In December 2016, Caffeinate Labs sued New York’s Vante Inc. and Alexander Shlaferman, also a New York resident, for patent infringement, trademark infringement, and ancillary state law claims related to Vante’s sale of the “Wallet Ninja” in competition with Caffeinate’s PocketMonkey®. Schlaferman filed a motion to dismiss for failure to state a claim of design patent infringement in May; while that motion was pending, Caffeinate Labs voluntarily dismissed the design patent claim with prejudice. Shlaferman then moved in to transfer the case to the Eastern District of New York. Judge O’Toole granted that motion in light of the In re Micron Technology decision, finding that the defendants timely moved for transfer after the TC Heartland decision and thus did not waive a venue challenge. Judge O’Toole found the case to be “primarily one alleging patent infringement,” thus making the patent venue statue the applicable touchstone for venue.
Sophos brought suit in 2013, seeking summary judgment that it did not infringe certain of RPost’s patents and that the patents were invalid. Only one patent remained in issue following last year’s claim construction decision in the case, U.S. 8,504,628. The ‘628 patent covers third party verification of the content and delivery of electronic messages. Following a hearing on December 7th, Judge Casper issued a decision on the 8th, finding the asserted claims invalid. Sophos challenged the standing of RPost to pursue infringement claims because co-defendant RPost Communications Ltd. (RComm), RPost’s parent corporation, is the patent owner and no written license between RComm and RPost was produced and RComm’s corporate designee was unable to say with any certainty that RComm directly sold any software services in the United States. Judge Caper denied the motion on standing, finding that the corporate designee’s deposition testimony that RPost was an exclusive licensee must be credited at the summary judgment stage, thus creating an issue of material fact. As to validity, Sophos had asserted that the earliest priority date for the ‘628 patent was July 27, 2000, based on responses of RPost and RComm to an interrogatory. While not finding RPost and RComm estopped from asserting a priority date back to 1999, based on provisional applications, she determined that Sophos’ argument had “introduced sufficient evidence” to put anticipation at issue, at which point the defendants had the burden of coming forward with evidence and argument to the contrary. Because the defendants had put nothing in the record to show that the claims were entitled to rely on the provisional applications for priority, the July 2000 date was deemed to be the priority date. The claims were then found to be anticipated by two patents that predated the July 2000 date but fell after the provisional filings.
ACQIS alleges that EMC infringes eleven ACQIS patents relating to modular computer systems in which computer modules can be removed from one console (keyboard, mouse, display and disk drive) and inserted into another to form a complete personal computer. The case was initially filed in the Eastern District of Texas along with three related lawsuits against different defendants, and disputed claim terms were construed prior to the case being transferred to Massachusetts. The case was then stayed pending inter partes review of three of the asserted claims, all of which survived. Judge Burroughs noted that the prior Markman opinion, issued by the Texas court, was entitled to “reasoned deference,” but indicated that she could revisit and alter constructions as the court’s understanding of the technology evolves. Judge Burroughs then looked to the IPR proceedings with an eye on preventing the patentee from recapturing, through a broader construction, specific meanings that were disclaimed during the IPR proceedings. With respect to the term “PCI bus transaction,” which had previously been construed to require information in accordance with the PCI Standard but not necessarily to require a PCI bus, Judge Burroughs found that ACQIS’ argument in IPR that a prior art reference did not meet this limitation because it contained “no PCI bus” did not constitute a clear and unmistakable disclaimer of a broader meaning based on later statements by ACQIS clarifying that the presence of a PCI bus was not dispositive of a PCI transaction, and that the analysis of prosecution history estoppel must take the prosecution into account “as a whole.” She construed a second term, on the other hand, more narrowly than had the Texas court because ACQIS had made “numerous and repetitive statements in the IPR’s” that clearly and unmistakably showed the term to be more narrow than it had previously been construed, resulting in disclaimer of the earlier, broader scope.
The court construed claim terms from eight asserted Philips patents relating to light emitting diode (LED) technology, many of which had been through inter partes review proceedings. (As with most Markman decisions, I do not intend to get into the actual constructions so much as the legal bases for the constructions, as I believe this would be of the most interest to future litigants in this district.)
Most of the contested claim limitations were means-plus-function limitations, with the arguments being related to the means disclosed to perform agreed-upon functions. Judge Casper refused to limit the means to preferred embodiments that included structure that was not necessary to perform the recited function. Phrased another way, she refused to import additional limitations from an embodiment into the construction. Judge Casper refused to construe two term on which a construction had been sought by WAC, seemingly in contravention of many district court judges who view the Federal Circuit’s O2 Micro v. Beyond Innovation decision as compelling a construction whenever one is sought. Also of note, Judge Casper cited to case law from other districts holding that the PTAB’s constructions made in an inter partes review are persuasive authority, and she adopted constructions made by the PTAB throughout the order; she did not, however, refuse to construe terms that the PTAB had not construed, although it is unclear from the order whether construction of these terms was sought during the IPR.
Caliper filed suit against Menarini, accusing the Italian corporation’s DEPArray systems of infringing eight patents relating to microfluidic analytical systems and devices. Five of the asserted patents have already expired, while the rest are set to expire in just over a year. Willfulness is alleged, and direct, contributory and induced infringement are claimed.
Comerica Bank, appointed by the probate court as the Personal Representative of the estate of Prince, sued Massachusetts resident Kian Andrew Habib over videos posted by Habib on YouTube that included live recordings of several Prince-written songs, including “Nothing Compares 2 U,” “Glam Slam,” and “Sign o’ the Times.” The complaint alleges that these videos were posted for commercial purposes, including at least advertising revenue generated by views of the videos by YouTube users, and that this commercial use negatively affected the value of the Prince estate by taking away from revenues legitimate Prince videos could realize. YouTube removed the videos in response to a take-down notice. In response, Habib provided a counter-notification pursuant to 17 U.S.C. 512(g), contesting their removal. Comerica filed suit to prevent the videos from being reposted, and seeks damages and attorneys’ fees as well as injunctive relief. (Full Disclosure – Comerica is represented by members of my firm, Lando & Anastasi).
Judge Stearns denied Cisco System’s motion to stay pending inter partes review after Egenera indicated it would voluntarily dismiss, without prejudice, its infringement claims relating to the patent. Because the subject matter of the patent at issue was sufficiently different from that of the other patent-in-suit, Judge Stearns believed that the inter partes review would be unlikely to substantially influence the interpretation of the second patent.