In re: Micron Technology, Inc. (Fed. Cir. 2017-138).

Micron Technology was sued in 2016 by Harvard College, prior to the issuance of the Supreme Court’s TC Heartland decision on venue in a patent infringement lawsuit.  Following the TC Heartland decision, Micron moved to dismiss for improper venue.  Judge Young denied the motion as waived, finding that TC Heartland had not changed the venue laws, but had merely reaffirmed prior Supreme Court case law on the subject.  Micron petitioned the Federal Circuit for a writ of mandamus to set aside this ruling, noting the disagreement among many district courts on the subject of whether the venue laws were changed by TC Heartland.  Today the Federal Circuit held that TC Heartland did change the controlling venue law, in that it made available and interpretation of the venue statute that was not previously available.  The Court found that the rarely-applied remedy of mandamus relief was appropriate here to resolve the split in district courts over the issue, and was important to proper judicial administration.  Looking to Rule 12, the Court noted that, for waiver to apply, a defense under that rule must have been “available to the [defendant] when the defendant made the initial Rule 12(b) motion.  As a matter of law, the venue defense made possible by TC Heartland was not “available” prior to that decision’s issuance, given the controlling precedent at the time.  The Court interpreted “available” to mean available at the district court, not available after going through one or more levels of appeal, and under Federal Circuit precedent, the venue defense at issue was not something that could be granted by the district court.  Accordingly, the venue defense was not waived.

This was not, however, a clean win for Micron. The Court remanded the case for consideration of whether Micron’s subsequent venue motion was filed sufficiently soon after the TC Heartland decision so as to preserve the issue, indicating that the district court has discretion under its inherent powers to deem the venue challenge nonetheless waived.  To that end, the Court noted that it had denied mandamus in cases where a post-TC Heartland challenge was brought close to trial.

DR Media Holdings, LLC et al. v. Robinson (17-cv-12251).

DR Media Holdings and its wholly-owned subsidiary, DealerRater.com, LLC, sued Saskatchewan resident Dan Robinson, alleged to be the founder and operator of Dealeradar, Inc., for trademark infringement. DR Media’s website, www.dealerrater.com, is asserted to be a leader in the field of automotive consumer reviews on dealers and service centers, while its subsidiary, DealerRater.com, offers online reputation management and monitoring services for automotive dealers.  DR media alleges that the defendant also offers reputation management and social media services for automobile dealers under the DEALERADAR name at its website, www/radaresults.com/automotive, and that it also owns the domain name www.dealeradar.com, which Mr. Robinson previously used for the business and which, since being notified of DR Media’s rights, redirects users to the current site.  DR Media further alleges that Mr. Robinson falsely uses the trademark registration symbol ® in association with the DEALERADAR mark, despite not having a registration.  Aside from trademark infringement, DR Media brings claims for false designation of origin, unfair competition, and violation of the Massachusetts Consumer Protection Act (Ch. 93A).

Avigilon Corp. et al. v. Canon, Inc. (17-cv-11922).

Canon initially sued Avigilon for infringement of five Canon patents in New York; it voluntarily dismissed that complaint after Avigilon gave notice that it intended to move to transfer to Massachusetts. Canon immediately refiled in the Northern District of Texas on October 5, 2017, alleging infringement of five Canon patents.  Later that day, Avigilon brought this declaratory judgment action in Massachusetts on the same five patents, which Canon promptly moved to transfer to N.D. Texas.  Avigilon, contending that venue is not proper in Texas and that other factors should create an exception to the “first-to-file” rule, moved for an expedited determination on Canon’s motion to transfer, seeking to have resolution before the date by which it must answer the Texas complaint (presumably with a motion to dismiss or transfer on the same grounds).  Judge Talwani denied this motion, noting that the Northern District of Texas, as the court in which claims relating to the five patents was first raised, should be the court to determine whether venue is proper and whether any exceptions to the first-to-file rule apply.  Judge Talwani stayed the Massachusetts case pending determination by the Texas court on any venue or transfer related pleadings or motions in the Texas case.

Audi AG et al. v. PartsPlaza Automotive, LLC et al. (17-cv-12221).

Audi and Volkswagen sued PartsPlaza, Wheel2power Corp., Rennsport Imports, LLC, and several indviduals asserted to own and operate these businesses for trademark infringement, dilution, false designation of origin, and counterfeiting Audi and VW trademarks “in nearly every facet of their business operations” as well as cyberpiracy. According to the plaintiffs, the defendants manufacture, import and sell aftermarket parts, such as grille covers, cigarette lighters, and other automotive badging bearing Audi or Volkswagen registered marks.  Moreover, at least one of the defendants is alleged to do business as “DubStop Imports” and “Dubstop International” and to use domain names including the phrase “dubstop,” infringing on Volkswagen’s “V-DUB” mark and form the basis of the anticybersquatting/cyberpiracy count.

Global Protection Corp. v. Sooka, Inc. (17-cv-12230).

Global Protection, a condom and reproductive health aid manufacturer, sued Sooka for declaratory relief relating to ownership of intellectual property connected with prophylactic dams. According to the complaint, Global purchased the assets of Glyde Health Pty. Ltd. in 2015, including the rights to Australia’s Glyde Health’s prophylactic dams, the associated trademarks and goodwill, and associated 510(k) Premarket Notification FDA submissions and supporting documentation.  The FDA’s Premarket Notifications had been issued in the name of Glyde Health’s former U.S. distributer, Glyde USA, Inc., who is alleged to have transferred them to Glyde Health in 2014.  Sooka, a customer of Glyde USA who resold Glyde products, entered into an agreement with Glyde Health to distribute condoms, but not prophylactic dams.  Over the course of several months in 2015, Sooka sought to purchase rights to the FDA Premarket Notifications from Glyde Health as part of a bid to obtain North American rights to the product; the negotiations fell through, however, and Global purchased U.S. rights to the product in October 2015.  At that point, Sooka claimed that it had acquired the rights to the product directly from Glyde USA prior to the transfer to Glyde Health.  Both parties filed for trademark protection on SHEER GLYDE DAMS, with Sooka receiving the registration.  The suit was filed after Global received a cease and desist letter from Sooka.  Global seeks a declaration that it is the sole owner of the Premarket Notification, that it received the legal rights to the SHEER GLYDE DAM mark, and that it has not infringed any valid Sooka mark, as well as findings of unfair competition, unjust enrichment, and conversion.

The Literacy Lab v. FastBridge Learning LLC et al. (17-cv-12231).

The Literacy Lab (“TLL”), a nonprofit organization that provides literacy services to low income students, filed a declaratory judgment action, seeking a declaration that it is not infringing copyright in Fastbridge’s earlyReading and CMBreading assessments. TLL had previously been served a subpoena in a Minnesota suit brought by the defendants against a nonprofit partner of TLL who provided TLL with the Reading Corps program and model that is accused in the Minnesota suit, creating declaratory judgment jurisdiction.  TLL asserts that the reading assessment tools are not protectable under copyright law because any such copyright would encompass the underlying ideas rather than the form of expression and under the merger doctrine.

WB Music Corp. et al. v. Quality Restaurants, Inc. et al. (17-cv-30163).

Continuing the ASCAP theme, WB Music Corp., Milksongs, and Hunglikeyora Music filed suit against the owners and operators of Louie’s Lakehouse of Southwick Massachusetts, alleging infringement of the songs “Shut Up And Dance,” “And So I Know,” and “Drive” by allowing them to be performed in the restaurant on July 16, 2017. According to the complaint, ASCAP representatives tried on over sixty occasions since 2008 to contact the defendants to offer an ASCAP license, all of which were refused.  This is one of six ASCAP-styled suits naming at least one of the same plaintiffs that were filed yesterday in Illinois, Louisiana Maryland, and Wisconsin as well as Massachusetts.

I would note that the performances of the Hendrix songs just referenced took place on July 14, 2017, and that the road from Southwick, located just west of Springfield, MA to Marlborough, home of the Bolton Street Pub, leads directly towards Boston – perhaps more such suits will arise in the coming days based on what appears to be a road trip taken by an ASCAP representative to explore unlicensed performance spots.