Judge Saylor denied MRSI’s motion to compel more detailed infringement contentions. This case was originally brought in 2015 in the Southern District of California, with Palomar asserting infringement of U.S. Patent No. 6,776,327. In 2016, the case was stayed pending resolution of an IPR proceeding filed by MRSI; the case resumed progress when most of the claims were deemed valid by the PTO. In August 2017, MRSI moved to transfer venue to the District of Massachusetts in light of the TC Heartland decision on patent venue, and the case was transferred in February of this year. In denied the motion to compel, Judge Saylor noted that the district’s new local patent rules do not apply to this case, as the scheduling order was issued prior to June 1, 2018, that the prior applicable rule did not require any particular level of detail for infringement contentions, and that the scheduling order itself required only an identification of the claims asserted, products that are accused of infringing those claims, and whether the infringement is literal or by equivalents. While he noted that the contentions are skeletal, Judge Saylor determined that they met the requirements of the applicable rule and the scheduling order, and he indicated that at the early stage of the proceeding, there is no requirement for the claim construction contentions sought by MRSI.
SiOnyx alleged that Hamamatsu, following an aborted attempt to form a business partnership involving devices that improve the detection of near-infrared light, had violated a non-disclosure agreement and obtained patents on SiOnyx technology without naming SiOnyx personnel as inventors. Hamamatsu filed twelve motions for partial summary judgment. Judge Saylor granted three of these, denied three, and deferred judgment on the remaining six.
Hamamatsu’s bid to prevail on breach of contract and unjust enrichment claims on statute of limitations grounds was denied. While the relevant events occurred longer ago than the six-year time period provided by the statute of limitations on these types of claims, Massachusetts law follows the discovery rule, by which the cause of action arises not when the events occurred, but when the plaintiff discovers or should reasonably have discovered. Here, there were issues of fact as to when SiOnyx should reasonably have become aware of these claims, brought about by Hamamatsu’s repeated assurances that it had developed the relevant technology on its own, independent from any knowledge acquired under the NDA. Judge Saylor denied summary judgment of breach of contract, finding issues of fact as to the scope of use of confidential information, while granting Hamamatsu’s motion with respect to the unjust enrichment claims of both SiOnyx and co-plaintiff Harvard, because under Massachusetts law, unjust enrichment cannot be found where there is a valid contract defining the rights of the parties. Applying First Circuit law, Judge Saylor denied Hamamatsu’s motion with respect to consequential damages on the grounds that the testimony offered in support of this theory, SiOnyx’s recollection of statements as to why a third-party agreement was terminated made by an executive of the third party, constituted an exception to hearsay under Rule 803(3) as a statement of intent or motive. Finally, he granted Hamamatsu’s motion that a SiOnyx employee was not a co-inventor on Hamamatsu’s patents, as the testimony of the employee was not sufficiently corroborated by documentary evidence.
UPPAbaby accuses Sam’s East, a corporation that runs Sam’s Club, of infringing several trademarks through stroller sales both at physical locations and via its’ on-line store. UPPAbaby has registrations on UPPABABY, UPPA BABY, VISTA, CRUZ and G-LUXE in connection with baby strollers. UPPAbaby asserts that Sam’s Club purchases UPPAbaby strollers sold into foreign markets, brings them back to America and offers them for sale without license or authorization. Sales of such strollers would take the strollers outside of the warranty offered by UPPAbaby, which is valid only in the original country of sale and only if purchased from an authorized retailer. UPPAbaby says that Sam’s Club affirmatively claim that the strollers they sell are covered by a manufacturer’s warranty, despite knowing this to be false. UPPAbaby brings claims of false advertising, common law trademark infringement and unfair competition, and violation of Chapter 93A. The case, which was brought by Craig Smith and Nathan Harris of my firm Lando & Anastasi, is before Judge Saylor.
DR Media Holdings and its wholly-owned subsidiary, DealerRater.com, LLC, sued Michigan company Top Rated Online LLC, for trademark infringement, false designation of origin, unfair competition, and violation of Mass. G.L. 93A. DR Media runs a website, www.dealerrater.com, that provides ratings and consumer reviews of automotive dealers and service centers. In connection with these reviews, DR Media (seen previously here) annually awards dealerships for best dealer and customer satisfaction, and offers to sell the dealers trophies bearing the trademarked award logos. DR accuses Top Rated of offering to produce trophies for the award winners bearing these logos and DR’s DEALERRATER trademark. DR cites specific examples of this occurring with dealerships in Tennessee and Michigan, but only generally alleges infringing activity occurring in Massachusetts, leaving the 93A claim, which requires the acts complained of take place substantially within Massachusetts, in doubt. Judge Saylor has been assigned to the case.
Judge Saylor granted Defendants’ motion to partially strike SiOnyx’s Fourth Amended Initial Contentions. SiOnyx had sought to reintroduce a claim that had been initially asserted but voluntarily dropped because it was undergoing inter partes review. After the IPR decision upheld the claim, only two days before defendants’ expert was to be deposed and subsequent to opening and rebuttal expert briefs, SiOnyx served the amended contentions with the claim re-added. Judge Saylor noted that there was no good cause shown to permit reinsertion of the claim into the case, and that (to the extent SiOnyx believed it needed to wait on the PTAB’s decision, it was free to seek to stay or modify the schedule. Defendants were entitled to rely on SiOnyx’s decision to withdraw the claim.