Juul Labs, Inc. v. Nikant 167, Inc. (D. Mass. 20-cv-11304).

Juul accuses Nikant of infringing four design patents related to vaporization cartridges.  Nikant, who allegedly conducts business through a store front called “City Smoke” on Newbury Street, sells ES JUUL COMPATIBLE PODS that are accused of infringement.  This case in one of 29 cases asserting the same patents filed last week.  The case is before Judge Gorton.

Intellectual Property Development, Inc. v. Boise Cascade Engineered Wood Products et al. (D. Mass. 19-cv-10228).

Intellectual Property Development (“IPD”) sued Warren Trask Company, Inc., National Lumber Co. and others in state court.  After the case was removed to Federal court, Judge Gorton referred all pretrial matters to Magistrate Judge Boal.  Both defendants asserted counterclaims seeking declaratory judgment of non-infringement and invalidity of certain patents, and National Lumber asserted state law claims against and Glenn Robbell, IDP’s CEO and the sole inventor and apparent owner of the two patents.  In December, IPD’s and Robbell’s attorney moved to withdraw from representation, citing breakdown of communications, fundamental disagreements over the handling of the litigation, and failure of the plaintiffs to pay for legal services.  This motion was granted in January.  Trask and National Lumber each then moved for sanctions and dismissal, citing the plaintiffs’ continuous failures to engage in discovery, to provide a list of claim terms to be construed or file a claim construction brief, and failure to participate in conferences regarding claim construction.  The motions also noted that plaintiffs had failed to obtain new counsel, and that IDP, being a corporation, could not represent itself pro se.  Judge Boal recommended dismissing IDP’s claims and entering default judgment against IDP, noting that the corporation had been given four months to find new counsel and had been warned of the consequences of failure to so do.  She recommended denial of the motion with respect to Robbell, who (as an individual) can represent himself pro se, and declined to recommend other sanctions against Robbell.

Cedar Bay Grilling Co. Ltd. V. Canadian Fish Exporters Inc. (19-cv-12264).

Judge Gorton denied Canadian Fish’s motion to set aside Cedar Bay’s voluntary dismissal of the complaint.  Canadian Fish was a distributor for Cedar Bay in the United States.  The relationship lasted for nine years, when a dispute arose as to Cedar Bay’s pending trademark registrations, leading Cedar Bay to accuse Canadian Fish of false association and false designation of origin for Canadian Fish’s alleged misuse of Cedar Bay’s marks.  Canadian Fish promptly countersued for breach of contract and declaratory judgment in Nova Scotia/  The parties mediated the disputes and came to a settlement in January, memorialized in a document titled “Settlement Agreement.”  When, days later, Cedar Bay asserted that this document was merely a memorialization of potential points of agreement and not an actual agreement, Canadian Fish moved to enforce the agreement and separately moved to dismiss the complaint in the Massachusetts case.  Cedar Bay initially opposed the motion, but shortly thereafter filed a notice of voluntary dismissal, leading to termination of the case by the Court.  Canadian Fish, apparently angered by Cedar Bay’s attempted reneging of the agreement, sought to vacate the dismissal so that it could seek a better outcome than the compromise of the settlement agreement.  Judge Gorton noted that if a plaintiff voluntarily dismisses a complaint pursuant to Rule 41(a)(1), where no answer or motion for summary judgment has been filed, the Court has no power to condition the dismissal – the plaintiff has an absolute right to dismiss.  He rejected Canadian Fish’s assertion that the motion to enforce the settlement agreement was functionally equivalent to a motion for summary judgment; while the summary judgment standard is generally applied to motions to enforce settlement agreements, application of the same standard does not mean that a motion to enforce a settlement agreement is the equivalent to a motion for summary judgment, as this is clearly not contemplated by the plain language of the Rule.

Tomelleri v. Taunton Rod and Gun, Inc. d/b/a Bears Den Fly Fishing Company (19-cv-12469).

Joseph Tomelleri charges Bears [sic] Den, a fly fishing shop, with copyright infringement and false copyright management information, accusing the shop of using his copyrighted fish illustrations without permission.   Tomelleri is a biologist/artist who has created more than a thousand illustrations of fresh-water fish which can be seen at his website, http://www.americanfishes.com. He asserts that Bear’s Den has reproduced and displayed modified versions of his illustrations, with Tomelleri’s copyright management information removed and Bear’s Den copyright information substituted in its place. Tomelleri cites the access that his site provides along with the “striking similarity” of the illustrations as proof of copying. This type of proof strikes me as problematic, given that Tomelleri’s illustrations are in a highly realistic, Audobon Society-type of mold, such that it would be difficult to determine whether an accused illustration is really a derivative of his work as opposed to an independently-created illustration (or, for that matter, a copy or derivative of someone else’s independent creation). In addition to this suit, Tomelleri filed three similar suits in Michigan, as well as suits in Arizona, Arkansas, Utah and West Virginia. The Massachusetts case has been assigned to Judge Gorton.

Canon, Inc. v. Avigilon USA Corporation, Inc. et al. (19-cv-10931).

Canon sued Avigilon earlier this year, accusing Avigilon of willfully infringing and inducing infringement of a Cannon patent covering transmission of video data. Judge Gorton has now granted Avigilon’s motion to dismiss the induced infringement and willful infringement allegations, finding that Canon’s complaint failed to plead facts sufficient to support an inference of actual pre-suit knowledge of the asserted patent by Avigilon, instead only making conclusory statements to that effect. Judge Gorton noted that there is a conflict between district courts as to whether an alleged inducer must be shown to have had knowledge of the patent prior to the filing of the lawsuit, with a minority of courts holding that post-suit knowledge (as through the complaint itself) of the asserted patent improperly bootstraps the knowledge to pre-suit acts, and more to the point, that the District of Massachusetts has limited the acceptability of knowledge through the filing of a complaint to later-amended complaints that expressly limit the inducement claims to post-filing conduct. He further found the same issues applied to the willfulness allegations, which also require proof of knowledge of the asserted patent. He therefore dismissed the inducement and willfulness claims without prejudice to allow Canon to appropriately amend the complaint, should circumstances permit.

Boise Cascade Co. v. New England Treatment Access, LLC (19-cv-10738).

Boise Cascade, a large lumber, wood and paper, has utilized a graphic of a tree in a circle as a trademark since 1964, and has held federal registrations for the mark since 1981. Boise Cascade logoBoise Cascade accuses NE Treatment Access of infringing this mark through sales of marijuana products utilizing a similar graphic. 44831408_196018227991194_7314578353284483997_nBoise Cascade brings counts for federal and common law trademark infringement, false designation of origin, dilution under Massachusetts law, injury to business reputation, and unfair business practices. The case is before Judge Gorton.

LovePop, Inc. v. PaperPop Cards Inc. (17-cv-11017).

Judge Gorton denied both parties’ motions to disqualify each other’s expert witnesses in a contentious litigation involving allegations of doctored evidence. LovePop asserts that PaperPop infringed its copyright in several designs of pop-up greeting cards. PaperPop produced documents and photographs that were alleged to show that PaperPop conceived of the designs first, but LovePop purports that PaperPop tampered with the metadata to falsely back-date the documents to the relevant date. LovePop proffered an expert who would testify as to what metadata was, the means for manipulating metadata, and that some of PaperPop’s documents could not have been created on the dates alleged because the software with which they were created had not yet been made available. PaperPop in turn proffered an expert to testify that LovePop’s expert used unvalidated testing to achieve his results and to present the results of his testing that show the tests of LovePop’s expert were unreliable and incorrect. Judge Gorton determined that both parties’ complaints were directed to the credibility of their opponents’ experts, who were otherwise both well-qualified. Accordingly, he denied both motions.

Lickerish, Ltd. v. Rue La La, Inc. et al. (18-cv-11783) and Metro Boston, LLC et al. (18-cv-11790).

Lickerish is a British photographic syndication company that licenses professional photographs worldwide. Lickerish accuses on-line clothing retailer Rue La La of infringing its copyright in an Andrea Carter Bowman photograph of Lottie Moss, sister of supermodel Kate Moss, and of altering the digital copyright management information associated with the photograph, and accuses Metro Boston of infringing its copyright in a Richard Guaty photograph of model and Baywatch actress Kelly Rohrbach. Judge Gorton has both cases.

W. B. Mason Co., Inc. v. American Dairy Queen Corporation (18-cv-10488).

Office supply company W. B. Mason filed a declaratory judgment action against Dairy Queen, seeking the right to continue use of the mark BLIZZARD for paper products and spring water. W. B. Mason registered the marks BLINDING WHITE BLIZZARD 78 COPY PAPER and BLIZZARD BLINDING WHITE COPY PAPER, and sought to register the marks BLIZZARD SPRING WATER and WHO BUT W.B. MASON’S BLIZZARD SPRING WATER; the latter two applications were opposed by Dairy Queen.  Settlement negotiations ensued.  W. B. Mason asserts that recently, after lulling W. B. Mason to hold off on further action while his client was out of town, Dairy Queen’s attorneys filed suit in Minnesota (18-cv-00693) claiming trademark infringement and dilution.  In light of this, W. B. Mason asserts that the “first-to-file” rule should not apply or, alternatively, an exception to the rule should control, and the case should proceed in Massachusetts rather than Minnesota.  The case has been assigned to Judge Gorton.