This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

In Attabotics, Inc. v. URBX, Inc., No. 1:21-cv-11051, Judge Burroughs granted-in-part and denied-in-part a motion to dismiss filed by defendant URBX, Inc. Plaintiff Attabotics, Inc.'s complaint alleged that URBX's technology—using robots to select and deliver products within a gridded storage system—infringed two of Attabotics' patents. URBX sought to dismiss a subset of claims in the first patent and all claims in the second patent.

For the first patent, Judge Burroughs granted URBX's motion because Attabotics conceded that it was not alleging infringement of the challenged subset of claims.

For the second patent, Judge Burroughs denied URBX's motion. URBX argued that Attabotics' second patent required a single robot that could move both vertically and horizontally to transfer products from storage to their final destinations, and that infringement was impossible since URBX's system used two robots (one that moved vertically and another that moved horizontally). URBX also pointed to language in the specification that indicated the requirement of a single robot. Attabotics responded that (i) URBX was attempting to engage in premature claim construction and (ii) its claims could be read to include multi-robot systems like that of URBX. Judge Burroughs agreed with Attabotics, finding that dismissal is only appropriate where the claim language is "expressly" or "on its face" at odds with the allegedly infringing technology. Because there was a dispute as to whether the claims covered the accused technology, Judge Burroughs concluded that the claim language could not be on its face at odds with URBX's system. The Court also noted that the Federal Circuit has cautioned against resolving issues of claim construction at the motion to dismiss stage, and that it would therefore be "improper for this Court to dismiss the complaint without the assistance of claim construction."

In Milliman, Inc. et al v. Gradient A.I. Corp. et al, No. 1:21-cv-10865, Milliman brought two counts against Gradient under the Massachusetts Uniform Trade Secrets Act ("MUTSA"), alleging that a former employee of Milliman misappropriated trade secrets when he left Milliman to form a new company, Gradient, of which he is now the Chief Executive Officer. Milliman specifically alleged that the former employee forwarded a series of emails containing protected Milliman information and data to himself at his new Gradient email address and his personal Gmail email address. Recently, Milliman filed a motion to compel, and Gradient filed a cross motion for protective order, with both relying on the MUTSA.

Judge Kelley noted that the MUTSA does not apply to acts that occurred or began before October 1, 2018 and that the alleged trade secret misappropriation in this case began in June 2018. As such, the Court requested that the Parties submit supplemental briefing explaining if and how the MUTSA applies in this case.

In Egenera, Inc. v. Cisco Systems, Inc., No. 1:16-cv-11613, Judge Stearns denied a motion for clarification filed by defendant Cisco Systems, Inc. Cisco sought clarification of the Court's summary judgment order and findings of fact and rulings of law after a bench trial on inventorship.

Regarding the summary judgment order, Cisco sought clarification that the parties' pre-suit contacts cannot support plaintiff Egenera, Inc.'s claim for willful infringement as a matter of law because Egenera failed to show that Cisco had pre-suit knowledge of the patent-in-suit. Egenera opposed, arguing that pre-suit activity can inform post-suit willful infringement. The Court denied the motion in this regard, explaining that while Egenera was not entitled to pre-suit damages because it failed to comply with the marking statute, "pre-suit conduct can inform post-suit claims, as issues of willfulness and intent turn on the totality of the circumstances."

Regarding the findings of fact and rulings of law regarding inventorship, Cisco sought clarification that the message modification function/step of the asserted claims required MAC address conversion. The Court denied Cisco's request, holding that "[t]he time has long past for claim construction." The Court declined to engage in further untimely claim construction, observing that it had adopted a relevant construction proposed by Cisco, which had already been affirmed by the Federal Circuit. Thus, claim construction was a settled issue that did not need to be relitigated.

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