District of Massachusetts IP Blog

Motion to Dismiss on Standing Falls Just Short

Back in March Acoustic Technology (ATI) sued Itron for infringement and inducement to infringe Patent Nos. 5,986,574; 6,239,722; and 6,509,841 directed to systems and methods for remote meter reading.  ATI had obtained its rights in the patents following an arbitration which held that ATI had rights in the patents, but also implied ownership by other entities.  Itron moved to dismiss on the grounds that ATI lacked standing to sue without joining those other parties. 

The decision (see below) on the motion by Magistrate Judge Bowler includes an extensive review of the factual background, which seems to support Itron’s position that ATI is a co-owner of the patents and therefore must join the other co-owners to have standing.  Ultimately, however, she recommends denying the motion to dismiss as she felt Itron could not meet its burden of proof to use the arbitration decision against ATI.  Given the extensive factual analysis in favor of Itron, I wonder if this is one of those rare Magistrate decisions that might get resolved differently by the district judge, in this case Judge Gorton. 

Download ATI standing order

Acoustic Technologies, Inc. v. Itron, Inc., 10-10500-NMG (D. Mass. Dec. 21, 2010)

Catholic Copyright Complaint

John / Jack Dunn (Holyoke, MA) has sued Dan Brown (Exeter, NH) and his publisher Simon & Schuster (New York, NY) for copyright infringement.

Dunn alleges that Brown’s novel Angels and Demons infringes Dunn’s novel The Vatican Boys, published and registered ~ Nov. 1997.  The complaint alleges many similarities between the works and accuses Brown of using The Vatican Boys “as a palette to purportedly construct and publish Angels and Demons.”

Dunn’s pro se complaint modestly seeks…$100M in damages.

 

Download Simoncomplaint

Dunn v. Brown, 10-11383-MBB (D. Mass. Aug. 13, 2010)

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)

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)