Deetz Family, LLC v. Rust-Oleum Corp. (16-cv-10790).

Dayton Deetz, the sole inventor on a pair of patents relating to magnetic additives for paint, ranted a non-exclusive license to Rust-Oleum in 2005. Deetz asserts that Rust-Oleum failed to make the minimum payments under the license in 2006-2010, and stopped making payments altogether on 2010, leading Deetz to terminate the license. Deetz then filed suit, asserting in addition to breach of contract that Rust-Oleum was continuing to use the patented technology and associated know-how that was transferred as a part of the 2005 license. Deetz then moved to disqualify Rust-Oleum’s litigation counsel, saying that his role in negotiating the 2005 license renders him a likely necessary witness, which would leave him unable to serve as counsel at trial. Judge Hillman denied the motion, noting that Deetz had not put forth any evidence beyond conclusory statements that the attorney was actually involved in the negotiations. Further, as it appeared that the negotiations were primarily (if not entirely) between Deetz and a Rust-Oleum employee, both of whom who would be available to testify. Absent some argument (not presented by Deetz) that the attorney held some unique knowledge that the other two could not provide, the attorney’s testimony would not be “necessary,” but would rather likely be cumulative. Accordingly, Deetz did not satisfy the burden of demonstrating that the attorney was likely to be a necessary witness.

MedIdea, LLC v. DePuy Orthopaedics, Inc. (17-cv-11172).

Judge Sorokin construed claim terms in this suit involving patents covering total knee replacement implants having cam and post designs. He first construed “cam” to mean “a structure that makes sliding or rolling contact with the tibial post as the knee bends.” He rejected MedIdea’s argument that the term would be discussed extensively at trial in a way that would permit the jury to discern the plain and ordinary meaning of the term, finding “cam” to be a critical term with which a lay jury would be unlikely to be familiar; moreover, it is the Court’s exclusive obligation to construe patent terms. He likewise construed related terms for which MedIdea suggested not construction was needed, indicating that the court is required to construe terms on which the parties disagree. He construed “cam mechanism” to require two or more cams, because the specification criticized one-cam structures and repeatedly referenced multiple cams. Judge Sorokin further agreed with DePuy that “early after initiation of flexion” of the knee should be construed as “prior to 30 degrees of flexion” rather than MedIdea’s proposed 60 degrees of flexion, as MedIdea’s number appeared to lack intrinsic or extrinsic support, while DePuy’s corresponded to the degree of flexion in prior art that was criticized in the patent. Finally, he refused to consider the definiteness of the terms “central cam” and terms using “superior” and “inferior,” finding that determination to be more suitably made on a fuller record at summary judgment.

Realtime Data LLC d/b/a/ IXO v. Scality, Inc. (18-cv-12188).

Realtime, a data compression developer, accuses Scality of directly infringing four patents relating to data compression, as well as alleging contributory and induced infringement. Realtime seeks monetary and injunctive relief, although an injunction likely depends on a finding of infringement of one of the asserted patents, U.S. 9,667,751, as the other three have priority dates of 1998 and 1999 and will likely expire prior to resolution of litigation. Realtime identifies itself as an inventor-owned R&D company that broadly licenses its technology; it (and its subsidiary Realtime Adaptive Streaming) has repeatedly asserted its patents in litigation, and it is unclear whether it licenses outside of the litigation context.

CardioNet, LLC et al. v. Infobionic, Inc. (17-cv-10445).

Judge Talwani granted Infobionic’s motion to dismiss, finding the claims in suit were directed to patent-inelligible subject matter. CardioNet accused Infobionic of infringing U.S. Patent 7,941,207, titled “Cardiac Monitoring,” by sales of its MoMe Kardia System. The patent concerns monitoring electrical activity of the heart to identify atrial fibrillation and atrial flutter, two forms of arrhythmia, in ambulatory (i.e., not bed-ridden) patients. Judge Talwani noted that dismissals founded on § 101 invalidity were approved by the Federal Circuit in their 2018 Aatrix Software decision, applying the non-moving party’s proposed claim construction where construction is necessary. Here, Judge Talwani found the claims were directed to the abstract idea of looking at the variability in time between heartbeats and taking into account ventricular beats, a method of diagnosis that had long been used, and that the claims merely applied conventional computer components to that idea. She rejected CardioNet’s argument that the improvement to the field of cardiac telemetry necessarily translated into an improvement in computerized technology that would take the claims out of the Alice analysis. Having determined that the claims are directed to a natural phenomenon under the first step of the Alice, Judge Talwani went on to find that the algorithms used in the analysis would not suffice to result in eligibility, because Alice forceloses eligibility based on the implementation of a mathematical principal on a computer.   The claims themselves used terms like “variability determination logic” and “relevance determination logic;” Judge Talwani noted that CadioNet failed to identify what aspect of these logic systems described in the specification made the claims patent-eligible, and further noted that “determination logic” is not defined or used in the specification. As such, it would cover any form of logic, and provides no meaningful limitation on the claims that would render them eligible. Accordingly, the complaint was dismissed.

Nike, Inc. v. Puma North America, Inc. (18-cv-10876).

Nike sued Puma for infringement of seven Nike patents covering shoes having knitted upper, and alleged that after it notified Puma about the patents prior to filing suit, Puma not only failed to cease making and selling the accused products, Puma also introduced new shoes to the market that infringed the patents. Puma moved to dismiss the claims with respect to two of the patents as directed to non-patentable subject matter, asserting that one was directed to the abstract idea of forming an outline pattern on a textile and does not disclose an inventive step towards achieving the outline pattern, and that the second is directed to the abstract idea of generating a visual pattern on a textile, which is nothing more than a non-patentable work of art. Judge Sorokin disagreed, finding that the claims, which were directed to tangible manufactured items (i.e., shoes) or to physical components thereof or methods of manufacturing the same, they passed muster under the first prong of the Mayo test as being directed to a statutorily provided category of patent-eligible subject matter. He further noted that, even if they did not, Puma had not met its burden of demonstrating by clear and convincing evidence that the claims lacked an inventive step that would meet the second prong of the Mayo test. Judge Sorokin also denied Puma’s motion to dismiss the willfulness charges, finding Puma’s suggestion that more must be pled than knowledge of the patent and continued infringement remained an open question (albeit one that other Massachusetts judges had found incorrect), but that Nike had sufficiently pled additional facts that would support a finding of willfulness.

Boston Heart Diagnostics Corp. v. GeneAlign, LLC (17-cv-11412).

Judge Talwani found GeneAlign in default after it failed to respond to Boston Heart Diagnostic’s patent infringement complaint and entered an injunction barring GeneAlign from making, using, selling or offering for sale any SLCO1B1 test. She further awarded BHD costs and fees totaling $15,641.49 after determining, taking the allegations of the complaint as true, that the case was exceptional under 35 U.S.C. § 285.