Nike, Inc. v. Puma North America, Inc. (18-cv-10876).

Nike sued Puma for infringement of seven Nike patents covering shoes having knitted upper, and alleged that after it notified Puma about the patents prior to filing suit, Puma not only failed to cease making and selling the accused products, Puma also introduced new shoes to the market that infringed the patents. Puma moved to dismiss the claims with respect to two of the patents as directed to non-patentable subject matter, asserting that one was directed to the abstract idea of forming an outline pattern on a textile and does not disclose an inventive step towards achieving the outline pattern, and that the second is directed to the abstract idea of generating a visual pattern on a textile, which is nothing more than a non-patentable work of art. Judge Sorokin disagreed, finding that the claims, which were directed to tangible manufactured items (i.e., shoes) or to physical components thereof or methods of manufacturing the same, they passed muster under the first prong of the Mayo test as being directed to a statutorily provided category of patent-eligible subject matter. He further noted that, even if they did not, Puma had not met its burden of demonstrating by clear and convincing evidence that the claims lacked an inventive step that would meet the second prong of the Mayo test. Judge Sorokin also denied Puma’s motion to dismiss the willfulness charges, finding Puma’s suggestion that more must be pled than knowledge of the patent and continued infringement remained an open question (albeit one that other Massachusetts judges had found incorrect), but that Nike had sufficiently pled additional facts that would support a finding of willfulness.

MedIdea, L.L.C. v. DePuy Orthopaedics, Inc. (17-cv-11172).

MedIdea sued Depuy for patent infringement connected with total knee replacement prostheses in the Northern District of Illinois. Following the TC Heartland decision, the case was transferred to Massachusetts, where it has undergone contentious discovery. Judge Sorokin denied MedIdea’s request for detailed royalty reports, in light of MedIdea’s expert acknowledging that documents already produced provided sufficient information to calculate damages. He also refused to compel production, at no cost to MedIdea, of different sizes of the accused products, finding no authority to require the provision of thousands of dollars of products for free when the sole difference was the size. Judge Sorokin also denied MedIdea’s demand that DePuy produce a 30(b)(6) witness t otestify on the nature of DePuy’s search for documents and choice of keywords for searching electronic records, in light of DePuy’s statement that only outside counsel participated in that task and in light of MedIdea’s delay of eight months form the time when the schedule required the parties to meet and confer on electronic discovery issues. Finally, Judge Sorokin granted DePuy’s motion to quash subpoenas to two inventors of prior art identified by Depuy and that served as the basis for institution of an IPR proceeding. Judge Sorokin noted that MedIdea had been obliged to identify any relevant witnesses in its initial disclosures more than a year prior, and had failed to seek to supplement its disclosures. Moreover, the reference was more than ten years old, and was but one of many references cited by DePuy, but was the sole reference on which the IPR was granted, creating an inference that MedIdea was seeking their depositions in the litigation to circumvent rules that would prohibit such in the IPR proceeding itself.

Altova GmbH et al. v. Syncro Soft SRL (17-cv-11642).

In a rarely-seen determination, Judge Saris granted Syncro Soft’s motion to disqualify Altova’s counsel, Sunstein Kann Murphy & Timbers. Sunstein had previously represented Syncro Soft in a copyright and trade dress dispute with Altova concerning Syncro Soft’s OXYGEN XML Editor software, during which Syncro Soft had provided details on the operation of the software to a Sunstein attorney. That matter resolved without litigation, but Sunstein continued to represent Syncro Soft on other matters through 2014. In 2011, Sunstein began to represent Altova on matters which were not adverse to Syncro Soft, and Sunstein represented both companies through 2017. Altova approached Sunstein about the patent dispute that is the center of this case in June 2017, at which point Sunstein terminated its relationship with Syncro Soft. Sunstein did not note to Syncro Soft the nature of the conflict, and did not seek Syncro Soft’s consent to allow Sunstein to represent Altova in litigation against Syncro Soft. While Sunstein erected an ethical wall blocking three attorneys from accessing Syncro Soft information, one of the three had previously worked closely with Syncro Soft. Judge Saris found that Sunstein’s action, in dropping Syncro Soft so that it could then sue the former client, was a violation of Rule 1.7 of the Massachusetts Rules of Professional Conduct, with which attorneys practicing in this District must comply pursuant to Local Rule 83.6.1(a). The representation of Altova was directly adverse to Syncro Soft, and arose at a time Syncro Soft was still a Sunstein client. Moreover, Sunstein could not fulfill its ethical duties owed Syncro Soft by informing them that Altova was preparing to sue the company without violating the ethical duties it owed Altova. Judge Saris further found that the potential for a conflict arose at least as early as November 2016, when Altova’s patent issued in an area of business in which the parties competed. Sunstein should have at that time sought written consent from both parties to continue the representation or withdrawn from representing both parties on the matter. Judge Saris determined that Sunstein “cannot simply choose the more profitable client and drop the other.”

Syncro Soft is presently represented by Craig Smith and Eric Carnevale of my firm.

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

Judge Saylor granted Defendants’ motion to partially strike SiOnyx’s Fourth Amended Initial Contentions.  SiOnyx had sought to reintroduce a claim that had been initially asserted but voluntarily dropped because it was undergoing inter partes review.  After the IPR decision upheld the claim, only two days before defendants’ expert was to be deposed and subsequent to opening and rebuttal expert briefs, SiOnyx served the amended contentions with the claim re-added.  Judge Saylor noted that there was no good cause shown to permit reinsertion of the claim into the case, and that (to the extent SiOnyx believed it needed to wait on the PTAB’s decision, it was free to seek to stay or modify the schedule.  Defendants were entitled to rely on SiOnyx’s decision to withdraw the claim.

Emseal Joint Systems, Ltd. v. MM Systems Corp. (14-cv-14706).

Judge Zobel, having issued a claim construction that rendered Emseal’s infringement position unfeasible, issued a final judgment of non-infringement pursuant to Fed. R. Civ. P. 54(b).  MM Systems had opposed Emseal’s motion for entry of final judgment of non-infringement on the grounds that, absent a tolling of the statute of limitations on its counterclaims, it would most likely lose the ability to pursue those claims.  Emseal had sought to have the counterclaims dismissed with or without prejudice, or in the alternative to enter final judgment under Rule 54(b) and stay the counterclaims.  MM Systems was concerned that, with the litigation having been filed in 2014, a dismissal of its counterclaims would result in their not being capable of being refiled, as a dismissed complaint is treated as though it never existed for Federal statute of limitations purposes, and provides for refiling within one year for state statute of limitations purposes.  MM Systems also asserted that the Federal Circuit would not accept jurisdiction if the counterclaims were stayed rather than dismissed (although I note that the principal case cited for this proposition, Pause Technology v. TiVo, notes that the Federal Circuit lacks jurisdiction in such circumstances “short of meeting the conditions specified in Rule 54(b)…”).  Judge Zobel stayed any activity relating to the counterclaims pending the outcome of the appeal.

American Chair & Seating Corp. v. Restaurant Seating Corp. et al. (18-cv-10750).

In a sibling rivalry gone wrong, American Chair accuses Restaurant Seating and Stephen DiStasio of copyright and trademark infringement, palming off, and violation of M.G.L. 93A in connection with Restaurant Seating’s alleged use of American Chair’s copyrighted photographs, trademarks, and trade dress to steer business from the former to the latter.  Prior to forming Restaurant Seating, Stephen DiStasio worked for American Chair under the supervision of his brother and American Chair’s President, Michael DiStasio.  Restaurant Seating is accused of using American Chair’s copyrighted photographs on its website, using confusingly similar slogans to those registered by American Chair (e.g., “We build furniture to last the life of your concept” versus American’s registered “Furniture built to last the life of your concept”), and passing off American Chair products as if they were Restaurant Seating’s offerings, including in at least one instance hiring a manufacturer to knock off an American design that had been used to sell to a Salem, MA restaurant.  American Chair seeks temporary, preliminary, and permanent injunctive relief in addition to damages and attorneys fees.  The case is before Judge Woodlock.

Rothschild Digital Confirmation LLC v. Fingent Corp. (18-cv-10656).

Rothschild accuses Fingent of infringing U.S. Patent No. 7,456,872 by sales of its “ReachOut Suite,” a field service management software application.  It is not clear why Rothschild, a Texas entity, is suing Fingent, a New York business, in Massachusetts, and it is equally unclear why venue in Massachusetts is appropriate, as the pleadings related to venue do not appear consistent with the TC Heartland line of cases.