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.

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

Magistrate Judge Sorokin denied Puma’s motion to compel supplementation of Nike’s preliminary infringement claim charts. Nike, which is asserting seven patents against seventeen Puma products, filed and then supplemented its preliminary infringement contentions pursuant to L.R. 16.6(d)(1)(A). The District of Massachusetts amended L.R. 16 in 2018 to require the patentee produce claim charts providing with as much specificity as reasonably possible a description of where and how each claim element is found in the accused products. Nike’s most recent supplementation, totaling 260 pages, contain full color photographs with annotations showing where each element is located on each accused product. Judge Sorokin found this sufficient at the early stage of the proceedings to meet the requirement of the amended rule.

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

Judge Sorokin construed claim terms in this suit involving patents covering total knee replacement implants having cam and post designs. He first construed “cam” to mean “a structure that makes sliding or rolling contact with the tibial post as the knee bends.” He rejected MedIdea’s argument that the term would be discussed extensively at trial in a way that would permit the jury to discern the plain and ordinary meaning of the term, finding “cam” to be a critical term with which a lay jury would be unlikely to be familiar; moreover, it is the Court’s exclusive obligation to construe patent terms. He likewise construed related terms for which MedIdea suggested not construction was needed, indicating that the court is required to construe terms on which the parties disagree. He construed “cam mechanism” to require two or more cams, because the specification criticized one-cam structures and repeatedly referenced multiple cams. Judge Sorokin further agreed with DePuy that “early after initiation of flexion” of the knee should be construed as “prior to 30 degrees of flexion” rather than MedIdea’s proposed 60 degrees of flexion, as MedIdea’s number appeared to lack intrinsic or extrinsic support, while DePuy’s corresponded to the degree of flexion in prior art that was criticized in the patent. Finally, he refused to consider the definiteness of the terms “central cam” and terms using “superior” and “inferior,” finding that determination to be more suitably made on a fuller record at summary judgment.

Stross v. IvyMedia Corporation et al. (18-cv-10240).

After photographer Alexander Stross sued Ivymedia for copyright infringement relating to IvyMedia’s alleged use of a Stross photograph in its on-line advertising, Judge Sorokin denied IvyMedia’s motion to dismiss for failure to state a claim on which relief could be granted. IvyMedia subsequently answered and counterclaimed for extortion and fraud. Stross moved to dismiss the counterclaims as being legally and factually baseless and designed to drive up the costs of litigation. Stross further sought an award of attorneys’ fees as a sanction for IvyMedia’s continued baseless motion practice. Judge Sorokin granted Stross’ motions and awarded Stross $9671.09 in fees and costs in connection with the motion to dismiss.

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

Nike sued Puma for infringement of seven Nike patents covering shoes having knitted upper, and alleged that after it notified Puma about the patents prior to filing suit, Puma not only failed to cease making and selling the accused products, Puma also introduced new shoes to the market that infringed the patents. Puma moved to dismiss the claims with respect to two of the patents as directed to non-patentable subject matter, asserting that one was directed to the abstract idea of forming an outline pattern on a textile and does not disclose an inventive step towards achieving the outline pattern, and that the second is directed to the abstract idea of generating a visual pattern on a textile, which is nothing more than a non-patentable work of art. Judge Sorokin disagreed, finding that the claims, which were directed to tangible manufactured items (i.e., shoes) or to physical components thereof or methods of manufacturing the same, they passed muster under the first prong of the Mayo test as being directed to a statutorily provided category of patent-eligible subject matter. He further noted that, even if they did not, Puma had not met its burden of demonstrating by clear and convincing evidence that the claims lacked an inventive step that would meet the second prong of the Mayo test. Judge Sorokin also denied Puma’s motion to dismiss the willfulness charges, finding Puma’s suggestion that more must be pled than knowledge of the patent and continued infringement remained an open question (albeit one that other Massachusetts judges had found incorrect), but that Nike had sufficiently pled additional facts that would support a finding of willfulness.