Abiomed, Inc. v. Maquet Cardiovascular, LLC (16-cv-10914).

Judge Saylor denied Abiomed’s motion for a protective order prohibiting discovery of foreign sales of products whose components were exported from the United States and assembled abroad. Abiomed had sought to preclude this information because Maquet had not specifically pled 35 U.S.C. § 271(f) as a basis for infringement. Noting that the limits on discovery set forth in Rule 26 may encompass matters that could bear on any issue that “is or may be in the case,” Judge Saylor determined that discovery as to worldwide sales is potentially relevant to damages. He stated that the order concerns only discoverability, and that he was taking no position on whether a claim under 271(f) was properly pled or on whether the resulting discovery would ultimately be admissible at trial. Judge Saylor further denied Abiomed’s motion to compel discovery from the Getinge Group, a consortium of companies that includes Maquet and that is owned by Getinge AB, a Swedish company. Getinge AB had initially been named as a defendant in Abiomed’s declaratory judgment complaint, but had successfully moved to dismiss because it’s lack of ownership of the subject patents meant that it lacked standing to defend such claims. Abiomed then had sought information and documents related to patent transactions, assessments, valuations and licenses held by Getinge Group entities located outside of the United States. Judge Saylor determined that the documents were not in the possession, custody or control of Maquet, because the fact that Maquet is a subsidiary of and shares a legal services department with Getinge was insufficient to establish that Maquet is an alter ego of Getinge.

Kaspersky Lab, Inc. v. Greater Boston Authentication Solutions, LLC (19-cv-10735).

Kaspersky filed suit against GBAS seeking a declaration that it does not infringe three GBAS patents related to remote authorization to unlock electronic data. In October of last year, GBAS had filed suit accusing Kaspersky of infringing the three patents; GBAS never, however, actually served the complaint, and instead dismissed it without prejudice at the 90-day service date. The patents have since expired. Kaspersky notes that GBAS acquired the three patents sometime in 2017, and has filed twelve complaints asserting these patents, with all of them voluntarily dismissed before any accused infringers filed a responsive pleading. Kaspersky suggests that GBAS has sought nuisance-level damages, a classic patent troll tactic. Kaspersky further asserts that GBAS knows that Kaspersky does not infringe because arguments made during prosecution foreclose a claim construction that would cover Kaspersky’s software. To that end, Kaspersky seeks a declaration of non-infringement and a finding that the case is exceptional under 35 U.S.C. § 285, entitling them to attorneys’ fees.

Earle et al. v. Standard Process, Inc. (19-cv-10613).

Daniel Earle and his Amazon reseller company, The Antitrend, filed a lawsuit seeking a declaration that they do not infringe a number of Standard Process’ trademarks or otherwise unfairly compete with Standard Process. The Antitrend is in the business of reselling branded goods bought on the open market through an Amazon storefront. This district has seen a number of suits brought by trademark holders against Amazon resellers, notably ecobee’s recent series of suits. In this case, Earle claims that he obtains Standard Process goods legally and without restriction. He further asserts that his site makes clear that it is not affiliated with any of the manufacturers whose products are sold thereon, and that no manufacturer’s guarantees or warranties will apply to goods purchased from his site. Despite this, he has received a number of cease and desist letters from Standard Process, and that Standard Process filed (but did not serve) a complaint against his site in the Western District of Wisconsin last month. By this complaint, Earle challenges the claims in that complaint, asserting that the first sale doctrine prohibits these claims. Earle notes that Standard Process has already lost on the first sale doctrine in a prior litigation in the Eastern District of Wisconsin (although I would note that Banks prevailed at summary judgment with respect to a website that included an express disclaimer of affiliation, but denied summary judgment with respect to solicitations that included pictures of Standard’s products and lacked a disclaimer of affiliation). Earle also asserts that Standard Process’ resale policy does not form an enforceable contract, particularly where Earle bought the products on the open market, another issue that Standard Process had previously litigated and lost on (in a 2008 case, Standard’s unilateral resale policy was found not to constitute a valid contract, because it imposed no obligations on Standard; it is unclear from the complaint in this case whether Standard has since changed the policy). Earle’s complaint does not provide a reason why this case should be heard in Massachusetts instead of the first-filed district, so it will be interesting to see whether this case moves forward in the Commonwealth.

Larson v. Perry et al. (19-cv-10203).

Sonya Larson filed suit against Dawn Dorland Perry, Los Angeles-based Cohen Business Law Group, and attorney Jeffrey A. Cohen, seeking a declaration that a short story published by Larson does not infringe the copyright of a letter posted by Dorland Perry on Facebook. Dorland Perry donated a kidney to an anonymous recipient in 2015, and subsequently wrote a letter to the unknown recipient outlining the reasons for her donation and expressing interest in meeting the recipient. She posted the letter to a private forum on Facebook that included Larson. Larson, who acknowledges having had a nominal social relationship with Dorland Perry in the past, asserts she was included in the forum without her permission or authority and that she had seen Dorland Perry’s letter. Three years later, Dorland Perry registered her copyright in the letter. Larson authored a short story about a working class Chinese-American woman who receives a kidney from a wealthy white woman, with a primary goal of depicting a “person of color resisting a white savior narrative,” in which the recipient receives a letter from the previously-anonymous donor. Larson states that in preparing this portion of her story, she researched and viewed many websites and similar letters from organ donors that were widely available on the internet. After a public reading of a portion of her story was reported to Dorland Perry, Larson alleges that Dorland Perry believed the story to be about her and became very upset. In subsequent edits, Larson made changes to the story to distinguish the fictional letter from Dorland Perry’s actual letter. The story was subsequently published in audio book format and accepted for printed publication, at which point Dorland Perry is alleged to have instituted a smear campaign against Larson and repeatedly accused her of plagiarism to Larson’s employer, members of her writing group, various writing organizations, and the Boston Globe newspaper. Larson was moved to file the action when Attorney Cohen, representing Dorland Perry, sent a demand to her publisher that they case and desist from further printings of the story, and the acceptance for publication was rescinded. Larson’s claims against Cohen and his firm are based in part on their threat of statutory damages and attorney’s fees against her publisher, which Larson asserts Cohen knew or should have known were not legally viable, as registration occurred more than three years after Dorland Perry’s letter was first published. Larson also asserts tortious interference with contractual relationships, defamation, and violation of Ch. 93A.

Maquet Cardiovascular LLC v. Abiomed, Inc. et al. (17-cv-12311).

After being sued for patent infringement by Maquet, Abiomed filed non-infringement counterclaims against Maquet its corporate parent, Swedish company Getinge AB. Judge Saylor granted Getinge’s motion to dismiss, agreeing that Getinge lacks standing to sue Abiomed and determining that this insulates Getinge from the declaratory judgment counterclaim. Judge Saylor noted that the counterclaim does not allege that a written agreement exists by which Getinge was given any rights in the subject patent, and absent a written transfer of rights, Getinge can have no rights in the patent. He refused to extend the doctrine of equitable title, stating that there is nothing inherently unfair or inequitable in a corporate subsidiary owning all rights in a patent or in the parent then exercising substantial control over the subsidiary that would require bringing the parent into the controversy. Accordingly, the counterclaim was dismissed as applied to Getinge (although it remains in place against Maquet).

Butler Home Products, LLC v. Avent, Inc. et al. (18-cv-11263).

GlovesButler filed a complaint against Avent and O&M Halyard, Inc., seeking a declaratory judgment of non-infringement and cancellation of two trademark registrations claiming rights in the color purple for latex gloves. Butler, a manufacturer of home cleaning products, sells reusable purple latex gloves to Wegmans Food Markets, who then sells the gloves under the WEGMANS® brand.  The registrations cover the color purple for “protective gloves for industrial use, and disposable nitrile gloves for use in laboratories and clean room environments,” “gloves for medical and surgical uses,” and “disposable nitrile gloves for general uses.” In April, Avent and O&M Halyard sent Wegmans a cease and desist letter, which was forwarded to Butler. After a response challenging the protectability of the color purple, Butler received a second cease and desist letter, setting up the DJ action. Butler asserts that the color purple is functional, in that laboratories use different color gloves for different areas to prevent cross-contamination or to signify the material the gloves are made of, as well as the existence of other purple gloves, asserted to preclude the color from serving as an identifier of source.

Alnylam Pharmaceuticals, Inc. v. Silence Therapeutics GmbH et al. (18-cv-10613).

Alnylam filed suit against Silence Therapeutics, seeking a declaration that its Patisiran RNA interference product does not infringe five Silence patents.  Patisiran is awaiting approval from the FDA for treatment of hereditary transthyretin-mediated ATTR amyloidosis, a genetic disease in which misformed proteins accumulate as deposits in the heart, erves, GI tract, and other organs, bringing forth a number of different symptoms.  Currently, other than liver transplants for early-stage sufferers, there are no FDA-approved treatments for the disease.  Alnylam asserts that it has spent hundreds of millions of dollars in developing Patisiran.  Alnylam alleges that Silence, which has no products on the market or in advanced clinical trials, has claimed that Alnylam infringes the patents by correspondence in the United States as well as by filing infringement suits in Europe and challenging Alnylam patents on the technology in Europe.  These disputes are on-going.  Alnylam seeks declarations of non-infringment and injunctions prohibiting Silence from asserting infringement of the patents.