Palomar Technologies, Inc. v. MRSI Systems, LLC (18-cv-10236).

Palomar had asserted that MRSI infringed its 6,776,327 patent, which was directed to high-accuracy automated placement methods in which a workpiece is moved from a first position to an intermediate position, where the pathway to attach the first workpiece to a second workpiece is recalculated, improving the accuracy of the placement.  In May, MRSI was granted summary judgment that the patent claimed unpatentable abstract ideas, and entered judgment for MRSI.  Judge Saylor noted that, while the patent itself provides a description of systems and procedures to carry out the invention, the claims do not mention (and therefore do not cover) the robotics, computers or software that actually moves the component workpieces from one location to another.  He characterized the claims, boiled down, as claiming generally the notion that moving a part closer to a second part before installation makes it easier to obtain accuracy in the final placement of the part.  He analogized this to golf – it is very difficult to accurately put a small ball in a distant small hole, but by taking shots (drive, chip, etc.) that move the ball closer to the hole, the degree of difficulty is substantially reduced.  He further determined that the claims did not contain the necessary sufficiently inventive concept to save their eligibility under Alice.  He noted that the actual physical components used to carry out the method were described int eh specification as known and conventional.

Judge Saylor has now granted in part MRSI’s motion for costs and denied its motion for attorney’s fees.  He noted that, while there is a presumption favoring cost recovery for prevailing parties, an award of costs is at the discretion of the district court.  The types of costs that may be awarded are limited by 28 U.S.C. §1920 to fees of the clerk and marshall, fees for printed or electronically recorded transcripts necessarily obtained for use in the case; fees for printing and witnesses, and fees for exemplification and costs of making copies of materials where the copies were necessarily obtained for use in the case.  Judge Saylor awarded MRSI $29,120.97 of the $119,670.05 MRSI had sought.  He disallowed pro hac vice costs for seven attorneys, determining that Palomar should not be charged with MRSI’s decision to use out-of-state counsel.  He limited costs for private process servers to the fee that a marshall would have charged.  He disallowed additional costs for the expedition of hearing transcripts where no special circumstances were identified justifying such an award.  Costs related to videotaping of depositions were disallowed, as were all costs relating to depositions of MRSI’s own employees and expert witnesses.  While deposition transcript costs where the transcripts were neither entered into evidence nor relied upon in dispositive motion are generally not allowed, he did grant costs on the remaining transcripts, noting that these would almost certainly have been entered into evidence had the case gone to trial, and MRSI should not be punished for having prevailed on Alice grounds at summary judgment.  Finally, he disallowed considerable printing costs as not sufficiently justified in the motion for costs.

With respect to attorney’s fees, Judge Saylor determined that the case was not exceptional within the meaning of 35 U.S.C. § 285.  MRSI asserted that Palomar should have known that the patent was invalid pursuant to Alice, which had been decided at the time the complaint was filed.  Judge Saylor noted that MRSI’s early motion to dismiss on the same grounds had been denied (without prejudice), with the Court noting that the motion could not be decided without first undergoing claim construction, meaning that Palomar’s litigation position was not objectively unreasonable at the outset of the suit.  Judge Saylor further noted that even post-Markman, the patent was presumed to be valid and that the Alice framework is not so developed to render the outcome obvious.  Judge Saylor also declined to find Palomar’s litigation conduct unreasonable or exceptional.  While agreeing that Palomar’s manner of litigation – withholding of relevant discovery, gamesmanship in preparing witnesses for deposition, and abusive motion practice – he determined that, considering the totality of circumstances, the case was not exceptional.  He noted that MRSI itself contributed to the time and cost of the litigation through its handling of the case, including filing a largely fruitless IPR and forcing a three-day bench trial over staying the case for the IPR, and filing summary judgment motions on many other issues that ultimately did not impact the outcome of the case.

Reiffer v. Haywood Kristiansen Group et al. (D. Mass. 20-cv-11471).

UK photographer Paul Reiffer accuses real estate agency Haywood Kristiansen Group and HKG co-founder Brian Haywood for using one of Reiffer’s photographs of the Boston skyline on HKG’s website without authorization.  In addition to copyright infringement, Reiffer asserts counts under 17 U.S.C. § 1202(a) and (b) for wrongful removal of Reiffer’s copyright notice and watermark and for HKG having its own copyright notice at the bottom of the page on which the photograph appears, suggesting that HKG was the copyright holder of the photograph.

Fitzpatrick v. Kulesh et al. (D. Me. 20-cv-00247).

Brad Timothy Fitzpatrick, who does business as “207 Threads,” sells printed t-shirts and stickers bearing original designs.  He obtained a copyright registration on a recent design of a skull wearing a gas mask, surrounded by “Essential Worker COVID-19 2020.  He accuses Victoryia Kulesh, who does business through an Amazon storefront known as “Tuopedia,” and Katsiaryna Dulevich, who operates the storefront “Katyalike,” of selling stickers that infringe this design.  He asserts that Kulesh and Dulevich, who are each alleged to reside in Minsk, Belarus, consented to personal jurisdiction in Maine, although he does not indicate how.  Fitzpatrick claims the accused stickers are either direct copies or derivative works that infringe, and seeks monetary and injunctive relief.  Judge Woodcock has been assigned the case.

Singular Computing LLC v. Google LLC (D. Mass. 19-cv-12551).

Judge Saylor denied Google’s motion to dismiss on Alice grounds, finding the asserted patents claimed patentable subject matter.  Singular filed suit in 2019, accusing Google of infringing three patents relating to computer system architecture that utilizes low precision/high dynamic range processing elements.  Judge Saylor analyzed the patentability of the claims in accordance with Alice’s two-step procedure, looking to whether the claims are directed to a patent-ineligible concept that is so abstract as to risk disproportionately tying up the use of the underlying idea, and if so, whether the claims include an inventive concept that is sufficient to ensure the patent in practice amounts to significantly more than a claim on the ineligible concept itself.

Judge Saylor noted that the Supreme Court in Alice had discussed improvements to the functioning of a computer at step two of the inquiry, these types of inventions are not inherently abstract and can be analyzed in the initial step of the inquiry – whether the focus of the claims is on the specific asserted improvement in computer capabilities – in which case the claims are directed to patentable subject matter.  He rejected Google’s assertion that the claims were directed to LPHDR arithmetic generally, noting that the claims define the terms “low precision” and “high dynamic range” precisely so as not to cover LPHDR generally.  While not expressly construing these terms, judge Saylor noted that when the meaning of a claim term is in dispute in a motion to dismiss, the court must adopt the non-moving party’s construction in analyzing the motion.  He further noted that, even subject to Singular’s proposed constructions, the claims may still abstractly cover LPHDR math within that range and thus prove ineligible, but that such a determination would require development of the factual record.

Judge Saylor further noted that, even if the claims were directed to an abstract idea, the remainder of the limitations set forth sufficient non-conventional computer structure to render the claims eligible, at least on the record before it.  He did note that, as with the first Alice step, subsequent development of the factual record might change his mind with regard to the second step, which could be asserted on summary judgment.

Converse Inc. v. Steven Madden Ltd. (D. Mass. 20-cv-11032).

Boston shoe manufacturer Converse accuses Steve Madden Ltd. of infringing two design patents covering soles of sneakers.  Converse’s two patents, D873,547 and D874,106, cover portions of the sole of Converse’s Run Star Hike sneaker.Converse Run Star Hike

The ‘106 patent covers the rear portion of the sole (the black portion of the Converse sneaker at right), while the ‘547 patent covers the sole from about the mid-point of the front, tan section to the midpoint of the rearm black portion.  The remainder of the sneaker was disclaimed in both patents.

 

Converse asserts that Madden’s Madden Girl Winnona Flatform Hi-Top infringes the ‘106 patent. madden-girl-White-Fabric-WinonaConverse sent Madden a cease and desist letter shortly after the Madden Girl Winnona Flatform Hi-Top became available in March.  Not only did Madden continue selling the accused sneaker, Madden introduced a second model, the Shark sneaker, that Converse says infringes both design patents because it copies the two-part sole of the Converse sneaker.

 

This case demonstrates the importance of claiming many different aspects of a product design.  Here, by disclaiming the non-sole portions of the shoe, Converse enabled a broad scope that would cover sneakers having uppers that differed from Converse’s actual product.  Further, by having the front of the rear part of the sole in broken lines in the ‘106 patent, the patent potentially covers both Madden sneakers.

UPDATE – many thanks to The Fashion Law for quoting me in their report on this case.  You can read their analysis of this case here, and check out the rest of their insights into fashion law, both intellectual property and otherwise, at www.thefashionlaw.com.

 

Foss v. Marvic, Inc. d/b/a Brady-Built Sunrooms et al. (D. Mass. 20-cv-4057).

Graphic designer Cynthia Foss, acting pro se, accuses Marvic of using a twenty-page brochure prepared by Foss in a scope beyond that contemplated by her (unwritten) agreement with Marvic and in violation of her copyright in the brochure.  Foss first brought suit in 2018, asserting copyright infringement, breach of contract, tortious interference with advantageous business relations, conversion, unfair and deceptive business practices, fraud, and breach of fiduciary duty.  The copyright claim was dismissed following the Supreme Court’s Fourth Estate decision because the Copyright Office had not yet acted on Foss’ application for registration, and Marvic was granted summary judgment on the remaining claims, in part because Foss failed to respond to Marvic’s requests for admissions, resulting in the admissions being deemed true.  Foss appealed the dismissal of the copyright count, believing that Fourth Estate allows for a stay of litigation pending a decision from the Copyright Office rather than dismissal, and the appeal remains pending.  Foss asserts that Marvic refused to agree to a tolling of the statute of limitations on her copyright claim while the appeal was pending, forcing her to file the new complaint to preserve her rights.  Judge Hillman, who presided over the previous case, has been assigned to this matter.

Modulus Financial Engineering, Inc. v. Modulus Data USA Incorporated et al. (D. Mass. 20-cv-10997).

Modulus Financial Engineering (MFE) filed suit against Modulus Data USA and Modulus Data, Inc. (collectively, MDU) asserting trademark infringement, unfair competition and false designation of origin.  MFE has used the MODULUS mark for software design and development since 20002, and owns registrations for MODULUS in connection with the same.  MFE asserts that MDU began using the mark “Modulus Data” through a website known as Log10solutions.com in 2015 when it applied for a registration on the mark.  MFE asserts that, in the application for registration, MDU falsely asserted a date of first use that preceded MFE’s application for a federal trademark on MODULUS.  MFE further alleges that MDU strategically described its offerings to obscure the fact that software is the base of its products and services.  In March 2016, MDU changed its name from Logic10 Solutions to Modulus Data.  MFE then sent a cease and desist letter, after which MFE asserts that MDU filed a Section 7 Request with the PTO to change the date of first use in commerce of November 10, 2015. In addition to the trademark infringement and related claims, MFE seeks cancellation of MDU’s “Modulus”-based trademarks.

RS Means Company, LLC et al. v. SED Associates, Inc. et al. (D. Mass. 20-cv-10993)

RS Means and The Gordian Group accuse SED Associates and Aaron Richardson of copyright and trademark infringement in connection with SED’s alleged sales of counterfeit copies of books relating to construction cost estimating data.  RS Means asserts that its RS Means data is the construction industry standard for local cost estimation data, and that SED sells counterfeit copies on Amazon under the pseudonym “Code Emporium.”  RS Means says that Aaron Richardson, an SED engineer, purchased seven different RS Means titles in November 2019,  which were then copied and sold via Amazon, several specifically from Aaron Richardson himself.  RS Means points to reviews of these books on Amazon, which include complaints as to the quality of the physical books themselves, as opposed to the content.  In addition to copyright and trademark claims, RS Means asserts unfair competition under M.G.L. c. 93A.  Judge Casper has the case.

Solta Medical, Inc. v. Lumenis, Inc. et al. (19-cv-11600).

Solta sued Lumenis, Inc. and its Israeli-based corporate parent Lumenis Ltd. In 2019, accusing them of infringing two patents related to improvements in controlled cooling of skin and other tissue being treated by lasers.  Lumenis Ltd. Moved to dismiss for lack of personal jurisdiction, asserting that the U.S. entity was responsible for all efforts to market and sell the accused products in the United States (and in Massachusetts).  Judge Casper applied the prima facie standard and taking all factual allegations in the complaint and uncontroverted factual allegations made by the defendant as true, as is required where the motion is decided without an evidentiary hearing.  She noted that Lumenis Ltd. Manufactures the accused products in Israel and then sells the products through wholly-owned subsidiaries in the United States and other countries.  Lumenis, Inc., one such wholly-owned subsidiary, has sold accused products and directed marketing activity into Massachusetts.  The accused products were identified as Lumenis Ltd. Products in an SEC filing, and Lumenis Ltd. Is the entity that applied for FDA approval to market and sell in the United States.  While noting that ownership of a Massachusetts subsidiary is not, standing alone, sufficient to establish personal jurisdiction, here the two Lumenis entities are both transacting business for the purposes of satisfying the long-arm statute of the Commonwealth.  Lumenis Ltd’s’ SEC filing indicated that it provides training and certification of field service engineers for the accused products and operates communications centers for each regional sales and marketing areas.  This collaboration with Lumenis, Inc. is sufficient to establish personal jurisdiction over Lumenis Ltd. For complaints associated with the sales of these products.

Minden Pictures Inc. v. Find Import Corp. (20-cv-10598).

Stock photography company Minden Pictures accuses Find Import of copyright infringement and violation of the Digital Millenium Copyright Act in connection with Find Import’s alleged use of a Minden-controlled photograph on its website. As has been the case with several similar Minden complaints filed in Massachusetts, this complaint alleges copying and removal of copyright management information without providing any suggestion of access and seek full statutory damages for willfulness without factual allegations of the same.