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.
On November 4, 2019, Ronald Satish Emrit filed a pro se lawsuit against the NFL, the Washington Redskins, and Daniel Snyder, the Redskins’ majority owner. Emrit claimed to be both Native American and African American, and sought to institute a class action case for trademark infringement for misappropriating the image of a Native American person as the Redskins’ logo, as well as defamation against Native Americans as a class. The case was assigned to Judge Saris, who has now dismissed the complaint as being essentially duplicative of a number of prior-filed suits. Emrit first filed against the NFL on October 10th in the Eastern District of Virginia, the District of Maryland, and the District Court for the District of Columbia. He subsequently filed the same case in the Southern District of Iowa and the Middle District of Florida before filing the Massachusetts case.
Emrit is a frequent pro se plaintiff, and has been deemed a vexatious litigant in multiple district courts. This practice of filing the same claims in multiple courts no doubt contributes to this characterization.
John Epstein had sued Bruce Furniture for breach of contract and copyright infringement relating to an advertisement campaign that Epstein alleges he prepared for Bruce Furniture. Judge Mastroianni denied Bruce Furniture’s motion to dismiss, finding the complaint made clear that it was the specific content, arrangement, and phraseology of the advertisements, and not the ideas contained therein (such as interest-free financing), that was being asserted, and that such information is plausibly within the realm of copyright protection. He further found that the merger doctrine and the “scenes a faire” doctrine did not negate the substantial similarity alleged in the complaint.