District of Massachusetts IP Blog

Patent Malpractice Claim Filed Against National Firm

An individual from Foxborough, MA has sued law firm Finnegan Henderson for malpractice related to eyeglass technology.  The complaint alleges that the firm took over $100k from the plaintiff to obtain a patent in the technology at the same time the firm represented a competitor.  The complaint also alleges failure to submit and IDS to the USPTO and submitting an amendment without authorization. 

Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner LLP, 12-10639-JGD (D. Mass. Apr. 10, 2012)

Mass. Trademark Case Stays in Mass.

Edvisors Network, Inc. had sued Educational Advisors, Inc. for trademark infringement, alleging that the defendant’s EDADVISORS mark and <edadvisors.com> domain infringed on the plaintiff’s EDVISORS® mark.  Defendant moved to dismiss for lack of personal jurisdiction. 

Despite few connections between the defendant and Massachusetts, Chief Magistrate Judge Dein recommended denying the motion and Judge Saris adopted that recommendation.  The decision turned on two points: 

Software Company Sues Unlicensed Spinoffs

In two separate cases Visibility Corp. (Andover, MA) sued defendants for copyright infringement related to the plaintiff’s software and materials.  The complaint alleges that Visibility had previously granted a software license to the defendants’ parent company or prior entity but that at some point afterwards, the defendants were sold / merged but continued to use the software, now without a license.  The complaint also alleges that the license agreements prohibited transfers of the software without Visibility’s consent. 

In the first case the defendant is Hudson Products Corp. (Sugar Land, TX).  The complaint alleges that Hudson’s parent had rights to the software but when Hudson was sold to a different parent it continued using the software, only now without a license. 

In the second case the defendants are Schilling Robotics, Inc. (Davis, CA) and Alstom USA, Inc. (Windsor, CT).  The software was originally licensed to GEC Alstom Schilling.  The complaint alleges that GEC’s assets, including the software, were then transferred to Alstom USA and then to Schilling Robotics, who held itself out to Visibility as GEC.  Visibility did not consent to these transfers.  This case also alleges breach of contract when Schilling purportedly poached one of Visibility’s employees in violation of a non-solicitation clause. 

This is not an uncommon problem.  Entities get bought and sold all the time and all too often these transfers can wreak havoc on rights relied on by the entities, but sometimes not actually granted to the entity directly. 

Visibility Corp. v. Hudson Prods. Corp., 10-12279-RGS (D. Mass. Dec. 30, 2010)

Visibility Corp. v. Schilling Robotics, Inc., 10-12280-JGD (D. Mass. Dec. 30, 2010)

Antitrust Claims In Ion Beam Implantation Fight Pared Down

Following briefing to Magistrate Judge Dein as well as briefing on objections to her conclusions, Judge Gertner adopted the Report and Recommendations dismissing two claims, one alleging misleading the PTO, the other alleging conspiracy to monopolize.

 

This case stems from an infringement suit involving Patent No. 7,301,156, originally brought by Varian.  In that suit Advanced Ion asserted a number of antitrust counterclaims which were dismissed without prejudice for insufficient pleading.  [See here for a discussion of a cost award in that case.]  Instead of moving to re-plead its counterclaims, Advanced Ion chose to file them in this separate action asserting (in more detailed pleading) Walker Process claims, sham litigation claims for monopolization, and conspiracy to monopolize.

 

Following another motion to dismiss Magistrate Judge Dein recommended dismissing claims relying on fraud before the PTO regarding one set of (mis-)representations but not dismissing claims relying on a second set of omissions.  The lengthy opinion is detailed and very fact specific, but carefully walks through the alleged facts and weighs them against the appropriate pleading requirements, including those heightened by Rule 9(b).

 

Advanced Ion Beam Tech., Inc. v. Varian Semiconductor Equipment Assoc., Inc., 09-11448-NG-JGD (D. Mass. July 2, 2010)

Costs, But Not Fees, Awarded To Prevailing Defendant Following Settlement

Varian Semiconductor had sued Advanced Ion Beam Tech. for infringement of Patent No. 7,301,156 directed to implanter ion-beams.  After eight months of litigation the plaintiff granted the defendant a covenant not to sue and the court granted a joint motion dismissing all initial claims and counterclaims with prejudice.  The parties agreed that defendant AIBT was the prevailing party but not that the case was exceptional.  Later counterclaims filed by AIBT directed to antitrust and sham litigation were dismissed without prejudice.  AIBT moved for fees in this case and simultaneously filed a new antitrust case against Varian.  (09-11448-NG)

 

Magistrate Judge Dein denied the request for fees noting (as she did when dismissing the sham litigation counterclaims) that AIBT had insufficient evidence to even plead fraud on the Patent Office, let alone meet the clear and convincing burden to show that such fraud occurred to thereby classify this case as exceptional.  Costs, however, were awarded since AIBT was the prevailing party.

 

Varian Semiconductor Equip. Assoc., Inc., et. al. v. Advanced Ion Beam Tech., Inc., 08-10487-NG (D. Mass. May 25, 2010)

ARCLIGHT Trademark Subject of New Suit

Plaintiff ArcLight Capital Holdings, LLC (Boston, MA) sued Arclight Equity Partners, LLC (Cave Creek, AZ) for infringement of plaintiff’s registered service marks for ARCLIGHT for financial and investment services.  The complaint alleges the defendant used the names ARCLIGHT EQUITY and ARCLIGHT EQUITY PARTNERS for real estate investment services.  When an exchange of letters didn’t solve the problem, this case ensued.

 

ArcLight Capital Holdings, LLC v. Arclight Equity Partners, LLC, 10-10652-JGD (D. Mass. Apr. 16, 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)

Judge Dein Grants Preliminary Injunction Prohibiting Use of Disputed Logo

Fairly straightforward trademark injunction case.  Magistrate Judge Dein ruled that defendant’s logo featuring three concentric, curved arcs was confusingly similar to plaintiff’s registered and incontestable logo feature three concentric, curved arcs.  Plaintiff’s mark was strong, competing marks were nearly identical, and there was significant overlap in the services, customers, and channels of trade.  Potential for irreparable harm was presumed.  Public interest and equities held to favor the plaintiff.  Injunction ordered.  Specific language of the injunction and amount of security (if any) to be determined at a later hearing.

 

http://pacer.mad.uscourts.gov/dc/opinions/dein/pdf/trimark-preliminj.pdf

 

TriMark USA, Inc. v. Performance Food Group Co., 09-11222-JGD (D. Mass. Oct. 21, 2009)