Judge Stearns denied Telerik’s motion to amend its answer to add counterclaims of invalidity and unenforceability due to Telerik’s lack of diligence in seeking to add these claims. Telerik obtained key documents giving rise to the proposed claims six months before seeking to amend, and provided no explanation for the delay, thus failing to establish the diligence required to show good cause under Rule 16(b).
Marketing and communications company Spark451 sued Agency 451 for trademark infringement and breach of a trademark co-existence agreement. Spark451 provides services under the “SPARKS451” mark to college and university clients that allow the schools to reach potential students, and has been using the mark in 2011. The Defendant, which began as “451 LLC” in 2004 and changed its name to “451 Marketing, LLC” in 2007, sought to cancel the “SPARK451” registration in 2015. The proceeding ended with the parties executing a co-existence agreement whereby 451 Marketing agreed not to use any mark consisting solely of or ending with “451” and each party agreeing to take all reasonable steps to avoid confusion as to the source or origin of their services. Despite this, 451 Marketing changed its name to “Agency 451” in April 2017, and changed its website to http://www.agency451.com. Spark451 asserts that this change breached both of those clauses, and that the nature and potential customers of the two businesses are sufficiently similar, and the names and commercial appearance of the marks so similar, that the use of “Agency 451” infringes the “SPARK451” mark. Spark451 seeks injunctive and monetary relief as well as a finding of willful infringement, treble damages and reasonable attorney’s fees and costs. The case is before Judge Stearns.
Judge Stearns construed a number of claim terms in this dispute in which Egenera accused Cisco of infringing U.S. Patent 7,231,430 (Egenera had previously voluntarily dismissed claims relating to a second patent, to avoid the case being stayed pending inter partes review of the second patent). The technology at issue relates to the creation of a virtual processing area network that simulates a network of computer processors. Judge Steans rejected Egenera’s proposed construction of “processor” as the “processing node” described in the specification, because the specification does not clearly set forth a definition of the term that is different from its plain and ordinary meaning. He also rejected Egenera’s proposed construction of “logic” as “software, firmware, circuitry, or some combination thereof.” Instead, he found “logic” as used in the claims to refer to the abstract concept of computer operations generally that perform the function recited after the term, and thus to be in means-plus-function format. Having so determined, however, he disagreed with Cisco that the terms were indefinite, finding sufficient structure in the specification for the various “logic” functions recited in the claims. Finally, he found in Egenera’s favor on “internal communication network,” determining that even though the network is described as emulating Ethernet functionality, the claimed network is not limited to a non-Ethernet physical network.