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.

Microsoft Corp. v. John Does 1-10 (17-cv-11831).

Judge Martinez of the Western District of Washington, in response to Defendants Charlie’s One Stop Computer Center, Inc. and its president, Michael Aucoin’s motion to dismiss for lack of personal jurisdiction, instead transferred the litigation to Massachusetts. The case was initially filed in June, 2016, against unknown defendants, alleging infringement of Microsoft copyrights and trademarks on software being installed using fraudulent product keys.  Discovery led to the identification of Charlie’s One Stop and Mr. Aucoin, who then moved to dismiss.  Microsoft indicated that, if dismissed, it would simply re-file here.  When the defendants admitted that jurisdiction would exist in Massachusetts, transfer was ordered.  Judge Wolf has been assigned to the case.

Washington’s long-arm statute allows a court to award attorney’s fees for a party served under the statute who prevails in the action. Judge Martinez determined that Microsoft, when first notified about the jurisdictional issue, told Defendants that it would “vigorously defend against any motion to dismiss,” and after Defendants filed the motion, that it would consent to transfer to Massachusetts only if the motion and request for fees were withdrawn.  He determined that such conduct, followed by Microsoft appearing in court and not opposing transfer, warranted the award of fees.

Cengage Learning, Inc. et al. v. Does 1-11 (15-cv-11577).

Judge Wolf entered default judgment in favor of Cengage, finding the well-pled facts of the complaint showed that defendents sold counterfeit versions of Cengage’s copyrighted textbooks bearing Cengage’s trademarks. Most of the defendants failed to answer the complaint, and the one who did file an answer then failed to respond to a motion for preliminary injunction and ceased responding to its counsel.  Judge Wolf went on to determine that the infringement was willful, based on the defendants’ use of false names and addresses to register online storefronts on Amazon.com and on their failure to appear.  Maximum statutory damages for both trademark and copyright infringement totaling $2.9 million were awarded, and a permanent injunction was entered.