Ethic Inc. v. Admirals Bancorp, Inc. et al. (20-cv-10581).

Ethic, an investment advisor that specializes in socially aware investing, filed suit against Admirals Bancorp and Ethic Wealth Advisors, LLC, accusing the two of rebranding to the “ETHIC” mark for the provision of similar services. Ethic asserts federal and common law trademark infringement, false designation of origin and unfair competition and unfair trade practices. Ethic further asserts that the infringement was willful, because Admiral’s intent-to-use applications for registration of ETHIC and ETHIC A WEALTH BANK were each refused in light of Ethic’s prior registration. Ethic asserts that, in response to the latter rejection, Admiral misled the PTO as to the differences between the respective services, banking services versus investment advisory services, that rendered confusion unlikely. According to Ethic, at the time of this representation, Admiral had already taken steps to offer investment services under the “Ethic” mark, as evidenced by Admiral’s SEC filings. The case is before Judge Sorokin.

Comerica Bank & Trust, NA as Personal Representative of the Estate of Prince Rogers Nelson et al v. Habib (17-cv-12418).

Comerica Bank, on behalf of the estate of musician Prince, filed suit against Kian Andrew Habib after Habib posted footage he had filmed of two Prince concerts to Habib’s “PersianCeltic” YouTube page. Comerica operates an official Prince YouTube channel, and utilizes MarkMonitor to actively monitors the internet for potential infringements. When Comerica discovered the Habib videos, which included portions of five different Prince-written songs, it sent takedown notices to YouTube, which removed the videos. Habib filed counter-notifications, asserting that his videos constituted “fair use,” and Comerica filed suit, asserting copyright infringement and violation of the civil anti-bootlegging statute, 17 U.S.C. §1101. Habib in turn asserted that the takedown notices were “knowingly, material misprepresent[ations]” in violation of 17 U.S.C. § 512(f). The parties each moved for summary judgment.

Judge Sorokin granted Comerica summary judgment on the copyright claim, rejecting Habib’s argument that Prince’s copyright did not extend to live performances. Judge Sorokin disagreed, noting that in addition to the copyright in the sound recording, which covers the studio recordings, Prince had copyright in the musical compositions themselves. He further noted that courts have consistently held that live performances that differ somewhat in lyrics, temp, or arrangement are still protected by the copyright in the musical composition. Judge Sorokin rejected Habib’s fair use defense, finding that Habib’s videos had no educational or historic, and were essentially verbatim copying that was not transformative. He further noted that, while Habib had not monetized his YouTube account, lack of monetization does not affect liability, and that Habib’s use of the videos to drive traffic to his channel provides sufficient benefit to weigh against a finding of fair use. Judge Sorokin agreed that Comerica would lose revenue when someone viewed the Prince videos on Habib’s site, as well as lose control over the ability to preserve the reputation for excellence that Prince himself had established in strictly controlling his output. Judge Sorokin further granted Comerica summary judgment that the infringement was willful, finding that Habib’s continued posting of concert videos (of Prince and others) despite receiving multiple takedown notices demonstrated an unreasonable disregard for the rights of the performers, and his custom of filing counter-notifications parroting the statutory fair use factors without factual basis likewise is unreasonable.

Judge Sorokin further found in Comerica’s favor on the elements of the anti-bootlegging statute. This statute protects performances that are not themselves “fixed” in a tangible medium and thus entitled to copyright protection. He rejected Habib’s sole defense of implied license, which Habib asserted from a 2014 BBC interview in which Prince stated “[n]obody sues their fans… fans sharing music with each other, that’s cool.” Judge Sorokin agreed with Comerica that such a broad statement to the general public does not set out any license terms, does not demonstrate an intent to contract with Habib and has no relation to Habib himself, and thus did not create an implied license. While Judge Sorokin agreed that the elements of the statute were met, he withheld summary judgment to allow further briefing on whether the protections under the statute are inheritable such that Comerica has standing, an issue not yet addressed by the courts.

Judge Sorokin denied Habib’s request for summary judgment on his assertion that the takedown notices contained material misrepresentations, noting that MarkMonitor had, on Comerica’s behalf, had established at least a good faith belief that the Habib videos were infringing, including performing a fair use analysis, before the notices were sent. Finally, Judge Sorokin granted Comerica’s request for a permanent injunction prohibiting the posting of any videos of Prince performances.

Congratulations to Craig Smith and Eric Carnevale of my firm, Lando &Anastasi, who represent Comerica in this case!

KCG Technologies, LLC v. CarMax Auto Superstores, Inc. et al. (19-cv-11101).

Judge Sorokin granted CarMax’s motion to dismiss, finding the asserted claims were directed to non-patentable subject matter.  The patent -in-suit, U.S. 9,671,955, is directed to a “virtual phone” in which a processor, memory, wireless communications and power ports, a touch screen, and a software application permits the emulation of the features of a handheld device (such as a smart phone) on the touch screen. This would allow a smartphone to be emulated on a touchscreen in a vehicle, permitting hands-free operation while maintaining the features and familiarity of location of the features of the phone. CarMax challenged the claims via a motion to dismiss for failure to state a claim on which relief could be granted, asserting that the claims do not meet the eligibility standard set forth in the Supreme Court’s Alice Corp. decision. Applying the test for eligibility set forth in that case, Judge Sorokin first determined that the claims were directed to the idea of emulating the features of a smartphone or other handheld device on a different screen. As was done in many other cases looking at eligibility, Judge Sorokin looked to prior decisions to see if this concept is meaningfully distinguishable from other concepts found to be abstract – courts do not appear to have a concrete method for determining whether the claimed idea is abstract, and instead analogize to prior cases. He did note that the claims recited a number of “generic computer components” without identifying how they worked together to create the claimed virtual smart phone, leaving the patent claiming the idea of an emulated smart phone rather than an actual functioning embodiment – he found the claims to be “merely drawn to the aspect of emulation and to the concept of generating a virtual smart phone – an abstract idea – and not to any particular concrete implementation of that idea.”

Having determined that the claims were directed to an abstract idea, Judge Sorokin next looked for an “inventive concept” that would transform the abstract idea into a patent-eligible application, noting that under existing case law, “more is required than well-understood, routine, conventional activity already engaged in by the scientific community.” Judge Sorokin found that the claims lacked any additional limitations that would ensure that they amounted to more than the ineligible concept itself. He stated that all of the claimed components were generically defined and conventional. Accordingly, he determined that the patent did no claim patent-eligible subject matter, and granted CarMax’s motion to dismiss.

While I am not suggesting that Judge Sorokin was or was not incorrect in this particular instance, the current Alice framework seems to be very subjective. The problem with this approach is that every patent claim can be stated in increasingly broad and abstract terms – Edison’s light bulb patent, for example, could be described as the abstract idea of running electricity through a resistive element so as to general light, and so described may not have been deemed patentable absent further, concrete limitations. Given that this first step of stating the concept or idea of the claims does not appear to have any objective framework, it becomes difficult to determine how a claim will be treated in any given litigation, and the validity of a given patent may well hinge on the particular judge and the persuasiveness of the respective parties’ attorneys rather than the actual content of the specification and claims. One way to potentially overcome this problem might be to rely on concrete components and describe clearly how the components interact, rather than focusing on the function of the device or result of the interaction of the components.

Uniloc 2017 LLC v. Akamai Technologies, Inc. (19-cv-11276).

Uniloc filed suit in June, asserting two patents against Akamai. In September, Akamai discovered that Uniloc had been assigned the two patents from IBM, with IBM reserving a license and a right to grant sublicenses to strategic partners. Uniloc conceded that Akamai is one such strategic partner, but nevertheless sought to dismiss the case without prejudice, maintaining that its suit is viable because Akamai had not asserted that it had received a license from IBM. Judge Sorokin agreed that the case should be dismissed, finding that the assignment agreement designates Akamai as a third party beneficiary that Uniloc is bound to indemnify against infringement suits. He dismissed the case with prejudice pursuant to Fed. R. Civ. P. 41(a)(1)(B), however, because a prior iteration of Uniloc had already voluntarily dismissed identical claims against Akamai in 2017.

MedIdea, LLC v. DePuy Orthopaedics, Inc. (17-cv-11172).

MedIdea accused DePuy of infringing four patents related to knee replacements in Illinois, with the case transferred to Massachusetts in light of the TC Heartland decision. MedIdea conceded non-infringement on all but one claim following claim construction. In November, Judge Sorokin granted DePuy summary judgment of non-infringement on the sole remaining claim, finding that the claims as construed required multiple cam surfaces that were absent in the accused knee prosthetics. Judge Sorokin further construed the claim over MedIdea’s objection, finding that MedIdea’s post-construction amended contentions created issues that required further construction of the claim, and that in any event if the infringement issue related to a claim construction issue that the court had not yet resolved, the court was duty-bound to construe the term. He then determined that, while the claim itself did not so require, the intrinsic evidence taken as a whole required the claimed “points of cam action” to mean “convex surfaces,” in part because every embodiment of the specification showed convex cam surfaces. He acknowledged that this, standing alone, is not sufficient to so limit the claims, but found this fact to still have a bearing on the construction of the term, and that, combined with statements made by MedIdea in both the prosecution of the patents and in their initial complaint and contentions filed in the litigation (and since abandoned for MedIdea’s current theory of infringement), the claims should be so construed. In particular, in an IPR proceeding on the patents-in-suit. MedIdea characterized the “disclosed and claimed invention” as having points of cam action with convex surfaces – the use of “disclosed and claimed invention” estopped any argument that MedIdea was discussing only non-limiting examples. Notably, Judge Sorokin did not place any estoppel on DePuy based on their statements made in the IPR, because as the non-patentee, their statements did not become a part of the prosecution history of the patents and because their positions were not adopted by the Board and thus did not create a judicial estoppel situation.

MedIdea conceded that, under this claim construction, the accused prosthesis lacks multiple convex cam surfaces and thus does not infringe, resulting in summary judgment in favor of DePuy. Judge Sorokin subsequently entered final judgment of non-infringement and dismissed DePuy’s counterclaims without prejudice.

Ethicon Endo-Surgery, Inc. et al. v. Covidien LP et al. (16-cv-12556).

Judge Sorokin denied Ethicon’s motion to strike portions of the trial testimony of Covidien’s technical expert that three prior art references did not render the asserted ‘310 patent invalid. While the expert offered arguments that had not previously been disclosed, Judge Sorokin noted that Covidien’s expert had been deposed prior to Ethicon’s, and that Covidien’s expert had therefore not had the opportunity to rebut the theories put forth by Ethicon’s expert, at least some of which came forth in deposition but were not present in the expert report. Noting that Ethicon had not alleged prejudice, the testimony was allowed to stand.

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.

Getty Images (US), Inc. v. Her Campus Media, LLC (19-cv-11084).

Judge Sorokin denied Her Campus Media’s motion to dismiss for failure to state a claim or, in the alternative, for summary judgment. Getty asserts that Her Campus Media has republished without authorization hundreds of Getty-owned photographs, and continued to do so after Getty notified Her Campus Media of their infringements. Her Campus Media asserted that it was entitled to the safe harbor provision of the Digital Millennium Copyright Act, and that its use of Getty-owned photographs constituted fair use under the copyright laws. Judge Sorokin denied dismissal because Getty, in its complaint, did not admit to all of the components of the safe harbor defense that would permit dismissal on the pleadings, and because the facts as alleged in the complaint were insufficient to analyze the fair use issue. Her Campus Media submitted affidavits in support of summary judgment, but failed to include a statement of material facts as required by Local Rule 56.1, which alone is sufficient to deny the motion. Judge Sorokin further noted, however, that much of the information necessary to evaluate the affirmative defenses on which the motion was based (for example, the relationship between Her Campus Media and its student contributors) was entirely within the control of Her Campus Media but were either absent from the record or disputed by the parties and would require. He therefore denied summary judgment as premature.

Ethicon Endo-Surgery, Inc. et al. v. Covidien LP et al. (16-cv-12556).

Judge Sorokin denied Covidien’s emergency motion to continue the bench trial date, currently scheduled to begin on September 23, concerning Ethicon’s seeking of a declaration that its Enseal® X1 surgical tool does not infringe several Covidien patents. Covidien sought the continuance because its technical expert had undergone an unexpected heart surgery; Ethicon opposed on the grounds that he was but one of a dozen experts, that the ailing expert was to testify only as to a single issue, and that all of the witnesses had made travel and work arrangements to be in Boston for the trial. Judge Sorokin apparently agreed with Ethicon; rather than move the trial entirely, he ordered that it go forward with Covidien permitted to submit the expert’s report and a proffer of his expected testimony. Once the expert has recovered, Judge Sorokin will take his testimony and consider whether any further testimony from any party is thereby necessitated.

Nike, Inc. v. Puma North America, Inc. (18-cv-10876).

In 2018, Nike sued Puma on seven patents related to knitted uppers for athletic shoes, and subsequently added another three newly-issued patents. Puma sought inter partes review on five of the patents and moved to stay the case pending resolution of these IPR’s, asserting that it would file another two IPR requests as soon as the rules permitted (i.e., no sooner than nine months after issuance). Judge Sorokin denied Puma’s motion to stay, noting that Puma had failed to seek post-grant review despite being in a position to do so, and that the PTO had not yet actually instituted any of the requested IPR’s. His denial was expressly based “on the present record,” suggesting that he would consider a follow-on motion when the remaining requests are filed and the PTO has acted on them.