Judge Talwani on Thursday adopted Magistrate Judge Cabell’s Report and Recommendation that Canterbury’s motion for summary judgment be denied. Canterbury had moved for summary judgment on Chatham’s copyright, breach of contract, and breach of the covenant of good faith and fair dealing, as well as on the availability of specific performance (effectively, forcing transfer of the property to the Chathams) as a measure of damages. Judge Cabell for a variety of reasons had earlier recommended denial of all elements of Canterbury’s motion for the reasons laid out here. Canterbury subsequently switched counsel, and new counsel objected to Judge Cabell’s recommendation. Judge Talwani, however, rejected Canterbury’s objections. She first determined that Canterbury had not raised a specific objection to the recommendation on the copyright claim be denied, and accordingly adopted Judge Cabell’s recommendation that Canterbury’s attempt to scrap the copyright claim be denied. Judge Talwani further found that a reasonable jury could determine that the purchase and sales agreement had been extended as a result of Canterbury’s representations that it continued to operate in accordance with the agreement following the putative termination, and subsequently threatening to terminate, and ultimately unilaterally terminating the agreement when the Chathams refused to pay additional monies not called for by the agreement. She determined that Canterbury’s argument regarding specific performance – that it was unavailable because the Chathams had never proffered payment – was waived for failure to have raised it before. She further noted that, even if the argument hadn’t been waived, Canterbury could not object to any perceived failure of Chatham to proffer payment because a condition of closing was that Canterbury would have a certificate of occupancy, which Canterbury undisputably did not have a certificate of occupancy, rendering any failure to tender the purchase price moot. Judge Talwani finally noted that Canterbury had not disputed that a failure to attempt, in good faith, to construct the house in the time frame set forth by the agreement could result in a breach of duty of good faith and fair dealings. Accordingly, the report and recommendation of Judge Cabell was upheld in its entirety.
I represent the Chathams, along with Nate Harris and John Anastasi of my firm, Lando & Anastasi, along with Paul Mordarski and Jordan Carroll of Morrissey, Hawkins & Lynch. Needless to say, we are very happy with this decision, and look forward to trial.
In a long-running patent dispute concerning cardiac monitors, Judge Talwani denied in part CardioNet’s motion for summary judgment. CardioNet sought judgment that InfoBionic infringed four claims of one of the remaining patents, and that those claims, along with a claim from another of the remaining patents, were valid. Judge Talwani found, in a very short electronic order, that there were genuine issues of material fact with respect to validity and infringement on the four claims and denied the motion. With respect to the second patent, Judge Talwani set the validity for a February hearing. She further instructed CardioNet to address why summary judgment of non-infringement should not be granted on the basis that the accused MoMe system lacks a frequency domain T wave filter as that term was construed.
In May of 2019, Plastipak sued Ice River Springs Water Co., accusing the Canadian company and its U.S. affiliate Ice River Springs USA of willfully infringing ten Plastipak patents related to “light-weighting,” a technique that allows for a neck of a plastic bottle that is lighter in weight and contains less material while retaining threads, tamper-evident formations and a support flange. Plastipak had previously sued Niagara Bottling, LLC in the Eastern District of Virginia, which the parties settled in 2018. In the present litigation, Ice River sought production related to the prior litigation from Plastipak, including prior art, deposition transcripts, discovery requests and responses and the like. Judge Talwani granted Niagara Bottling’s motion for a protective order, preventing the disclosure of documents containing Niagara’s confidential information that were involved in the Niagara litigation. She found that Ice River failed to show why such confidential information is sufficiently relevant to justify the burden on Niagara of having its confidential information exposed to a competitor. Judge Talwani denied Plastipak’s motion with respect to Plastipak’s own documents from the prior litigation, with any Niagara confidential information redacted, and further ordered Plastipak to confirm the redactions with Niagara prior to producing them.
Australian companies Big Beings and LB Online & Export Pty. Ltd., which does business as Love to Dream, accuse Massachusetts business Nested Bean of infringing U.S. 9,179,711, directed to infant swaddling suits. Big Beings asserts that Nested Bean’s “Zen One Convertible Swaddle” product infringes at least one claim of the ‘711 patent. Big Beings is the assignee of the ‘711 patent, while Love to Dream is the exclusive licensee of Big Beings “Swaddle” technology, which includes the ‘711 patent, in the United States. In addition to claiming infringement, Big Beings asserts unjust enrichment. Judge Talwani has the case.
Mitrend, a Marlborough company that provides software and services relating to datacenter infrastructure assessment and performance, accuses EMC and Dell of copyright infringement, violation of the Digital Millenium Copyright Act, unjust enrichment, breach of contract, and unfair competition. Mitrend contends that EMC, a wholly-owned Dell subsidiary, began using Mitrend’s analysis service in 2006 under a master services agreement and a number of statements of work, using EMC software for data collection. Mitrend realized that the data collection process could be improved upon, and independently conceived of an automated and accelerated process for data collection that substantially reduced collection times. Mitrend contends that the new software was adopted throughout EMC and became the company’s primary data collection method. Mitrend’s relationship with EMC rapidly grew to several million dollars per year, and EMC did not develop its own competing software. Under the statement of work dealing with this, Mitrend’s software was deemed to remain Mitrend’s property, and all derivative works would belong to Mitrend. Further, a separate software license agreement prohibited reverse engineering of the software by EMC, as well as prohibiting removal of copyright notices. These terms were carried forward in a 2015 agreement between the businesses. In 2017, however, after EMC was acquired by Dell, EMC demanded changes to the license that would include transfer of ownership of the software IP to EMC/Dell. Mitrend refused, and provided notice of termination effective March 2, 2017, although at EMC’s request the parties subsequently agreed to extend the termination date to November 30, 2017. Shortly thereafter, EMC announced the launch of its own competing product. Mitrend contends that EMC sought the extension to develop and deploy its competing software, which it later discovered to be using the same scripts as the Mitrend product, which it alleges EMC copied. The case is assigned to Judge Talwani.
At the request of the parties, Judge Talwani reversed her prior decision and entered partial final judgment that U.S. Patent Nos. 7,212,850 and 7,907,996 are invalid for failing to claim patentable subject matter. By such order, CardioNet will be able to immediately appeal this finding.
CadioNet sought to sever the patents that were found to be directed to ineligible subject matter from the remainder of the case, which remains to go to trial, so that the ruling on the two patents could be immediately appealed. Judge Talwani determined that, given the posture of the case, Fed. R. Civ. P. 54(b) should apply, rather than Rule 21 as had been argued by CardioNet. Noting the “long-settled and prudential policy against the scattershot disposition of litigation,” Judge Talwani determined that CardioNet’s decision to bring all four patent claims in a single action, “presumably based on its view that the claims are related and involve common sets of fact and law,” mitigate against entry of separate judgment on the two invalidated patents. She did note that CardioNet had a different pair of related patents that were invalidated on Alice grounds at the District Court level (also by Judge Talwani), and that she would likely have granted severance if CardioNet had sought it at the time the appeal on those patents was filed; but as the appeal in that case has been fully briefed, severing the claims in the current case would result in three different litigation tracks. Accordingly, CardioNet’s motion to sever was denied.