Epstein v. Miller Brothers Furniture, Inc. (19-cv-30055).

John Epstein, who engages in advertising for retail furniture stores as Direct Results, sued Miller Furniture Brothers, a Pennsylvania company with a store in Punxsutawney (home of Punxsutawney Phil from Groundhog Day!), accusing them of breach of contract and copyright infringement. Epstein alleges that Miller Brothers contracted with him to create promotional material in 2010, which Miller Brothers could not use without his permission. He says that Miller Brothers used this material without authorization in 2011 and 2012; Epstein objected, and Miller Brothers ultimately compensated him for this use. Epstein alleges that Miller Brothers again improperly utilized this copyrighted promotional material last year. Oddly, the complaint alleges subject matter jurisdiction solely under 28 U.S.C. 1331 and 1338 (federal question and patents/plant variety protection/copyrights/mask works/designs/trademarks/unfair competition) and then seeks joinder of the copyright and breach of contract claims, rather than asserting diversity or supplemental jurisdiction.

Sophos Inc. v. RPost Holdings, Inc. et al. (13-cv-12856).

Judge Casper awarded Sophos $1,404,949.50 in attorneys fees. She had previously granted Sophos summary judgment of invalidity, and had determined that this was an exceptional case meriting an award of reasonable fees. Here, she determined that the hours and rates sought were reasonable, but that some small degree of block billing occurred, meriting a reduction of 10% but not the substantial reduction sought by RPost. She rejected RPost’s argument that the $1.56 million sought was excessive –RPost’s damages demand, together with the amount of discovery, expert discovery and motion practice, framed the potential stakes and demands for legal work, regardless of Sophos’ belief in the viability of the damages demand.

SiOnyx, LLC et al. v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

As this case goes to trail, the Court is dealing with the parties’ motions in limine. Hamamatsu moved to preclude testimony from one co-inventor, Dr. Mazur, to corroborate the testimony of a different coinventor. The Court had already found that Dr. Mazur could not prove that he was a coinventor due to a lack of corroborating evidence. Citing the lack of documentary corroboration and the fact that Dr. Mazur is an interested party, Hamamatsu asserted that he could not corroborate the alleged contribution of the other coinventor to the invention, and thus sought to preclude his testimony. Judge Saylor denied the motion, finding that the motion was effectively an untimely motion for summary judgment, and indicated that he (or the jury) would determine whether the evidence at trial, including Dr. Mazur’s testimony, was sufficient to establish inventorship.

He granted Hamamatsu’s motion to preclude SiOnyx from referring to the PTAB’s decision not to institute an inter partes review at trial. Hamamatsu’s request for inter partes review was declined entirely with respect to one of the asserted patents and was partially declined with respect to another patent. Judge Saylor determined that the decision on whether to institute an IPR was not a decision on the merits (and that the decision to partially decline may be a statutory violation under recent case law) and would thus have little probative value, would take considerable time to explain to the jury, and would carry substantial risk of misinterpretation and unfair prejudice.

Judge Saylor further, in response to a request made by SiOnyx at the April 16th status conference, precluded Hamamatsu from arguing that it was excused from meeting its obligations under the NDA at issue due to a prior material breach of the agreement by SiOnyx, finding that Hamamatsu had waived such an argument by failing to raise it in the joint pretrial memorandum. He denied SiOnyx’s motion to preclude Hamamatsu form raising a defense of equitable estoppel. He also overruled Hamamatsu’s objection to deposition testimony from a senior corporate officer regarding the contract, finding that it did not impermissible call for a legal conclusion. Trial on this matter began yesterday.

SiOnyx, LLC et al.v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

As this patent and breach of contract case nears trial, Judge Saylor granted SiOnyx’ motion to amend its complaint to remove assertions of the ‘591 patent. SiOnyx asserts that, through late-produced discovery, the products accused of infringing this patent were still under development, and that a final configuration of these products was not likely to be set prior to trial. Hamamatsu had not filed counterclaims relating to the ‘591 patent, and would suffer no legal prejudice from the withdrawal of the claim. The dismissal of the ‘591 claims is with prejudice as to any products that had been accused during the proceeding, but not as against products developed in the future.

Judge Saylor also dealt with the parties’ competing motions to exclude testimony from an opposing expert. SiOnyx has accused Hamamatsu of violating a nondisclosure agreement, obtaining patents on SiOnyx’s technology without naming SiOnyx personnel as inventors, and infringing SiOnyx patents. SiOnyx sought to preclude testimony from a technical expert of Hamamatsu for failing to consider objective indicia of non-obviousness, which would render the report unreliable as applying an incorrect legal standard. Judge Saylor determined, however, that the expert’s statement that he had “not seen any evidence of secondary consideration” did not mean that he had not considered secondary factors. Accordingly, he denied SiOnyx’s motion. Hamamatsu, for its part, sought to entirely preclude SiOnyx’s damages expert, who is intended to testify as to damages for breach of contract, unjust enrichment, and patent damages. On the breach of contract claim, the expert relied on a non-binding memorandum of understanding between SiOnyx and Nikon to determine the damages from the loss of that opportunity, which Hamamatsu asserted to be too speculative. Judge Saylor found that, for the most part, the expert had relied not just on the memorandum but also on correspondence between SiOnyx and Nikon and other evidence in coming to her conclusions. Judge Saylor did exclude testimony on damages resulting from a proposed extension of the contract contemplated by the memorandum of understanding, because there was no discussion of pricing terms or the length of any potential extension in the memorandum, making the opinion on the loss of the extension too speculative. He also excluded testimony on SiOnyx’s theory that, had it entered into the Nikon agreement and developed a chip for Nikon, it would have been able to leverage that development in reducing the cost of development of the next generation chip by nearly $1 million. The Judge accepted that such a reduction on R&D costs could be the basis for damages, but felt that the steps used to determine the dollar figure were too attenuated and speculative. He denied Hamamatsu’s request with respect to breach of contract damages that Hamamatsu itself would have paid had it not breached the agreement and instead have licensed the technology, finding that the other SiOnyx agreements relied upon were not so different from the structure that Hamamatsu had discussed as to form an insufficient basis. With respect to the unjust enrichment claim, Mamamatsu objected to testimony on profits it incurred beyond the expiration of the nondisclosure agreement; Judge Saylor found that Hamamatsu had failed to support the notion that damages must end upon expiration of the NDA, and refused to exclude this testimony. Finally, he refused to preclude testimony on patent damages, finding that the expert’s opinions were adequately supported and that any disputes as to the calculations could be dealt with on cross-examination.

Boise Cascade Co. v. New England Treatment Access, LLC (19-cv-10738).

Boise Cascade, a large lumber, wood and paper, has utilized a graphic of a tree in a circle as a trademark since 1964, and has held federal registrations for the mark since 1981. Boise Cascade logoBoise Cascade accuses NE Treatment Access of infringing this mark through sales of marijuana products utilizing a similar graphic. 44831408_196018227991194_7314578353284483997_nBoise Cascade brings counts for federal and common law trademark infringement, false designation of origin, dilution under Massachusetts law, injury to business reputation, and unfair business practices. The case is before Judge Gorton.

Kaspersky Lab, Inc. v. Greater Boston Authentication Solutions, LLC (19-cv-10735).

Kaspersky filed suit against GBAS seeking a declaration that it does not infringe three GBAS patents related to remote authorization to unlock electronic data. In October of last year, GBAS had filed suit accusing Kaspersky of infringing the three patents; GBAS never, however, actually served the complaint, and instead dismissed it without prejudice at the 90-day service date. The patents have since expired. Kaspersky notes that GBAS acquired the three patents sometime in 2017, and has filed twelve complaints asserting these patents, with all of them voluntarily dismissed before any accused infringers filed a responsive pleading. Kaspersky suggests that GBAS has sought nuisance-level damages, a classic patent troll tactic. Kaspersky further asserts that GBAS knows that Kaspersky does not infringe because arguments made during prosecution foreclose a claim construction that would cover Kaspersky’s software. To that end, Kaspersky seeks a declaration of non-infringement and a finding that the case is exceptional under 35 U.S.C. § 285, entitling them to attorneys’ fees.

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

CardioNet and InfoBionic have been in litigation for several years on various patents and trade secret claims relating to cardiac monitoring devices – in one of these cases, Judge Talwani struck down CardioNet’s 7,941,207 patent as being directed to ineligible subject matter. In the present case, CardioNet seeks to sever two of the patents that were likewise deemed to cover non-patentable subject matter from the case to permit an immediate appeal of that finding. InfoBionic sought to file an exhibit (a letter from InfoBionic to CardioNet making clear that InfoBionic viewed the remaining infringement claims to lack a good-faith basis for assertion) to its opposition to the motion to sever under seal. The letter is asserted to contain sensitive information that was exchanged as a part of an on-going arbitration proceeding on a trade secret misappropriation claim between CardioNet and a former employee who is now working for InfoBionic. CardioNet did not oppose the motion to seal, but Judge Talwani denied the request without prejudice, noting the presumptive right of the public to have access to judicial documents and finding that InfoBionic had not met the burden of showing that impoundment would not violate this presumptive right. She gave InfoBionic the option of filing the letter on the public docket with sensitive material redacted, thus keeping the material out of the purview of the things she would consider in ruling on the motion, or providing further explanation as to why the sensitive material merited consideration of the court.

In my experience, both in managing this blog and in practice before her, Judge Talwani scrutinizes motions to seal documents with great care. Litigants must ensure that they provide appropriate and specific information as to the sensitive nature and the harm that would result from public disclosure when seeking to impound information that they ask the court to rely upon, even where the opposing party assents to impoundment.