Endobotics, LLC v. Design Standards Corporation et al. (20-cv-10742).

Endobiotics accuses Design Standards Corporation (DSC) and Medrobotics Corporation of infringing U.S. Patent No. 7,147,650, as well as trade secret misappropriation, violation of the Defend Trade Secrets Act, unfair competition, breach of contract, tortious interference, unjust enrichment and conversion.  Endobotics’ predecessor in interest, Cambridge Endoscopic Devices, developed and patented a surgical instrument that improved the manipulative ability of tools affixed to the end of the instrument.  Cambridge Endoscopy contracted with DSC to validate the design and manufacture of the instrument.  Endobotics alleges that this agreement provided that Cambridge Endoscopy would exclusively own all products, inventions and designs arising from this work, and that the agreement included confidentiality and non-disclosure clauses that protected Cambridge Endoscopy’s trade secrets, although Endobotics acknowledges that it does not have a copy of the agreement.  When Cambridge Endoscopy declared bankruptcy, Endobotics acquired the patent as well as Cambridge Endoscopy’s trade secret and know-how related to the instrument.  In 2010, Endobotics executed an NDA with Medrobotics to explore producing the instrument for Medrobotics.  According to the complaint, Medrobotics ultimately declined to enter into an agreement with Endobotics, and instead approached DSC directly to manufacture a competing system that improperly utilized Cambridge Endoscopy’s trade secret information.  Endobotics discovered the Medrobotics system at a 2017 trade show, and further investigation resulted in this lawsuit.  The case is before Judge Saylor.

Tile, Inc. v. S&W Dealz et al. (20-cv-10712).

Tile, which sells Bluetooth devices that can be attached to phones, car keys and the like and can be used to find the item to which it has been attached, sued S&W Dealz and Trend Goods, accusing them of infringing its federally-registered “TILE” trademark through their sale of Tile products through on-line commerce sites including Amazon.com.  Tile sells its products through authorized resellers, who are limited in the locations and websites that they can offer the products.  Authorized resellers are also prohibited from selling or otherwise diverting Tile products to any other party for subsequent resale.  While the defendants sell Tile products (apparently liquidated or used), their sale outside of the authorized network are non-genuine in that they are not new (despite being so listed) and do not come with Tile’s warranty.  Tile asserted trademark infringement unfair competition and false advertising under the Lanham Act, as well as state law unfair competition.

Tile’s complaint acknowledged that Tile did not know the name and address of either defendant, but did know the Amazon seller identification number for each.  Accordingly, the same day that Tile filed the complaint, it filed a motion for alternative service of process, seeking leave to serve them through Amazon’s electronic mail service that the defendants use to communicate with customers.  Under Massachusetts state law, which the Federal Rules refer to as an allowable means of service, service by alternative means can be used when a plaintiff cannot find the defendant, the last and usual abode of the defendant, or an agent on whom service can be made.  So long as the alternative means of service is reasonably calculated, under the circumstances, to give notice of the pendency of the action and afford them an opportunity to respond, due process is met.  Judge Burroughs, who is assigned to the case, agreed and granted the motion for alternative service.

Larson v. Perry (19-cv-10203).

Judge Talwani denied Defendants Jeffrey A. Cohen and Cohen Business Law Group’s motion for reconsideration of her previous finding that the claims against them could not be dismissed at the pleading stage.  She rejected Cohen’s argument that her prior decision was based on case law that was not controlling; while she agreed that the particular case was not “controlling” but instead was, as a decision of a district judge presiding over a diversity action, merely persuasive authority.  She instead pointed to the controlling decision of the Massachusetts Supreme Judicial Court, which provides for litigation privilege where the communications at issue are made prior to the onset of litigation only where the communications relate to a legal proceeding which is contemplated in good faith and which is under serious consideration.  Judge Talwani also rejected Cohen’s argument that Larson had failed to sufficiently allege bad faith as required under the controlling SJC decision, finding that the issue had not been raised in the Motion to Dismiss and thus could not be brought for the first time in a motion for reconsideration.

Lillibaby Update.

In March 2019, Lillebaby sued Columbus Trading Partners in this district, accusing the company of infringing two patents, U.S. Patent Nos. 8,172,116 and 8,424,732, directed to child carriers having adaptive leg supports. The same day, Lillebaby filed 22 additional suits around the country, accusing other entities of infringing the same patents (including, for some reason, redundantly suing Columbus Trading Partners in Connecticut), and filed a complaint regarding the same companies with the International Trade Commission (ITC) seeking to obtain an order preventing importation of the accused products into the United States.   The Columbus Trading Partners suit appears to have settled in August, which resulted in the termination of the ITC complaint with respect to Columbus, but the ITC case pressed forward with respect to parties who did not reach a settlement.

The ITC case was eventually narrowed to a single claim of the ‘116 patent. The ITC has now deemed the patent invalid and unenforceable. To disqualify asserted references as prior art, LilleBaby sought to claim an earlier priority date than the filing date, relying on a declaration by inventor Lisbeth Lehan. This was rejected, however, as uncorroborated. The ITC then determined that the prior art both anticipated and rendered obvious the asserted claim of the ‘116 patent.

Additionally, the ITC determined the claim to be unenforceable due to inequitable conduct that occurred during prosecution of the patent. At the time of filing, Lisbeth Lehan and her husband, Stephen Lehan, both signed a declaration stating that each was an inventor. But at trial, both acknowledged that Lisbeth was the sole inventor, and that Stephen made no inventive contribution, and Stephen testified that he knew he was not an inventor at the time he signed the declaration. The ITC found this to be unmistakably false and per se material. The Lehans testified that they named Stephen because they believed (albeit incorrectly) that having a U.S. citizen on the application would bolster the strength of the patent, and Lisbeth was not a citizen. While the Lehans corrected the inventorship to remove Stephen just before filing suit, which would save the validity of the patent, such correction does not erase the intentional misleading of the Patent Office.

Minden Pictures Inc. v. Find Import Corp. (20-cv-10598).

Stock photography company Minden Pictures accuses Find Import of copyright infringement and violation of the Digital Millenium Copyright Act in connection with Find Import’s alleged use of a Minden-controlled photograph on its website. As has been the case with several similar Minden complaints filed in Massachusetts, this complaint alleges copying and removal of copyright management information without providing any suggestion of access and seek full statutory damages for willfulness without factual allegations of the same.

God’s Era v. New Era Cap Company, Inc. (18-cv-11065).

God’s Era brought claims of false designation of origin and unfair competition under the Lanham Act as well as common law trademark infringement and unfair competition in connection with New Era’s 2016 collaboration with Jerry Lorenzo, owner of fashion brand Fear of God that resulted in a hat with a New Era design directly above the FEAR OF GOD mark. God’s Era, which formed in 2015, sought in October 2016 to register GOD’S ERA as a trademark, which New Era opposed. New Era first used the combined mark in commerce at the Major League Baseball All-Star Game in July 2017. God’s Era was only able to produce receipts totaling $235 in sales of t-shirts, hoodies and sweatshirts prior to that time, and none in interstate commerce. Judge Talwani granted New Era’s motion for summary judgment on the trademark claims, finding that the God’s Era mark was not entitled to common law trademark protection outside of the Boston area as of mid-2017. All of God’s Era’s sales prior to then had been made in person by God’s Era’s founder and sole employee to people in the greater Boston area. Any common law rights that had arisen as a result of these sales would not extend to Miami, the site of the All-Star Game and the sales of New Era’s products. Judge Talwani specifically noted that the website that God’s Era ran did not establish trademark rights because as of mid-2017 no actual sales had been made through the website. As no common law trademark rights were established, the false designation of origin and unfair competition claims likewise failed.

Intellectual Ventures I, LLC et al. v. Netapp, Inc. (16-cv-10860/10868).

Intellectual Ventures accused NettApp’s MetroCluster Fabric Attached systems of infringing U.S. Patent No. 6,516,442, which covers aspects of symmetric multi-processor types of computer architecture by which multiple processors share a common operating system and memory. Each asserted claim required certain components of the system to “perform error correction of the data in the packets exchanged over the channels.” NettApp asserted that the MetroCluster products, which allow for continuous back-up of data to separate locations, do not satisfy this “error correction” limitation, as the term had been construed. Judge Saris granted NettApp’s motion for summary judgment of non-infringement. She had construed the term to mean “correcting errors in data by at least reconstructing erroneous data,” rejecting Intellectual Ventures proposal that the term be construed broadly enough to encompass the correction of errors using a retry request. The MetroCluster systems break down data packets into sub-packets, to which an error detection code is appended. The system discards data in which an error is detected and then retransmits the data. Once the correct data has been received, the system puts the sub-packets back together into a complete packet. Intellectual Ventures asserts that this re-assembly of the sub-packets into full packets satisfies the “reconstruction” aspect of the limitation; Judge Saris disagreed, however, finding that her construction of the “error correction” limitation unambiguously excluded a system that exclusively addressed errors through a retry procedure. She also noted that the reassembly process utilized by the MetroCluster systems was not a part of handling errors, as such reassembly occurs whether an error is detected or not.

Yourfavorite.com et al. v. Federation of Exchange Accommodators et al. (20-cv-10649).

Richard Rogers, who runs Yourfavorite.com., accuses Federation of Exchange Accommodators (FEA) and a number of individuals of having wrongfully taken his copyrighted material for use on its own website. Rogers asserts that FEA’s publication titled “Member Guide to Internal Controls and Procedures for Handling Exchange Funds” contains material duplicated from an article he authored on 2007, titled “Reasons for Return.” He states that the infringement is willful and knowing, and that the Defendants ignored his cease and desist letter. The case is before Judge Casper.

Mugraby v. UndercoverWear, Inc. (20-cv-10641).

Israeli photographer Sam Mugraby, who operates through his business Photos5.com, accuses UndercoverWear of infringing his copyright in a photograph entitled “Heart in the Sky” by placing a copy of the image in its website. Mugraby asserts copyright infringement and removal of copyright management information.

Tawa Supermarket, Inc. d/b/a 99 Ranch Market v. 99 Asian Supermarket (20-cv-10637).

99 Ranch, an Asian supermarket, operates 53 stores in the United States, including their most recent store in Massachusetts (which just opened in January). The store has utilized a red “99” surrounded by green laurel leaves as a mark, as well as the name “99 RANCH MARKET” for thirty years, and has registrations on both. 99 Ranch asserts that 99 Asian Supermarket opened a store in Malden that utilizes a red 99 surrounded by green laurel leaves in an attempt to capture 99 Ranch customers, and that “99 Asian Supermarket” infringes the 99 RANCH MARKET mark. 99Ranch asserts trademark counterfeiting under 15 U.S.C. 1114(a), state and federal trademark infringement, state and federal unfair competition, and state federal trademark dilution.