DR Media Holdings, LLC et al. v. Top Rated Online LLC (18-cv-11163).

DR Media Holdings and its wholly-owned subsidiary, DealerRater.com, LLC, sued Michigan company Top Rated Online LLC, for trademark infringement, false designation of origin, unfair competition, and violation of Mass. G.L. 93A.  DR Media runs a website, www.dealerrater.com, that provides ratings and consumer reviews of automotive dealers and service centers.  In connection with these reviews, DR Media (seen previously here) annually awards dealerships for best dealer and customer satisfaction, and offers to sell the dealers trophies bearing the trademarked award logos.  DR accuses Top Rated of offering to produce trophies for the award winners bearing these logos and DR’s DEALERRATER trademark.  DR cites specific examples of this occurring with dealerships in Tennessee and Michigan, but only generally alleges infringing activity occurring in Massachusetts, leaving the 93A claim, which requires the acts complained of take place substantially within Massachusetts, in doubt.  Judge Saylor has been assigned to the case.

Desktop Metal, Inc. v. Markforged, Inc. et al. (18-cv-10524).

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.

In re: NeuroGrafix (‘360) Patent Litigation (13-cv-02432).

NeuroGrafix accused Brainlab of infringing its U.S. Patent No. 5,560,360, which covers methods of imaging neural tissue to distinguish anisotropic nerve tracts in which water can diffuse along the length of the nerve tract but not perpendicularly to the nerve tract.  A number of method claims were asserted, including a single independent claim.  Brainlab sought summary judgment of non-infringement based in part on its chosen interpretation of two claim limitations – exposing a region that includes a selected structure that includes both anisotropic and non-anisotropic tissue to a magnetic polarizing field, and generating a data set that distinguishes the two structures.  Brainlab contended that it cannot target the required “selected structure” because until the data is obtained, one cannot know where the anisotropic structure is, arguing that the ‘360 patent is directed to improved imaging of peripheral nerves, and that therefore the “select structure” must be limited to peripheral nerves, which Brainlab’s accused product does not track.  Brainlab also asserted that its accused product does not distinguish anisotropic structure from non-anisotropic structure as required by the claims, because it does not permit the user to enter an FA Threshold value of zero, which would correspond to tissue that does not exhibit diffusion anisotropy.  Judge Stearns determined that, while the motivation described for the invention was the improvement of peripheral nerve imaging, this motivation standing alone is insufficient to limit the scope of the claims.  He cited language in the specification that referred to distinguishing anisotropic tissue from other structures that do not exhibit anisotrophy as referring to distinguishing tissue that had levels of anisotrophy low enough to be insignificant for imaging purposes as opposed to having an absolute absence of anisotrophy.   He also criticized Brainlab’s attempt to draw limitations from dependent claims into the independent claim, the opposite of the principle of claim differentiation.

Despite ruling in NeuroGrafix’s favor on the disputed claim terms, Judge Stearns ultimately granted summary judgment of non-infringement to Brainlab.  NeuroGrafix’s allegations were that Brainlab induces infringement, with the direct infringement occurring when the user images the pyramidal tract in the brain.  Judge Stearns found that, depending on the purpose of the physician in imaging a patient, the accused product is capable of both infringing and non-infringing uses.  Mere capability of infringement, however, is insufficient to establish liability, and NeuroGrafix could point to no record evidence that any physician had ever actually used the product in a manner that would infringe.  Judge Stearns distinguished cases where direct infringement could be inferred by instructions that not only described the infringing mode, but taught or encouraged it; the marketing material for the accused product did note the possibility of delineating the pyramidal tract, but did not teach the particular settings to achieve this.  Accordingly, Brainlab’s motion for summary judgment of non-infringement was allowed.

Massachusetts Implementing New Local Rules Governing Patent Disputes

The District of Massachusetts is amending Local Rule 16.6, which governs patent proceedings in this district.  The previous iteration of the rule provided that the parties would consider some patent-specific events in preparing the joint statement proposing as schedule, but imposed no particular time frame for these events.  The amended rule changes this, laying out specific time frames (although courts remain free to modify these deadlines as the particular case requires).  Under the new rule, a Markman hearing should be scheduled within 9 months of the scheduling conference, and fact and expert discovery are to close no later than the later of 15 months after the scheduling conference or 60 days after a claim construction ruling (fact discovery) or 18 months after the scheduling conference or 90 days after a claim construction ruling (expert discovery).  Trial is to occur within 24 months of the scheduling conference.  Should the court conduct a post-Markman status conference, the parties must meet and confer at least 14 days prior to discuss the impact of the claim construction ruling, whether any issues can be narrowed, whether any changes to the schedule will be proposed, and whether the parties can agree to mediate, with a joint statement to be filed no less than 7 days prior to the conference.

Some additional automatic disclosures have also been added.  Within 21 days after the initial scheduling conference, the patentee must provide infringement claim charts that identify the accused products and the claims infringed and identify on an element-by-element basis where and how each element is found in the accused product or method, as well as identifying structure for any means-plus-function limitations, identifying claims to be asserted literally or under the doctrine of equivalents, and whether direct, contributory or induced infringement are being asserted.  At the same time, the patentee must produce documents concerning conception and reduction to practice, documents evidencing ownership of the patents, and documents establishing the real party in interest.  Twenty-one days later, the accused infringer must produce documents showing the composition, construction and performance of all accused products or methods, produce or permit inspection of samples of the accused items, provide non-infringement and invalidity claim charts and identify all non-art-based grounds for invalidity, and provide documents sufficient to establish the real party in interest.  These requirements may be amended only by leave of court upon a showing of good cause.

A schedule with a procedure laid out for the steps leading up to the Markman hearing is provided.  Among other things, this schedule contemplates a maximum of ten claim terms for construction, which can be expanded with leave of court upon a showing of good cause.  Additionally, a period of 28 days following entry of a claim construction ruling is established for the disclosure of opinions of counsel on which any party wishes to rely.  A default protective order is added, allowing the designation of documents as confidential and limiting their viewing to outside counsel.

The new rule becomes effective tomorrow, June 1st, and will apply in all cases in which a scheduling order has not yet been entered as of that date, including declaratory judgment actions.  The full text can be found here, and should be consulted carefully by those appearing in a case that involves disputes over the infringement, validity, or enforceability of a U.S. patent.

In re: NeuroGrafix (‘360) Patent Litigation (13-cv-02432).

In a turn from his response to a previous similar motion, Judge Stearns denied defendant Johns Hopkins Hospital’s motion for costs for responding to a third party subpoena from NeuroGrafix, finding the costs incurred were not unreasonable given that the subpoena was quashed and Johns Hopkins did not have to fully respond, and the subpoena was not found to be vexatious.

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

God’s Era, a clothing company founded by a college student to sell clothing reflecting her Christian faith, filed suit against New Era Cap, accusing the big league hat manufacturer of trademark infringement, false designation of origin, and unfair competition in connection with New Era’s decision to market apparel bearing both the NEW ERA trademark and a new FEAR OF GOD mark.  The dispute began when New Era filed an opposition against God’s Era’s application for federal registration of its mark, which remains pending.  At the time of the filing of the opposition, New Era was not using the FEAR OF GOD mark, according to the complaint, and was not selling street apparel, the style of clothing that God’s Era was selling.  God’s Era seeks an injunction preventing New Era from using the word “GOD” in connection with any of the “NEW ERA” marks and preventing New Era from continuing with the opposition to the GOD’S ERA application, as well as monetary damages, fees and costs, and destruction of the accused goods.  The case is before Judge Talwani.

beIN Media Group LLC v. Bein.com et al. (18-cv-11061).

beIN Media filed an in rem complaint against a number of domain names, alleging violation of the Anticybersquatting Consumer Protection Act.  beIN broadcasts sporting events (e.g., U.S. Open gold and NBA games overseas, World Cup soccer qualifiers, professional tennis, and the like) worldwide via cable systems, Direct TV, and the internet.  In connection with this, beIN owns several registrations to the mark “BEIN” in a variety of classes of goods and services.  beIN asserts that UK resident Honza Jan Zicha registered a number of domain names through PRD Ltd. (doing business as publicdomainregistry.com), which is headquartered in Burlington, Massachusetts.   Zicha is accused of running a business, “Buy Sell Dns Ltd.” for the sole purpose of buying and selling domain names, and the domain names in question generally redirected to a single site, bein.com, which has alternatingly indicated the site was under development or was up for sale, with a solicitation for offers.  Zicha is further accused of seeking excessive money for the domain names ($1.5 million), with the threat to sell the names to a different entity, beoutQ, who allegedly pirates and rebroadcasts beIN’s content.   beIN asserts that personal jurisdiction cannot be established over Zicha anywhere in the United States, and accordingly brings the complaint against the domain names themselves in rem, with the place of the business through which the domains were registered  serving as the appropriate venue.  beIN seeks transfer or cancellation of the domains.