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.
Judge Casper partially granted Neotech’s motion to stay the litigation pending inter partes review. This case, which concerns allegations of infringement of a patent relating to aspiration devices, was filed in California in May 2017. Following the issuance of the TC Heartland decision, Neotech filed a complaint in Delaware, where it believed Sandbox to have been incorporated, and dismissed the California complaint. Upon being informed that Sandbox was, in fact, incorporated in Massachusetts, Neotech amended its Delaware complaint to remove the jurisdictional allegations and moved to transfer the case to Massachusetts, while Sandbox moved to dismiss the case for lack of personal jurisdiction and improper venue, seeking to have the second Delaware complaint deemed a second voluntary dismissal and asking the Court to dismiss the complaint with prejudice pursuant to FRCP 41(a)(1)(B). The Delaware court transferred the case to Massachusetts and left the decision on Sandbox’s motion to dismiss to the Massachusetts court. Sandbox then requested inter partes review of the patent in suit, and Neotech moved to stay the litigation pending the outcome of the IPR. Judge Casper stayed the case in its entirety until the first of May 30, 2019 or the PTAB’s decision on whether to institute the IPR, and indicated that she would accept requests to continue to stay the case if the IPR should proceed. She further denied Sandbox’s motion to dismiss without prejudice, indicating that Sandbox would be free to renew the motion once the stay was removed.
Hillside owns a trademark registration for the design of its “Sugarhill Jug” plastic maple syrup jugs, and accuses Dominion of violating that trade dress. Dominion moved for judgment on the pleadings, on the grounds that the trade dress was invalid as functional.
The trademark application had, in fact, initially been refused because of functionality concerns, but Hillside was able to overcome the refusal with evidence of the many alternative designs for syrup jugs. Dominion, once a Hillside distributor, began offering the accused jugs in 2016. Magistrate Judge Robertson recommended denial of Dominion’s motion. She noted that, as the trade dress is registered and incontestable, Dominion bears the burden of demonstrating functionality. Further, functionality is a question of fact, and Dominion was unable to demonstrate through the pleadings that the designs were factually functional. Judge Robertson did grant Dominion’s motion to stay discovery pending appeal of her recommendation to the District Court judge.
Upaid filed suit against Superwash in April, accusing Superwash of infringing Upaid’s 8,976,947 patent through Superwash’s cashless laundry system. Judge Stearns granted Superwash’s motion to stay the litigation pending the outcome of Upaid’s Illinois infringement suit against CCI, the manufacturer of Superwash’s payment systems. He found that staying served judicial economy because the cases involved substantially similar claims and because Superwash agreed to be bound by issues of fact and law finally resolved in the Illinois action.