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.

Hallmark Licensing, LLC et al. v. Northstar Pulp & Paper Company, Inc. et al. (18-cv-30066).

In a case that has some potentially interesting legal questions, Hallmark sued waste management and recycling company Northstar and co-defendant Square Peg Logistics, LLC, for trademark infringement and dilution for the unauthorized sale of actual Hallmark products.  Hallmark owns uncontestable registrations for the HALLMARK mark and the HALLMARK mark & crown design mark.  In 2012, Hallmark entered into an Enterprise Agreement with Northstar by which Northstar would pick up for destruction by recycling Hallmark products that were deemed unfit for sale.  When Hallmark decided to close its Enfield, Connecticut distribution center, it had Northstar pick up millions of cards and other goods bearing the HALLMARK marks for recycling.  Hallmark alleges that, instead of destructively recycling the products as required, Northstar secretly sold 73 truckloads of HALLMARK-branded products to Square Peg, for a fraction of the fair market price, and that Square Peg subsequently sold about a third of the products to third-party distributors.  Hallmark initially discovered the resale of these products by Dickens, Inc., of Long Island, NY.  In litigation against Dickens, Hallmark discovered that the products had come from Square Peg, who, it subsequently sued.  The parties entered into a consent decree in June 2017, enjoining Square Peg from further sales of Hallmark products pending the outcome of the Dickens litigation, and gave Hallmark the right to periodically inspect Square Peg’s warehouse.  After a January inspection revealed further product movement, Hallmark filed the instant suit seeking immediate destruction of the remaining 50 or so truckloads of products in Square Peg’s possession.  In addition to the Lanham Act charges, Hallmark asserts breach of contract against Northstar.  Hallmark seeks destruction of the infringing products, as well as injunctive and monetary relief and attorney’s fees.  The case is in the Springfield division, and is before Springfield native Judge Mastroianni.

Spark451 Inc. v. 451 Marketing, LLC d/b/a Agency 451 (18-cv-10833).

Marketing and communications company Spark451 sued Agency 451 for trademark infringement and breach of a trademark co-existence agreement.  Spark451 provides services under the “SPARKS451” mark to college and university clients that allow the schools to reach potential students, and has been using the mark in 2011.  The Defendant, which began as “451 LLC” in 2004 and changed its name to “451 Marketing, LLC” in 2007, sought to cancel the “SPARK451” registration in 2015.  The proceeding ended with the parties executing a co-existence agreement whereby 451 Marketing agreed not to use any mark consisting solely of or ending with “451” and each party agreeing to take all reasonable steps to avoid confusion as to the source or origin of their services.  Despite this, 451 Marketing changed its name to “Agency 451” in April 2017, and changed its website to http://www.agency451.com.  Spark451 asserts that this change breached both of those clauses, and that the nature and potential customers of the two businesses are sufficiently similar, and the names and commercial appearance of the marks so similar, that the use of “Agency 451” infringes the “SPARK451” mark.  Spark451 seeks injunctive and monetary relief as well as a finding of willful infringement, treble damages and reasonable attorney’s fees and costs.  The case is before Judge Stearns.

Crosby Legacy Company, LLC d/b/a Philip Crosby Associates v. TechnipFMC plc (18-cv-10814).

Crosby Legacy offers quality consulting services that employ the teachings of its founder, Philip J. Crosby, a pioneer in the field.  Crosby Legacy consulted for energy company FMC under an agreement executed in 2014 which permitted FMC to utilize the Crosby materials company-wide, including copyrighted works and the use of three Crosby trademarks – Absolutes of Quality Management™, Absolutes of Quality™, and Price of Nonconformance™.  The 2014 Agreement restricted continued use of the Crosby materials should FMC experience a change in control.  FMC subsequently merged with Technip S.A., creating defendant company Technip FMC in January 2017. Pursuant to the change of control provisions, Crosby Legacy sought to negotiate an agreement with the new entity to allow them continued use of the Crosby materials.  TechnipFMC expressed a strong interest in continuing the relationship, and according to Crosby Legacy, a $2.3 million agreement was reached via a string of e-mails in May 2017, needing only to be memorialized and executed.  TechnipFMC dragged its feet on the specific language to be included in the new agreement, and ultimately announced in November 2017 that it was no longer interested in working with Crosby Legacy.  At that point, TechnipFMC had used the Crosby materials for eleven months without paying, in violation of the 2014 Agreement’s change of control language.  Crosby accuses TechnipFMC of breaching the 2014 Agreement and of having formed, and then breached, the 2017 Agreement, and also brings claims of breach of the implied covenant of good faith and fair dealing, fraud, 93A claims, trademark and copyright infringement, and unjust enrichment.  The case is before Judge Wolf.