District of Massachusetts IP Blog

Kimberly-Clark Sued By Solo Inventor

Dr. Marv Freadman (Chelsea, MA) sued Kimberly-Clark Worldwide, Inc. (Dallas, TX) for infringement of Patent No. 6,589,761 directed to a method for detecting bacteria using CO₂.

 

Although the complaint lists the typical infringement related claims (inducement, willfulness, etc.), it contains a number of typos and generally reads as if the author is not one who regularly litigates patents.

 

Interestingly Plaintiff’s counsel also appears to have been disciplined by the Massachusetts Board of Bar Overseers for his behavior in state court actions:  http://www.mass.gov/obcbbo/bd00-060.htm.  I’m not sure Judge Woodlock would stand for any of that behavior.

 

Good luck to whomever goes against him.

 

Freadman v. Kimberly-Clark Worldwide, Inc., 10-10126-DPW (D. Mass. Jan 27, 2010)

Moving Defendant Now Facing Summary Judgment Of Non-Obviousness

In a two-page opinion Judge Young applies a recent claim construction of Patent No. 7,400,858 (directed to an antenna transmission coupling arrangement) to grant summary judgment of non-infringement of four asserted claims.  This was good news for defendant and accused infringer Delta Air Lines.  Unfortunately, Judge Young was less enamoured with Delta’s motion for summary judgment of obviousness, which he denied saying that Delta’s evidence (including expert testimony) was insufficient as a matter of law.  Judge Young cited his recent opinion in the NewRiver v. Newkirk case.  See http://bostonipblog.typepad.com/dmass-ip-blog/2009/12/udge-young-orders-new-trial-in-patent-case.html

 

But the opinion didn’t stop there.  Citing First Circuit precedent which allows district courts to enter summary judgment sua sponte in appropriate circumstances, Judge Young invited briefing (to be submitted within 14 days) on whether summary judgment should issue that the claims are not obvious.

 

Other more complicated matters raised by earlier motions remain under advisement.

 

The lesson here is that you better have the evidence to support your case, otherwise don’t ask the court to consider the issue on summary judgment.

 

Ambit Corp. v. Delta Air Lines, Inc., 09-10217-WGY (D. Mass. Jan. 22, 2010)

Dueling Cases Separated By Eighty Minutes

A patent infringement case and declaratory judgment case on the same patent were filed within an hour and twenty minutes of each other, both in Boston.

 

At 3:55 p.m. on January 22, 2010 Argentum Medical, LLC (Willowbrook, IL) filed suit against Choice Therapeutics, Inc. (Wrentham, MA) and Global Medical Partners, LLC  (Wrentham, MA) asserting patent infringement of Patent No. 7,230,153 directed to an appliance having wound healing and analgesic properties.

 

Later that day, at 5:15 p.m., Choice and Global Medical filed suit against Argentum seeking a declaratory judgment that the ‘153 patent is invalid and not infringed.

 

The first case was assigned to Judge Woodlock, the second case was assigned to Chief Magistrate Judge Dein.  Given that the patentee as plaintiff case was filed first and was assigned to a district judge rather than a magistrate judge it seems likely that that case will take precedence, but it will be interesting to see how this mini “first-to-file” dispute works itself out.

 

Argentum Medical, LLC v. Choice Therapeutics, Inc. et. al., 10-cv-10100-DPW (D. Mass. Jan. 22, 2010)

 

Choice Therapeutics, Inc. et. al. v. Argentum Medical, LLC, 10-cv-10102-JGD (D. Mass. Jan. 22, 2010)

MIT Left Stranded As Solo Plaintiff in Patent Suit

MIT, like many universities, engages in licensing programs where other entities are given the responsibility for enforcing the university owned patent rights.  In this case MIT kept too many rights to itself, leading to its licensee being dismissed from the suit as a “bare licensee” (a licensee holding less than all substantial rights and lacking exclusionary rights to the patent) who lacked standing to sue.

 

MIT is the assignee of Patent No. 6,703,228 directed to genetic analysis.  MIT entered into a license with E8 Pharmaceuticals to sublicense and enforce the patent.  E8 sued Affymetrix for infringement, including MIT as a plaintiff.  Affymetrix moved to dismiss E8 as a plaintiff for lack of standing.  Judge O’Toole found that E8 lacked standing and dismissed them. 

 

The primary fact relied upon was that the license from MIT to E8 did not grant E8 the right to actually practice the ‘228 patent (despite clever arguments from E8 to the contrary).  The court here relied on an old Supreme Court case which has never been challenged, Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24 (1923), as support for that fact having serious implications for E8’s standing.  But the court also listed a variety of other facts about the relationship between E8 and MIT which support the finding that E8 is a bare licensee, and therefore lacked standing.  Examples include:

 

-E8 was obligated to use diligent efforts to identify potential sublicensees;

-MIT retained the right to demand termination of any sublicense if the sublicensee challenges the patent;

-All sublicenses were required to incorporate terms from the original agreement with MIT;

-MIT was a third-party beneficiary under all sublicense agreements and could step in and enforce payments if E8 failed to do so;

-MIT retained the right to approve any settlement; and

-E8 could not assign its interests without MIT’s consent.

 

E8 was dismissed as a plaintiff and MIT is left on its own asserting infringement.  Time will tell how hard MIT will push this case on its own.

 

http://pacer.mad.uscourts.gov/dc/cgi-bin/recentops.pl?filename=otoole/pdf/e8%20affymetrix%20motion%20to%20dismiss%20order.pdf

 

E8 Pharmaceuticals LLC and MIT v. Affymetrix, Inc., 08-11132-GAO (D. Mass. Jan. 13, 2010)

Small Restaurant Targeted by BMI for Copyright Infringement

Broadcast Music, Inc. (BMI), the NYC music clearinghouse, along with a host of individual copyright owners, have sued the owners of the Water Street Café (Fall River, MA) for “unauthorized public performance of musical compositions from the BMI repertoire.”  The complaint alleges five claims of willful copyright infringement and seeks statutory damages and an injunction, along with fees and costs.

 

This is probably a situation where one of BMI’s roving patrols wandered into the Water Street Café only to hear music to which BMI owned the rights being played and then noting that the café had not entered into the standard BMI subscription.  BMI typically files between 75 and 125 copyright infringement actions against eating and drinking establishments every year who fail to sign up.  Its counterpart ASCAP files between 250-300.  According to BMI, the standard license fee for restaurants is about $650.  Legal fees / settlement will obviously be more. 

 

These suits, which can target smaller and more remote establishments, are used to discourage restaurants from thinking they can duck the license.  For a good summary of the practice, see this article:  http://www.qsrmagazine.com/articles/exclusives/1209/copyright-1.phtml

 

Broadcast Music, Inc. et. al. v. FRWSC d/b/a Water Street Café, et. al., 10-10080-WGY (D. Mass. Jan. 20, 2010).

"Mindpool" Patents Alleged Invalid

ChoiceStream, Inc. (Cambridge, MA) has filed a declaratory judgment action against Lycos, Inc. (Waltham, MA) alleging invalidity and non-infringement of U.S. Patent Nos. 6,029,161; 6,308,175; 6,314,420; and 6,775,664, directed to, among other things, “a multi-level mindpool system,” an adaptive search engine, and an information filter designed to filter network information desired by a user.

 

The complaint vaguely refers to “improper threats” made by Lycos against ChoiceStream’s customer Blockbuster regarding Blockbuster’s use of ChoiceStream’s RealRelevance® software.  The complaint then refers to a co-pending case, Lycos, Inc. v. Tivo, Netflix, and Blockbuster, 07-11469-MLW (D. Mass. filed Aug. 9, 2007), where Lycos purportedly indicated an intent to bring action against ChoiceStream, and asserts that should a settlement agreement in that case be enforced, ChoiceStream will have an implied license to the Lycos patents.

 

Reading between the lines, my hunch is that the settlement was never finalized and this complaint (which was likely filed as related to the Tivo case since both are before Judge Wolf) is meant to be a spur to Lycos to either finalize the agreement or acknowledge ChoiceStream’s rights to the patents at issue.

 

ChoiceStream, Inc. v. Lycos, Inc., 10-10065-MLW (D. Mass. Jan. 18, 2010)

Solo Inventor Sues Medical Device Manufacturer

Plaintiff Dr. Carey Kimmelstiel (Framingham, MA) is a distinguished medical practitioner and professor at Tufts University School of Medicine.  Defendant Merit Medical Systems (South Jordan, Utah) is a medical device manufacturer whose “Sea Dragon” and “H₂O Torq” devices are accused of infringing Dr. Kimmelstiel’s Patent No. 5,325,868 directed to a torque device for guide wires used in medical procedures.

 

The complaint alleges that Dr. Kimmelstiel notified Merit of the ‘868 patent in 2001 but defendant “expressed a lack of interest.”  The complaint further alleges that plaintiff learned of the Sea Dragon product in 2007 and of the H₂O Torq product just recently.

 

Otherwise the complaint is about as bare-bones as they come, though it probably would survive a Twombly challenge as the accused devices are specifically named.  The case is also before Judge Tauro, which is not the worst judge for a solo inventor.

 

Kimmelstiel v. Merit Medical Systems, Inc., 10-10050-JLT (D. Mass. Jan. 13, 2010)

O’Toole Denies Motion to Dismiss DMCA Claims

Everyone’s favorite Framingham, MA based audio equipment manufacturer, Bose Corp., sued Eduardo Zavala for altering the firmware on Bose® Lifestyle® Media Centers to unlock the DVD region code and then reselling the equipment on eBay.  The complaint included claims for violations of the Lanham Act, the Digital Millennium Copyright Act, and M.G.L. 93A (unfair competition), as well as common law claims of trademark infringement, unjust enrichment and conversion.  Zavala moved to dismiss under Fed. Rule Civ. P. 12(b)(6).  The motion was denied for a number of reasons.

 

First, Judge O’Toole remarked that Zavala failed to cite any authority beyond Atlantic v. Twombly and Ashcroft v. Iqbal.  Note to practitioners, citing cases is good.  Not citing cases is bad. 

 

Second, the challenge to Bose’s standing to sue under the DMCA was struck down because under the low bar for DMCA standing set by CoxCom, Inc. v. Chaffee, 536 F.3d 101 (1st Cir. 2008) Bose could claim potential lost sales and be considered a “person injured.”

 

Third, the defense to the remaining claims (that Zavala was reselling “genuine” Bose goods) was similarly backhanded.  As the Court noted, “Goods are not genuine if they are materially different from those authorized for sale by the trademark owner.”

Motion to dismiss denied.  The beat goes on.

Bose Corp v. Zavala, 09-11360-GAO (D. Mass. Jan. 14, 2010)

http://pacer.mad.uscourts.gov/dc/cgi-bin/recentops.pl?filename=otoole/pdf/bose%20v%20zavala%20motion%20to%20dismiss%20order.pdf

My Experience Serving Jury Duty in Federal Court in Boston

Or, how, by the skin of my teeth, I missed sitting on a three-week long criminal trial on the first day of a new job.

 

Please forgive the non-IP nature of this rather lengthy post, but I thought it might provide insight into one way juries are selected in the District of Massachusetts.

 

Federal jury service in Massachusetts is based on an “on-call” system of three weeks.  I received my summons a number of months ago indicating that my first on-call day was December 28, 2009, the Monday after Christmas.  As instructed, I called the week before and learned that my services were not needed.  I repeated this process each week until I received notice on Saturday January 9, 2010 that I was needed on Monday January 11.

 

Several months earlier I had the experience of serving on a one and a half day civil jury trial in Massachusetts state court.  This was quite educational from the perspective of a practicing litigator and I was very much looking forward to the opportunity to serve as a juror in a federal case.  But the timing for this summons was terrible as I had just left my previous firm (where I had been for 10 years) and was scheduled to start with my new firm on that Monday.  Unfortunately the time to request a rescheduling had long passed so I reported as summonsed at 8 a.m. at the Moakley Federal Courthouse in Boston.  [Note that in Massachusetts jury service in state court does not excuse you from later federal service unless you sit on a trial that is at least five days long; whereas federal jury service excuses you from later state service (within three years) regardless of length of service.  The federal jury clerk explained that this is due to the large number of potential state jurors called each year (~1.2 million) drastically outnumbering the number of potential federal jurors called each year (~20 thousand)].

 

From a juror’s perspective, the procedure runs about as smoothly as possible.  The courthouse in Boston is conveniently located to public transportation and there is parking across the street.  (Though I still feel bad for the folks who had to get there by 8 a.m. from Nantucket or Martha’s Vineyard.)  Transportation to the courthouse is reimbursed up to a very reasonable pre-set limit.  The facility itself is gorgeous (even after all these years of practice I love looking out onto the water from the atrium) and well appointed.  The jury room had juice, coffee, and water.  The clerks were friendly, accommodating, and efficient. 

 

When we checked in we were given several papers including a pamphlet from the Administrative Office of the U.S. Courts describing jury service which provided some insight into how trials work.  After each juror had checked in and the paperwork was completed we were shown a 20 minute video on jury service.  I personally found the video a bit corny and slanted from the point of view of correcting the perception that jury service is a hassle rather than a civic duty.  (Judge Young actually handles this remarkably well, as noted below.)  I was also amused by the repeated shots of early 1990s Washington, DC. 

 

Following the video the clerk spoke to the jury pool, provided some helpful administrative information, and informed us that only Judge Young and Judge Gorton were set for trials that day and that the pool would be divided in half between them.  I was juror number 38 for Judge Young’s pool and we headed up in a group.  This was good and bad.  Good because I have had a number of experiences with Judge Young including attending his On Trial MCLE course, attending many bar events with him, and appearing before him in a patent trial last spring, set to be re-tried in just a few months; also it would be immensely educational to sit as a juror in one of his cases.  Bad because I didn’t want Judge Young mad at me for trying to get out of jury duty.

 

If you haven’t heard Judge Young’s speech / civic lesson to prospective jurors, it’s worth sitting in his courtroom during jury selection to hear it.  It is eloquent and heartfelt, and makes one want to serve as a juror.  I certainly would have wanted to had it not been for my employment situation.  Following the introduction he gives some preliminaries of the case and explains the case schedule.  This case was to be a three-week long criminal trial of two defendants with trial days from 9 a.m. to 1 p.m. (as is Judge Young’s standard practice).  A 16 person jury would be empanelled. 

 

Prior to seating jurors in the box Judge Young asks a number of preliminary questions such as do you know any of the parties, lawyers, etc. or do you have any important reason why you cannot serve.  All those who answer yes have a chance to explain themselves.  I went up and explained my employment quandary, as well as the fact that I had a number of depositions forthcoming.  Judge Young did not dismiss me and asked me to stay.

 

16 jurors were then called to the box.  I believe they were jurors 1 through 18 so a few must have either been dismissed or no-shows.  Eight were promptly dismissed by the parties.  The process continued until there were fourteen confirmed jurors and two seats to fill.  My name was then called.  I was worried that as juror number 38 the parties would be out of challenges.  I was asked to state my name, occupation and my spouse’s occupation.  I stated that I was an intellectual property litigator who was supposed to start a new job that day.  Perhaps I used a voice which said “don’t pick me” because during the next side-bar I was stricken by the prosecution (side-bars can be easy to read if you know what’s going on).

 

I was dismissed and headed over to my new job, getting there just before lunch.

 

I’m sorry I missed what would have likely been a fabulously interesting experience, but I’m also glad I didn’t start my new job three billable weeks in the hole.

Judge Saylor Keeps Patent Case, Follows First-to-File Rule

Abbott GmbH & Co. (Wiesbaden, Germany) and co-plaintiff Abbott Bioresearch Center (Worcester, MA) sued Centocor Ortho Biotech (Horsham, PA) for infringement of Abbott’s Patent Nos. 6,914,128 and 7,504,485 following an interference between Abbott and Centocor over the ‘128 patent where Abbott prevailed.  18 days after Abbott sued Centocor, Centocor sued Abbott for declaratory judgment of non-infringement and invalidity on the ‘128 and ‘485 patents and for a review of the USPTO in the ‘128 interference. 

 

Abbott filed in D. Mass., Centocor in D. D.C.  On December 18, 2009 a judge in D.C. decided that the DJ case should be transferred to D. Mass.  This decision confirms that analysis and keeps the case in Mass.

 

The court held that the plaintiff’s choice of forum should be given deference and ruled that Mass. was the more convenient forum after going through the analysis under 28 U.S.C. § 1404(a) [the decision incorrectly cites 35 U.S.C.] as a number of witnesses and documents were identified that are located in Mass. but none were identified that are located in D.C. 

 

Let the litigation commence.

 

Abbot GmbH & Co. v. Centocor Ortho Biotech, Inc., 09-11340-FDS (D. Mass. Jan. 6, 2010)