CardioNet, LLC et al. v. InfoBionic, Inc. (D. Mass. 15-cv-11803).

Judge Talwani sua sponte dismissed two patent infringement counts of CardioNet’s Third Amended Complaint after the two patents were held to cover unpatentable subject matter by the Patent Trial and Appeal Board.  Once the PTAB cancelled the patents, CardioNet lost any cause of action based on these patents, rendering the two counts moot.

Plastipak Packaging, Inc. v. Ice River Springs Water Co. Inc. et al. (D. Mass. 19-cv-11193).

After Plastipak accused Ice River of infringing ten patents relating to manufacturing lighter-weight plastic bottles, Ice River asserted that four limitations, present in some or all of the asserted claims, were indefinite.  Judge Talwani disagreed, finding that the claims and specification adequately defined the meets and bounds of each term.

 Ice River sought a finding that the term “neck portion” was indefinite because the claim language defined the portion as “including” several features but did not define where the neck portion began.  Judge Talwani noted that the claims consistently indicate that the neck portion extends upwardly from a lower portion, and found the specification and figures resolved any possible ambiguity by clarifying that the neck portion did not extend below the support flange.  She further noted that this limitation had been found definite in litigation against a different company by the Eastern District of Virginia, and refused to interpret the term to encompass more based on extrinsic evidence describing generic bottles, finding that Plastipak had acted as its own lexicographer in defining the term in the specification.  Interestingly, Plastipak had itself initially included a portion of the bottle below the flange as a part of the neck portion in an initial patent-related disclosure filed in this litigation, and subsequently amended the disclosure to exclude the portion below the flange.  Ice River asserted that this showed that Plastipak itself couldn’t discern the meets and bounds of the term, but Judge Talwani discounted it as a mistake, likely made not by Plastipak but instead by its counsel, and noted that it had been corrected without reliance or benefit on the initial disclosure.

Judge Talwani found the term “the filling occurring substantially adjacent to where the container is formed” to be definite, rejecting Ice River’s assertion that the specification must provide specific, measurable limitations to describe “substantially adjacent.” She noted that the specification described “conventional ‘blow-and-fill’ operations, including those in which a container is filled just after formation… in close proximity to where the container is formed,” which could be a single integrated machine or two machines “that are adjacent or in close proximity to one another.”  This was distinguished from other conventional methods in which the formed bottles are shipped to a separate location to be filled.  As these conventional methods are well-known in the art, the terms is sufficiently definite.

Finally, Judge Talwani determined that two other terms relating to portions of the bottle were, while “not a testament to clarity,” sufficiently spelled out in the specification to survive an indefiniteness challenge.

Plastipak Packaging, Inc. v. Ice River Springs Water Co. Inc. et al. (D. Mass. 19-cv-11193).

Judge Talwani denied Ice River’s motion to compel additional information relating to the conception, diligence and reduction to practice the claimed invention.  Ice River asserted that the responses and documents provided failed to explain what transpired in the eight months between conception and reduction to practice.  Judge Talwani indicated that the response answered the question posed by the interrogatory, and noted that Plastipak would be limited to the evidence disclosed in its responses at trial.  She further noted that, where Plastipak’s counsel certified that they had performed a reasonably diligent search and Ice River can point to nothing more than a suspicion that unproduced documents exists, Ice River is not entitled to an order compelling more.

Judge Talwani denied Ice River’s motion to compel documents that were produced by a third party in an earlier litigation with Plastipak and were deemed confidential under a protective order in that case.  She had previously entered a protective order shielding these documents from production but requiring Plastipak to identify all such documents in a privilege log.  Judge Talwani determined that Ice River would have to subpoena the third party, who could then move to quash, and a determination could then be made as to the need for their production. 

Judge Talwani denied Ice River’s motion to compel the production of all prior art in Plastipak’s possession.  Ice River had requested all “material” prior art, and Plastipak had produced only references cited on the face of the subject patent, taking the position that anything not cited to the PTO was not material, particularly with respect to confidential materials in its possession. While Judge Talwani did not find this interpretation of the request to be unreasonable, she noted that non-public materials can be material at least with respect to obviousness.  Accordingly, while not granting Ice River’s motion, she allowed Ice River to rephrase the request to make clear what information it sought.  Judge Talwani had earlier struck Ice River’s invalidity contentions, finding them non-compliant with Local Rule 16.6.  Ice River had cited 163 prior art references and more than 3000 exemplary obviousness combinations, but had not provided claim charts for roughly half of the references and not articulating specific reasons to make the obviousness combinations.  Because Ice River had relied on the scheduling order, which it contended modified the Local Rule, Judge Talwani allowed Ice River leave to refile its disclosures.  Given that the invalidity contentions remained pending, Ice River would not be prejudiced by the delay in the production of any additional art.

Larson v. Perry (19-cv-10203).

Judge Talwani denied Defendants Jeffrey A. Cohen and Cohen Business Law Group’s motion for reconsideration of her previous finding that the claims against them could not be dismissed at the pleading stage.  She rejected Cohen’s argument that her prior decision was based on case law that was not controlling; while she agreed that the particular case was not “controlling” but instead was, as a decision of a district judge presiding over a diversity action, merely persuasive authority.  She instead pointed to the controlling decision of the Massachusetts Supreme Judicial Court, which provides for litigation privilege where the communications at issue are made prior to the onset of litigation only where the communications relate to a legal proceeding which is contemplated in good faith and which is under serious consideration.  Judge Talwani also rejected Cohen’s argument that Larson had failed to sufficiently allege bad faith as required under the controlling SJC decision, finding that the issue had not been raised in the Motion to Dismiss and thus could not be brought for the first time in a motion for reconsideration.

God’s Era v. New Era Cap Company, Inc. (18-cv-11065).

God’s Era brought claims of false designation of origin and unfair competition under the Lanham Act as well as common law trademark infringement and unfair competition in connection with New Era’s 2016 collaboration with Jerry Lorenzo, owner of fashion brand Fear of God that resulted in a hat with a New Era design directly above the FEAR OF GOD mark. God’s Era, which formed in 2015, sought in October 2016 to register GOD’S ERA as a trademark, which New Era opposed. New Era first used the combined mark in commerce at the Major League Baseball All-Star Game in July 2017. God’s Era was only able to produce receipts totaling $235 in sales of t-shirts, hoodies and sweatshirts prior to that time, and none in interstate commerce. Judge Talwani granted New Era’s motion for summary judgment on the trademark claims, finding that the God’s Era mark was not entitled to common law trademark protection outside of the Boston area as of mid-2017. All of God’s Era’s sales prior to then had been made in person by God’s Era’s founder and sole employee to people in the greater Boston area. Any common law rights that had arisen as a result of these sales would not extend to Miami, the site of the All-Star Game and the sales of New Era’s products. Judge Talwani specifically noted that the website that God’s Era ran did not establish trademark rights because as of mid-2017 no actual sales had been made through the website. As no common law trademark rights were established, the false designation of origin and unfair competition claims likewise failed.

Larson v. Perry et al. (19-cv-10203).

Sonya Larson sued Dawn Dorland Perry, seeking a declaratory judgment that a story written by Larson did not infringe Perry’s copyright in a similar story, and sued Perry, her attorney and his law firm for defamation and tortious interference with contractual relationships when Larson’s publisher was threatened with a lawsuit if they continued to publish Larson’s story. Perry’s lawyer, Jeffrey Cohen, and his California firm, Cohen Business Law Group, moved to dismiss for lack of personal jurisdiction, which Judge Talwani denied. She noted that Cohen Law had sent letters to BFF in Cambridge, MA, alleging that Larson’s story plagiarized Perry’s letter and that publication would infringe on Perry’s rights, and threatened statutory damages of up to $150,000 should BFF publish. Larson alleges that this letter knowingly misrepresented both the facts and the law such that it constituted an unfair or deceptive trade practice under Massachusetts law and was designed to interfere with her agreement with BFF. As this behavior was targeted to a Massachusetts company for the purpose of affecting BFF’s business decision. This therefore is sufficient to establish specific personal jurisdiction.

Cohen and his firm also moved for dismissal on the grounds that, as a matter of law, their alleged conduct is shielded by Massachusetts’ litigation privilege. An attorney’s statements in the Commonwealth are absolutely privileged where such statements are made by an attorney engaged in his function as an attorney whether in the institution or conduct of litigation or in conferences and other communications preliminary to litigation. Where the communication is to a prospective defendant, however, the anticipated litigation must be contemplated in good faith, and does not allow a lawyer the freedom to act with impunity. While lawyers cannot be held liable for the contents of their speech, that speech can be used as evidence of misconduct, with the line between the two determined on a case by case basis. In this case, the complaint asserts that the Cohen letter was used to effectuate unlawful ends, rather than looking to establish liability based on the content standing alone, and Judge Talwani determined that the good faith of the Cohen firm could not be determined on the pleadings. Accordingly, she refused to dismiss based on litigation privilege.

Judge Talwani denied Perry’s moved to dismiss on the grounds that defamation was not properly pled and that Larson failed to plead actual malice, a requirement under Massachusetts defamation law when the plaintiff is a limited purpose public figure. The complaint identified instances in which Perry is alleged to have told several writing organizations, Larson’s employer, and a writing organization where Larson sought a fellowship that Larson plagarized her work, providing Perry with enough specificity to mount a defense. Regarding the “limited public figure” issue, Judge Talwani noted that while the issue is one of law, it is inherently fact-specific such that it cannot be determined on the pleadings.

Judge Talwani granted Perry’s motion to dismiss the tortious interference counts. The complaint alleged that, as a result of Perry’s conduct, two publishers decided to pull Larson’s story from their website earlier than call for by the contracts between Larson and the two. Ordinarily, this would be sufficient to survive a motion to dismiss. Here, however, the two contracts were included as exhibits to the complaint and could thus be fairly considered in determining the motion. In reviewing the contracts, neither included the promises alleged in the complaint that the story actually be published or remain on available for any particular length of time.

As a note, Judge Talwani denied Perry’s request for a hearing on her motion, finding that the coronavirus crisis combined with the Court’s determination that it could properly adjudicate the issue on the papers weighed against a hearing.

Chatham v. Canterbury Ventures et al. (17-cv-11473).

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.

CardioNet, LLC et al. v. InfoBionic, Inc. (15-cv-11803).

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.

Plastipak Packaging, Inc. v. Ice River Springs Water Co. Inc. et al. (19-cv-11193).

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.

Big Beings USA Pty. Ltd. Et al. v. Nested Bean, Inc. (20-cv-10101).

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.