Global Protection Corp. et al. v. Arthur et al. (18-cv-10966).

Global accused Eric Arthur and Marketing Sales Concepts of infringing its “ONE” mark and a design patent for condom packaging, and the Defendants moved to dismiss for lack of personal jurisdiction and improper venue, contending that they do no business in Massachusetts and never marketed or sold the accused condoms in the Commonwealth. Global responded that the defendants’ websites and social media presence, accessible in Massachusetts, supported jurisdiction and that the patent claim could be brought in Massachusetts under the “pendent venue” doctrine. Judge Stearns found that under TC Heartland, pendant venue cannot be applied to patent infringement claims (but note that at least one other Court has found that pendent venue is applicable to patent infringement claims); he decided, however, to transfer the entire matter to the Western District of Arkansas rather than to dismiss the complaint outright.

Barth v. United States (18-cv-12001).

Maine resident John S. Barth, Jr., filed a pro se complaint against the United States and several individual defendants in connection with Barth’s alleged copyright infringement claims. Barth wrote a novel, The National Memorial, which was published in 2015. After sales were flat, Barth discovered a number of outlets offering low or no-cost digital versions on-line. In 2017, Barth instituted a lawsuit against several individuals and companies in the Central District of California, claiming copyright infringement and violation of the Racketeer influenced and Corrupt Organizations Act (“RICO”). He sought to file the complaint under seal, and to undertake RICO-related discovery under seal to ascertain the entities or individuals who owned and operated the relevant websites, most of which were registered under false names, and the locations of their servers. He also filed a motion for discovery assistance, seeking assistance from federal agencies in obtaining this information. Judge Olguin denied the request that the complaint and discovery-related documents be accepted under seal and published the documents on PACER. Judge Olguin denied several follow-up motions to seal the information as well as a motion to disqualify himself. Barth now claims that the actions of Judge Olguin constitute willful collusion with the defendants in that it allowed them to transfer evidence and funds outside of the jurisdiction of the United States, denying Barth just compensation for his claims. Barth presses copyright infringement claims and RICO violations against the individual defendants, and brings a count against the United States for compensation for the taking of his private property, namely (as near as I can decipher) his right to bring the California case under seal. Judge Stearns has the pleasure of untangling this mess.

Egenera, Inc. v. Cisco Systems, Inc. (16-cv-11613).

Judge Stearns denied Cisco’s motion to strike parts of Egenera’s expert report on infringement. Judge Stearns agreed that Egenera’s expert report addressed previously unaccused features of the accused products. He found, however, that Cisco had identified no concrete prejudice to justify striking these parts of the report, discounting Cisco’s assertions that it would have conducted additional prior art searches as too speculative.

Upaid Systems, Ltd. V. BCL, Inc. d/b/a Superwash (18-cv-10718).

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.

Purse Seine Holdings, LLC v. Starkist Co. (17-cv-11186).

Judge Stearns granted Starkist’s motion to amend its answer to introduce an additional counterclaim of fraud on the Trademark Office. He found the proposed counterclaim, which alleged that Purse Seine had declared to the PTO that it was using the “Bela” mark for fish pate and fish paste when it knew this to be false, properly alleged facts which, accepted as true, stated a viable claim that met the “good cause” standard for amending after the date when such amendments can only be made for good cause. He further determined the motion to be timely, in that Starkist had learned of the relevant facts during discovery and filed within a month of so learning. The discovery schedule was amended to permit fact and expert discovery on the counterclaim.

Egenera, Inc. v. Cisco Systems, Inc. (16-cv-11613).

Judge Stearns denied Egenera’s motion to strike Cisco Systems’ invalidity expert report.  Cisco’s expert had opined on a prior art Catalyst System found at UNC, of which the expert had personal knowledge; Egenera sought to have his opinion striken because Cisco had not disclosed the expert as a fact witness and had not disclosed the UNC system in its contentions.  Judge Stearns found that the UNC system was merely an exemplar of the Cisco Catalyst System, which had properly been disclosed.  He also noted that Egeneral still has the opportunity to depose the expert, meaning that even if he was not properly identified as a fact witness, there was no prejudice to Egenera.

In re: NeuroGrafix (‘360) Patent Litigation (13-cv-02432).

NeuroGrafix accused Brainlab of infringing its U.S. Patent No. 5,560,360, which covers methods of imaging neural tissue to distinguish anisotropic nerve tracts in which water can diffuse along the length of the nerve tract but not perpendicularly to the nerve tract.  A number of method claims were asserted, including a single independent claim.  Brainlab sought summary judgment of non-infringement based in part on its chosen interpretation of two claim limitations – exposing a region that includes a selected structure that includes both anisotropic and non-anisotropic tissue to a magnetic polarizing field, and generating a data set that distinguishes the two structures.  Brainlab contended that it cannot target the required “selected structure” because until the data is obtained, one cannot know where the anisotropic structure is, arguing that the ‘360 patent is directed to improved imaging of peripheral nerves, and that therefore the “select structure” must be limited to peripheral nerves, which Brainlab’s accused product does not track.  Brainlab also asserted that its accused product does not distinguish anisotropic structure from non-anisotropic structure as required by the claims, because it does not permit the user to enter an FA Threshold value of zero, which would correspond to tissue that does not exhibit diffusion anisotropy.  Judge Stearns determined that, while the motivation described for the invention was the improvement of peripheral nerve imaging, this motivation standing alone is insufficient to limit the scope of the claims.  He cited language in the specification that referred to distinguishing anisotropic tissue from other structures that do not exhibit anisotrophy as referring to distinguishing tissue that had levels of anisotrophy low enough to be insignificant for imaging purposes as opposed to having an absolute absence of anisotrophy.   He also criticized Brainlab’s attempt to draw limitations from dependent claims into the independent claim, the opposite of the principle of claim differentiation.

Despite ruling in NeuroGrafix’s favor on the disputed claim terms, Judge Stearns ultimately granted summary judgment of non-infringement to Brainlab.  NeuroGrafix’s allegations were that Brainlab induces infringement, with the direct infringement occurring when the user images the pyramidal tract in the brain.  Judge Stearns found that, depending on the purpose of the physician in imaging a patient, the accused product is capable of both infringing and non-infringing uses.  Mere capability of infringement, however, is insufficient to establish liability, and NeuroGrafix could point to no record evidence that any physician had ever actually used the product in a manner that would infringe.  Judge Stearns distinguished cases where direct infringement could be inferred by instructions that not only described the infringing mode, but taught or encouraged it; the marketing material for the accused product did note the possibility of delineating the pyramidal tract, but did not teach the particular settings to achieve this.  Accordingly, Brainlab’s motion for summary judgment of non-infringement was allowed.