Magistrate Judge Sorokin denied Puma’s motion to compel supplementation of Nike’s preliminary infringement claim charts. Nike, which is asserting seven patents against seventeen Puma products, filed and then supplemented its preliminary infringement contentions pursuant to L.R. 16.6(d)(1)(A). The District of Massachusetts amended L.R. 16 in 2018 to require the patentee produce claim charts providing with as much specificity as reasonably possible a description of where and how each claim element is found in the accused products. Nike’s most recent supplementation, totaling 260 pages, contain full color photographs with annotations showing where each element is located on each accused product. Judge Sorokin found this sufficient at the early stage of the proceedings to meet the requirement of the amended rule.
Having previously granted summary judgment in favor of Defendants and having determined that the case was exceptional and that Defendants were entitled to their reasonable attorney’s fees under 25 U.S.C. § 1117(a), Judge Casper ordered Plaintiffs to pay $153,820.35 in fees. Relying on the opinion of lead counsel, a 2013 Massachusetts Lawyers Weekly article on average rates in Boston, and the approval (over no objection) of the rates sought in earlier discovery proceedings between the parties before Magistrate Judge Kelley, Judge Casper approved of rates of $590-$600 for partners, $290-$465 for associates, and $100-$250 for paralegals. She did reduce the total fees sought by 10% due to some block billing that did not divide out time spent on particular tasks, but otherwise rejected Plaintiffs’ objections to the amount sought.
Australia’s Cochlear sued North Carolina-based MED-EL for infringement of three patents relating to implantable hearing aids. Cochlear asserts that MED-EL’s “Synchrony” Implant System directly and indirectly infringe the subject patents. Cochlear asserts jurisdiction in Massachusetts based on MED-EL being incorporated in the Commonwealth.
Judge Casper partially granted Neotech’s motion to stay the litigation pending inter partes review. This case, which concerns allegations of infringement of a patent relating to aspiration devices, was filed in California in May 2017. Following the issuance of the TC Heartland decision, Neotech filed a complaint in Delaware, where it believed Sandbox to have been incorporated, and dismissed the California complaint. Upon being informed that Sandbox was, in fact, incorporated in Massachusetts, Neotech amended its Delaware complaint to remove the jurisdictional allegations and moved to transfer the case to Massachusetts, while Sandbox moved to dismiss the case for lack of personal jurisdiction and improper venue, seeking to have the second Delaware complaint deemed a second voluntary dismissal and asking the Court to dismiss the complaint with prejudice pursuant to FRCP 41(a)(1)(B). The Delaware court transferred the case to Massachusetts and left the decision on Sandbox’s motion to dismiss to the Massachusetts court. Sandbox then requested inter partes review of the patent in suit, and Neotech moved to stay the litigation pending the outcome of the IPR. Judge Casper stayed the case in its entirety until the first of May 30, 2019 or the PTAB’s decision on whether to institute the IPR, and indicated that she would accept requests to continue to stay the case if the IPR should proceed. She further denied Sandbox’s motion to dismiss without prejudice, indicating that Sandbox would be free to renew the motion once the stay was removed.
In a case involving allegations of infringement of a patent relating to placement of components on circuit boards, Palomar sought partial summary judgment of literal infringement. Palomar asserted that of the three non-infringement grounds MRSI provided, one was based on a frivolous claim construction and the other two were directly contradicted by MRSI’s 30(b0(6) witness. Palomar also sought summary judgment on MRSA’s public use invalidity defense, alleging that MRSI had failed to timely provide contentions relating to this issue that provided the requisite detail to maintain the defense. Noting that o claim construction order has yet issued and discovery remains on-going, Judge Saylor denied Palomar’s motions without prejudice, finding them to be premature. He further noted that, to the extent the motions were the result of an alleged failure of MRSI to provide discovery or make required disclosures, a motion to compel or for sanctions would be the appropriate step for Palomar to take.
Plum Island Soap Co. filed a lawsuit involving its “THE MAN CAN” trademark and trade dress, the second such suit over the past two years. Plum Island Soap has sold packages of men’s toiletries in a paint can, “The Man Can,” since 2004, and it has already obtained injunctive relief relating to the now-registered mark and trade dress in a 2013 decision. Plum Island Soap alleges that Duke Cannon sells sets of men’s toiletries in identical paint cans, under the names “The Handsome Man Grooming Can” and “The Dapper Gentleman’s Grooming Can.” Plum Island Soap urges federal and common law trademark and trade dress infringement, unjust enrichment, injury to business reputation, and violation of C. 93A, although proving that the infringing acts occurred primarily and substantially within the state may be difficult, given that Duke Cannon is a Delaware company whose connection with Massachusetts appears to be the operation of a generally-available website.
Judge Talwani denied defendant’s motion to join or substitute two alleged real parties in interest. AF Holdings brought the case in 2012, accusing Chowdhury of copyright infringement relating to a pornographic film, but failed to show at a hearing, resulting in dismissal of AF’s claims against Chowhurdy and denial of AF’s motion to dismiss Chowhurdy’s counterclaims. When AF failed to answer Chowhurdy’s counterclaims, the Court entered default judgment against AF, as well as AF aliases/alter egos AF Holdings, Inc., Prenda Law, Inc., John L. Steele, Paul A. Duffy, Paul R. Hansmeier and Mark Lutz. Several of these alter egos appealed, asserting that they were not properly named or served, and the First Circuit vacated default judgment against them, noting that even where an alter ego is alleged to be liable for a judgment, they must be hailed into court. Chowhurdy in response filed the instant motion. Judge Talwani noted, however, that a party can be substituted only where an interest is transferred to the new party during pendency of the lawsuit, which was not alleged here. Noting that the proposed new counterclaim defendants would be stuck with a default against them, rather than a judgment following adjudication on the merits, she refused to substitute them in the instant case. Judge Talwani did note that the claim that the proposed new defendants may well be the real parties in interest and subject to a new claim for relief. Accordingly, she made the denial was without prejudice to defendant seeking leave to file an amended counterclaim adding the new parties.