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.

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

On-line image licensing company Getty Images accuses Her Campus Media of widespread copyright infringement for accepting and publishing articles containing unlicensed images controlled by Getty. Her Campus Media, an often-accused business that solicits college women to submit articles for publication, is said to have wrongfully used thousands of Getty images over the last two years alone, many taken by professional photographers with expensive and difficult to obtain access to events like the Grammys and MTV Music Video Awards. Getty seeks the greater of actual and statutory damages and a finding of willful infringement. The case is before Judge Sorokin.