Wisser v. The Institute of Contemporary Art, Inc. (19-cv-10201); Dermansky v. Open Source Media, Inc. (19-cv-10202); DeRouw v. International Sustainable Development Institute, Inc. (19-cv-10198).

Richard Liebowitz strikes again, filing three more copyright infringement and DMCA Violation cases in Massachusetts to go along with the seven he filed earlier this month.  In these cases, as with the previous set, he alleges that copyrighted photographs were used on the defendants’ websites without license, and that digital watermarks were removed from the photographs. Each of these acts is alleged to be willful and knowing, without any further elaboration, and Liebowitz seeks actual and/or statutory damages and attorney’s fees. The cases are before Judges Boal, Saris, and Stearns.

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

Egenera accused Cisco of infringing the ‘430 patent, which names Egenera employee Peter Schulter as one of the inventors. When Cisco sought inter partes review on the basis of a 2000 reference, Egenera sought to swear behind the reference (under the first-to-invent rule, as the invention predates the AIA’s first-to-file system). Egenera relied on a document authored by inventor Max Smith, that Egenera asserts fully described the claimed invention. This document, however, pre-dates Schulter’s employment with Egenera. Egenera successfully petitioned to have Schulter removed as an inventor, and filed a declaration from Schulter stating that he was erroneously named. Cicso contended that Schulter should have been named as an inventor, and that by his removal the patent is invalid.

Judge Stearns agreed with Cisco that, should Schulter be determined to have contributed to the invention, Egenera could not petition to have him restored as an inventor under the doctrine of judicial estoppel, as such a claim would be inconsistent with Egenera’s assertion that he was incorrectly named. Judge Stearns determined, however, that while Schulter authored a pre-critical date document on a virtual LAN proxy that potentially read on a means-plus-function term in the claims, his authorship alone was not enough to determine, as a matter of law, that he conceived of the virtual LAN proxy or that the virtual LAN proxy was claimed via the means-plus-function limitation. Accordingly, he denied the cross motions for summary judgment on inventorship.

ecobee, Inc. v. Filter Pro et al. (18-cv-12235), Hatzlacha LLC d/b/a The Corner Store et al. (18-cv-12236), and Ultra Design (18-cv-12237).

Ecobee filed three trademark suits, accusing Filter Pro, The Corner Store, and Ultra Design of trademark infringement, unfair competition, false designation of origin, and tortious interference. Ecobee makes smart home control products, including light switches and thermostats, that it sells through authorized resellers who are contractually obliged to provide specific quality controls on the products sold and prevented from selling to subsequent, unauthorized resellers. Each of the defendants is an Amazon Seller Account that, despite not being ecobee authorized resellers, are alleged to have sold ecobee products.  Ecobee asserts that the defendants could only have obtained ecobee inventory through knowingly soliciting authorized resellers, intentional and knowing interference with the resellers contracts and business relationships with ecobee, or through fraudulent or illicit means. They further assert that the defendants violate the ECOBEE trademark by selling actual ecobee goods without authorization. The cases are presently before Judges Stearn, Woodlock, and Saris.

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.