District of Massachusetts IP Blog

Internal Disciplinary Documents Must Be Produced In Malpractice Case

Cold Spring Harbor Laboratory is suing Ropes & Gray, LLP and one of its former attorneys for malpractice related to the prosecution of several CSHL patent applications before the Patent Office.  Ropes refused to produce documents related to investigation and termination of the employee, claiming privilege / work product.  Judge Stearns partially disagreed, and ordered production of the materials generated between the date the potential malpractice was raised and the date Ropes discontinued representation of CSHL. 

Cold Spring Harbor Lab. v. Ropes & Gray, LLP, 11-10128-RGS (D. Mass. July 19, 2011)

Laser Removal Claims Zapped

In one of several cases involving Patent Nos. 5,595,568 and 5,735,844 directed to laser hair removal, Candela moved for summary judgment of non-infringement of all claims and invalidity of two.  Judge Zobel mostly ruled for Candela, removing all but one claim.  There are several notable items in this decision. 

Subject Matter Waiver Found In Disclosure of Investigator’s Findings

Over a year ago Bear Republic Brewing sued Central City Brewing in a dispute over beers featuring RACER formative marks.  A motion for a preliminary injunction was denied, and discovery ensued. 

Ten days before the close of discovery Central City disclosed the existence of a private investigator who had done some “market research” about the subject beers as sold.  Century City also produced photographs and video taken by him.  Based on this discovery, Bear Republic issued subpoenas to the investigator and his company.  Following the subpoenas, Central City tried to take it all back by amending its disclosures to remove his name and following up with an email between counsel saying that the investigator actually did not have discoverable information.  Not surprisingly, Bear Republic refused to withdraw its subpoenas and Central City moved to quash claiming lack of timeliness and work product.  Based on a detailed analysis of new Rule of Civ. Procedure 502, Magistrate Judge Collings allowed the deposition, with certain guidelines as to what could be covered. 

Zobel Performs Triage With Bickering Parties

Judge Zobel quickly worked her way through a number of pending motions in a patent case she has previously characterized as “all-out war.”  In two pages she set a trial date, ordered both CEOs to sit for depositions, denied a request to stay pending re-exam (an earlier request to stay was also denied), and denied a request to release protected information that would just lead to “yet another lawsuit.”  (That last request was denied without prejudice pending the outcome of the present case.) 

In a final bit of exasperation, Judge Zobel noted: 

 

Court Holds Copy of Source Code

In an decision resolving several discovery disputes in a copyright and trademark case, Judge Gorton ordered that a copy of disputed source code must be produced in Massachusetts and also ordered that a copy be held by the Court under seal until the resolution of the case.  The court cited repeated discovery disputes and “unusual circumstances” in deciding that a copy of the source code be filed with the court. 

Jagex Ltd. v. Impulse Software, 10-10216-NMG (D. Mass. Mar. 30, 2011)

No Expedited Discovery To Determine Need for PI

In December 2010 Momenta Pharmaceuticals sued Teva Pharmaceuticals following statements by Teva that it intended to begin manufacturing generic enoxaparin.  Momenta moved for expedited discovery claiming that such discovery was needed to determine whether Momenta should move for a preliminary injunction. 

Applying a reasonableness analysis, Judge Gorton denied the request citing no risk of irreparable injury as well as Momenta’s failure to agree to Teva’s proposal for limited mutual expedited discovery. 

Momenta Pharm., Inc. v. Teva Pharm. Indus. Ltd., 10-12079-NMG (D. Mass. Feb. 18, 2011)

Specific Attorney Selected Documents Protected From Discovery

In resolving a discovery dispute in one of the pending Fresenius patent cases, Judge Stearns split the baby and ordered the plaintiff to produce certain documents but not others.  Judge Stearns refused to order production of specific third-party lab notebook pages reviewed by the plaintiff’s attorneys in a different litigation involving the same patents.  In the ruling, Judge Stearns wrote: 

Counterclaims Dismissed and Sanctions Granted in Counterfeit Suit

Judge O’Toole entered separate orders against a defendant in a counterfeit goods case.  In the first order Judge O’Toole dismisses three counterclaims.  The first counterclaim, for tortious interference based on improper filing of the lawsuit, was dismissed because the defendant admits in the answer facts sufficient to support the initial claim.  The second counterclaim, for conversion, was dismissed because of insufficient pleading and because plaintiff did not take any action to possess the goods in question, save for seeking an impoundment order from the court, which was granted.  The third counterclaim, for unfair competition under M.G.L. ch. 93A for improper filing of the suit, was dismissed on the same grounds as the tortious interfence claim.

 

The court declined to enter Rule 11 sanctions for filing of the counterclaims.  But in the second order the court entered Rule 37 sanctions against the defendant for failure to comply with discovery (following at least four motions to compel) including failure to answer interrogatories, failure to attend a noticed deposition (in Tijuana), and other failures.  The sanctions included an order to produce documents and responses to interrogatories within 14 days, an order that the deposition be held in Boston, and an award of fees and costs of just under $15,000, and a stay of all defendant’s discovery requests until the sanctions were met.

 

Bose BV v. Zavala, 09-11360-GAO (D. Mass. July 8, 2010)

Air Filter Patentee Successful On Summary Judgment

Plaintiff JCS (successor in interest to the original Holmes Group plaintiff) asserts infringement of Patent Nos. 6,425,932, 6,685,760, 7,041,147, and 7,276,100, directed to various configurations of replaceable air filters, against defendant RPS Products.  The latter three patents are all continuations of the ‘932 patent and were added to this case at various stages.  In particular the ‘147 claims appear to have been drafted with accused products in hand.

 

In a comprehensive decision on a number of issues, Judge Saylor effectively sides for the plaintiff across the board.

 

Infringement

 

The parties cross-moved for summary judgment on infringement, which required the court to construe new claim terms in the ‘147 patent.  The court favored plaintiff’s construction (relying partially on the doctrine of claim differentiation, validating at least one of plaintiff’s strategies in prosecuting the continuation).  Having sided with the plaintiff on claim construction, and with no dispute as to the operation of the accused products (the filters are what they are), the court entered summary judgment of literal infringement (and declined to address infringement under DOE).

 

Inequitable Conduct

 

Defendant alleged inequitable conduct by the plaintiff when it failed to disclose this litigation and certain happenings (including certain court orders) during prosecution of the ‘147 patent.  Cross motions for summary judgment were denied due to questions of fact both on materiality (whether the litigation happenings were material is not clear cut) and intent (a classic trial issue, the level of which to prove inequitable conduct depends on materiality)

 

Judge Saylor denied a motion to strike defendant’s proposed inequitable conduct expert’s testimony on materiality, but granted it regarding her testimony on intent or as to the ultimate legal question of whether plaintiff engaged in inequitable conduct.  A motion to preclude the testimony of the prosecuting attorneys due to late disclosure / conflicting invocation of the attorney-client privilege was denied.

 

Assorted Defenses

 

Plaintiff moved for summary judgment on a number of defenses.  The court granted summary judgment on the prosecution laches defense (five to seven years between initial filing and continuation filing was not excessive), written description defense (the original and common specification sufficiently disclosed a one-leg embodiment to satisfy § 112 for the corresponding claims in the continuation), obviousness (defendant failed to articulate a level of ordinary skill in the art and failed to make a case that the invention would have been obvious to one possessing such skill), indefiniteness (the court had no problem with the term “perimeter”), and statutory-double patenting (the asserted patents differ in scope).

 

The court denied summary judgment on obviousness-type double patenting since it wasn’t clear whether a terminal disclaimer was properly filed.

 

Damages

 

The court declined to strike plaintiff’s claim to damages due to discovery abuses (including failure to provide a computation of damages in plaintiff’s initial disclosures and failure to supplement the same) but it did suggest that the defendant propose an alternate sanction, such as a limited award of fees and costs. 

 

Download Judge Saylor decision

 

The Holmes Group v. RPS Prods., Inc., 03-40146-FDS (D. Mass. June 25, 2010)

Patent Holder Allowed Limited Discovery to Oppose Summary Judgment Motion

Haemonetics, Corp. sued Fenwal, Inc. for infringement of Patent No. 6,705,983.  Four days after the complaint was filed the defendant moved for summary judgment of non-infringement.  Plaintiff moved for a 90-day extension of time to conduct discovery.  Judge Gorton ordered the plaintiff to submit a sworn affidavit under Fed. R. Civ. P. 56(f) to explain why discovery was necessary to oppose the motion.  The affidavit was submitted and defendant opposed the request for discovery.

Judge Gorton, satisfied that the affidavit complied with Rule 56(f), allowed limited discovery on issues directly related to the non-infringement motion to be completed by April 15 with an opposition to the motion due on April 30.

Haemonetics, Corp. v. Fenwal, Inc., 09-12107-NMG (D. Mass., Feb. 9, 2010)

http://pacer.mad.uscourts.gov/dc/cgi-bin/recentops.pl?filename=gorton/pdf/haemonetics%20rule%20order.pdf