Bio-Rad and the University of Chicago accuse French company Stilla of infringing patents related to droplet digital PCR, a method of genetic analysis in which DNA molecules are separated into individual water droplets in an oil emulsion, eliminating the need for multiple test tubes or wells and allowing for analysis of smaller sample sizes than other PCR systems. Bio-Rad asserts that it spent more than $500 million developing the technology, through research and strategic acquisition, and that it has an extensive patent portfolio covering the technology. Bio-Rad accuses Stilla’s Naica System, introduced in 2016, of infringing two of those patents, one of which is owned by the University of Chicago and exclusively licensed to Bio-Rad and the second of which is owned directly by Bio-Rad. Personal jurisdiction is asserted in Massachusetts on the basis of Stilla’s recently-formed and Beverly-based U.S. entity, as well as on Stilla’s demonstration of the Naica System at the Circulating Biomarkers World Congress in Boston in March 2018, prior to the founding of Stilla’s U.S. entity. The case has been assigned to Judge Young.
Medacta makes and sells orthopedic and neurosurgical medical devices, including joint replacement products sold under the “MyKnee” mark. Medacta has a federal registration on a stylized version of the mark, in which the letter “M” is formed by two angled triangles.
While not yet incontestable, Medacta has filed the § 1065 declaration that should lead to incontestability. Medacta asserts that Conformis’ use of “#ThisIsMyKnee” in connection with advertisements for orthopedic products constitutes both federal and common law service mark infringement, as well as false designation of origin and dilution under Massachusetts law.
Medacta seeks injunctive relief and monetary damages, and asserts that the infringement is willful, despite making no allegations of having brought the issue to ConforMIS prior to filing suit. Judge Young has the case.
Ecolab sued B& B in February, accusing the pest control company of infringing its U.S. Patent 10,070,639, which claims heat systems for killing bed bugs and other pests. Ecolab had notified the manufacturer of a heat treatment system, called “AmCan BugStop Hot House,” and asked the manufacturer to provide notice of the ‘639 patent to all U.S. purchasers of the product. On this basis, Ecolab asserted that the infringement was willful, and sought treble damages and attorney’s fees. The dispute did not last long – On March 21, the owners of B & B, acting pro se, entered into a consent judgment, which Judge Young entered as a court order four days later. Under the consent judgment, B & B agreed that the ‘639 patent is valid and enforceable and that it infringed the patent. B & B further accepted a permanent injunction.
Greater Boston Authentication Solutions (“GBAS”) accuses Woburn’s Kaspersky of infringing three patents relating to remotely unlocking electronic data using cryptographic authentication. GBAS asserts that Kaspersky’s license activation and verification technology infringes the patents, either literally or through the doctrine of equivalence. Judge Young has the case.
The patent claims of this multi-claim lawsuit surrounding 3-D metal printing were bifurcated, and a jury trial on the patent claims was held in late July. The jury returned a verdict finding the two asserted patents valid but not infringed. The remaining trade secret, breach of contract, and unfair competition claims will be tried at a later date.
Following the trial in this case, in which Abhai was found to infringe a pair of Shire’s reissue patents and to have committed litigation misconduct warranting the award of attorneys’ fees (as well as a $30,000 sanction payable to the Court for wasting the Court’s time), Judge Young awarded fees of $1,501,455.32. He cut some time that would have been incurred regardless of the misconduct and for time spent on motions to compel that were not granted, reducing the award by $833k from what Shire had sought. The case will soon be in condition for appeal.
Judge Young denied without prejudice a pair of motions to seal. He noted that the Protective Order entered in the case governs only inter-party disclosures, and cannot provide the basis for filing a document under seal with the court. This case, which involves claims of misappropriation of trade secrets relating to metal 3D printing in connection with the hiring of a former Desktop Metal employee as well as patent infringement claims, was filed in March of 2018, with a motion for preliminary injunction, based on the asserted patents, filed shortly thereafter. In keeping with his typical approach, Judge Young collapsed the motion with an early trial, which he scheduled for July. Markforged then filed counterclaims alleging that Desktop Metal’s founders themselves took Markforged trade secrets with them when they started the company. Desktop Metal sought to bifurcate and try only the patent claims in the July trial, or to allow an expedited hearing on its motion for preliminary injunction, citing the “morass” of additional factual and legal elements from the counterclaims that would make the targeted July trial date unworkable. The motion was denied without prejudice, as was a motion to continue the trial to later in July. A series of motions to dismiss were denied (although Judge Young did note that many of the affirmative defenses seemed to be mere boilerplate, “interposed for the purpose of delay”), meaning a complex litigation involving patents, trade secrets, contractual and other state law claims may well run only four months. One should always be aware that, when appearing before Judge Young, there is a strong chance of a quick trial if preliminary relief is sought.