of these products was not likely to be set prior to trial. Hamamatsu had not filed counterclaims relating to the ‘591 patent, and would suffer no legal prejudice from the withdrawal of the claim. The dismissal of the ‘591 claims is with prejudice as to any products that had been accused during the proceeding, but not as against products developed in the future.

Judge Saylor also dealt with the parties’ competing motions to exclude testimony from an opposing expert. SiOnyx has accused Hamamatsu of violating a nondisclosure agreement, obtaining patents on SiOnyx’s technology without naming SiOnyx personnel as inventors, and infringing SiOnyx patents. SiOnyx sought to preclude testimony from a technical expert of Hamamatsu for failing to consider objective indicia of non-obviousness, which would render the report unreliable as applying an incorrect legal standard. Judge Saylor determined, however, that the expert’s statement that he had “not seen any evidence of secondary consideration” did not mean that he had not considered secondary factors. Accordingly, he denied SiOnyx’s motion. Hamamatsu, for its part, sought to entirely preclude SiOnyx’s damages expert, who is intended to testify as to damages for breach of contract, unjust enrichment, and patent damages. On the breach of contract claim, the expert relied on a non-binding memorandum of understanding between SiOnyx and Nikon to determine the damages from the loss of that opportunity, which Hamamatsu asserted to be too speculative. Judge Saylor found that, for the most part, the expert had relied not just on the memorandum but also on correspondence between SiOnyx and Nikon and other evidence in coming to her conclusions. Judge Saylor did exclude testimony on damages resulting from a proposed extension of the contract contemplated by the memorandum of understanding, because there was no discussion of pricing terms or the length of any potential extension in the memorandum, making the opinion on the loss of the extension too speculative. He also excluded testimony on SiOnyx’s theory that, had it entered into the Nikon agreement and developed a chip for Nikon, it would have been able to leverage that development in reducing the cost of development of the next generation chip by nearly $1 million. The Judge accepted that such a reduction on R&D costs could be the basis for damages, but felt that the steps used to determine the dollar figure were too attenuated and speculative. He denied Hamamatsu’s request with respect to breach of contract damages that Hamamatsu itself would have paid had it not breached the agreement and instead have licensed the technology, finding that the other SiOnyx agreements relied upon were not so different from the structure that Hamamatsu had discussed as to form an insufficient basis. With respect to the unjust enrichment claim, Mamamatsu objected to testimony on profits it incurred beyond the expiration of the nondisclosure agreement; Judge Saylor found that Hamamatsu had failed to support the notion that damages must end upon expiration of the NDA, and refused to exclude this testimony. Finally, he refused to preclude testimony on patent damages, finding that the expert’s opinions were adequately supported and that any disputes as to the calculations could be dealt with on cross-examination.

DogWatch, Inc. v. DogWatch of Sarasota, Inc. et al. (19-cv-10625).

DogWatch, a Natick company that makes electronic pet restraint systems such as the “invisible fence,” accuses its former Florida dealer DogWatch of Sarasota (“DoS”) of trademark and trade dress infringement, trade secret misappropriation, breach of contract, passing off, unfair competition, tortious interference with contractual relationships, and unjust enrichment in connection with DoS’ continued use of DogWatch’s name and proprietary information following termination of their business relationship. DogWatch has had a federal registration to its name since 1993, and asserts (with no real evidentiary support) that the name is famous. DogWatch further asserts trade dress protection in some combination of its order forms, yard flags, letterhead, stationary, internet web pages, URL’s van graphics and other unspecified materials. DogWatch further asserts trade secret protection in pricing information, draft marketing and promotional material, and business strategy and plans, and it asserts that the exclusive dealer agreement with DoS included an implied covenant not to use or disclose these purported secrets. Late last year, DogWatch notified DoS that they were terminating the exclusive dealer agreement, for reasons not specified in the complaint. Despite this, they assert that DoS continues to hold itself out as a DogWatch dealer and to use the trademark, trade dress, and trade secrets of DogWatch. The breach of contract count cites acts of DoS that occurred following termination of the agreement – there is no suggestion that DoS did anything wrong prior to termination. Judge Saris has this case.

Channing Bete Co., Inc. v. Breenberg (29-cv-30032).

Channing Bete filed suit against Dr. Mark Greenberg for trademark infringement, tortious interference with business relations, and violations of non-compete and non-disclosure agreements. Dr. Greenberg jointly developed a curriculum for the social and emotional development of children, known as the “PATHS® Program,” in 1993. This curriculum was exclusively licensed to Channing Bete predecessor Developmental Research Programs, Inc., who registered the PATHS® trademark in 1995. Dr. Greenberg continued to develop the program, resulting in a “PATHS® Preschool/Kindergarten Program,” and jointly registered copyright in these developments. Channing Bete obtained exclusive rights to this program as well, and has since worked with Dr. Greenberg and the other authors to develop additional program-based materials to cover elementary-school children. Channing Bete partnered with a training organization run by Dr. Greenberg, “PATHS® Education Worldwide (PEW), to train purchasers of the PATHS® programs, and licensed PEW certain rights in the programs.

In the summer of 2014, Channing Bete decided to sell its rights in the PATHS® programs. They allege that Dr. Greenberg immediately began to interfere with its efforts to sell. According to the complaint, this interference led to the major large publishers refusing to consider a purchase. Channing Bete subsequently put the program out for bid, requiring non-disclosure agreements from any bidder. PEW placed a bid and executed an NDA, as did Dr. Greenberg personally. Channing Bete subsequently notified Dr. Greenberg that they had selected a different buyer, who would need to coordinate with Dr. Greenberg and the other authors. Dr. Greenberg was reminded of his non-disclosure obligations in this communication. The complaint alleges that Dr. Greenberg threatened to withhold assent to the transfer of the curriculum unless he received concessions for himself and PEW. It further alleges that Dr. Greenberg directly contacted the buyer on multiple occasions, indicating again that he intended to block the sale unless he received concessions and revealing the contents of his communications with Channing Bete, in violation of the NDA he had signed. Channing Bete then received an offer from a different party, seeking to buy the curriculum at the same terms offered by PEW. Channing Bete subsequently received communications from other authors of curriculum materials, each threatening to withhold consent to the sale, that Channing Bete alleges to have been orchestrated by Dr. Greenberg. Finally, Dr. Greenberg has published books laying out “PATHS Plus” that he has marketed as an alternative to the PATHS® program, allegedly in violation of non-compete language contained in his original exclusive license to Channing Bete.

Xiao Wei Yang Catering Linkage In Inner Mongolia Co., Ltd. et al. v. Inner Mongolia Xiao Wei Yang USA, Inc. et al. (15-cv-10114).

Having previously granted summary judgment in favor of Defendants and having determined that the case was exceptional and that Defendants were entitled to their reasonable attorney’s fees under 25 U.S.C. § 1117(a), Judge Casper ordered Plaintiffs to pay $153,820.35 in fees. Relying on the opinion of lead counsel, a 2013 Massachusetts Lawyers Weekly article on average rates in Boston, and the approval (over no objection) of the rates sought in earlier discovery proceedings between the parties before Magistrate Judge Kelley, Judge Casper approved of rates of $590-$600 for partners, $290-$465 for associates, and $100-$250 for paralegals. She did reduce the total fees sought by 10% due to some block billing that did not divide out time spent on particular tasks, but otherwise rejected Plaintiffs’ objections to the amount sought.

SiOnyx, LLC et al.v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

Judge Saylor granted in part SiOnyx’s renewed motion to compel in this patent infringement, correction of inventorship, and breach of contract case. SiOnyx had entered into an agreement with Hamamatsu to explore a possible business relationship surrounding laser-textured infrared-sensing silicon photonic devices. The business relationship never came to fruition, and Hamamatsu subsequently applied for patents directed to similar technology. A discovery dispute arose over whether SiOnyx could obtain information on products that were textured by some means other than a laser, with Hamamatsu taking the position that the infringement contentions did not accuse such products and the former SiOnyx founder now working for Hamamatsu did not contribute to the invention of non-laser-textured devices. SiOnyx’s initial motion to compel was denied without prejudice, because at the time there was insufficient evidence to support a charge of infringement; since then, SiOnyx was able to develop sufficient information that the products infringe, and that an offer for sale of the accused products has been made that, if accepted, would generate significant sales. Judge Saylor found that SiOnyx’s evidence related to the breach of contract and use of confidential information claims (that the Hamamatsu engineers who were exposed to this information developed the non-laser-textured products) was insufficient to overcome the significant differences in the resulting textures that negate an inference that they were developed using SiOnyx’s confidential information. Because the motion was granted only with respect to the patent claims, Hamamatsu was compelled to produce information relating only to U.S. sales or imports.

Desktop Metal, Inc. v. Markforged, Inc. et al. (18-cv-10524).

The patent claims of this multi-claim lawsuit surrounding 3-D metal printing were bifurcated, and a jury trial on the patent claims was held in late July. The jury returned a verdict finding the two asserted patents valid but not infringed. The remaining trade secret, breach of contract, and unfair competition claims will be tried at a later date.

BMW of North America, LLC et al. v. Dunbar Euro-Sports, Inc. (18-cv-11395).

bmwroundelBMW sued Brockton’s Dunbar Euro-Sports for infringing BMW’s registered “roundel” trademark, which BMW has used since 1955 on automobiles and motorcycles.  BMW licenses the mark to authorized dealerships for use in connection with the sale and service of BMW products. Dunbar was on such licensee, having been authorized in 1987 to sell and service BMW motorcycles.  BMW asserts that Dunbar is using the roundel outside of the direction of BMW, apparently through the use of outdated and/or unauthorized signage, which hinders BMW’s ability to control the nature and quality of products and services provided under the mark. The complaint asserts breach of contract as well as trademark infringement, and seeks an order that Dunbar remove and destroy any BMW signage containing BMW marks, including the roundel. Oddly, the complaint does not specifically indicate how Dunbar’s use of the roundel is improper, and appears to assert that Dunbar’s dealership agreement remains in force.