Ethicon Endo-Surgery, Inc. at al. v. Covidien LP et al. (16-cv-12556).

Judge Sorokin denied Covidien’s motion for a preliminary injunction that sought to bar sales of Ethicon’s Enseal® X1 Large Jaw Device, a surgical tool that allows a surgeon to grasp a vessel between two jaws, apply energy to the jaws to for a seal, and cut the now-sealed vessel. Prior to the introduction of this device, Covidien was the market leader in such instruments that used bipolar (or radiofrequency) energy to seal the vessel.  Since its introduction in March 2017, the X1 Large Jaw has generated $7.8 million in revenue.  Covidien contends that the X1 Large Jaw infringes U.S. Patent No. 8,241,284, which claims vessel sealing devices having non-conductive stop members that maintain a constant distance between the jaw surfaces along the length of the jaws.

Because Ethicon raised a substantial question of non-infringement, Covidien was unable to demonstrate a likelihood of success on the merits. Of interest, while both parties sought to have the claim terms given their plain and ordinary meaning, the parties disagreed as to what that meaning was, with Ethicon urging a meaning that took its product out of infringement.  Judge Sorokin determined that “Ethicon’s proposed meanings are at least sufficiently persuasive to raise a substantial question regarding the ‘plain and ordinary’ meanings of the relevant terms.”  In addition, Judge Sorokin found that Covidien failed to show a nexus between the claimed elements of the device and the success of the X1 Large Jaw.  Ethicon provided evidence that sales of the X1 device were driven by factors, such as better ergonomics, ease of use, availability of sealing separately from cutting, and price, that were unrelated to the claimed elements.   Accordingly, Covidien did not show irreparable harm “resulting from the alleged infringement.”

The Life Is Good Company v. MyLocker.com, LLC et al. (17-cv-11911).

The Life Is Good Company sued MyLocker.com, Namecheap, Inc., and RamNode LLC for infringing its LIFE IS GOOD trademark, as well as trademark registrations on the “Jake” and “Jackie” symbols that cover the cartoon male and female figures that appear on Life Is Good clothing and merchandise.

LIG alleges that the defendants provide services to the website www.lifeisgoodshirt.com that utilizes LIG’s trademarks and through which counterfeit LIG merchandise can be purchased.  Specifically, LIG alleges that MyLocker provides the software that allowed the LIFEISGOODSHIRT operator to set up the website, process payments, and fulfill orders; Namecheap provides website/server management services; and RamNode hosts the website. (Notably, LIG is not suing the actual operator of the website/maker of the counterfeit goods, and does not identify such entity in its complaint).  LIG further alleges that the latter two defendants failed to respond to complaints from LIG and thus cannot show that they have complaint procedures that meet the requirements of the Digital Millenium Copyright Act’s “safe harbor” provisions.  LIG also brings counts for unfair competition and passing off, contributory trademark infringement, and counterfeiting, the last of which provides for statutory damages.  In addition to the complaint, LIG moved for a preliminary injunction.  Note – as of this morning, the LIFEISGOODSHIRT website appears to have been taken down.

Smart Wearable Technologies Inc. v. Tomtom, Inc. (16-cv-00049, W.D. Virginia).

Judge Glen E. Conrad of the Western District of Virginia granted defendant Tomtom’s motion to transfer venue to the District of Massachusetts.  The complaint, for patent infringement, was filed in July 2016, yet Tomtom’s motion was not filed until after the TC Heartland decision holding that venue is restricted to the state of incorporation or a venue in which the defendant both has a regular place of business and has committed acts of infringement.  Tomtom is not incorporated in Virginia and has no regular place of business there.  In response to the motion, Smart Wearable acknowledged that venue in Virginia is not proper under TC Heartland, but argued that Tomtom waived its venue challenge  by failing to raise it earlier.

When faced with a similar situation, Judge Young of the District of Massachusetts denied the motion to transfer, finding that TC Heartland was not a change in the law that allowed for the late filing of a venue motion.  In Virginia, however, Judge Conrad determined that TC Heartland “significantly changed the law of venue” in patent cases , and that, “as a practical matter,” the motion to transfer was not available to Tomtom prior to that decision.  While these decisions are on their face contradictory, it may be the result of differences in controlling circuit law – Judge Conrad specifically cited to a Second Circuit holding that a defense cannot be waived where it was directly contradictory to then-existing circuit precedence.

Oxford Immunotec Ltd. v. Qiagen, Inc. et al. (15-13124).

Judge Gorton denied Oxford’s motion for a preliminary injunction on sales of Qiagen’s QFT-Plus one-tube option for the diagnosis of tuberculosis. According to the opinion, tuberculosis is detected in two ways – through skin tests or through in vitro blood test known as interferon gamma release assay (“IGRA”).  Currently, Oxford and Qiagen offer the only IGRA’s available in the United States.  Oxford’s test utilizes a single, standardized tube, while Qiagen’s test requires multiple specialized tubes.  Qiagen’s next generation product contains a single tube option that Oxford believes would infringe its patents.  Oxford sought to prevent the sale of the next generation product, scheduled for launch in October 2017, until after a trial on the infringement claims.  The asserted claims have already survived an Alice-based motion to dismiss, as well as five different petitions, all rejected, for inter partes review on obviousness grounds, and at Markman, all claims were construed on Oxford’s favor.

In considering the preliminary injunction factors, Judge Gorton determined that the claims were likely to be directed to patentable subject matter, because they included non-naturally-occurring peptides. He found that Oxford was likely to succeed in proving the patents valid over the prior art because, although Qiagen could show that researchers were exploring the use of the specific peptide, this showed only that it was “obvious to try” which does not rise to a finding of obviousness.  He also noted that Qiagen’s arguments to this effect had previously been rejected by the PTO in its denial of the inter partes petitions.  Judge Gorton found that Oxford would also likely prevail on a written description challenge, as well as on infringement by the Qiagen product.  He determined, however, that Oxford had not made a “clear showing” that substantial and immediate harm is likely in the absence of an injunction.  This was due both to the delay between finding out in January that Qiagen was about to apply for FDA approval and its filing the motion for preliminary injunction in August and because Oxford had not shown that money damages would be insufficient – “evidence of potential lost sales alone does not demonstrate irreparable harm.”  This factor also weighed heavily in the balance of hardship consideration, offsetting the hardships that Oxford, a one-product company, would face in allowing Qiagen to continue selling, and ultimately led to denial of the motion.

Independent Film Society of Boston, Inc. v. Patrick Jerome d/b/a Boston International Film Festival (17-cv-11856).

The Independent Film Society of Boston (“IFSB”) has been running the Independent Film Festival Boston (“IFF Boston”) since 2003. The festival occurs each spring, and screens more than a hundred films in area independent art-house cinemas.  The IFSB previously sued the International Film Festival (“BIFF”) for trademark infringement and false designation of origin arising from BIFF’s use of BOSTON IFF and BOSTONIFF marks similar to the IFSB’s IFF BOSTON marks and for BIFF’s adoption of the www.bostoniff.org domain name.  IFSB alleges that BIFF falsely claimed priority in the BOSTON IFF mark, and that BIFF falsified evidence in an attempt to prove priority.  The case was successfully mediated by Magistrate Judge Bowler, and a settlement agreement was executed in May 2017.  (It should be noted that the falsification of evidence allegation was never proven or admitted to by BIFF).

IFSB now alleges breach of the settlement agreement by BIFF’s continued use of the BOSTONIFF mark in various places on its website, for example ,in the copyright notice at the bottom of every page, in numerous drop-down menus, and in background photographs. IFSB further alleges that BIFF has continued to direct traffic to its bostoniff.org website rather than directing all traffic to its bostoniff.com site and has failed to place a noticeable disclaimer of affiliation on all film submission documents, as required by the agreement.  IFSB also brings counts for breach of the implied covenant of the good faith and fair dealing, which is imposed as a matter of law in Massachusetts to all contracts, unfair competition, trademark infringement, and false designation of origin under the Lanham Act, common law unfair competition and trademark infringement; and violation of M.G.L. c. 93A.  IFSB seeks damages, trebling of damages for willfulness, punitive damages, a permanent injunction, specific corrective advertisements and notices from BIFF, and attorneys’ fees and costs.

 

Premium Sports, Inc. v. Keville et al. (17-cv-11848).

Premium Sports sued David Keville and his company Country Saloon Products, Inc., which does business as “Kelly’s Cellar” in Quincy, MA, alleging that Kelly’s Cellar unlawfully intercepted and descrambled the satellite signal of a Gaelic Athletic Association (“GAA”) football match between Donegal and Galway, which took place on July 22, 2017. Premium Sports brings counts for copyright infringement as well as violation of 47 U.S.C. §§ 553 and 605(a), which prohibit the unauthorized reception and publication of communications.  The latter statutes provide for injunctive relief, actual or statutory damages, and reasonable attorneys’ fees.

The defendants had previously been sued for pirating prior GAA matches, (15-cv-13009). The case settled after the defendants moved to vacate a finding that they were in default and awarding Premium Sports $69,387.07 in damages, fees and costs.

GAA football, also known as Gaelic football, is a team sport in which the object is to punch or kick a ball into the other team’s goal (a “goal”), for three points, or between two upright posts extending above the goal (a “point”) for one point. Galway won the July 22 match by a final score of 4 goals, 17 points (for a total of 29 points) to 0 goals, 14 points for Donegal.

Country Mutual Insurance Co. et al. v. Vibram USA et al. (DAR-25491).

The Massachusetts Supreme Judicial Court, the state’s highest court, agreed to review a decision concerning insurance coverage of trademark claims and the right of the insurance companies to recoup defense costs once the court determines that the underlying suit did not trigger coverage. Shoe maker Vibram was sued by the family of the late Olympic marathoner Abebe Bikila for unlawfully obtaining a trademark for a shoe using his name. Vibram’s insurers, Country Mutual Insurance Co. and Maryland Casualty Co., initially agreed to defend the case subject to a reservation of rights to challenge their obligation to cover the suit, and for some period of time paid for the defense. Judge Kaplan of the Massachusetts Superior Court subsequently found the insurance contracts were not triggered, but denied the insurance company the ability to recover defense costs they had already paid because the contracts did not expressly provide for a right to reimbursement. On appeal, the insurance companies seek reimbursement under a theory of unjust enrichment.