Uniloc 2017 LLC v. Paychex, Inc. (19-cv-11272), Akamai Technologies, Inc. (19-cv-11276) and athenahealth, Inc. (19-cv-11278).

Uniloc 2017, a non-practicing entity affiliated with the original Uniloc, sued Paychex, Akamai and athenahealth, accusing each of infringing a pair of patents relating to the management and distribution of application programs to target stations on a network. The patents originally belonged to IBM, and have an odd chain of title through the PTO’s assignment page – it appears that Uniloc assigned a security interest in the patents to Fortress Credit Co. in 2014 without having first obtained title from IBM – that assignment (to Uniloc Luxembourg S.A.) was executed in 2016. The patents each claim priority to a December 1998 filing, so both have expired.  The cases are all before Judge Stearns.

Rain Computing, Inc. v. Samsung Electronics Co., Ltd. et al. (18-cv-12639).

Judge Stearns denied Samsung’s motion to dismiss for failure to state a claim, agreeing that the complaint meets the Twombly “plausibility” standard because it states the patents alleged to be infringed and the acts by which they are allegedly infringed. Rain Computing asserts that Samsung’s delivery of their apps to end user devices via an app store that requires registration and subscription to use, which are asserted to infringe Rain’s patent directed to methods and systems for delivering software to client terminals based on a subscription service. Judge Stearns held that the Federal Rules of Civil Procedure, even as explained by Twombly, “do not require a plaintiff to plead facts establishing that each element of an asserted claim is met.” This holding seems to be inconsistent with a pair of prior D. Mass. cases (Rampage v. Global Graphics, Judge Burroughs, and Sunrise Techs. V. Cimcon Lighting, Judge Gorton) that held that a patent plaintiff “must allege that defendant’s product practices all the elements of at least one of the claims of the subject patent.” It will be interesting to see whether Samsung will challenge this decision down the road.

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

This case involves allegations that Cisco infringed patents related to configuring, deploying and maintaining enterprise and application servers. Earlier in the litigation, the court determined that one of the patents was directed to ineligible subject matter, and Egenera dismissed a second without prejudice following institution of inter partes review. The court held a three day bench trial on the sole issue of whether Peter Schulter, an Egenera employee, should have remained listed as an inventor of the sole remaining patent-in-suit. Schulter was removed as an inventor after Egenera relied on an internal document that predated his being hired to swear behind prior art in the IPR (which, as it turns out, was not instituted with respect to the patent). Judge Stearns found that his removal was improper. He noted that none of the named inventors, including Schulter, reviewed the internal document before signing the declarations that accompanied the change of inventor petition, instead relying on Egenera’s management and counsel that the removal of Schulter was proper.

Later, the court construed the term “logic to modify said receiver to transmit said modified messages to the external communication network and to the external storage network” as a means-plus-function limitation. After reviewing internal documentation, including reviews of Schulter, the court determined that Schulter contributed to the means identified in the specification that were swept into the claim by means of 112(6). Judge Stearns identified passages in the specification that were taken from a state-of-development document authored by Schulter that post-dated Schulter’s employment and to which he contributed. Judge Stearns further considered testimony from one of the other inventors that the last-state-of-development document that pre-dated Schulter’s employment did not include information contained in the patent. Further, Egenera hired Schulter specifically to work on the servers covered by the patent This evidence was sufficient to overcome Schulter’s testimony that he was not an inventor, which was not corroborated by any contemporaneous evidence. As the court had already determined that judicial estoppel prevented Egenera from seeking to re-add Schulter as an inventor, the patent was deemed invalid, closing the case.

DUSA Pharmaceuticals, Inc. v. Biofrontera Inc. et al. (18-cv-10568).

Judge Stearns issued a claim construction order construing terms of the asserted patents, and addressed indefiniteness arguments urged by Biofrontera. The technology is directed to treating cancer by administering photoactive agents that accumulate in the tissue to be treated, and then exposing the tissue to visible light that causes the photoactive agent to chemically or biologically change and attack the target tissue in which it has accumulated. Biofrontera sought to have “illuminator” construed to require a light source that generally conforms to a contoured surface, asserting that DUSA’s specification disavowed flat illuminators by (a) consistently referring to the “present invention” as an illuminator conforming to a contoured surface; (b) including no non-contoured embodiments, and ascribes the improved performance of the claimed invention to the contoured surface of the illuminator; and (c) disparaging flat surface illuminators. Noting that there was no argument that DUSA acted as its own lexicographer, Judge Stearns determined that there was sufficient evidence to the contrary to prevent Biofrontera from meeting the “exacting” standard for a finding of disavowal. He noted that the specification provided objectives that did not require a contoured shape, and provided ways other than contouring to obtain the desired results.

Judge Stearns also determined that the phrase “all operation distances” was not indefinite. Biofrontera had argued that the specification provided no guidance on this, but Judge Stearns found that reference to a lower and upper limit in the specification set the range of distances with reasonable clarity. He rejected Biofrontera’s claim differentiation argument, noting that while a dependent claim specified the range, claim differentiation cannot be used to broaden a claim beyond its correct scope.

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.