Palomar Technologies, Inc. v. MRSI Systems, LLC (18-cv-10236).

Judge Saylor overruled Palomar’s objections to the Magistrate Judge Bowler’s order partially granting MRSI’s motion to compel, finding that her ruling was not clearly erroneous nor contrary to law. The discovery dispute surrounded the selection of search terms to search e-mail, that Palomar contended were over-broad and would result in a significant number of documents not related to the litigation and would result in the production sensitive personal information, in violation of the California state constitution. Judge Saylor found no reason that the constitution of the state should impact discovery in a federal case and based on federal, not California, law, and further determined that the argument was waived as not having been raised in the written responses to the discovery requests. Judge Saylor did, however, permit Palomar to submit for in camera review any specific documents for which it contends that the laws of California should control discovery (despite the case arising under federal patent law) and that the privacy concern was not waived.

Ohio State Innovation Foundation v. Akamai Technologies, Inc. (19-cv-11528).

Ohio State Innovation Foundation, which holds title to intellectual property developed by and for The Ohio State University, brought suit against Akamai, accusing the company of infringing U.S. Patent No. 9,531,522, which covers systems and methods for proactive resource allocation by which an algorithm monitors mobile user device history to automatically provide information that any particular user repeatedly requests during off-peak hours. Dr. El Gamal, the lead inventor and OSU professor, approached Akamai in 2013 about licensing the patent. Dr. El Gamal’s company, Inmobly, Inc., executed an NDA with Akamai and provided demonstration software. Akamai ultimately turned down the license, and subsequently filed its own patent application on similar technology. OSU filed suit when Akamai released its version.

Akamai moved to dismiss the complaint pursuant to Rule 12(b)(6), asserting that OSU did not (and could not) make a plausible assertion that Akamai’s software involves the machine learning required by the claims of the ‘522 patent. Judge Burroughs disagreed, however, finding Akamai’s own publications describing its software map out to the ‘522 specification and identify “machine-learning-based algorithms,” and that therefore the complaint states a legally sufficient claim of patent infringement. Accordingly, she denied Akamai’s motion.

CardioNet, LLC et al. v. InfoBionic, Inc. (15-cv-11803).

At the request of the parties, Judge Talwani reversed her prior decision and entered partial final judgment that U.S. Patent Nos. 7,212,850 and 7,907,996 are invalid for failing to claim patentable subject matter. By such order, CardioNet will be able to immediately appeal this finding.

Ethicon Endo-Surgery, Inc. et al. v. Covidien LP et al. (16-cv-12556).

Judge Sorokin denied Covidien’s emergency motion to continue the bench trial date, currently scheduled to begin on September 23, concerning Ethicon’s seeking of a declaration that its Enseal® X1 surgical tool does not infringe several Covidien patents. Covidien sought the continuance because its technical expert had undergone an unexpected heart surgery; Ethicon opposed on the grounds that he was but one of a dozen experts, that the ailing expert was to testify only as to a single issue, and that all of the witnesses had made travel and work arrangements to be in Boston for the trial. Judge Sorokin apparently agreed with Ethicon; rather than move the trial entirely, he ordered that it go forward with Covidien permitted to submit the expert’s report and a proffer of his expected testimony. Once the expert has recovered, Judge Sorokin will take his testimony and consider whether any further testimony from any party is thereby necessitated.

Globys, Inc v. Sorriso Technologies (19-cv-11867).

Globys sued Sorriso, asserting that Sorriso’s Smart Suite infringes a pair of patents relating to computer-implemented digital invoicing. A review of the exemplary claims in the complaint suggests that the patents may have an Alice eligibility problem; claim 1 of U.S. 7,996,310, the first of the asserted patents, essentially recites a “computer-implemented method” comprising receiving billing information that includes a plurality of individual transactions; receiving selection of parameters for customizing an analysis of the billing information; analyzing the billing information using the parameters provided; and producing a report. The exemplary ”computing system” claim 1 of the second patent, a continuation of the ‘310 patent, includes no meaningful technical limitations, reciting an “analysis engine” and “user interface” as the sole components and describing the system in functional terms. The patent was filed in 2000 and issued in 2011, several years before the Supreme Court’s June 19, 2014 Alice decision on patent eligibility. While the second patent, U.S. 8,930,252, issued in January 2015, prosecution closed and a notice of allowance was sent in April 2014, again prior to the Alice decision.

Enchanted IP LLC v. Duracell Inc. (19-cv-11858).

Enchanted accuses Duracell’s “Powerbank” of infringing U.S. Patent 6,194,871, directed to charge and discharge control circuits for secondary batteries that prevent overcharge and overdischarge of the batteries. According to the complaint, the patented technology solves the problem of preventing a battery from being erroneously charged by another battery pack connected in parallel while also permitting recharge of a battery even when the voltage is completely discharged. The Powerbank products are portable chargers for USB devices and smartphones, and Duracell lists overcharge protection as one of the Powerbank’s safety features. Enchanted, a Plano, Texas corporation (and thus presumptively a Non-Practicing Entity), extensively pleads personal jurisdiction, based on Duracell’s having a principal place of business in Massachusetts, regularly conducting business and deriving substantial revenue in Massachusetts, offering products online to customers in Massachusetts, systematically conducting business in Massachusetts (including the accused activities), and having a regular and established presence in the district. The patent has changed hands a number of times, and was last assigned to Enchanted by Huawei Technologies. Enchanted seeks injunctive relief as well as monetary damages; injunctive relief may be hard to come by, however, as the patent claims priority to a December 3, 1999 Japanese application and will thus almost certainly expire prior to a decision in the litigation.

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

Judge Saylor granted in part and denied in part Abiomed’s motion to strike Maquet’s second supplemental non-infringement contentions. Maquet, who asserted patent infringement counterclaims, sought to add a claim under 35 U.S.C. § 271(f), which prohibits the export of all or a substantial portion of a patented invention for assembly abroad. Judge Saylor struck this part of the contentions, finding that Maquet’s counterclaims did not refer to 271(f) and made no factual allegations from which a 271(f) claim could be inferred, and thus Maquet should follow the requirements of F.R.C.P. 15. Judge Saylor refused to strike portions of the second supplemental contentions that added new infringement contentions concerning the “guide mechanism” term. He noted that, through inadvertence, his scheduling order did not literally prevent the service of supplemental contentions, and accepted Maquet’s assertion that the amendment was based on “newly adduced” evidence not previously available to it. Maquet further assured the Court that the amendment narrows the asserted claims and “elaborates and refines” their infringement theory. He did ban any further amendment of the infringement contentions.