District of Massachusetts IP Blog

Analog Patent Case Transferred to D. Mass.

A patent case originally filed in Delaware by Signal Tech, LLC (Delaware) against Analog Devices, Inc. (Norwood, MA) in November, 2011 was transferred to D. Mass. in April, 2012.  The case alleges that Analog infringes Patent No. 6,480,064 directed to a low voltage switchable GM cell. 

Signal Tech, LLC v. Analog Devices, Inc., 12-10669-WGY (D. Mass. Nov. 2, 2011)

Another False Marking Case Moved to Massachusetts

Back in November San Francisco Technology, Inc. (San Jose, CA) brought a false marking suit against Franklin Sports, Inc. (Stoughton, MA).  That case was transferred to D. Mass. and assigned to Judge Stearns. 

San Francisco Technology, Inc. v. Franklin Sports, Inc., 11-10522-RGS (filed Nov. 17, 2010, transferred to D. Mass. Mar. 25, 2011)

Another False Marking Case Moved to Defendant’s Home Court

Patent Management Foundation, LLC (San Jose, CA) originally sued Analog Devices, Inc. (Norwood, MA) in the Northern District of California (as case no. 10-03630-MEJ, filed Aug. 17, 2010) for twenty eight counts of false marking covering dozens of patents and products.

The case was recently transferred to D. Mass. following a motion filed by Analog. 

Patent Management Foundation, LLC v. Analog Devices, Inc., 11-10182-DPW (D. Mass. Feb. 3, 2011)

False Marking Case Moved to Defendant’s Home Court

Jennifer Brinkmeier (Philadelphia, PA) originally sued Exergen Corp. (Watertown, MA) in the District of Delaware (as case no. 10-00176-SLR, filed Mar. 3, 2010) for false marking related to its thermometer products.  The patents in dispute have either all expired or been invalidated by the Federal Circuit. 

The case was recently transferred to D. Mass. following a motion to transfer filed by the defendant. 

Brinkmeier v. Exergen Corp., 11-10119-DPW (D. Mass. Jan. 21, 2011)

Malpractice Case Moved to Defendants’ Home Court

Cold Spring Harbor Lab. (Cold Spring Harbor, NY) originally sued law firm Ropes & Gray, LLP (Boston, MA) and one of its former attorneys in the Eastern District of New York (as case no. 10-00661-ADS-AKT, filed Feb. 16, 2010) for malpractice related claims.  

The complaint alleges that the attorney copied portions of a third party’s patent application into certain applications for CSHL without CSHL’s knowledge and that the copying led to substantial delays in the prosecution of CSHL’s patent applications.  The similarities were discovered by an examiner, leading to much prosecution consternation.  The claims are still pending (with new counsel) but the complaint alleges lost revenue for the period (so far) that CSHL has been without patent rights. 

The case was recently transferred to D. Mass. following a motion filed by R&G.

Cold Spring Harbor Lab. v. Ropes & Gray, LLP, 11-10128-NG (D. Mass. Jan. 25, 2011)

Lightspeed Oregon Complaint Transferred to Mass.

In the latest occurrence in the ongoing Lightspeed v. Bose disputes, an Oregon case brought by Lightspeed against Bose in March for false marking has been transferred to Massachusetts.  The case relates to certain Bose QuietComfort and Aviation Series headphones. 

The original case number was 10-239-BR (D. Or.)  The new case number is below. 

Lightspeed Aviation, Inc. v. Bose Corp., 10-11739-RGS (D. Mass. March 3, 2010)

Dispute Over Patent Ownership Dismissed Under Forum Selection Clause

Flatspikes, LLC and its owner brought a multi-count complaint against Softspikes, LLC in a dispute involving patent ownership rights, licensing fees, etc.  The original asset purchase agreement between the parties contained a forum selection clause requiring any disputes to be brought in Maryland. 

 

In a short and to-the-point order, Judge Zobel ruled that the forum selection clause was valid (even though none of the parties were located in Maryland), and that the majority of counts in the complaint related to the subject matter of the agreement and therefore must be brought in Maryland.  Those counts were dismissed.  The counts not subject to the forum selection clause were also dismissed, though for other grounds including failure to state a claim.  The court also ordered the plaintiff to show cause why counts against certain individuals should not be dismissed due to plaintiff’s failure to serve those individuals within the 120 days allowed by Fed. R. Civ. P. 4(m).

 

Curley v. Softspikes, LLC, 09-11451-RWZ (D. Mass. June 21, 2010)

Another E.D. Tex. Case Stays In Texas

Although it’s not really news when the E.D. Tex. denies a motion for transfer, or when the Federal Circuit grants mandamus review of those decisions (see here, here, and here), I find it interesting that several recent cases have been ones where the desired transfer location is D. Mass.

 

In a recent case involving a patent infringement claim against FedEx Magistrate Judge Love refused a transfer to D. Mass., noting that the contacts to D. Mass. did not sufficiently outweigh the contacts to E.D. Tex. to necessitate a transfer.

 

ColorQuick, LLC v. FedEx Office and Print Servs., Inc., 6:09-cv-572 (E.D. Tex. June 17, 2010)

Federal Circuit Refuses Mandamus Transfer from E.D. Tex. to D. Mass

Federal Circuit Refuses Transfer from E.D. Tex. to D. Mass.

 

Although not technically a D. Mass. case, this recent opinion from the Federal Circuit is an interesting take on the ongoing venue battles involving the Eastern District of Texas.

 

A number of defendants (none headquartered in Mass.) sought mandamus review following an E.D. Tex. ruling which declined to transfer a case to D. Mass.  In favor of transfer the defendants noted that none of the parties or witnesses were in Texas and that the plaintiff’s incorporation in Texas (which happened just two months before the complaint was filed) was a “fiction.”

 

In a 2-1 decision (Judge Lourie dissented without opinion) the Federal Circuit panel declined to order a transfer noting that the standard for mandamus relief is “exacting” and not one the defendants had met.

 

The decision can be found here.

 

In re Apple, Inc., Misc. Docket No. 932 (Fed. Cir. May 12, 2010)

Trade Secret Case Filed by Dutch Company Stays in Boston

DSM Research (Netherlands) sued Verenium Corp. (MA) for unauthorized use of confidential information and trade secrets.  Verenium moved to transfer the case to the S.D. Cal.  Judge Gorton denied the motion.

Verenium is the successor to a San Diego, CA company that entered into a material transfer agreement with DSM to develop a microbial strain for use in biofuels.  DSM alleges that the predecessor company developed the strain without a proper licensing deal in place. 

The Court declined to transfer, despite the location of many witnesses and documents in California, because (1) Verenium is headquartered in MA, (2) California is twice as far from Holland as MA, and (3) the strong presumption in favor of plaintiff’s choice of forum.

DSM Research, B.V. v. Verenium Corp., 09-10045-NMG (D. Mass., Feb. 19, 2010)

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