Generate IP Holdings LLC et al. v. Generate Biomedicines, Inc. (D. Mass. 21-cv-10179).

Generate IP Holdings and Generate Life Sciences accuse Cambridge’s Generate Biomedicines of trademark infringement.  Generate Life Sciences is a provider of reproductive services, including newborn stem cell preservation.  A subsidiary of the company, California Cryobank LLC is said to be the world’s premier donor sperm and egg bank.  Generate IP Holdings, a wholly-owned subsidiary of California Cryobank, owns certain intellectual property rights of the various Generate businesses, including trademark registrations to GENERATE and GENERATE LIFE SCIENCES, and the plaintiffs claim to have used the GENERATE mark in commerce since at least October 23, 2019 (although the registrations claim a first use in commerce of December 31, 2019).  The plaintiffs assert that the defendant began using the GENERATE and GENERATE BIOMEDICINES mark for products and services relating to the use of generative biology to create therapeutics.  The complaint says that Generate Biomedicines began using the marks no earlier than January 13, 2020 and in commerce no earlier than September 2020.  The plaintiffs have already filed oppositions to the defendants’ applications to register GENERATE.  Plaintiffs bring claims for federal and common law trademark infringement and unfair competition.

Cozy, Inc. v. Dorel Juvenile Group, Inc. (D. Mass. 21-cv-10134).

Cozy was founded in 1997 to develop new child car seat designs. Cozy owns a number of patents relating to foam-filled side airbags on child car seats, dating back to an application filed in 1999. According to the complaint, Cozy hired an engineer in 2006 to assist in developing the product, and had him sign an NDA, as he would have access to confidential design and technical information as a part of his work. Two years later, the engineer left Cozy and went to work for Dorel Juvenile as Engineering Director. Shortly thereafter, Dorel filed a provisional application for foam-filled airbags for use in car seats.

Cozy and Dorel subsequently executed an NDA to collaborate on development of further car seat technology, with Cozy disclosing confidential information to Dorel under the agreement. Cozy says that this information was used by Dorel to make its Air Protect seats, which it introduced in June 2009. Cozy notified Dorel of Cozy’s patents that are asserted to cover the Air Protect seats that year, and notified Dorel of subsequent issuance of Cozy patents that were also said to be infringed. Cozy accuses Dorel of infringing four patents – two, U.S. 7,156,416 and 8,136,835 titled “Easy Ejector Seat with Skeletal Crash Safety Beam,” and two, U.S. 9,669,739 and 9,902,298 titled “Vehicle Occupant Support.” Each of these claims priority to a 1999 application, meaning that all have expired. It is unclear why Cozy waited so long to file suit, as it exposes Cozy to defenses of laches and estoppel.

Magistrate Judge Dein is assigned to this case

Lickerish Ltd. v. Auction Holdings, Inc. (D. Mass. 21-cv-10113).

London-based photographic syndication company Lickerish accuses Auction Holdings of infringing the copyright in a photograph of Laura Vandervoort by Dimitry Loiseau, a photographer represented by Lickerish. The complaint asserts that Auction Holdings used the photograph on its http://www.auctionzip.com website. The site seems to be an on-line collection of actions taking place across the country, with some ability to place bids on-line, that included the a signed copy of the Vandervoort photograph. Of note, the complaint does not allege that the actual photograph being auctioned was unlicensed, only that the images (copies of the photograph) used to advertise the auction were violations of the copyright. The case is before Judge O’Toole.

Radio Entrepreneurs Interview

I had the fortune of speaking with Jeffery Davis on the Radio Entrepreneur about the state of intellectual property litigation in Massachusetts, including the change in the number of new filings and the rise in trade secret claims. Radio Entrepreneurs interviews a broad range of people to expose innovative and fast moving companies and create a knowledge pool for enrichment of the entrepreneurial community. You can listen to my interview here.

D. Mass. Adopts New Procedures for Handling Highly Sensitive Documents

The District of Massachusetts has joined a number of other federal courts in adopting new procedures for the filing, service and management of highly sensitive documents. These measures are being taken in response to the recent disclosure of wide-spread breaches of governmental and private computer systems. Where a party intends to file a document containing highly sensitive information, they must file a motion under seal requesting to treat the document as highly sensitive. The document in question must not be filed electronically along with the motion. Instead, two copies of the document must be delivered to the Clerk’s Office, securely packaged and labelled HIGHLY SENSITIVE DOCUMENT. The Clerk’s Office will maintain the document in a secure paper filing system. The document must be served on the other parties by any manner specified in Fed. R. Civ. P. 5(b)(2) other than by service through the Court’s electronic filing system. If a party believes that highly sensitive information has been electronically filed, the party may move to have the information removed from the electronic filing system.

Other federal courts have adopted, or are in the process of adopting, similar procedures, albeit some with slight variations (e.g., D. New Hampshire requires the filing on the electronic record of redacted versions of subject documents).

My Article on Protecting Trade Secrets While Collaborating Remotely Published in Mass. Lawyers Weekly.

A recent case in Delaware found that a business could not claim as a trade secret information that was discussed on Zoom conferences where the company did not utilize security features provided by the application, including virtual waiting rooms and unique passwords for each separate meeting. Given the work-from-home revolution of the Covid era (and the similarity of Massachusetts and Delaware trade secret law), businesses should be aware of this decision and its implications. You can read more about this in this article I wrote that was published in Massachusetts Lawyers Weekly

Bio-Rad Laboratories, Inc. v. Stilla Technologies, Inc. et al (D. Mass. 19-cv-11587). of the company

Judge Young partially denied Bio-Rad’s motion for a protective order in this patent infringement case. Bio-Rad had objected to several of the topics designated in Stilla’s notice of deposition of the company pursuant to Rule 30(b)(6). Judge Young determined that, other than assertions of attorney-client and work product privileges, Bio-Rad’s objections were overruled as to specific topics, but were otherwise sustained.

Of interest, Judge Young noted that he was “troubled by Bio-Rad’s apparently reflexive and possibly overbroad assertion of the attorney-client privilege” in the case, and states that “it is an open question in this circuit whether assertion of the attorney client privilege warrants drawing a negative inference.” He indicated that he would not sustain an assertion of privilege as to any document that was not included in a privilege log stating with particularity the grounds for the assertion of privilege.

This is not his first admonishment regarding discovery issues in this case. He had previously warned the parties that, where discovery had been requested and refused, he would strictly restrict the non-producing party from relying on such undisclosed evidence.

Panoramic Stock Images, Ltd. d/b/a Panoramic Images v. Alcove Realty, LLC (D. Mass. 21-cv-10054).

Panoramic Images, a stock image business that specializes in wide and large-format panoramic photographs, accuses Somerville-based Alcove Realty of using one of Panoramic Images on its website without permission. Panoramic Images says that Alcove included a panoramic photograph of the Boston skyline, taken from across the harbor, at the top of each page on Alcove’s site. Panoramic Images further claims that Alcove ignored two cease and desist letters sent over the summer of 2020, leading to the filing of the lawsuit.

Uniloc 2017 LLC v. Paychex, Inc. (D. Mass. 19-cv-11272).

Judge Stearns granted Paychex’s motion to dismiss Uniloc’s patent infringement claims for lack of standing. Uniloc obtained the patents by assignment from IBM, but the assignment reserved to IBM the right to sublicense the patents to IBM’s strategic partners, which included customers of IBM or its subsidiaries that had purchased at least $10 million in products or services over the five years prior to the assignment. Paychex provided uncontroverted evidence that it met that criteria. While Paychex did not assert that IBM had, in fact, sublicensed the patents to Paychex, Judge Stearns noted that the mere ability to obtain a sublicense divests an exclusive licensee of standing because the exclusive licensee has no exclusionary right with respect to the accused infringer. He denied Paychex’s motion for fees, however, finding that the substantial amount of discovery required by Paychex to determine it had made the requisite volume of sales made Uniloc’s maintenance of the claim reasonable enough to not be exceptional.

This is the second such Uniloc case to be dismissed by judge Stearns on standing grounds. He granted Alamai’s similar motion just over a year ago.

Playdate PDX, LLC v. In Grace, LLC (D. Mass. 20-cv-12186).

Playdate, an Oregon business that provides entertainment, food and beverage services for children. Playdate registered the marks PLAYDATE PDX in 2013, PLAYDATE in 2014, and PLAYDATE SEA in 2014. Playdate has licensed the marks to entities in multiple states, although not yet in Massachusetts. Playdate asserts that Seekonk’s In Grace operates as “Play Date,” and that In Grace advertises its children’s entertainment and café services via a website at http://www.playdatene.com. Playdate says that In Grace adopted its d/b/a name after Playdate had acquired protectible rights in the PLAYDATE marks. Playdate asserts that In Grace had agreed to stop using the mark in response to a 2018 cease and desist letter, but nevertheless has continued using the infringing mark. Playdate asserts federal and common law trademark infringement, false designation of origin, and unfair and deceptive trade practices under c. 93A.