Judge Saylor denied Google’s motion to dismiss on Alice grounds, finding the asserted patents claimed patentable subject matter. Singular filed suit in 2019, accusing Google of infringing three patents relating to computer system architecture that utilizes low precision/high dynamic range processing elements. Judge Saylor analyzed the patentability of the claims in accordance with Alice’s two-step procedure, looking to whether the claims are directed to a patent-ineligible concept that is so abstract as to risk disproportionately tying up the use of the underlying idea, and if so, whether the claims include an inventive concept that is sufficient to ensure the patent in practice amounts to significantly more than a claim on the ineligible concept itself.
Judge Saylor noted that the Supreme Court in Alice had discussed improvements to the functioning of a computer at step two of the inquiry, these types of inventions are not inherently abstract and can be analyzed in the initial step of the inquiry – whether the focus of the claims is on the specific asserted improvement in computer capabilities – in which case the claims are directed to patentable subject matter. He rejected Google’s assertion that the claims were directed to LPHDR arithmetic generally, noting that the claims define the terms “low precision” and “high dynamic range” precisely so as not to cover LPHDR generally. While not expressly construing these terms, judge Saylor noted that when the meaning of a claim term is in dispute in a motion to dismiss, the court must adopt the non-moving party’s construction in analyzing the motion. He further noted that, even subject to Singular’s proposed constructions, the claims may still abstractly cover LPHDR math within that range and thus prove ineligible, but that such a determination would require development of the factual record.
Judge Saylor further noted that, even if the claims were directed to an abstract idea, the remainder of the limitations set forth sufficient non-conventional computer structure to render the claims eligible, at least on the record before it. He did note that, as with the first Alice step, subsequent development of the factual record might change his mind with regard to the second step, which could be asserted on summary judgment.
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.
Solta sued Lumenis, Inc. and its Israeli-based corporate parent Lumenis Ltd. In 2019, accusing them of infringing two patents related to improvements in controlled cooling of skin and other tissue being treated by lasers. Lumenis Ltd. Moved to dismiss for lack of personal jurisdiction, asserting that the U.S. entity was responsible for all efforts to market and sell the accused products in the United States (and in Massachusetts). Judge Casper applied the prima facie standard and taking all factual allegations in the complaint and uncontroverted factual allegations made by the defendant as true, as is required where the motion is decided without an evidentiary hearing. She noted that Lumenis Ltd. Manufactures the accused products in Israel and then sells the products through wholly-owned subsidiaries in the United States and other countries. Lumenis, Inc., one such wholly-owned subsidiary, has sold accused products and directed marketing activity into Massachusetts. The accused products were identified as Lumenis Ltd. Products in an SEC filing, and Lumenis Ltd. Is the entity that applied for FDA approval to market and sell in the United States. While noting that ownership of a Massachusetts subsidiary is not, standing alone, sufficient to establish personal jurisdiction, here the two Lumenis entities are both transacting business for the purposes of satisfying the long-arm statute of the Commonwealth. Lumenis Ltd’s’ SEC filing indicated that it provides training and certification of field service engineers for the accused products and operates communications centers for each regional sales and marketing areas. This collaboration with Lumenis, Inc. is sufficient to establish personal jurisdiction over Lumenis Ltd. For complaints associated with the sales of these products.
Judge Talwani denied Defendants Jeffrey A. Cohen and Cohen Business Law Group’s motion for reconsideration of her previous finding that the claims against them could not be dismissed at the pleading stage. She rejected Cohen’s argument that her prior decision was based on case law that was not controlling; while she agreed that the particular case was not “controlling” but instead was, as a decision of a district judge presiding over a diversity action, merely persuasive authority. She instead pointed to the controlling decision of the Massachusetts Supreme Judicial Court, which provides for litigation privilege where the communications at issue are made prior to the onset of litigation only where the communications relate to a legal proceeding which is contemplated in good faith and which is under serious consideration. Judge Talwani also rejected Cohen’s argument that Larson had failed to sufficiently allege bad faith as required under the controlling SJC decision, finding that the issue had not been raised in the Motion to Dismiss and thus could not be brought for the first time in a motion for reconsideration.
Cynthia Foss sued Spencer Brewery in June 2019, asserting breach of contract and copyright infringement. Judge Hillman granted Spencer’s motion to dismiss on res judicata grounds. Foss had previously sued Spencer Brewery on two separate occasions, asserting the same causes of action. Those cases ended with a judgment on the pleadings in favor of Spencer and dismissal for failure to state a claim on which relief could be granted. Judge Hillman found that each of these constituted a final decision on the merits, resulting in preclusion of the instant lawsuit.
In a different part of Boston University’s series of patent infringement suits against LED manufacturers, now consolidated, Judge Saris granted in part and denied in part Kingbright’s motion for judgment on the pleadings. The Kingbright case was stayed pending the resolution of earlier such cases, and following the invalidation of claim 19 for lack of enablement, Kingbright filed its motion to dismiss or, in the alternative, for summary judgment. Kingbright, which sells LED packages that utilize LED’s manufactured by Epistar, Cree, and Tekcore, sought judgment no the pleadings as to the products that incorporated Epistar’s LED chips under the Kessler doctrine. This doctrine bars infringement actions against a customer of a seller who had prevailed in an infringement suit because of invalidity or noninfringement. As Epistar was one of the parties that prevailed in the lack of enablement finding, and because in any event claim preclusion would prohibit B.U. from bringing infringement claims based on different claims against Epistar (who had indemnified Kingbright), Judge Saris granted the motion with respect to these products. She denied the motion with respect to the products incorporating Cree and Tekcore chips, as neither the Kessler Doctrine nor claim preclusion would apply.
Judge Saris denied Omilia’s motion to dismiss for lack of personal jurisdiction. Omilia, a Cyprus corporation, sought either dismissal or transfer to the Northern District of Illinois, where it concedes it has sufficient contacts to support personal jurisdiction. Looking into Omilia’s contacts with Massachusetts, Judge Saris determined that Omlilia had the necessary contacts to support personal jurisdiction. She noted that Omilia had identified Boston as its “North American Office” on its website and provided Boston contact information from 2015 to the time it received Nuance’s cease and desist letter in October 2018. Judge Saris further did not credit Omilia’s attempts to identify its Boston contact person as an independent contractor, because Omilia’s website had indicated that he was the company’s “employee number 6” in 2012. She further noted the LinkedIn profile of Omilia’s CEO, which indicated that he worked for Omilia in Boston. Finally Judge Saris pointed to Omilia’s having a physical address in Boston (a WeWork location which served primarily as a mailing address) and Omilia’s presentation at a conference in the state. She found each of these supported purposeful availment. She then looked to the relatedness of these contacts with the asserted patent infringement. Noting that Federal Circuit law on this subject was more permissive towards finding relatedness than many of the other Federal Circuit’s law, she determined that Omilia’s attempts to market and sell accused products to customers in Massachusetts (which occurred at least in part through these contacts) was enough. Finally, Judge Saris determined that hailing Omilia into a Massachusetts court was not unreasonable, because Massachusetts has a strong interest in protecting Nuance, a Massachusetts company, from infringement, that Omilia had not overcome. As a result, this case will proceed in Massachusetts.
Judge Sorokin granted CarMax’s motion to dismiss, finding the asserted claims were directed to non-patentable subject matter. The patent -in-suit, U.S. 9,671,955, is directed to a “virtual phone” in which a processor, memory, wireless communications and power ports, a touch screen, and a software application permits the emulation of the features of a handheld device (such as a smart phone) on the touch screen. This would allow a smartphone to be emulated on a touchscreen in a vehicle, permitting hands-free operation while maintaining the features and familiarity of location of the features of the phone. CarMax challenged the claims via a motion to dismiss for failure to state a claim on which relief could be granted, asserting that the claims do not meet the eligibility standard set forth in the Supreme Court’s Alice Corp. decision. Applying the test for eligibility set forth in that case, Judge Sorokin first determined that the claims were directed to the idea of emulating the features of a smartphone or other handheld device on a different screen. As was done in many other cases looking at eligibility, Judge Sorokin looked to prior decisions to see if this concept is meaningfully distinguishable from other concepts found to be abstract – courts do not appear to have a concrete method for determining whether the claimed idea is abstract, and instead analogize to prior cases. He did note that the claims recited a number of “generic computer components” without identifying how they worked together to create the claimed virtual smart phone, leaving the patent claiming the idea of an emulated smart phone rather than an actual functioning embodiment – he found the claims to be “merely drawn to the aspect of emulation and to the concept of generating a virtual smart phone – an abstract idea – and not to any particular concrete implementation of that idea.”
Having determined that the claims were directed to an abstract idea, Judge Sorokin next looked for an “inventive concept” that would transform the abstract idea into a patent-eligible application, noting that under existing case law, “more is required than well-understood, routine, conventional activity already engaged in by the scientific community.” Judge Sorokin found that the claims lacked any additional limitations that would ensure that they amounted to more than the ineligible concept itself. He stated that all of the claimed components were generically defined and conventional. Accordingly, he determined that the patent did no claim patent-eligible subject matter, and granted CarMax’s motion to dismiss.
While I am not suggesting that Judge Sorokin was or was not incorrect in this particular instance, the current Alice framework seems to be very subjective. The problem with this approach is that every patent claim can be stated in increasingly broad and abstract terms – Edison’s light bulb patent, for example, could be described as the abstract idea of running electricity through a resistive element so as to general light, and so described may not have been deemed patentable absent further, concrete limitations. Given that this first step of stating the concept or idea of the claims does not appear to have any objective framework, it becomes difficult to determine how a claim will be treated in any given litigation, and the validity of a given patent may well hinge on the particular judge and the persuasiveness of the respective parties’ attorneys rather than the actual content of the specification and claims. One way to potentially overcome this problem might be to rely on concrete components and describe clearly how the components interact, rather than focusing on the function of the device or result of the interaction of the components.
Judge Mastroianni granted Shadow Box owner Brian Goldricks’ motion to dismiss the claims asserted against him in his individual capacity. To survive the motion to dismiss, Moreland was required to make factual allegations that Goldrick was the motive, active conscious force behind the alleged trademark infringement, and (with respect to the state law claims) that he was personally involved in the alleged tortious acts. Judge Mastroianni found that the complaint made only conclusory statements (such as “on information and belief” allegations), which are not, as phrased, factual allegations and are therefore not credited when determining whether the complaint meets the Iqbal/Twombly pleading standards.
Uniloc filed suit in June, asserting two patents against Akamai. In September, Akamai discovered that Uniloc had been assigned the two patents from IBM, with IBM reserving a license and a right to grant sublicenses to strategic partners. Uniloc conceded that Akamai is one such strategic partner, but nevertheless sought to dismiss the case without prejudice, maintaining that its suit is viable because Akamai had not asserted that it had received a license from IBM. Judge Sorokin agreed that the case should be dismissed, finding that the assignment agreement designates Akamai as a third party beneficiary that Uniloc is bound to indemnify against infringement suits. He dismissed the case with prejudice pursuant to Fed. R. Civ. P. 41(a)(1)(B), however, because a prior iteration of Uniloc had already voluntarily dismissed identical claims against Akamai in 2017.