Stross v. IvyMedia Corporation et al. (18-cv-10240).

After photographer Alexander Stross sued Ivymedia for copyright infringement relating to IvyMedia’s alleged use of a Stross photograph in its on-line advertising, Judge Sorokin denied IvyMedia’s motion to dismiss for failure to state a claim on which relief could be granted. IvyMedia subsequently answered and counterclaimed for extortion and fraud. Stross moved to dismiss the counterclaims as being legally and factually baseless and designed to drive up the costs of litigation. Stross further sought an award of attorneys’ fees as a sanction for IvyMedia’s continued baseless motion practice. Judge Sorokin granted Stross’ motions and awarded Stross $9671.09 in fees and costs in connection with the motion to dismiss.

Xiao Wei Yang Catering Linkage In Inner Mongolia Co., Ltd. et al. v. Inner Mongolia Xiao Wei Yang USA, Inc. et al. (15-cv-10114).

Judge Casper granted Defendants’ renewed motion for attorneys fees, finding the case exceptional under 35 U.S.C. § 1117(a), which allows for the award of fees to the prevailing party in exceptional cases. She had previously granted summary judgment in favor of the Defendants on all issues. Judge Casper, applying the Supreme Court’s 2014 Octane Fitness guidance in the analysis of whether a patent case is “exceptional” pursuant to 35 U.S.C. § 285, found that sanctions had already been imposed on the Plaintiff for their litigation conduct, repeatedly failed to meet court-imposed deadlines, submitted filings that failed to provide sufficient support for their positions, and otherwise engaging in unreasonable conduct. Moreover, she determined that the plaintiffs’ substantive positions following the completion of discovery were weak and that they failed to produce any evidence of damages. Judge Casper found that Defendants need to be compensated for discovery-related motion practice and for prolonging litigation after discovery through summary judgment. She ordered Defendant to submit its request for fees from the denial of their motion to dismiss forward, excluding fees that had already been awarded through discovery sanctions.

Shire LLC et al. v. Abhai LLC (15-cv-13909).

Following the trial in this case, in which Abhai was found to infringe a pair of Shire’s reissue patents and to have committed litigation misconduct warranting the award of attorneys’ fees (as well as a $30,000 sanction payable to the Court for wasting the Court’s time), Judge Young awarded fees of $1,501,455.32. He cut some time that would have been incurred regardless of the misconduct and for time spent on motions to compel that were not granted, reducing the award by $833k from what Shire had sought.   The case will soon be in condition for appeal.

SiOnyx, LLC et al. v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

Magistrate Judge Boal denied SiOnyx’ motion for evidentiary sanctions against Hamamatsu Photonics and Hamamatsu Corp.SiOnyx and Harvard filed suit in 2015, asserting correction of inventorship, patent infringement, and breach of contract. In discovery, Hamamatsu produced summary spreadsheets of damages information without providing the underlying invoices and purchase orders. By order of October 2017, the court ordered Hamamatsu to provide that information and some additional sales data. SiOnyx asserts that Hamamatsu failed to produce the information prior to the taking of depositions of Hamamatsu personnel and provided inaccurate and shifting information relating to damages, and sought both to preclude Hamamatsu from relying on the summary data and to have sales figures taken from annual reports be deemed established pursuant to Rule 37. Citing the strong presumption of allowing cases to be decided on the merits, Judge Boal determined that the defendants’ conduct was no so extreme as to warrant evidentiary sanctions (which were the only sanctions sought by SiOnyx). Judge Boal next addressed a dispute as to the interpretation of the October order, which modified certain requests for sales data to exclude data on unaccused products. Hamamatsu chose to interpret this to require production only of documents expressly mentioning an accused product. Judge Boal corrected them and ordered production of all sales documents that pertained to an accused product, but did not find them to be in contempt of the October order.

Xiao Wei Yang Catering Linkage in Inner Mongolia Co., Ltd. et al. v. Inner Mongolia Xiao Wei Yang USA, Inc. et al. (15-cv-10114).

A number of discovery disputes boiled over in a suit involving a Chinese hot-pot restaurant chain and a Boston restaurant who had tried to become its first American franchisee, resulting in the award of sanctions against plaintiffs’ attorney.  Magistrate Judge Kelley is requiring the attorney to pay the defendants’ reasonable fees and costs for their work on a motion for a protective order and to quash subpoenas issued by the plaintiffs.  Limited discovery had been allowed, to determine whether a forum selection clause in the franchise agreement had been triggered, which would require the bulk of the claims to be brought in China.  A series of disputes over discovery arose, in which plaintiffs’ attorney repeatedly refused to meet and confer.  Among the charges were that the attorney noticed numerous third party subpoenas seeking financial discovery well outside the bounds of the limited discovery that had been permitted at a time when the defendants were negotiating a resolution of a dispute concerning plaintiffs’ attempt to get this information directly from the defendants.    Judge Kelley indicated that this is an improper attempt to circumvent the legitimate objections of the defendants to the discovery, and that plaintiffs should have moved to compel if they believed the objections to lack validity.  She criticized plaintiffs’ arguments that defendants lacked standing to challenge third party subpoenas as “plainly without merit.”  Perhaps most damaging, plaintiff itself cross-moved for sanctions, accusing defendants’ attorney of frivolous and vexatious conduct, obstruction of discovery, and “potentially falsifying discovery documents,” an allegation that he admitted at oral argument was entirely without basis.

Shire LLC et al. v. Abhai, LLC (15-cv-13909).

Judge Young issued findings of fact, rulings of law, and an order for judgment following the bench trial in this litigation involving Abhai’s Abbreviated New Drug Application for a generic version of the extended-release ADHD drug Adderall XR.  Judge Young found Abhai infringed Shire’s RE42,096 and RE41,148 patents, and that the patents were valid.  He also determined that Abhai had conducted litigation misconduct in failing to reveal errors in its stability dissolution testing or supplement its discovery  responses with the corrected data in a timely fashion.  Abhai’s 30(b)(6) witness, Dr. Namburi, was deposed in October, 2016, and was questioned at length about the dissolution data, showing how much drug dissolved over time.  This questioning triggered concerns in Dr. Namburi’s mind over the veracity of the test results (and thus of his testimony).  Over the next several days, he and others at Abhai determined that the testing was conducted improperly, as a result of ambiguities in the written protocol Abhai was using.  By the end of the month, the protocols had been revised and the samples retested.  Abhai withheld this revised protocol in discovery responses made in November, and Dr. Namburi did not make note of this error when signing an errata report for his deposition that month.  Abhai also failed to supplement its prior discovery responses to include the revised protocol or new test data, apparently because no one at Abhai informed Abhai’s attorneys of these errors.  Abhai’s attorneys were not notified until March 31, 2017, of the mistakes; the notified the court (and, for the first time, the FDA) the following business day, after five trial days had occurred.  Judge Young determined that Dr. Namburi knew of the importance of the dissolution data to the case, as he was central in assisting Abhai’s attorneys in preparing for the trial, and that as a member of Abhai’s management, his actions were attributable to the company as a whole.  Judge Young ordered sanctions in the form of attorney’s fees for time Shire spent dealing with the inaccurate data and other alleged litigation misconduct, and for dealing with the revised dissolution data that Abhai sought to introduce mid-trial.  He further sanctioned Abhai $30,000 to be paid to the court as a sanction for wasting five days of the court’s valuable time and resources.  Finally, he ordered the clerk to send a certified copy of his opinion to the General Counsel of the FDA for their further consideration.