EcoFactor, Inc. v. Alarm Incorporated et al. (D. Mass. 20-cv-11007).

After EcoFactor filed this patent infringement suit against it, Alarm Inc. filed a motion to stay the district court case pending the outcome of a previous ITC proceeding between Alarm Inc. and EcoFactor .  The ITC case involves a different set of patents that are also the subject of a previous district court proceeding between the two parties.  Alarm Inc. also sought to combine the two district court cases.  EcoFactor opposed both, noting that the ITC action and other district court case involved different patents and different claims (which are the subject of a prior-filed lawsuit between EcoFactor and Alarm Inc.).  Judge Sorokin granted in part the defendants’ motion.  He stayed the case for three months, with the parties to file a joint status report updating the status of the ITC proceeding and indicate their positions as to whether the stay should be continued.  He denied the motion to combine as moot, giving Alarm Inc. the opportunity to re-raise the issue when they report on the status of the ITC case.

D’Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc. (D. N.H. 17-cv-00747).

New Hampshire guitar-maker D’Pergo accused instrument retailer Sweetwater Sound of using a copyrighted photograph of D’Pergo’s trademarked custom guitar necks and headstock to promote and sell Sweetwater products.  Liability has already been decided in favor of D’Pergo, but damages remain to be determined.  In the litigation, Sweetwater designated an expert on damages and served an expert report.  The expert subsequently became seriously ill and had to withdraw from the case.  When Sweetwater designated a substitute expert and produced a new expert report, D’Pergo moved to strike all paragraphs containing an opinion or fact that did not appear in some form in the original expert’s report.  Judge McCafferty denied the motion to strike.  She noted that the Federal Rules of Civil Procedure disallow the use of an expert whose report was untimely uncles the delay was either substantially justified or harmless.  The incapacity of an expert due to illness or death constitute substantial justification for the untimely disclosure of a substitute expert’s report, so long as the substitute report is not unduly delayed.  She further noted that courts look with disfavor on parties who claim surprise or prejudice but who fail to seek a continuance to counter the belated testimony.  In this case, Sweetwater had notified D’Pergo on April 23rd of the need for the original expert to withdraw, and provided the new report on July 15th, just over a month prior to the trial date.  Sweetwater also moved to continue the trial for 60 days to allow D’Pergo time to address the new expert and potentially update its own report.  D’Pergo does not contest that Sweetwater was substantially justified in serving the delayed report, but contends that it will be prejudiced if the report is permitted to stray from the original.  Judge McCafferty noted, however, that this approach would require that the delay be both justified and harmless, in contravention to the case law.  Further, while D’Pergo suggests prejudice, it has not identified any particular prejudice it would suffer if the report were allowed to stand.  Additional time and discovery had been granted to address the new report, and the differences between the reports were not significant enough to cause a change in D’Pergo’s litigation strategy.  Given the justification for the delay, and the lack of suggestion that the designation of the new expert involved evasion or concealment, the report was allowed to stand.

Upcoming D. Mass. Virtual Events.

The District of Massachusetts is hosting a number of virtual events.  First, tomorrow, October 29, Judges Saylor, Saris, Casper, and Hillman will provide a general update on federal jury trials during the COVID pandemic, and will take questions from the bar.  Information and registration information can be found at this link.

On November 12th, the Massachusetts chapter of the Federal Bar Association is presenting on qualified immunity.  Professor Karen Blum and civil rights attorneys Howard Friedman and Leonard Kesten will speak.  To take part in this program, you must register by November 10th.  Further information can be found here.

On November 17th, there will be an update on jury trials at the Springfield courthouse, with Judges Saylor, Mastroianni, Sorokin and Robertson participating.  Further information is available here.

Finally, on November 18th, the Federal Bar Association is hosting Breakfast with the Bench with guest Magistrate Judge Boal.  Information on this event can be found here.

Long Hua Technology Co., Ltd. V. A123 Systems, LLC (D. Mass. 20-cv-11887).

Long Hua, a Taiwanese company that develops and manufactures electronic components for computers, smartphones, and the like, accuses Michigan company A123 of infringing two patents, U.S. 7,803,484 and 8,034,480, relating to lithium ion secondary (rechargeable) batteries.  The patents specifically relate to the rates of discharge at low and high power demands.  Long Hua asserts that A123 battery cells that are incorporated into the ALM® 12V7 batteries of NEC Energy Solutions and in Jaguar and Land Rover batteries.  Despite asserting knowledge of the patents only to the date of filing of the complaint, Long Hua asserts willfulness.  Personal jurisdiction over A123 is based on its having two places of business in the state, one each on Waltham and Hopkinton.  The case is before Judge Stearns.

Broadcast Music, Inc. et al. v. 11 Exchange Street LLC d/b/a The Steel Pub et al. (19-cv-40136).

After The Steel Pub failed to answer the complaint and did not respond to BMI’s motion for default judgment in this copyright infringement case, Magistrate Judge Hennessy directed the clerk to assign the case to a district judge and recommended allowing the motion for default in all aspects other than  the request for injunctive relief.  He noted that, prior to entering default judgment, the court must examine the complaint, taking all well-pled factual allegations as true, to determine whether it pleads a legitimate, legal cause of action.  He determined that infringement was adequately pled, and that willfulness was demonstrated by the defendants’ actions in continuing to allow copyrighted music to be performed after receiving more than twenty communications from BMI explaining the infringement and the need to take a blanket license offered by BMI.  With respect to damages, Judge Hennessy noted that the requested statutory damage number, $7500 per violation for a total of $30,000, was about four times the amount BMI would have received through licensing fees, had the pub taken a license.  He found this to be overly punitive, and recommended an award totaling $15,000.  He recommended awarding the full $3212 in attorneys fees, noting that BMI’s attorneys had prudently not engaged in further litigation (such as discovery) while default was pending.  He further recommended awarding the full $547 in costs, primarily for filing and process server fees.  He recommended against the entry of a permanent injunction, however, noting that BMI had not pled continued infringement of the four songs at issue, nor that the pub would allow the performance of these songs in the future.

A Corp. d/b/a Rooter Man v. Palmetto Group Investment, LLC et al. (D. Mass. 20-cv-11901).

A Corp. the franchisor for “Rooter Man” plumbing franchises, accuses former South Carolina franchisee Kenneth Hart, Hart’s wife and son, and several businesses owned by the Harts.  A Corp. was formed in 1982 for the purpose of selling Rooter Man franchises.  By 2019, there were about 89 franchisees operating at more than 600 locations in more than half of the states as well as in Bermuda and Canada.  A Corp. obtained a number of federal and state trademark registrations related to the “Rooter Man” businesses, including state registrations in South Carolina.  Kenneth Hart signed a franchise agreement with A Corp. in 2018.  The agreement included minimum monthly payments and a personal guarantee by Hart.  By February 2020, A Corp. asserts that Hard was in default for failure to make payments due under the agreement, and that Hart had obtained domain registrations that include the “Rooter Man” mark in violation of the agreement.  When Hart failed to cure these breaches, A Corp. terminated the agreement on March 31st and demanded the defendants cease use of the marks and de-identify themselves as a Rooter Man business.  A Corp. says that Hart’s wife responded that Kenneth Hart had passed away, but that Hart in fact remains alive as evidenced by ongoing active posting on his Facebook page and records of a complaint filed in July with the Better Business Bureau to which Hart personally filed a response.  A Corp. asserts counts of trademark infringement, false designation of origin, dilution, breach of contract, interference with contractual relations, cybersquatting, conversion, unjust enrichment, and breach of the implied covenant of good faith and fair dealing.  Judge Wolf is assigned to the case.

DiversiTech Corporation v. RectorSeal, LLC et al. (D. Mass. 20-cv-11896).

DiversiTech and RectorSeal compete in the HVAC industry.  DiversiTech claims that RectorSeal and affiliated entities The RectorSeal Corporation and CSW Industrials, Inc. infringe U.S. Patent No. 9,550,223, entitled “Flaring and Swaging Bits, and Methods Using Same” through its sales of its PRO-Fit Flaring and PRO-Fit Swaging kits.  DiversiTech asserts willfulness based on a discussion between the inventor and representatives of the Defendant about an embodiment of the ‘233 patent at a trade show in 2014, which led to discussions about RectorSeal becoming a distributor of the embodiment.  The complaint further alleges that a predecessor of the plaintiff sent a cease and desist letter in 2017 that included infringement claim charts.  Direct, induced and contributory infringement are asserted.  Judge Gorton has the case.

American Science & Engineering, Inc. v. Viken Detection Corporation (D. Mass. 20-cv-11883).

Security technology company American Science & Engineering (AS&E) accuses Viken of infringing three patents related to the use of backscatter and transmission x-ray technology to inspect luggage and the like.  In 1994, AS&E hired an MIT graduate, Dr. Peter Rothschild, who ultimately because a Chief Scientist for the company.  Dr. Rothschild remained with AS&E until 2013, when he resigned.  AS&E alleges that prior to his resignation, Rothschild had already formed Viken’s predecessor, Heuresis Corporation, to compete with AS&E.  AS&E says that Viken’s recently-released backscatter X-ray systems that scan vehicles from the top, bottom, and sides, infringe the three patents.  This technology allows a vehicle to be inspected with the occupants still in the vehicle, without overexposing the occupants.  The complaint asserts that Rothschild took part in the invention of this technology and assisted in the preparation and filing of the asserted patents while he was with AS&E.  AS&E had earlier filed suit against Rothschild and Viken in Massachusetts state court, accusing them of trade secret misappropriation, breach of contract and breach of fiduciary duty. 

Fitbit, Inc. v. Koninklijke Philips N.V. (D. Mass. 20-cv-11611).

After Philips filed a complaint against Fitbit at the International Trade Commission, Fitbit filed suit seeking a declaration that it does not infringe three Philips’ patents – U.S. 7,845,228, entitled “Activity Monitoring,” U.S. 9,820,698, entitled “Actigraphy Methods and Apparatuses,” and U.S. 9,717,464, entitled “Continuous Transdermal Monitoring System and Method.”  The case was originally filed in the Northern District of California, but was transferred to Massachusetts when the California court determined that Philips’ service of the ITC complaint at Fitbit’s California headquarters was not sufficient to qualify as purposefully directing its activities to the forum, and that specific personal jurisdiction over Philips (who does not do business in the United States) did not exist.  The court noted that at the time the case was filed, Fitbit and Philips were engaged in patent-related actions in N.D. California, D. Mass., the ITC and the PTO.  The court noted that Rule 42(k), which allows for jurisdiction in any state over a foreign entity without sufficient contacts in any single state, could be defeated by Philips designating a state in which the suit could proceed.  As Philips identified Massachusetts, the location of two Philips’ subsidiaries, was a suitable forum, the court transferred the case to Massachusetts in August.

Judge Stearns has now granted Philips’ motion to stay pending resolution of the ITC action.  The ITC has already made a summary determination of non-infringement of two of the patents and the third patent is infringed by Fitbit.  A trial on validity is scheduled to begin later this month, with a final decision expected in May 2021.  An institution decision from the PTAB on Fitbit’s petition for inter partes review is expected in the next four weeks as well. 

De Rouw v. International Sustainable Development Institute, Inc. (D. Mass. 19-cv-10198).

Judge Stearns sua sponte entered an order offering to convert this copyright infringement case from a jury trial to a bench trial.  He noted that, while trials have resumed in Massachusetts, jury trials in civil cases will not likely resume until “well into 2021” due to the shortage of properly-fitted courtrooms and the need to give priority to criminal cases.  He indicated that bench trials can begin much sooner, with the ability to take evidence and witnesses both virtually and in person as needed and the scheduling flexibility that a bench trial would provide.  He further indicated that bench trials would be scheduled on a first-come, first-serve basis, suggesting that he is making a similar offer in other suitable cases before him.

I have experienced similar comments regarding converting from jury to bench trials from other Massachusetts judges, without the suggestion having been formalized into an order. If you have a civil case pending, you may want to consider the bench trial option with the Court.