Intellectual Ventures I, LLC et al. v. Lenovo Group Ltd. et al. (16-cv-10860).

Following invalidation of independent claim 1 (and a number of other claims) of the sole asserted patent in an inter partes review, Lenovo moved for summary judgment of invalidity of the sole asserted claim of the patent. Lenovo asserted both collateral estoppel and that there was no genuine issue of fact that the claim was obvious. Judge Saris ruled that estoppel applied and granted Lenovo’s motion. The asserted patent related to symmetric multiprocessor or shared-memory multiprocessor systems. Claim 1, which was invalidated by the PTAB, recited the system in some detail; claim 11, the sole asserted claim, added that the system further comprised the microprocessors and the memory device of the system, without further limitation. Notably, claim 11 was not challenged during the IPR. Lenovo asserted that collateral estoppel should apply because Intellectual Ventures could not show that the additional limitations of claim 11 “materially alter the question of invalidity.” Noting that the Federal Circuit had determined that issue preclusion applies to an invalidity finding before the PTAB despite the different standards of proof and of claim construction between the PTAB and district court, Judge Saris determined that estoppel applies. She indicated that the claims need not be identical for estoppel to apply, merely that the issues be the same. As claim 1 had been fully adjudicated, the sole question was whether the differences between claim 1 and claim 11 alter the infringement analysis in a meaningful way – Judge Saris determined that it did not. Claim 1 included limitations on the interfaces between microprocessors and memory devices. Claim 11 merely affirmatively claimed the microprocessors and memory devices. The PTAB had determined that the prior art reference relied upon disclosed microprocessors and memory devices, meaning that the claim did not add anything to the invalidity analysis that had not been determined before the PTAB.

Photographic Illustrators Corp. v. Orgill, Inc. et al. (14-cv-11818).

Photographic Illustrators, a company working in commercial photography, accused Orgill of infringing a number of Photographic Illustrators’ copyrights in photographs of Osram Sylvania lighting products. Orsram has a license to the photographs; PI asserts that Orgill, an Osram distributor, is not covered by that license. Orgill was granted summary judgment on PI’s DMCA and Lanham Act claims in 2015, but Orgill’s motion with respect to the copyright infringement claim was denied. Following an arbitration involving PI and Osram, Orgill again moved for summary judgment on the copyright claim, asserting that they were sublicensed under the Osram license and that that arbitration award precludes the copyright claim. PI cross-moved for summary judgment that there was no sublicense or that Orgill’s use fell outside of the purported sublicense.

Orgill asserted that it had impliedly been sublicensed by Osram, which was confirmed in a nunc pro tunc 2014 sublicense. In her 2015 decision, Judge Saris found that PI had provided sufficient evidence that Orgill had sublicensed the photographs to Orgill’s dealers for a fee, which was not permitted under PI’s license with Osram, and without the attribution required by the PI/Osram agreement. Subsequently, the arbitrator found that the no-fee provision and the attribution provision were merely covenants enforceable via contract law, rather than conditions on Osram’s license.

In her decision of last week, Judge Saris determined that Osram had granted Orgill an unwritten sublicense, through its course of conduct in giving Orgill images to promote Osram products since 1998 and in never objecting to Orgill’s use of the images. She further found that an implied sublicense could legally be granted. PI had asserted that an implied copyright license could not be granted by a licensee to a sublicensee who has no direct contact with the copyright holder; looking to the totality of the circumstances to determine that the parties intended Orgill to be licensed, specifically that PI intended to permit Osram to sublicense the photographs and that Osram intended that Orgill be licensed to use the images. The arbitration decision effectively precluded PI from arguing that Orgill exceeded the scope of this implied sublicense, because the relevant terms of PI’s license with Osram did not condition sublicenses Osram could make. She further found that the confirmatory sublicense, which included language requiring attribution where feasible, but further stated that this requirement was “[w]ithout effect on the rights of Orgill… to Use the Images as granted…” This quoted language meant that the attribution requirement was not a condition which must be met to form the sublicense, but again merely a contractual obligation. Accordingly, use by Orgill of photographs lacking attribution cannot be the basis for the copyright infringement claim.

Judge Saris further addressed PI’s argument that it had not licensed “approval” images to Osram, such that Orgill could not have been sublicensed with respect to those images. These “approval” images were rough photographs sent to Osram for approval before being retouched and refined into he final photographs by PI. While the issue of whether these images were licensed was not affirmatively determined by the arbitrator, Judge Saris determined that PI had not disclosed this infringement theory during discovery, and precluded PI from pursuing this theory under FRCP 37(c)(1). Accordingly, she granted Orgill’s motion for summary judgment.

DogWatch, Inc. v. DogWatch of Sarasota, Inc. et al. (19-cv-10625).

DogWatch, a Natick company that makes electronic pet restraint systems such as the “invisible fence,” accuses its former Florida dealer DogWatch of Sarasota (“DoS”) of trademark and trade dress infringement, trade secret misappropriation, breach of contract, passing off, unfair competition, tortious interference with contractual relationships, and unjust enrichment in connection with DoS’ continued use of DogWatch’s name and proprietary information following termination of their business relationship. DogWatch has had a federal registration to its name since 1993, and asserts (with no real evidentiary support) that the name is famous. DogWatch further asserts trade dress protection in some combination of its order forms, yard flags, letterhead, stationary, internet web pages, URL’s van graphics and other unspecified materials. DogWatch further asserts trade secret protection in pricing information, draft marketing and promotional material, and business strategy and plans, and it asserts that the exclusive dealer agreement with DoS included an implied covenant not to use or disclose these purported secrets. Late last year, DogWatch notified DoS that they were terminating the exclusive dealer agreement, for reasons not specified in the complaint. Despite this, they assert that DoS continues to hold itself out as a DogWatch dealer and to use the trademark, trade dress, and trade secrets of DogWatch. The breach of contract count cites acts of DoS that occurred following termination of the agreement – there is no suggestion that DoS did anything wrong prior to termination. Judge Saris has this case.

Wisser v. The Institute of Contemporary Art, Inc. (19-cv-10201); Dermansky v. Open Source Media, Inc. (19-cv-10202); DeRouw v. International Sustainable Development Institute, Inc. (19-cv-10198).

Richard Liebowitz strikes again, filing three more copyright infringement and DMCA Violation cases in Massachusetts to go along with the seven he filed earlier this month.  In these cases, as with the previous set, he alleges that copyrighted photographs were used on the defendants’ websites without license, and that digital watermarks were removed from the photographs. Each of these acts is alleged to be willful and knowing, without any further elaboration, and Liebowitz seeks actual and/or statutory damages and attorney’s fees. The cases are before Judges Boal, Saris, and Stearns.

ecobee, Inc. v. Techmatic et al. (19-10047).

Ecobee sued three Amazon sellers, accusing each of obtaining and reselling ecobee products bearing the ecobee trademark without authorization. Ecobee makes a number of automated, “smart” home control products (thermostats, light controls, and the like) which it sells only through authorized resellers. By contract, these resellers are prohibited from selling to anyone other than consumers. Ecobee asserts that the Amazon sellers obtained ecobee products either through fraud or by tortuously interfering with ecobee’s contracts with its authorized resellers. In addition to trademark and tortious interference claims, ecobee asserts unfair competition and false designation of origin. This is the second such case brought by ecobee in Massachusetts in the past several months. Judge Saris has the case.

ecobee, Inc. v. Filter Pro et al. (18-cv-12235), Hatzlacha LLC d/b/a The Corner Store et al. (18-cv-12236), and Ultra Design (18-cv-12237).

Ecobee filed three trademark suits, accusing Filter Pro, The Corner Store, and Ultra Design of trademark infringement, unfair competition, false designation of origin, and tortious interference. Ecobee makes smart home control products, including light switches and thermostats, that it sells through authorized resellers who are contractually obliged to provide specific quality controls on the products sold and prevented from selling to subsequent, unauthorized resellers. Each of the defendants is an Amazon Seller Account that, despite not being ecobee authorized resellers, are alleged to have sold ecobee products.  Ecobee asserts that the defendants could only have obtained ecobee inventory through knowingly soliciting authorized resellers, intentional and knowing interference with the resellers contracts and business relationships with ecobee, or through fraudulent or illicit means. They further assert that the defendants violate the ECOBEE trademark by selling actual ecobee goods without authorization. The cases are presently before Judges Stearn, Woodlock, and Saris.

Premium Sports, Inc. v. Barbosa et al. (18-cv-11502).

Premium Sports claims to have had exclusive rights to the distribution to commercial establishments for public exhibition of the Liga Zon Sagres: Braga vs. Befica soccer match that took place on January 13, 2018 (spoiler alert – Benfica won, 3-1). Premium Sports accuses Nelia Barbosa, the owner of the Ilha Verde Café in New Bedford, of airing the match in the café without a license, using a residential receiving box for commercial purposes. Violations of 47 U.S.C. § 605, which provides for a private cause of action for the unauthorized publication of use of communications, and 47 U.S.C. § 553, which covers the unauthorized interception and exhibition of cable communications, are also alleged. Interestingly, the case was filed by the Lonstein Law Office of Ellenville, NY, who has been accused of seeking out and preying on small businesses for whom DirecTV installers mistakenly set up residential, rather than commercial, accounts; a class action suit has been filed against the firm and DirecTV in California. That case is presently stayed pending DirecTV’s appeal of the denial of its demand that the case go to arbitration. At least one other class action suit has been brought against Lonstein in New Jersey. The case is before Judge Saris.