Night and Day Furniture, LLC v. Atlantic Furniture, Inc. (18-cv-30104).

After the parties to this patent litigation reached a settlement just before the scheduled Markman hearing, the parties sought to have the case dismissed. Judge Mastroianni granted the motion to dismiss with prejudice, but denied the parties’ request that the court retain jurisdiction and incorporate the settlement agreement into the dismissal order, citing the general policy of the court not to adopt or endorse settlement agreements between private parties.

2019 – Looking Back.

Intellectual property filings in the District of Massachusetts remained high in 2019. Of the 94 total district courts in the United States, the District of Massachusetts ranked 11th for new patent filings, 14th for trademark filings, 20th for copyright filings and 18th for trade secret filings. Presently, there are 61 open patent cases, 82 open trademark cases, 39 open copyright cases and 31 open trade secret cases in this District. New patent cases covered a wide range of technologies, including medical devices, robotics, and communications. A long-running dispute between SiOnyx and Hamamatsu Photonics went to trial, with SiOnyx prevailing on infringement, contract and unjust enrichment claims as well as correction of inventorship and injunctive relief. A significant number of 2019’s copyright litigation revolves around allegations that a business took a copyrighted photograph from the internet without license and placed it on their website, often further alleging the removal of copyright management information. This stems from the rise of reverse image search software that can continuously scour the internet for copies or derivative works, allowing much easier discovery of potential infringements. In the trademark realm, Massachusetts was home to several infringement suits against resellers such as Amazon stores who were (or at least may have been) selling products actually made by the trademark holder but not obtained as authorized resellers. Smart home control product maker ecobee was one of the leaders in this area, filing four such suits after having filed three in November 2018.

Minden Pictures Inc. v. Expressway Motors Inc. (20-cv-10179).

Minden Pictures, a California-based stock photo provider that specializes in nature and wildlife photographs, accuses Dorchester’s Expressway Motors of copyright infringement. Minden offers rights to photographs from a number of different photographers, including Tim Fitzharris, and displays the photographs it displays with watermarks containing copyright management information. Minden asserts itself to be the exclusive licensee of a particular Fitzharris photograph of fall foliage in Acadia, Maine that appears on Expressway Motors’ website. Minden asserts that the infringement was willful, and that Expressway Motors willfully removed the copyright management information. The case has been assigned to Magistrate Judge Kelley.

CardioNet, LLC et al. v. InfoBionic, Inc. (15-cv-11803).

In a long-running patent dispute concerning cardiac monitors, Judge Talwani denied in part CardioNet’s motion for summary judgment. CardioNet sought judgment that InfoBionic infringed four claims of one of the remaining patents, and that those claims, along with a claim from another of the remaining patents, were valid. Judge Talwani found, in a very short electronic order, that there were genuine issues of material fact with respect to validity and infringement on the four claims and denied the motion. With respect to the second patent, Judge Talwani set the validity for a February hearing.  She further instructed CardioNet to address why summary judgment of non-infringement should not be granted on the basis that the accused MoMe system lacks a frequency domain T wave filter as that term was construed.

Durant v. Coughlin & Co., Inc. et al. (20-cv-10123).

John Durant, a San Diego photographer, sued Richard Coughlin and his Weymouth-based real estate business, Coughlin & Co., accusing them of placing a Durant photograph on Coughlin & Co.’s website without license. Durant asserts that Coughlin was notified of the infringement in August, but has refused to remove the photograph from the website.

Plastipak Packaging, Inc. v. Ice River Springs Water Co. Inc. et al. (19-cv-11193).

In May of 2019, Plastipak sued Ice River Springs Water Co., accusing the Canadian company and its U.S. affiliate Ice River Springs USA of willfully infringing ten Plastipak patents related to “light-weighting,” a technique that allows for a neck of a plastic bottle that is lighter in weight and contains less material while retaining threads, tamper-evident formations and a support flange.  Plastipak had previously sued Niagara Bottling, LLC in the Eastern District of Virginia, which the parties settled in 2018. In the present litigation, Ice River sought production related to the prior litigation from Plastipak, including prior art, deposition transcripts, discovery requests and responses and the like. Judge Talwani granted Niagara Bottling’s motion for a protective order, preventing the disclosure of documents containing Niagara’s confidential information that were involved in the Niagara litigation. She found that Ice River failed to show why such confidential information is sufficiently relevant to justify the burden on Niagara of having its confidential information exposed to a competitor. Judge Talwani denied Plastipak’s motion with respect to Plastipak’s own documents from the prior litigation, with any Niagara confidential information redacted, and further ordered Plastipak to confirm the redactions with Niagara prior to producing them.

Cobb v. TripAdvisor LLC (20-cv-10111).

Maryland photographer William Cobb accuses TripAdvisor of misusing one of his photographs on its website. The complaint asserts that TripAdvisor stripped copyright management information from a Cobb photograph and then placed the photograph on TripAdvisor’s website in several places. The photograph, an aerial view of St. Petersburg, Florida, appeared on a “things to do” page, identified as https://www.thingstodo.avis.com, that appears to belong to Avis rather than TripAdvisor. No explanation is given as to why TripAdvisor is responsible for the placement of the photograph on this web page.