Janssen Biotech, Inc. v. Cellitrion Healthcare Co., Ltd. Et al. (17-cv-11008).

In an order at the end of July, Judge Wolf granted Cellitron’s motion for summary judgment of non-infringement of U.S. Patent No. 7,598,083, the sole patent remaining in this litigation. Janssen’s initial focus had been on a different patent that was found invalid for obviousness-type double patenting. Janssen then shifted focus to allegations that the Defendants infringed the ‘083 patent under the doctrine of equivalents. The ‘083 patent covers compositions for preparing cell culture medium suitable for ultimately producing infliximab, which Janssen sells under the brand name “Remicade.” The asserted claims recite 61 different ingredients, each at a range of concentrations. Only 52 are actually required by the claim to be present, as the remaining 9 have a lower concentration limit of 0. It is undisputed that the accused composition includes all 52 required ingredients, but not all fall within the claimed range. Defendants moved for summary judgment on the grounds that the hypothetical claim that would literally cover the accused composition would ensnare the prior art, which would serve to prohibit application of the doctrine of equivalents. Judge Wolf agreed, finding that this hypothetical claim, while not anticipated, would have been obvious to one of ordinary skill in the art. Janssen, as the party asserting the doctrine of equivalents, bore the burden of proving that the scope of equivalents sought would have been patentable over the prior art, a burden they could not meet. Judge Wolf determined that the claimed composition merely substituted several ingredients of the prior art compositions with known alternatives, which performed in accordance with their previously-established function in providing nutrients to cells. Additionally, while Janssen presented sufficient evidence to permit a finder of fact to determine that the Defendants had copied Janssen’s composition (one of the Graham factors that evidences non-obviousness), this factor would not, even if proven, be enough to overcome the strong prima facie case of obviousness of the hypothetical claim. Accordingly, judgment was entered in favor of the Defendants.

SiOnyx, LLC v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

SiOnyx alleged that Hamamatsu, following an aborted attempt to form a business partnership involving devices that improve the detection of near-infrared light, had violated a non-disclosure agreement and obtained patents on SiOnyx technology without naming SiOnyx personnel as inventors. Hamamatsu filed twelve motions for partial summary judgment. Judge Saylor granted three of these, denied three, and deferred judgment on the remaining six.

Hamamatsu’s bid to prevail on breach of contract and unjust enrichment claims on statute of limitations grounds was denied. While the relevant events occurred longer ago than the six-year time period provided by the statute of limitations on these types of claims, Massachusetts law follows the discovery rule, by which the cause of action arises not when the events occurred, but when the plaintiff discovers or should reasonably have discovered. Here, there were issues of fact as to when SiOnyx should reasonably have become aware of these claims, brought about by Hamamatsu’s repeated assurances that it had developed the relevant technology on its own, independent from any knowledge acquired under the NDA. Judge Saylor denied summary judgment of breach of contract, finding issues of fact as to the scope of use of confidential information, while granting Hamamatsu’s motion with respect to the unjust enrichment claims of both SiOnyx and co-plaintiff Harvard, because under Massachusetts law, unjust enrichment cannot be found where there is a valid contract defining the rights of the parties. Applying First Circuit law, Judge Saylor denied Hamamatsu’s motion with respect to consequential damages on the grounds that the testimony offered in support of this theory, SiOnyx’s recollection of statements as to why a third-party agreement was terminated made by an executive of the third party, constituted an exception to hearsay under Rule 803(3) as a statement of intent or motive. Finally, he granted Hamamatsu’s motion that a SiOnyx employee was not a co-inventor on Hamamatsu’s patents, as the testimony of the employee was not sufficiently corroborated by documentary evidence.

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.

Crane Security Technologies, Inc. et al. v. Rolling Optics AB (14-cv-12428).

Crane sued Rolling Optics, asserting infringement of five patents relating to micro-optics systems that project synthetically magnified images. They accuse Rolling Optics of infringing directly and inducing infringement through sales of micro-optic foils that are formed into 3-D holographic-style labels.  The patents cover planar arrays of image icons and focusing elements, with an optical spacer or substrate therebetween.  Judge Sorokin ruled in Crane’s behalf on a series of summary judgment motions filed by the parties.  He denied Rolling Optics’ argument that two claim terms were indefinite, finding that the claims, specification and prosecution history provided enough specificity to survive.  Instead, he sua sponte granted summary judgment that the terms are definite, despite Crane not having so moved, noting that the briefing provided adequate notice to Rolling Optics, there was ample discovery on the issue, and there were no factual disputes relevant to the issue.  Judge Sorokin denied summary judgment of invalidity over prior art, in part because assumptions of Rolling Optics’ expert regarding spacing of critical elements taken from figures in the prior art were disregarded because the prior art figures were not drawn to scale.  While finding the patents in suit were not entitled to claim priority to a provisional application that was not specifically referenced in the patent applications, Judge Sorokin denied summary judgment of invalidity due to the on-sale bar due to the existence of fact issues relating to whether potentially prior uses were experimental or were on-sale bars.  Summary judgment of infringement was granted as to certain products that Rolling Optics failed to provide evidence of non-infringement due to the low volume of potentially infringing sales, and as to other products on which Rolling Optics’ claim construction arguments did not prevail.  Rolling Optics’ motion for summary judgment was denied with respect to induced infringement, because the evidence laid forth a factual dispute over whether Rolling Optics knew that labels it sold were being applied to products sold in the United States.  Finally, Judge Sorokin found factual issues in dispute regarding the language of an early notice letter regarding the patents and denied Rolling Optics’ motion for summary judgment with respect to notice and damages.

Sophos Inc. v. RPost Holdings, Inc. et al. (13-cv-12856).

Sophos brought suit in 2013, seeking summary judgment that it did not infringe certain of RPost’s patents and that the patents were invalid. Only one patent remained in issue following last year’s claim construction decision in the case, U.S. 8,504,628.  The ‘628 patent covers third party verification of the content and delivery of electronic messages.  Following a hearing on December 7th, Judge Casper issued a decision on the 8th, finding the asserted claims invalid.  Sophos challenged the standing of RPost to pursue infringement claims because co-defendant RPost Communications Ltd. (RComm), RPost’s parent corporation, is the patent owner and no written license between RComm and RPost was produced and RComm’s corporate designee was unable to say with any certainty that RComm directly sold any software services in the United States.  Judge Caper denied the motion on standing, finding that the corporate designee’s deposition testimony that RPost was an exclusive licensee must be credited at the summary judgment stage, thus creating an issue of material fact.  As to validity, Sophos had asserted that the earliest priority date for the ‘628 patent was July 27, 2000, based on responses of RPost and RComm to an interrogatory.  While not finding RPost and RComm estopped from asserting a priority date back to 1999, based on provisional applications, she determined that Sophos’ argument had “introduced sufficient evidence” to put anticipation at issue, at which point the defendants had the burden of coming forward with evidence and argument to the contrary.  Because the defendants had put nothing in the record to show that the claims were entitled to rely on the provisional applications for priority, the July 2000 date was deemed to be the priority date.  The claims were then found to be anticipated by two patents that predated the July 2000 date but fell after the provisional filings.

Small Justice LLC v. Xcentric Ventures, LLC (1st Cir. Oct. 11, 2017).

Plaintiffs Richard Goren, a Massachusetts attorney, his company Small Justice LLC, and Christian DuPont had sued defendants Xcentric Ventures, LLC and Ripoff Report.com for copyright infringement, libel, interference with a contract, and violation of Massachusetts’ unfair competition statute. Goren had represented DuPont in an unrelated matter; DuPont had subsequently authored two reports critical of Goren and posted them to Ripoff Report, a “consumer protection” website owned by Xcentric that allows users to post complaints about companies or individuals.  As part of the posting process, the user grants Ripoff Report an irrevocable exclusive license to the copyright, and further warns users that, once posted, the post will not be taken down even at the request of the poster.  When DuPont failed to appear in the libel suit that resulted, Goren was granted an injunction prohibiting DuPont from publishing the reports, and was awarded ownership of the copyright of the reports. He then filed the suit that is the subject of this appeal, seeking the enjoin Ripoff Report from continuing to post the complaints and to require them to take all actions necessary to have cached versions and links removed from Bing, Google, and Yahoo.

Xcentric moved to dismiss the complaint, which Judge Casper granted in part. Specifically, Judge Casper dismissed the libel, tortious interference, and parts of the unfair competition counts as blocked by the Communications Decency Act, 47 U.S.C. § 230, which shields interactive computer service providers from liability for information provided by another content provider.  The court rejected Goren’s argument that, by holding itself out as the copyright holder and by having “directed” internet search engines to list the postings, Ripoff Report itself became the information provider.  Following discovery, Judge Casper granted Xcentric summary judgment on the remaining copyright and Ch. 93A claims, finding the “browsewrap” license conclusive on the copyright claims.  Judge Casper modified the judgment to find that the browsewrap license failed to meet the requirements of transferring an exclusive copyright license, and that only an irrevocable non-exclusive license had been granted; this distinction did not, however, change the outcome.  Finally, Judge Casper awarded $124,000 in fees and costs to Xcentric pursuant to 17 U.S.C. § 505.

The First Circuit Court of Appeals reviewed the dismissal of the libel and tortious interference claims de novo and affirmed.  The § 230 immunity is to be liberally construed, to prevent deterrence of on-line speech; so construed, Xcentric could not be considered to be “responsible … for the creation” of the information, and immunity would apply.  Continuing to apply de novo review, the Court affirmed the copyright decision, rejecting Goren’s argument that the license “contract” failed because no consideration was given to DuPont – while consideration is necessary to support an irrevocable license, actually posting the complaints was sufficient consideration under the circumstances.  Notably, the Court determined that it need not decide whether a browsewrap agreement can satisfy the exclusive license writing requirement of 17 U.S.C. § 204, leaving this issue open in the First Circuit.

The Court reviewed the fee award for abuse of discretion. After quickly dismissing Goren’s contentions that Xcentric was not a prevailing party or that its fee motion was untimely, the Court looked to the Supreme Court’s Fogerty factors in analyzing the decision to award fees – “frivolousness, motivation, objective unreasonableness [both factual and legal] and the need in the particular circumstances to advance considerations of compensation and deterrence.”  Characterizing review of the application of these factors as “extremely deferential,”

The Court found no fault with Judge Casper’s characterization of the legal and factual basis for plaintiffs’ claims as “at best questionable,” with its noting that Xcentric fought the case for more than two years without the prospect of a damage award, or with its determination that Xcentric prevailed on all counts. Finally, the Court noted that a showing of bad faith on the plaintiffs’ part is not a requirement for a fee award pursuant to the statute.  The fee award was thus affirmed as well.

The Hilsinger Company v. Kleen Concepts, LLC (14-cv-14714).

Kleen Concepts was accused of infringing Hilsinger’s SHIELD mark by using the brand SHIELDME for its screen and lens cleaning products.  Hilsinger uses the SHIELD mark for lens cleaning products.  Kleen Concepts was also accused of misusing the phrase “Made in USA,” with Hilsinger contending that “significant components” of the products were manufactured abroad.  Kleen Concept’s motion for summary judgment of non-infringement as to its screen-cleaning products was denied, because the similarity of the marks and the products, combined with disputes of material fact as to the channels of trade and targeted customers, left material facts in dispute.  Judge Saylor further struck the portion of Kleen Concept’s reply brief that argued for the first time that products that had been re-branded with the (unaccused) mark KLEENME did not infringe, despite the continued existence of the SHIELDME mark on the interior of the packaging, refusing to allow new arguments not raised in the opening brief.  Judge Saylor also denied Kleen Concept’s motion for summary judgment on the false designation of origin claims, finding that (disputed) facts had been introduced that Hilsinger was actually harmed due to sales losses that coincided with buyer Wal-Mart’s initiative to increase sales of domestically-made products and evidence that a Wal-Mart buyer believed Kleen Concepts’ products were made in the USA.  Finally, Judge Saylor struck the portion of Kleen Concepts’ expert report that asked survey respondents to identify their “primary purchasing consideration,” because Kleen Concepts could not point to any evidence that the expert’s methods for determining this had been tested, subject to peer review, or otherwise scientifically validated.