Hybrid Audio, LLC v. ASUS Computer International, Inc. et al. (16-cv-10643).

Judge Zobel allowed Hybrid Audio’s motion to transfer this case to the Northern District of California and denied ASUS’ motion to dismiss.  The ASUS defendants are a Taiwanese corporation and its U.S. subsidiary, which is incorporated in and resides in California.  The parties agreed that venue in Massachusetts is no longer proper, pursuant to TC Heartland; the real action in this issue was ASUS’ desire that the case be dismissed, forcing Hybrid Audio to refile in California – as the asserted patent expired prior to the filing of the lawsuit, and ASUS’ first notice of infringement was on January 5, 2011, refiling would eliminate ten months of damages that were available pursuant to the six-year limit on damages set forth in 35 U.S.C. § 286.  Hybrid Audio sought to have the case transferred “in the interest of justice.”  Judge Zobel endorsed Hybrid’s motion, rather than authoring an opinion of her own.

Amax, Inc. v. ACCO Brands Corporation (16-cv-10695).

Judge Gorton issued a claim construction order in a case involving allegations that ACCO’s Swingline Quick Touch Full Strip and Quick Touch Compact staplers.

Swingline Stapler

In virtually each instance, Judge Gorton refused to read limitations into the claims and sided with Amax.  Of particular interest, Judge Gorton declined to consider whether the claims were indefinite at the claim construction phase of the litigation; as a part of this, it appears that Judge Gorton laid out an outdated legal standard for proving indefiniteness.  Under the Supreme Court’s 2014 Nautilis decision, indefiniteness exists if a patent’s claims, “read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”  Judge Gorton’s analysis, however, asserted that ACCO must show that a “skilled artisan could not discern the bounds of the claim,” and that to be found indefinite, “the claim must be ‘insolubly ambiguous,’” citing to the Federal Circuit’s pre-Nautilis 2008 Halliburton Energy decision.  It should be interesting to see how this issue progresses.

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

Abiomed sued Maquet seeking a declaratory judgment that its Impella intracardiac heart pumps do not infringe Maquet’s patents, and Maquet counterclaimed for infringement. Abiomed, believing that Maquet’s parent company, Getinge AB, controls the litigation, moved to compel the deposition of Abraham Roani, Getinge’s General Counsel, on valuation, commercialization, validity and enfoceability of the patents-in-suit.  Maquet opposed, arguing that any information Roani has would be protected by the attorney-client privilege and work product doctrine, and Maquet offered a non-attorney alternative witness.   Magistrate Judge Boal, noting the red flags that are raised by the noticing of deposition of the opposing party’s attorney, referred to the Shelton test adopted by the Eight Circuit, which requires there be no other means to obtain the sought information, the information be relevant and non-privileged, and the information be crucial to the development of the case.  She found that Abiomed had not met the first of these criteria, particularly given the proffer of a non-attorney witness, and denied the motion without prejudice.

Maquet fared better with its motion to compel.  Abiomed unsuccessfully sought to limit production to documents relating to features of the accused products that are alleged to meet the claim limitations, rather than technical information on all features of the accused products.  While Judge Boal compelled production of documents related to the accused products and not just the accused features, she sided with Abiomed that requests seeking all documents “related to” particular topics were overly broad, and limited these requests to the specific examples of types of documents contained in the requests.  Finally, Judge Boal required Abiomed to produce technical documents that predate the six-year limitation on damages period set forth in 35 U.S.C. § 286, because such documents go to infringement and not just to damages.

Purdue Pharma LP et al. v. Collegium Pharmaceutical, Inc. (17-cv-11923).

Purdue Pharma sued Collegium for infringement of U.S. Patent Nos. 9,522,919 and 9,073,933, which relate to oxycodone hydrochloride compositions and formulations. The suit is based on Collegium’s submission of a supplemental New Drug Application seeking approval for revised labeling for Collegium’s Xtampza® oxycodone extended release capsules.  Purdue has been pursuing claims against Xtampza® for some time now, beginning in March 2015, and most recently on September 21, 2017, as discussed here.

Avigilon Corporation et al. v. Canon, Inc. (17-cv-11922).

Avigilon filed suit against Canon, seeking declaratory judgment that its cameras and camera software do not infringe various Canon patents. Earlier this summer, Canon had sued Avigilon for patent infringement in the Eastern District of New York.  After Avigilon indicated it would move to transfer the case to Massachusetts, Canon filed a notice of voluntary dismissal.  Avigilon seeks declarations that U.S. Patent Nos. 6,580,451, 6,911,999, 7,0344,864, 7,321,453, and 9,191,630 are not infringed and are invalid and/or unenforceable.

It will be interesting to see whether the sufficiency of the pleading is challenged. The Iqbal/Twombly standard has been found not to apply to affirmative defenses, thus allowing generically pled affirmative defenses of non-infringement and invalidity to stand.  Earlier this summer, however, in the case of PetEdge, Inc. v. Marketfleet Sourcing, Inc. d/b/a Frontpet (16-cv-12562), Judge Saylor dismissed similar bare-bones non-infringement and invalidity pleadings when presented as counterclaims.

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

Judge Sorokin denied Covidien’s motion for a preliminary injunction that sought to bar sales of Ethicon’s Enseal® X1 Large Jaw Device, a surgical tool that allows a surgeon to grasp a vessel between two jaws, apply energy to the jaws to for a seal, and cut the now-sealed vessel. Prior to the introduction of this device, Covidien was the market leader in such instruments that used bipolar (or radiofrequency) energy to seal the vessel.  Since its introduction in March 2017, the X1 Large Jaw has generated $7.8 million in revenue.  Covidien contends that the X1 Large Jaw infringes U.S. Patent No. 8,241,284, which claims vessel sealing devices having non-conductive stop members that maintain a constant distance between the jaw surfaces along the length of the jaws.

Because Ethicon raised a substantial question of non-infringement, Covidien was unable to demonstrate a likelihood of success on the merits. Of interest, while both parties sought to have the claim terms given their plain and ordinary meaning, the parties disagreed as to what that meaning was, with Ethicon urging a meaning that took its product out of infringement.  Judge Sorokin determined that “Ethicon’s proposed meanings are at least sufficiently persuasive to raise a substantial question regarding the ‘plain and ordinary’ meanings of the relevant terms.”  In addition, Judge Sorokin found that Covidien failed to show a nexus between the claimed elements of the device and the success of the X1 Large Jaw.  Ethicon provided evidence that sales of the X1 device were driven by factors, such as better ergonomics, ease of use, availability of sealing separately from cutting, and price, that were unrelated to the claimed elements.   Accordingly, Covidien did not show irreparable harm “resulting from the alleged infringement.”

Smart Wearable Technologies Inc. v. Tomtom, Inc. (16-cv-00049, W.D. Virginia).

Judge Glen E. Conrad of the Western District of Virginia granted defendant Tomtom’s motion to transfer venue to the District of Massachusetts.  The complaint, for patent infringement, was filed in July 2016, yet Tomtom’s motion was not filed until after the TC Heartland decision holding that venue is restricted to the state of incorporation or a venue in which the defendant both has a regular place of business and has committed acts of infringement.  Tomtom is not incorporated in Virginia and has no regular place of business there.  In response to the motion, Smart Wearable acknowledged that venue in Virginia is not proper under TC Heartland, but argued that Tomtom waived its venue challenge  by failing to raise it earlier.

When faced with a similar situation, Judge Young of the District of Massachusetts denied the motion to transfer, finding that TC Heartland was not a change in the law that allowed for the late filing of a venue motion.  In Virginia, however, Judge Conrad determined that TC Heartland “significantly changed the law of venue” in patent cases , and that, “as a practical matter,” the motion to transfer was not available to Tomtom prior to that decision.  While these decisions are on their face contradictory, it may be the result of differences in controlling circuit law – Judge Conrad specifically cited to a Second Circuit holding that a defense cannot be waived where it was directly contradictory to then-existing circuit precedence.