District of Massachusetts IP Blog

On Break Until May 3

The D. Mass. IP  blog will be on hiatus for a week and will return on May 3.  Thanks all.

Franklin Pierce IP Symposium - April 23, 2010

On April 23, 2010 I will be speaking at the annual intellectual property symposium at Franklin Pierce Law Center hosted by Pierce Law's Student Intellectual Property Law Association and Pierce Law's student chapter of LES / AUTM.  This year's symposium is entitled "Navigating IP Boundaries, Frontiers & Opportunities."  A number of well regarded speakers are scheduled to present including Professor David Hricik, a frequent lecturer on ethics in the practice of IP law, and Federal Circuit Judge Arthur J. Gajarsa.

The event is free and CLE credit is offered.

The full program can be found here:  http://sipla.files.wordpress.com/2010/04/sipla_ip_symposium_2010_final.jpg

GeoVantage v. GeoVantage

GeoVantage, Inc. (Peabody, MA) has sued GeoVantage, Inc. (Jupiter, FL) and associated organizations for, surprise, trademark infringement.  The complaint alleges that the plaintiff has been using GEOVANTAGE and geovantage.com for digital mapping / GPS services for over ten years and that the defendant recently starting using the same mark for the same services and also registered geovantage.net. 

 

While most of the complaint is straightforward, it asserts, on information and belief, that defendant must have known about plaintiff’s .com registration prior to registering its own .net registration since a .com domain name “is almost always the most desirable top-level domain.”  That legal assertion seems simultaneously common sense and a stretch.

 

GeoVantage, Inc. v. GeoVantage, Inc., et. al., 10-10638-MBB (D. Mass. Apr. 15, 2010)

Judge Young Dismissal of Copyright Claim Affirmed

The First Circuit affirmed Judge Young’s dismissal of a copyright action for claim preclusion resulting from a similar New York lawsuit.

 

Plaintiff Airframe Systems, Inc. was a software vendor who had provided software to Aircraft Integration Systems (AIS).  From 1995-2002 AIS was owned by Raytheon.  In 2002, L-3 purchased AIS.  In 2003 Airframe discovered that unauthorized versions of its source code were on AIS computers.  It further confirmed this in 2003 by using a subpoena in an unrelated case between Airframe and a former AIS employee to obtain documents from L-3.  Apparently some time in 1997-1998 this former AIS employee made unauthorized copies of the source code during a visit to Airframe and brought them back to AIS.

 

In 2005 Airframe sued AIS and L-3 in the S.D.N.Y. saying that the unauthorized copies constituted copyright infringement and that L-3 “could have” used the source code wrongfully.  In 2006 statements were made during a motion session that Airframe claimed to be an admission of use.  Airframe wrote a letter to the court asking to amend its complaint, but didn’t file a motion.  The court ultimately dismissed the complaint for failing to state a claim.  Airframe did not appeal. 

 

Instead, Airframe filed suit in D. Mass., this time adding Raytheon as a defendant since Raytheon owned AIS when the source code was taken.  Judge Young dismissed the case under claim preclusion. The First Circuit affirmed holding that (1) Airframe knew sufficient relevant facts when it brought the S.D.N.Y. action to have included the claim then, (2) the new D. Mass. action involves the same nucleus of facts as the S.D.N.Y. action, and (3) Raytheon is sufficiently related to L-3 in this context as one-time owners of the same division.

 

Retired Justice David Souter, sitting by designation, was part of the First Circuit panel.

 

http://www.ca1.uscourts.gov/cgi-bin/getopn.pl?OPINION=09-1624P.01A

 

Airframe Sys., Inc. v. Raytheon, Co., 09-1624 (1st Cir. Mar. 31, 2010)

Inventor Brings Infringement Suit on Expired Caller ID Patent

Romek Figa d/b/a Abraham & Son (Hanover, MA) has sued High Tech Computer Corp. (“HTC”) (Taiwan) and its U.S. affiliates and importer for infringement of Patent No. 4,924,496
(which expired on May 12, 2008) directed to a caller ID system and accusing HTC and its related entities of importing and selling a variety of infringing mobile telephones including several associated with T-Mobile and Cingular.

 

Frustrated by slow correspondence between the parties dating from 2005 through 2008, and no doubt knowing that damages were only going down, Figa finally brought suit.  Though if Figa knew of the infringement as early as 2005, is it possible he knew or should have known prior to Apr. 5, 2004, more than six years prior to filing suit?  I smell a laches dispute.

 

Side note: the claims of this patent, while written in means-plus-function language, are awfully broad.

 

Romek Figa d/b/a Abraham & Son v. High Tech Computer Corp., 10-10575-NG (D. Mass. Apr. 6, 2010)

Judge Zobel Construes Claims In Speech Recognition Patent

Nuance Communications, Inc. asserts that Vlingo, Corp. is infringing Patent No. 6,766,295 directed to adaptation of speech recognition system across multiple remote sessions.  We encountered this case earlier in the context of a discovery dispute over source code.  (See http://bostonipblog.typepad.com/dmass-ip-blog/2010/02/d-mass-rules-on-motion-to-compel-ed-tex-disclosures.html)  

 

The parties originally disputed ten claim terms but agreed on six at the hearing, leaving four for Judge Zobel to construe.  The patentee mostly wins this one, winning three out of four constructions, which the court handles without extensive discussion or apparent difficulty.

 

Download Zobel claim construction

 

Nuance Communications, Inc. v. Vlingo, Corp., 09-11414-RWZ (D. Mass. Apr. 2, 2010)

Patent License Dispute Set Down For Trial

Bio-Mimetics is suing Columbia Labs. for correction of inventorship, breach of contract, and unfair trade practices.  The parties cross-moved for summary judgment.

 

Bio-Mimetics entered into an agreement with Columbia in 1989 which called for asset purchases, a license, and options to a patent and technology originally developed by Bio-Mimetics’ founder.  Several years into the agreement Columbia exercised an option to purchase further interests in the patent.  Following the expiration of the patent, the parties dispute the ongoing royalties due, with Columbia saying none because of the expiration and Bio-Mimetics saying that royalties need to continue until they hit a predetermined ceiling.

 

Judge Stearns interpreted the contract and found that neither one was exactly right.  He found that the ongoing royalties depend on whether Columbia’s later patents should be considered “improvements” based on Bio-Mimetics’ patent, a question he left for the jury.  Also, because there is no evidence that the original inventor of the Bio-Mimetics patent collaborated with the Columbia inventors, summary judgment for defendant Columbia was granted with respect to the claims for correction of inventorship of Columbia's patents and the related unfair trade practices claim.

 

Remaining issues set for trial July 12, 2010.

 

This case was decided prior to the Federal Circuit’s recent decision on joint inventorship in Vanderbilt Univ. v. ICOS Corp., 2009-1258 (Fed. Cir. Apr. 7, 2010), but there is nothing in Vanderbilt to suggest Judge Stearns’ decision was incorrect.

 

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

 

Bio-Mimetics, Inc. v. Columbia Labs., Inc. 07-12389-RGS (D. Mass. Mar. 31, 2010)

Honeywell Sues Former Suitor For Patent Infringement

In a verified complaint, Honeywell Int’l, Inc. (Morristown, NJ) sued Memsic, Inc. (Andover, MA) for infringement of Patent No. 5,247,278 directed to a magnetic field sensing device.  The story apparently goes like this: 

 

First Mesmic offered to purchase Honeywell’s magnetic sensor business but Honeywell declined.  Then Mesmic offered to license Honeywell’s magnetic sensor technology but Honeywell declined.  Then Mesmic began offering its own line of magnetic sensors, so Honeywell sued.

 

Honeywell Int’l, Inc. v. Memsic, Inc., 10-10528-NG (D. Mass. Mar. 30, 2010)

New Copyright Case Asserts Infringement For Unregistered (But Applied For) Works

Fetco Home Decor, Inc. (Randolph, MA) sued Harbortown Industries, Inc. (Lake Forest, IL) for copyright infringement of Fetco’s picture frames incorporating three-dimensional artworks.  Interesting that the complaint alleges Fetco applied for copyright registrations but does not allege it has actually received any. 

 

The question of whether jurisdiction exists in this circumstances is still the subject of a circuit split with the Fifth and Eight Circuits saying yes, the Second, Tenth, and Eleventh saying no, and the First Circuit not having weighed in (though there are a number of D. Mass.  decisions on the subject, I believe most holding that registration is required).  Of course the Supreme Court had the chance to clear the whole thing up with its recent decision in Reed Elsevier, Inc. v. Muchnick, ___ U.S. ___ (No. 08-103 March 2, 2010), but it punted saying “[w]e... decline to address whether § 411(a)’s registration requirement is a mandatory precondition to suit that...district courts may or should enforce sua sponte by dismissing copyright infringement claims involving unregistered works.”  (Reed Elsevier, Slip Op. at 16.)

 

So we’ll see.

 

Fetco Home Decor, Inc. v. Harbortown Industries, Inc., 10-10511-NMG (D. Mass. Mar. 26, 2010)

Bose Sues Cadre of Alleged Counterfeiters

Bose Corp. (Framingham, MA) filed suit against close to fifty different defendants alleging sale of counterfeit Bose headphones.  The defendants are mostly individuals in the U.S. or Canada  with a few Singapore entities thrown in.  All are alleged to have purchased “large volumes” of counterfeit goods from anonymous sellers on Craig’sList or Chinese websites and resold the goods on eBay or Amazon.  The complaint alleges counts of federal and state trademark infringement, counterfeiting, unfair competition, and dilution.

 

Bose Corp. v. Bahar, et. al., 10-10501-WGY (D. Mass. Mar. 24, 2010)