Typemock, Ltd. v. Telerik Inc. (17-cv-10274).

Judge Stearns denied Telerik’s motion to amend its answer to add counterclaims of invalidity and unenforceability due to Telerik’s lack of diligence in seeking to add these claims. Telerik obtained key documents giving rise to the proposed claims six months before seeking to amend, and provided no explanation for the delay, thus failing to establish the diligence required to show good cause under Rule 16(b).

Crane Security Technologies, Inc. et al. v. Rolling Optics AB (14-cv-12428).

Judge Sorokin precluded Rolling Optics from offering testimony that certain asserted claims are invalid. Defendants did not offer expert opinion that the claims were anticipated by Rowland Technologies patents or products, but sought to elicit non-expert fact testimony from a Rowland representative.  The Court determined that the technology at issue (described briefly here) was too complicated for a jury to understand without expert assistance, and precluded Rolling Optics from presenting any evidence, opinions or argument to the jury on the Rowland technology.  This case is in its fourth day of trial, so I expect to see more from this courtroom.

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.

Crane Security Technologies, Inc. et al. v. Rolling Optics AB (14-cv-12428).

The Crane/Rolling Optics case continues rolling towards trial, with Judge Sorokin excluding proposed testimony from Rolling Optics’ technical expert.  The court construed claim terms in February 2016, and the parties briefed and argued summary judgment motions based on the Court’s constructions.  Rolling Optics never sought reconsideration of the construction of a particular term, “shaped posts,” which had been construed to mean “shaped as pieces fixed in an upright position,” but argued at summary judgment that this construction precluded portions that were wider than they were tall.  Judge Sorokin rejected this secondary construction and noted at the time that Rolling Optics had failed to contend that the Court’s actual construction required any further discovery.  In February, Rolling Optics indicated it intended to secure a supplemental expert report to address the Court’s shaped post ruling at summary judgment, but failed to seek an extension of the expert discovery period, to make the expert available for deposition, to explain how such a supplemental disclosure might impact the trial date, or identify the portion of the expert’s initial report that required amendment.  Judge Sorokin ruled on February 13 that no further expert discovery would be allowed, effectively rejecting the proposed supplemental disclosure.  Rolling Optics nevertheless indicated at the final pretrial conference that it intended to elicit testimony from the supplemental disclosure, which Crane promptly opposed.  In addition the reasons laid forth above, Judge Sorokin noted that the supplemental declaration’s stated understanding of the construction of “shaped posts” from the summary judgment order was “so plainly wrong as to render his entire Second Supplemental Declaration inadmissible as unreliable, irrelevant, and posing too great a risk of confusion,” and the proposed testimony was excluded.

Spark451 Inc. v. 451 Marketing, LLC d/b/a Agency 451 (18-cv-10833).

Marketing and communications company Spark451 sued Agency 451 for trademark infringement and breach of a trademark co-existence agreement.  Spark451 provides services under the “SPARKS451” mark to college and university clients that allow the schools to reach potential students, and has been using the mark in 2011.  The Defendant, which began as “451 LLC” in 2004 and changed its name to “451 Marketing, LLC” in 2007, sought to cancel the “SPARK451” registration in 2015.  The proceeding ended with the parties executing a co-existence agreement whereby 451 Marketing agreed not to use any mark consisting solely of or ending with “451” and each party agreeing to take all reasonable steps to avoid confusion as to the source or origin of their services.  Despite this, 451 Marketing changed its name to “Agency 451” in April 2017, and changed its website to http://www.agency451.com.  Spark451 asserts that this change breached both of those clauses, and that the nature and potential customers of the two businesses are sufficiently similar, and the names and commercial appearance of the marks so similar, that the use of “Agency 451” infringes the “SPARK451” mark.  Spark451 seeks injunctive and monetary relief as well as a finding of willful infringement, treble damages and reasonable attorney’s fees and costs.  The case is before Judge Stearns.

Crosby Legacy Company, LLC d/b/a Philip Crosby Associates v. TechnipFMC plc (18-cv-10814).

Crosby Legacy offers quality consulting services that employ the teachings of its founder, Philip J. Crosby, a pioneer in the field.  Crosby Legacy consulted for energy company FMC under an agreement executed in 2014 which permitted FMC to utilize the Crosby materials company-wide, including copyrighted works and the use of three Crosby trademarks – Absolutes of Quality Management™, Absolutes of Quality™, and Price of Nonconformance™.  The 2014 Agreement restricted continued use of the Crosby materials should FMC experience a change in control.  FMC subsequently merged with Technip S.A., creating defendant company Technip FMC in January 2017. Pursuant to the change of control provisions, Crosby Legacy sought to negotiate an agreement with the new entity to allow them continued use of the Crosby materials.  TechnipFMC expressed a strong interest in continuing the relationship, and according to Crosby Legacy, a $2.3 million agreement was reached via a string of e-mails in May 2017, needing only to be memorialized and executed.  TechnipFMC dragged its feet on the specific language to be included in the new agreement, and ultimately announced in November 2017 that it was no longer interested in working with Crosby Legacy.  At that point, TechnipFMC had used the Crosby materials for eleven months without paying, in violation of the 2014 Agreement’s change of control language.  Crosby accuses TechnipFMC of breaching the 2014 Agreement and of having formed, and then breached, the 2017 Agreement, and also brings claims of breach of the implied covenant of good faith and fair dealing, fraud, 93A claims, trademark and copyright infringement, and unjust enrichment.  The case is before Judge Wolf.

MacDonald, aka “Tommy Mac” et al. v. WGBH Educational Foundation et al. (18-cv-10773).

Woodworker and former TV host Thomas MacDonald sued Boston public television station WGBH for trademark infringement, false suggestion of connection, false endorsement/sponsorship, unauthorized use of name and picture under state law, misrepresentation, and breach of contract in connection with WGBH continuing to produce and broadcast the show “Rough Cut – Woodworking with Tommy Mac” after not renewing MacDonald’s contract to host the show.  According to the complaint, Mr. MacDonald had a highly successful fine furniture business that had utilized the marks “Tommy Mac” and “rough Cut” for a nine-year period of time when WGBH approached him about hosting a woodworking show on the station.  At that point, MacDonald had been discussed in the media on many occasions, had appeared on Bob Vila’s “Home Again” show, and had established a weekly web-based show, called “The Rough Cut Show,” which had over 2 million page views and hundreds of thousands of followers and established common-law trademark rights in “Tommy Mac” and “Rough Cut.”  His contract to host the WGBH show, titled “Rough Cut: Woodworking with Tommy Mac,” required him to permit WGBH to register the show name as a WGBH-owned trademark and required him to give up his woodworking business to focus exclusively on the show.  The agreement did not, however, convey rights to “Tommy Mac” or “Rough Cut” standing alone; WGBH did, however, register “Rough Cut” without informing MacDonald.  MacDonald hosted the show for seven seasons, at which point his contract was not renewed.  Rather than simply cancelling the show, WGBH hired a new host, Tom McLaughlin, and aired another season, which WGBH referred to as “Season 8” of the show.  WGBH continued using the name “Rough Cut – Woodworking with Tommy Mac,” and continued using MacDonald’s likeness in advertisements and listings.  MacDonald seeks injunctive relief, including a requirement that WGBH air an oral and written statement indicating that MacDonald is no longer associated with the show; cancellation of WGBH’s “Rough Cut” mark, monetary damages and attorney’s fees.

I recall watching some of the shows MacDonald hosted – he created really beautiful furniture, such as this Hepplewhite Sideboard found at his website.

GAL-Hepplewhite_Sideboard_01-150x150