Intellectual Ventures I, LLC et al. v. Levono Group Ltd. et al. (16-cv-10860/10868).

Judge Saris denied defendant NetApp’s motion for leave to amend and supplement its invalidity contentions for failure to demonstrate good cause as required by the local rules. NetApp, who was sued separately from Lenovo and EMC but whose case was joined, failed to connect its proposed amendment to the claim construction ruling, and waited a year between discovering the new prior art and seeking to amend. Given this, and that fact discovery is now complete and expert disclosures are imminently due, Judge Saris determined that the case “is aging and needs resolution.”

JW Reilly LLC v. Bally Americas Inc. et al. (19-cv-11007).

JW Reilly, a business run by Judith Reilly to sell her sterling silver products, sued Swiss shoemaker Bally, accusing Bally of infringing a design patent on a shoe buckle. The design, set forth in U.S. D667,212, appears to be a clip-on accessory, as opposed to a true buckle, that has a rectangular face and that clips over the front, toe portion of a shoe. JW Reilly sells buckles asserted to be embodiments of the design patent in which the buckle can be engraved with wording, initials or a design. shoebuckles1

Ms. Reilly asserts that she approached the manager of Bally’s Copley Place store in 2013 to discuss hosting a fund-raising event to support the Boston One Fund, a charity to assist families of those killed or injured in the Marathon bombing. In connection with her proposal, she asserts that she provided a description and photograph of her buckles that specifically indicated that they were protected by the ‘212 patent. Bally’s declined to participate in the proposed fund-raiser. bally-pink-purple-heline-pumps-pink-product-0-957859960-normal

Ms. Reilly indicates that she subsequently became aware that Bally was offering three shoe designs that included buckles that she believes to be infringements of her patent. She asserts that Bally copied her design. The case has been assigned to Judge Saris.

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.