Prime Hookah, Inc. v. MK Distributors Inc. et al. (D. Mass. 20-cv-10231).

Prime Hookah sued several distributors of hookah-related products, accusing them of importing and selling products bearing Prime Hookah’s DUD trademark.  The case was originally filed in New Jersey, and included trademark infringement and dilution claims as well as unfair competition claims under state and federal law.  The case was transferred to Massachusetts in early 2020, at which point the Defendants moved to dismiss for failure to state a claim.  Judge Saylor granted in part and denied in part that motion.  He noted that the complaint was poorly drafted with primarily conclusory allegations, and while it asserted that the Defendants sold DUD-labelled products, it did not allege that these products were not genuine DUD (i.e., Prime Hookah-produced) products.  The reference to the websites of the Defendants provided no further information, as one was disabled and a second did not display products, and no screenshots of the sites were attached to the complaint.  He reluctantly, and “with considerable misgivings,” however, determined that the infringement claims managed to “scrape over the low bar necessary to survive a motion to dismiss.”  He dismissed the dilution count, as the complaint did not sufficiently allege facts that would support the DUD mark being famous.  He also dismissed the count for importation of goods bearing infringing names or marks as inadequately pled, again pointing to the lack of specific, non-conclusory factual allegations.  Finally, the counts against specific individuals were dismissed for failing to allege that they personally took steps in the alleged infringements.

Judge Saylor has now denied Prime Hookah’s motion for a preliminary injunction.  He indicates his belief that Prime could have marshalled sufficient evidence to demonstrate a likelihood of success on the merits, but for whatever reason failed to do so.  He noted that the Defendants’ suggestion that the registration is invalid for fraud on the PTO was not implausible, even if at present they had not proven that Prime knew about a prior registration for the same mark by another company in the Netherlands.  He found that likelihood of confusion had not been demonstrated because Prime had introduced little evidence of what the allegedly infringing marks look like.  Prime’s registration is to a stylized version with the mark “DUD” in fanciful font, surrounded by a circle and with a flame arising from the “U” in DUD.  Yet Prime gave no description of what the marks on the accused products look like, and provided photos of unrelated products or unauthenticated photographs.  The sole exception is the testimony on a single individual that one of the defendants sold a single product at a trade show that bore a similar mark.  Further, Judge Saylor determined that the DUD mark is not particularly strong, having been registered only in January 2018 and having had no evidence of Prime’s renown in the industry or efforts made to promote and protect the mark.  Judge Saylor determined that, while there is certainly a chance that Prime will prevail, at this stage it has failed to demonstrate a substantial likelihood of success on the merits.  Accordingly, the motion for a permanent injunction was denied.

FH Cann & Associates, Inc. v. McKinney (D. Mass. 20-cv-11180).

Debt collection company FH Cann filed an additional lawsuit in which a debtor, Carlos McKinney, has claimed copyright infringement for Cann’s use of his name in its collection efforts.  McKinney filed a notice of dispute that demanded a number of things from Cann that the complaint contends are not required by law, such as additional documentation and verification under oath that the claims are valid.  This demand included language stating that Cann’s failure to provide the demanded information within 30 days would result in a waiver of Cann’s right to collect the debt, which Cann contends is not valid.  The demand includes a statement that McKinney declares “under penalty of perjury without the United States that the above statements are the truth…” (emphasis added).  Finally, the demand included an invoice for $500,000 for the alleged breach of McKinney’s common law copyright in his name., and to authorize McKinney to file a UCC-1 Financing Statement asserting a lien for that amount on Cann’s assets.  This document purported to be notarized in Georgia, but Cann asserts that the alleged notary is not licensed in Georgia and that the notarization is fraudulent.  Cann seeks declaratory and injunctive relief as well as damages for tortious interference with business relations.

While it seems unlikely for two such claims to arise in such a short period of time, Cann asserts that the documents provided by McKinney evidence a “number of fraudulent theories circulating on the internet and by various militia and ‘sovereign nation’ groups” to avoid debt collection and defraud creditors.  This case is before Judge Saylor.

Singular Computing LLC v. Google LLC (D. Mass. 19-cv-12551).

Judge Saylor denied Google’s motion to dismiss on Alice grounds, finding the asserted patents claimed patentable subject matter.  Singular filed suit in 2019, accusing Google of infringing three patents relating to computer system architecture that utilizes low precision/high dynamic range processing elements.  Judge Saylor analyzed the patentability of the claims in accordance with Alice’s two-step procedure, looking to whether the claims are directed to a patent-ineligible concept that is so abstract as to risk disproportionately tying up the use of the underlying idea, and if so, whether the claims include an inventive concept that is sufficient to ensure the patent in practice amounts to significantly more than a claim on the ineligible concept itself.

Judge Saylor noted that the Supreme Court in Alice had discussed improvements to the functioning of a computer at step two of the inquiry, these types of inventions are not inherently abstract and can be analyzed in the initial step of the inquiry – whether the focus of the claims is on the specific asserted improvement in computer capabilities – in which case the claims are directed to patentable subject matter.  He rejected Google’s assertion that the claims were directed to LPHDR arithmetic generally, noting that the claims define the terms “low precision” and “high dynamic range” precisely so as not to cover LPHDR generally.  While not expressly construing these terms, judge Saylor noted that when the meaning of a claim term is in dispute in a motion to dismiss, the court must adopt the non-moving party’s construction in analyzing the motion.  He further noted that, even subject to Singular’s proposed constructions, the claims may still abstractly cover LPHDR math within that range and thus prove ineligible, but that such a determination would require development of the factual record.

Judge Saylor further noted that, even if the claims were directed to an abstract idea, the remainder of the limitations set forth sufficient non-conventional computer structure to render the claims eligible, at least on the record before it.  He did note that, as with the first Alice step, subsequent development of the factual record might change his mind with regard to the second step, which could be asserted on summary judgment.

Endobotics, LLC v. Design Standards Corporation et al. (20-cv-10742).

Endobiotics accuses Design Standards Corporation (DSC) and Medrobotics Corporation of infringing U.S. Patent No. 7,147,650, as well as trade secret misappropriation, violation of the Defend Trade Secrets Act, unfair competition, breach of contract, tortious interference, unjust enrichment and conversion.  Endobotics’ predecessor in interest, Cambridge Endoscopic Devices, developed and patented a surgical instrument that improved the manipulative ability of tools affixed to the end of the instrument.  Cambridge Endoscopy contracted with DSC to validate the design and manufacture of the instrument.  Endobotics alleges that this agreement provided that Cambridge Endoscopy would exclusively own all products, inventions and designs arising from this work, and that the agreement included confidentiality and non-disclosure clauses that protected Cambridge Endoscopy’s trade secrets, although Endobotics acknowledges that it does not have a copy of the agreement.  When Cambridge Endoscopy declared bankruptcy, Endobotics acquired the patent as well as Cambridge Endoscopy’s trade secret and know-how related to the instrument.  In 2010, Endobotics executed an NDA with Medrobotics to explore producing the instrument for Medrobotics.  According to the complaint, Medrobotics ultimately declined to enter into an agreement with Endobotics, and instead approached DSC directly to manufacture a competing system that improperly utilized Cambridge Endoscopy’s trade secret information.  Endobotics discovered the Medrobotics system at a 2017 trade show, and further investigation resulted in this lawsuit.  The case is before Judge Saylor.

Singular Computing LLC v. Google LLC (19-cv-12551).

Singular Computing, founded by Dr. Joseph Bates, designs and develops computers having new architectures that permit greater usage of the computing potential of a given system. This system utilizes “massively parallel processing” to achieve the improved results. After filing a provisional patent application on this technology, Dr. Bates met with Google representatives under a non-disclosure agreement to discuss Google utilizing such a system to support its developments in AI-related applications. Singular asserts that Google nevertheless copied Dr. Bates’ architecture and utilized it in Google’s Cloud Tensor Processing Unit Versions 2 and 3, and that the Google system infringes Singular’s 8,407,273, 9,218,156 and 10,416,961 patents. Singular suggests that, absent the infringement, Google would have been required to at least double the number of data centers it constructed, at an additional cost of at least $10 billion. Singular further asserts that the infringement was willful, at least with respect to the earlier two patents. The case is with Judge Saylor.

EcoFactor, Inc. v. Google LLC (19-cv-12322), Alarm.com Holdings, Inc. and Alarm.com (19-cv-12323), Schneider Electric SE and Schneider Electric USA, Inc. (19-cv-12326), Daikin America,Inc., Daikin Industries, Ltd., and Daikin North America LLC (19-cv-12324), Vivint, Inc. (19-cv-12327), and ecobee, Inc. and ecobee Ltd. (19-cv-12325).

California company EcoFactor, a provider of smart home energy products and services, brought several suits in Massachusetts, accusing a number of businesses of infringing patents relating to evaluating and improving efficiency in HVAC systems and to smart thermostats. These suits follow an October ITC complaint seeking to block importation of products accused of infringing these same patents.  The cases are presently spread between Judges Saylor, Sorokin, and Bowler.

Adler v. Her Campus Media, LLC (19-cv-10087).

Judge Saylor denied Her Campus Media’s motion to dismiss or, in the alternative, for summary judgment, finding it premature to determine whether the use of Adler’s photograph constituted fair use or that Her Campus Media was shielded by the safe harbor provisions. Judge Saylor noted that the complaint alleges that Her Campus Media, which accepts and posts content from non-employees, utilizes an editorial staff to review proposed publications, including the submission that included the Adler photograph, and that a review of fair use and safe harbor would turn on facts such as the nature of the relationship between the website and its student contributors that preclude a finding at this early stage of the proceeding, much as it did in a different case involving Her Campus Media with a very similar fact pattern. Judge Saylor also denied the motion with respect to Mass. G.L. c. 214, § 3A, which provides a civil cause of action for any person whose name, portrait or picture is used in Massachusetts for advertising or trade without their consent. Her Campus Media asserted that, because the subject of the photographs had an independent right to their likenesses that Adler had not secured, an award of money damages to Adler would not be proper. Judge Saylor found this to be legally incorrect, because (a) Her Campus Media lacked the right to enforce the subjects’ rights under the Massachusetts law; (b) court-awarded monetary damages for copyright infringement would not qualify as a “use for advertising purposes or for the purposes of trade” within the meaning of the Massachusetts law; and (c) to the extent the Massachusetts law did somehow prevent an award for copyright infringement, it would likely be preempted by copyright law.

Palomar Technologies, Inc. v. MRSI Systems, LLC (18-cv-10236).

Judge Saylor overruled Palomar’s objections to the Magistrate Judge Bowler’s order partially granting MRSI’s motion to compel, finding that her ruling was not clearly erroneous nor contrary to law. The discovery dispute surrounded the selection of search terms to search e-mail, that Palomar contended were over-broad and would result in a significant number of documents not related to the litigation and would result in the production sensitive personal information, in violation of the California state constitution. Judge Saylor found no reason that the constitution of the state should impact discovery in a federal case and based on federal, not California, law, and further determined that the argument was waived as not having been raised in the written responses to the discovery requests. Judge Saylor did, however, permit Palomar to submit for in camera review any specific documents for which it contends that the laws of California should control discovery (despite the case arising under federal patent law) and that the privacy concern was not waived.

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

Judge Saylor granted in part and denied in part Abiomed’s motion to strike Maquet’s second supplemental non-infringement contentions. Maquet, who asserted patent infringement counterclaims, sought to add a claim under 35 U.S.C. § 271(f), which prohibits the export of all or a substantial portion of a patented invention for assembly abroad. Judge Saylor struck this part of the contentions, finding that Maquet’s counterclaims did not refer to 271(f) and made no factual allegations from which a 271(f) claim could be inferred, and thus Maquet should follow the requirements of F.R.C.P. 15. Judge Saylor refused to strike portions of the second supplemental contentions that added new infringement contentions concerning the “guide mechanism” term. He noted that, through inadvertence, his scheduling order did not literally prevent the service of supplemental contentions, and accepted Maquet’s assertion that the amendment was based on “newly adduced” evidence not previously available to it. Maquet further assured the Court that the amendment narrows the asserted claims and “elaborates and refines” their infringement theory. He did ban any further amendment of the infringement contentions.

Howarth v. Mitchell Construction Group, Inc. (19-cv-11815).

Photographer Morgan Howarth specializes in interior architectural photography. Howarth accuses Mitchell Construction Group of copying a Howarth photograph of a kitchen cabinet and using it without license on Mitchell’s website. Specifically, the photograph is alleged to be included in Mitchell’s “5 Amazing Kitchen Cabinet Storage Options You Need To See!” on Mitchell’s blog.  Howarth seeks injunctive relief, actual or statutory damages, and attorneys fees. The case is before Judge Saylor.