JT IP Holdings, LLC et al. v. Florence et al. (20-cv-10433).

JT IP and its member and manager, Jeffery Eldredge, filed suit against FloPack, LLC and its members and managers Thomas Florence and his daughter, Kimberly Perry. According to the complaint, Florence approached Eldredge in 2016 about going into business together. The two subsequently formed JT IP Holdings, with Florence’s contribution to the company to include the development of a new product, as well as to set up the business, which Eldredge contends Florence failed to do. In the summer of 2019, Florence was issued U.S. Patent No. 10,364,563 entitled “Runoff Water Management System.” Eldredge asserts that this patent was the result of his working with Florence to update and improve upon a previous Florence patent to a similar system. He says that he relied upon Florence’s assertion that he need not be named an inventor, and that the ‘563 patent was assigned to JT IP, protecting his rights. Eldredge asserts that Florence has hinder their ability to obtain necessary additional funding, and subsequently purported to assign the ‘563 patent to new entity, FloPack, LLC, that was set up in the name of Kimberly Perry, in violation of the operating agreement of JT IP. Eldredge brings claims for correction of inventorship. violation of the Lanham Act in misrepresenting ownership of the ‘563 patent, infringement of the ‘563 patent, declaratory judgment that the assignment of the ‘563 patent to FloPack is null and void, conversion, breach of fiduciary duty, unjust enrichment, fraud and misrepresentation, tortious interference with a contract and with prospective economic advantage, and violation of 93A.

Janssen Biotech Inc. v. Celltrion Healthcare Co. Ltd. (18-2321).

The Federal Circuit upheld Celltrion’s non-infringement victory at the District Court in a summary affirmance, meaning that no opinion was written. Janssen had sought infringement under the doctrine of equivalents, but Judge Wolf found that the claims, if extended to cover the equivalents sought, would have been obvious, and that Celltrion therefore did not infringe.  This should bring the lawsuit to a close.

Digital Verification Systems, LLC v. airSlate, Inc. (20-cv-10440).

Digital Verification Systems asserts that airSlate infringes its U.S. Patent o. 9,054,860, which covers methods for verifying or authenticating the identify of an entity associated with an electronic file, such as an e-signature. DVS says that airSlate’s Signnow product directly infringes at least claim 1 of the ‘860 patent. DVS appears to be a non-practicing entity, and has filed 23 different lawsuits alleging infringement of this patent, including a separate suit filed the same day in Delaware against dotloop, Inc. Indeed, the airSlate complaint’s sole count asserts “direct infringement of the ‘860 patent by dotloop, evidence of a simple cut-and-paste complaint.

Hybir, Inc. v. Veeam Software Corporation (20-cv-10329).

Hybir is a Colorado corporation that owns several patents relating to on-line backup systems that minimize duplication of the backed-up data at the source of the data. Hybir accuses Veeam, a provider of backup, disaster recovery and intelligent tata management software, of infringing three of these patents through the Veeam Backup & Replication system that deduplicates data on the source side. Hybir says it notified Veeam of the infringement by letter of December 17, 2019, but Veeam has not responded or ceased the sales of the system. Hybir asserts direct, contributory and induced infringement, with the latter two (which require knowledge of the patent and infringement by Veeam’s users) asserted since at least the December cease and desist letter. The case is presently before Magistrate Judge Kelley.

Night and Day Furniture, LLC v. Atlantic Furniture, Inc. (18-cv-30104).

After the parties to this patent litigation reached a settlement just before the scheduled Markman hearing, the parties sought to have the case dismissed. Judge Mastroianni granted the motion to dismiss with prejudice, but denied the parties’ request that the court retain jurisdiction and incorporate the settlement agreement into the dismissal order, citing the general policy of the court not to adopt or endorse settlement agreements between private parties.

2019 – Looking Back.

Intellectual property filings in the District of Massachusetts remained high in 2019. Of the 94 total district courts in the United States, the District of Massachusetts ranked 11th for new patent filings, 14th for trademark filings, 20th for copyright filings and 18th for trade secret filings. Presently, there are 61 open patent cases, 82 open trademark cases, 39 open copyright cases and 31 open trade secret cases in this District. New patent cases covered a wide range of technologies, including medical devices, robotics, and communications. A long-running dispute between SiOnyx and Hamamatsu Photonics went to trial, with SiOnyx prevailing on infringement, contract and unjust enrichment claims as well as correction of inventorship and injunctive relief. A significant number of 2019’s copyright litigation revolves around allegations that a business took a copyrighted photograph from the internet without license and placed it on their website, often further alleging the removal of copyright management information. This stems from the rise of reverse image search software that can continuously scour the internet for copies or derivative works, allowing much easier discovery of potential infringements. In the trademark realm, Massachusetts was home to several infringement suits against resellers such as Amazon stores who were (or at least may have been) selling products actually made by the trademark holder but not obtained as authorized resellers. Smart home control product maker ecobee was one of the leaders in this area, filing four such suits after having filed three in November 2018.

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

In a long-running patent dispute concerning cardiac monitors, Judge Talwani denied in part CardioNet’s motion for summary judgment. CardioNet sought judgment that InfoBionic infringed four claims of one of the remaining patents, and that those claims, along with a claim from another of the remaining patents, were valid. Judge Talwani found, in a very short electronic order, that there were genuine issues of material fact with respect to validity and infringement on the four claims and denied the motion. With respect to the second patent, Judge Talwani set the validity for a February hearing.  She further instructed CardioNet to address why summary judgment of non-infringement should not be granted on the basis that the accused MoMe system lacks a frequency domain T wave filter as that term was construed.