District of Massachusetts IP Blog

Judge Young Orders New Trial in Patent Case

[Full disclosure:  I am counsel for NewRiver, the plaintiff in this case]

 

In the Spring a jury trial was held to determine whether defendant Newkirk Products, Inc. (Albany, NY) was liable for infringement of a number of claims of Patent No. 6,122,635 directed to a system for mapping compliance information, owned by plaintiff NewRiver, Inc. (Andover, MA).

 

The verdict found certain claims infringed but also invalidated those same claims.  Judgment entered for the defendant and post-trial motions ensued.  In one motion NewRiver focused its attention on a particular claim set, noting that under Koito Mfg. Co., v. Turn-Key-Tech, LLC, 381 F.3d 1142 (Fed Cir. 2004) the summary conclusions offered during trial regarding obviousness were insufficient to invalidate the claims in question.

 

Judge Young agreed that the expert testimony was “sparse in detail” and engaged in a thoughtful analysis of the Federal Circuit’s requirements for supporting expert testimony on obviousness (as well as anticipation, written description, and infringement under the doctrine of equivalents) as compared to the traditional requirements for expert testimony under Daubert and the Federal Rules.

 

Judge Young declined to enter JMOL, instead granting the alternative motion for a new trial.  In deference to the jury’s verdict, a new trial on infringement of the claims in question was also ordered.

 

Concluding the opinion was an edict from Judge Young that going forward he will sua sponte, and at the “earliest possible moment,” rule on the sufficiency of the foundation for any opinion testimony on obviousness, anticipation, written description, or doctrine of equivalents.

 

NewRiver, Inc. v. Newkirk Products, Inc., 06-12146-WGY (Dec. 16, 2009)

 

http://pacer.mad.uscourts.gov/dc/cgi-bin/recentops.pl?filename=young/pdf/newriver%20memorandum%20of%20decision%20and%20order.pdf

Microsoft Sued on Spreadsheet Patent

NetView Technologies, Inc. (Belmont, MA) has sued Microsoft in Boston for infringement of Patent No. 7,251,776 related to flexibly utilizing spreadsheet information.  The patent in question has 34 claims, only one of which is independent.  And that independent claim appears to broadly cover the concept of defining a parameter external to a spreadsheet and applying that parameter to the spreadsheet.  The patent has a priority date of July 13, 2001.

 

Microsoft’s SharePoint and Excel products are specifically accused as infringing.

 

Interestingly, the complaint asserts that Microsoft was aware of “the invention” by virtue of the fact that NetView’s published patent application (which matured into the ‘776 patent) was cited against one of Microsoft’s European patent applications.  This section of the complaint is obviously directed at willfulness, but I don’t think this kind of “notice” has, by itself, ever supported a finding of willfulness.

 

One final note--although the complaint asserts that NetView “has been engaged in” software development, it is unclear whether NetView is a going concern.  Its website (www.netviewtechnologies.com) seems dormant and does not appear to have been updated since 2004.  Also, the website states that NetView is located in Waltham, MA but the complaint says Belmont, MA.

 

We’ll see how far this one goes.

 

NetView Tech., Inc. v. Microsoft, Inc., 09-12072-DPW (D. Mass. Dec. 4, 2009)

 

Haemonics v. Fenwal, Round 2

Haemonetics Corp. (Braintree, MA) has re-sued Fenwal, Inc. (Lake Zurich, IL) for infringement of Patent No. 6,705,983 directed to a centrifugal device for separating a liquid such as blood.

In a prior suit on the same patent Haemonetics sued Baxter Healthcare Corp. for infringement, later adding Fenwal as Baxter’s successor in interest.  (D. Mass., 05-12575-NMG)  Following a jury trial Fenwal’s product was found infringing and Fenwal was ordered to pay damages and to cease selling the product in question as of December 2010, with a compulsory license of 10% in the interim.

 

Fenwal released a re-designed version of the product in question that Haemonetics believes is still infringing, hence the new suit.  It is interesting that this issue is raised in a new suit rather than a motion under the previous caption.  Given the history of this dispute it wouldn't be surprising to see Judge Gorton set an expedited hearing for this second case.

 

Haemonetics Corp. v. Fenwal, Inc., 09-12107-NMG (D. Mass. Dec. 14, 2009)

Six-year-old Emails Are Not “Highly Confidential-Outside Counsel Only”

The defendant in this patent case asserted counterclaims for Walker Process antitrust and unenforceability due to inequitable conduct for failing to disclose prior art to the USPTO.  During discovery the plaintiffs (Metris) produced a six-year-old email between the inventor and a business associate with potentially inflammatory language including discussions of “a global monopoly” and keeping “prior art quiet.”  The email was produced under the most restrictive tier of the protective order.  Faro moved to de-classify the email and Magistrate Judge Bowler agreed.

 

The protective order in the case is a typical three-tier order (highly confidential, confidential, non-confidential) with category definitions commonly found in protective orders in patent cases (though the decision notes that in this case even “confidential” materials could not be shown to client personnel who were not specifically authorized).

 

Magistrate Judge Bowler found that Metris had not met its burden to show that the document needed to be protected from disclosure.  The email in question did not reveal any information of competitive or commercial sensitivity, did not discuss any technology in detail, was six years old at the time of the motion, and was “central” to the counterclaims.  Accordingly, the court ordered the email de-designated, though it directed the parties to confer if they can agree to use the email “solely for the purpose” of this case to prevent embarrassment to Metris.

 

Given that the decision was public, there must be some pretty juicy stuff in the email that wasn’t included in the decision, or there would have been no need for further discussion possibly limiting use of the entire email.

 

Metris U.S.A., Inc. v. Faro Tech., 08-11187-PBS (D. Mass. Dec. 8, 2009)

File Sharing Is Not Fair Use

In a long awaited and lengthy opinion, Judge Gertner has laid out her reasons for a previous ruling that the actions of Joel Tenenbaum, found liable by a jury for copyright infringement to the tune of $675,000 for unauthorized sharing of 30 songs files, were not protected by the fair use defense.

 

Tenenbaum’s counsel, Harvard Law Professor Charles Nesson, had moved to add the defense at the tail end of the case.  The amendment was allowed, and Prof. Nesson mounted a vigorous defense that Tenenbaum’s file sharing was protected by fair use.  Judge Gertner ruled pre-trial that fair use would not be presented to the jury.  The reasons are set forth in yesterday’s opinion.

 

As Judge Gertner notes in the memorandum, she did everything she could to allow Tenenbaum to mount a fair use defense, including suggesting arguments tailored to the facts of this case that might have some merit.  But counsel for the defendant “mounted a broadside attack,” arguing that fair use should encompass all file sharing for private enjoyment.  The Court noted that the defense as raised ran so counter to well established precedent that nothing save for rewriting the copyright laws could have stretched fair use that far.

 

Scattered throughout the opinion are instances of the court expressing its frustrations with defense counsel.  In particular, the opinion:

 

-takes defense counsel to task for questionable conduct during the case including the late addition of the fair use defense, general missed deadlines, ignored rules, and even illegal recording of counsel and the court without consent.

 

-notes that in an amicus brief filed before Prof. Nesson represented Tenenbaum, Prof. Nesson remarked that the fair-use arguments are “very weak.”

 

The opinion retraces the history of the fair use in some detail, including its status as an equitable defense, its presentation to juries, and its application to arguably “non-commercial” uses.  The court then walks through the defense and why it does not excuse Tenenbaum’s use of the works in question.

 

The court winds up the opinion with a brief recitation of hypothetical scenarios where fair use might apply to someone who engaged in unauthorized file sharing, but concludes with its ruling pretrial, that not all file sharing is fair use and summary judgment in favor of the plaintiffs on the defense is appropriate.

 

http://pacer.mad.uscourts.gov/dc/cgi-bin/recentops.pl?filename=gertner/pdf/tenenbaumfairusedec7th09finalng.pdf

 

Sony BMG Music Entm’t v. Tenenbaum, 07-11446-NG (Dec. 7, 2009)

Trade Secret Mistrial Request Shot Down

In a case pending before Judge Saris, Atlantic Research Marketing Systems (ARMS) prevailed in a jury trial against former employee Troy for misappropriation of rifle trade secrets resulting in a verdict of $1.8M.  Troy moved for a mistrial on grounds that (a) the Court failed to determine whether an external piece of evidence prejudiced the jury, and (b) the Court gave a prejudicial instruction regarding breaking a deadlock in deliberations.  The motion was denied.

 

As to the first point, the parties did not seek a cautionary instruction or voir dire once existence of the external evidence was discovered, at which time it was promptly removed.  A subsequent voir dire of individual jurors regarding the evidence went unchallenged by the parties.

 

As to the second point, neither party objected to the substance of the charge at the time and the court found that the proper procedures were followed.

 

No mistrial.

 

http://pacer.mad.uscourts.gov/dc/cgi-bin/recentops.pl?filename=saris/pdf/atlanticresearch%20marketingmistrialmtn.pdf

 

Atlantic Research Marketing Systems, Inc. v. Troy and Troy Indus., Inc., 07-11576-PBS (Nov. 30, 2009)

Hand Dryers Blown Into Court

Excel Dryer, Inc. (Longmeadow, MA) has sued AAA Kitchen & Bath Distributor, Inc. (Philadelphia, PA) for infringement of Patent No. 7,039,301 directed to an apparatus for drying hands with various technical features.  This case was assigned to Judge Ponsor in the Springfield division.

 

Interesting note on this case is that the firm representing the plaintiff, Cantor Colburn LLP, is the same firm that prosecuted the patent.  Though the prosecuting attorney, David Fox, did not enter an appearance in the litigation.

 

Excel Dryer, Inc. v. AAA Kitchen & Bath Distributor, Inc., 09-30220-MAP (Dec. 7, 2009)

Judge Gorton Pares Claims in Trade Secret Dispute

In this Lanham Act / trade secret case pitting a former employer against its ex-employee and his new company, the defendants moved to dismiss three counts of the complaint.  Judge Gorton allowed the motion with respect to one claim and denied it with respect to two others.

Pullen, the employee in question, served for two years as the plaintiff's VP of North American Sales.  The plaintiff alleges that for eight months he stole thousands of computer files before jumping ship. 

Judge Gorton dismissed a claim against the former employee under Massachusetts' consumer protection statute (93A) because the employee / employer relationship is private in nature and does not occur "in trade or commerce."  However he refused to dismiss a similar claim against the new company since that dispute "falls squarely within the realm of 'trade or commerce.' " 

Judge Gorton also refused to dismiss a claim under the Computer Fraud and Abuse Act (18 U.S.C. § 1030(a)(4)) finding that the pleadings are sufficient to allege that the employee used proprietary information "without authorization" even though he may have been an employee at the time of the alleged file copying.

http://pacer.mad.uscourts.gov/dc/cgi-bin/recentops.pl?filename=gorton/pdf/guest-tek%20mo%20dismiss%20m-o.pdf

Guest-Tek Interactive Entm't, Inc. v. Pullen and PureHD, Ltd., 09-11164-NMG (D. Mass.  Oct. 19, 2009)

Judge Zobel Construes Claims in Diagnostic Patents

Keep reading if you'd like, but this opinion is unlikely to have much impact beyond the parties.

Judge Zobel construed seven claim terms (four agreed upon, three disputed) across two patents, Patent No. 6,120,734 directed at a system for assaying a fluid sample and Patent No. 6,664,114 directed at a phase assay for detection of ligands.

The first of the disputed terms (from the '734 patent) was "conduit means."  The parties agreed the term invoked means-plus-function treatment pursuant to § 112, ¶ 6, but disagreed as to the corresponding structure with the plaintiff pointing to a "hollow tube" and the defendant arguing for a "hollow passage through a lens."  Adopting the defendant's proposed structure, Judge Zobel found several embodiments of the corresponding structure in the specification, each of them having a lens, and felt that inclusion of the lens accurately characterized the structure necessary to perform the undisputed function.

The other two disputed terms (both from the '114 patent) are not specifically mentioned in the opinion, but had something to do with a temporal arrangement as the defendant argued that the terms should be construed as meaning "less than about one minute."  Although the defendant's argument had some support in the file history with regard to certain assays, Judge Zobel felt that the plaintiff had the stronger argument here as the "less than about one minute" language did not appear in the claim language itself and could not be held to limit certain assays.  Feeling that the plaintiff's proposed construction didn't add anything, Judge Zobel refused to further construe the unstated terms.

Sapidyne Instruments, Inc. v. Gyros US, Inc., 08-11150-RMZ (D. Mass. Nov. 25, 2009)