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 Lu v. Hyper Bicycles, Inc., No. 1:20-cv-11739, Judge Gorton allowed Hyper Bicycles' motion for summary as to Lu's infringement claims directed to the ornamental design of a bicycle.

Hyper moved for summary judgement because Lu had not offered any evidence in support of his patent infringement claims, nor provided any evidence of damages. Lu opposed, contending that deposition testimony supports his claims, and sought to re‑open discovery to address the issues regarding damages.

Initially, the Court ruled in Hyper's favor because Lu failed to provide a concise statement of facts or object directly to Hyper's statement of facts. According to Local Rule 56.1, statement of facts served by Hyper are deemed admitted by the opposing party unless controverted. Because Hyper's statement of facts was dispositive of the issues raised in the motion for summary judgment, the Court granted Hyper's motion.

The Court then addressed the substantive issues. As to infringement, the Court observed that Lu did not provide any written discovery, take any depositions, or designate any experts throughout the course of the litigation. The only evidence that Lu provided were excerpts from a Hyper official's deposition testimony from another case, and Lu's own deposition testimony.

Regarding damages, the Court found that "Lu proffers no evidence at all," instead relying on a presumption of damages and requesting additional discovery. The Court found the request for additional discovery untimely and lacking good cause, specifically rejecting the notion that Lu was unable to obtain discovery due to at times being unrepresented by local counsel.

The Court also denied Lu's request to reopen discovery.

In Alto Dynamics, LLC v. Wayfair LLC, No. 1:23-cv-11351, Judge Gorton granted-in-part and denied-in-part Wayfair's motion to dismiss for lack of patentable subject matter. In particular, the Court examined seven groups of patents (nine patents total), finding that each is directed to an abstract idea under Step One of the Alice v. CLS Bank test, and that only a single patent raised an issue of fact as to whether it contained an inventive concept under Step Two of the Alice inquiry. The Court found that the remaining six groups of patents contained no such inventive concept and thus were directed to ineligible subject matter.

Before turning to the claim language itself, the Court observed that Alto's complaint only specifically asserted a single claim from each patent in suit, and Wayfair contended in its motion that each such claim was representative of its respective patent. Noting that Alto did not dispute the claims' representativeness, the Court treated each disputed claim as representative of their respective patents.

At Alice Step One, the Court found the first patent directed to the abstract idea "of converting data from a database into a document." Alto relied on the assertion in its amended complaint that the claims "are not limited to well-understood, routine, or conventional activity," which the Court expressly disregarded as generic and conclusory.

At Step Two, however, the Court found that that the patent "recites a specific, allegedly unconventional method of forming an executable query which is divided into a data extraction portion," which the Court concluded raised an issue of fact that could not be resolved at the pleadings stage.

For the remaining patent groups, the Court found that they are:

  • directed to the abstract idea of "monitoring the usage patterns of users," comprised of conventional steps which describe the manipulation of information at a high level of generality, and declined to accept Alto's "conclusory" assertion that a particular claim element was novel, where it was merely comprised of well-known, conventional functions;
  • substantially similar to the preceding category, with the addition of generic audit and analysis functions;
  • directed to the abstract idea of "verifying user identity and enabling access to resources," and disregarded Alto's attempt to "halfheartedly suggest[] that an inventive concept is found somewhere else in the claims," again rejecting the "conclusory" statements of inventiveness in Alto's amended complaint;
  • directed to the abstract idea of "serving advertisements to customers based on their disclosed interests" and rejecting as "unsupported and conclusory" Alto's contention that the claims contain eight or more "computer-centric" steps that make the claims encompass "significantly more" than the underlying abstract idea as required by Step Two;
  • directed to the abstract idea of "executing a search which contains multiple elements in a sequential manner by: 1) first searching for the element expected to yield the fewest number of results and 2) then searching for the element(s) expected to yield more results," finding that this concept is well-known and compared it to someone first limiting the search of an address book to a particular street before searching for a particular street number; and
  • directed to the abstract idea of "identifying new data and adding it to an existing record," finding that the claims' purported limitation to the "computer context" does not imbue them with an inventive concept.

In Kologik Capital, LLC v. In Force Technology, LLC, et al., No. 1:18-cv-11168, Magistrate Judge Levinson resolved competing motions for summary judgement of software to enable emergency responders, such as police departments, to coordinate rapid responses in emergency situations at schools and other at-risk facilities. In short, the Court recommended granting defendants' motion on noninfringement, granting Kologik's motion on validity, and denying Kologik's motion for sanctions.

Cross-Motions for Summary Judgment on Infringement

Kologik claimed literal infringement of a method patent claim. The parties' dispute centered on a single claim limitation:

responsive to the prompt, identifying one or more second mobile units within a geographic area associated with the location

While both sides argued the terms "identifying" and "within a geographic area" should be construed according to their plain and ordinary meaning, they disagreed as to what that meaning is. Kologik argued that "identifying" "within a geographic area" included sending an alert to all mobile units of, for example a police department, regardless of the location of those units. Defendants, however, argued that the patent requires the alert to be sent to mobile units identified in a specific geographic area using some form of technology, such as GPS. After considering both the intrinsic and extrinsic record, the Court determined that the identifying term "requires access to some form of information about the location of the units being identified."

Turning to the question of infringement, the factual record was largely undisputed. There was no dispute regarding what the accused system does, nor was there a dispute that the accused product operated differently than the embodiments described in the asserted patent's specification relating to determining location. In particular, and consistent with defendants' long-stated non-infringement position, the accused product does not have the ability to provide location information of the mobile units.

The Court found this point to be dispositive, rejecting Kologik's expert's attempt to equate notification of all units in a police department with "identifying" units "within a geographic area" and thus recommending summary judgement of no infringement in favor of defendants.

Kologik's Request for Summary Judgement of Validity

Observing that the technology at issue is not so simple as to be assessed in the absence of expert testimony and that defendants bear the burden of proof on invalidity, the Court agreed with Kologik that defendants' lack of expert opinion on the issue is fatal. The Court thus recommended granting Kologik's motion on this point.

Kologik's Request for Sanctions

Noting that the defendants had previously been sanctioned for discovery failings, Kologik contended that subsequent discovery failures warranted dispositive sanctions under Rule 37. Observing that the First Circuit disfavors dispositive sanctions, the Court addressed Kologik's three complaints.

First, Kologik argued that defendants failed to provide a Court-ordered supplemental corporate deposition. Finding that the order in question was ambiguous on whether an additional deposition was required on top of the three already compelled, the Court found that in such instances sanctions are "wholly inappropriate."

Second, Kologik argued that defendants' substitute counsel failed to fully re-review documents, from scratch, collected by prior counsel as ordered. The Court again found some ambiguity in the underlying order on how the review was to take place and that defendants had submitted an affidavit affirming they reviewed all documents tagged as responsive to the case. The Court noted that dispositive sanctions were a draconian result, especially where "successor counsel are not generally expected to redo discovery practice" and there is no evidence that such a redo would have resulted in the production of additional responsive documents.

Last, Kologik argued that defendants violated a Court order by failing to adequately collect certain communications in the possession of third parties. Noting that nothing in that order required the defendants to subpoena their own customers – as opposed to merely requesting copies of the communications, as they did – the Court found that Kologik was attempting to rehash a previously-denied sanctions bid on this same issue.

Noting that this is Kologik's "fifth motion for sanctions" (emphasis by the Court), the Court recommended denying Kologik's motion as to this issue.

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