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 JT IP Holding, LLC v. Florence, No. 20-cv-10433, Judge Talwani ruled on Defendants' motion to dismiss and, in the alternative, for summary judgment of all counts and cross motions for partial summary judgment as to validity of a patent assignment.
This case revolves around a business dispute related to a dry-well device developed and patented by an individual defendant and allegedly assigned to Plaintiff JT IP Holding. Plaintiffs originally asserted three federal claims, including patent infringement, and eight state law claims. By the time the present motions were filed, all federal claims had been dismissed and only state law claims remained.
Defendants' motion to dismiss argued that, since the federal claims have been resolved, the Court should decline to exercise pendent jurisdiction over the state law claims. The Court analyzed the issues of comity, judicial economy, convenience, fairness, and relatedness of the state and federal claims, and found that the late stage of the litigation, and the delay and financial burdens associated with dismissal and refiling in state court weighed strongly in favor of retaining jurisdiction. The Court also found that the federal claims and most of the state claims relate to the development of and rights to the dry-well patent, which also favored retaining jurisdiction. Finally, it determined that there were no complex or novel issues of state law that were better preserved for the state courts to decide. The Court thus denied Defendants' motion to dismiss and retained supplemental jurisdiction over the state law claims.
Plaintiffs moved for partial summary judgment that an assignment of the dry-well patent to JT IP Holding, LLC, a company originally formed by Eldredge and Florence, was valid and operable. In response, Defendants cross-moved for summary judgment against Plaintiffs' declaratory judgment claim.
With respect to Plaintiffs' motion, the Court agreed that the assignment covered the issued patent but found a genuine dispute of material fact as to whether Eldredge had forged Florence's signature, which precluded summary judgment. For their part, Defendants argued that the assignment of the then-pending patent application did not include the issued patent, relying on a legal distinction between applications and patents made in the context of assignor estoppel. The Court rejected this legal argument as “frivolous,” and further disagreed with Defendants' theory that the nominal payment of $1.00 was insufficient consideration for the patent assignment. Therefore, the Court denied both sides' motions.
In Littelfuse Inc. v. Mersen USA Newburyport-MA, LLC, No. 17-cv-12375, Judge Talwani denied without prejudice Defendant Mersen's motion for summary judgment of no infringement and granted its motion for summary judgment of no willfulness.
This long-running dispute involves crimpable fuse products. In 2017, Plaintiff Littelfuse sued Mersen, claiming that Mersen's fuses with crimpable end caps for use in solar power installations infringed Littlefuse's patent directed to fuse end caps. In 2020, the Court construed two claim terms such that the claimed fuse end caps could not include a single-piece embodiment like the accused products sold by Mersen. On appeal, the Federal Circuit vacated and remanded the case for further claim construction. Mersen's motions follow the second Markman hearing and claim construction Order.
The Court denied Mersen's motion for summary judgment of no infringement without prejudice on the basis that Littelfuse's opposition raised further claim construction issues to be resolved before the Court could rule. The Court requested further briefing as to the construction of “stem” and gave Mersen leave to file a renewed motion or motion for reconsideration after claim construction for that term. Of note, Littelfuse's opposition had also sought to introduce through an expert declaration a construction of the claim term “cavity,” that differed from the parties' agreed definition for the term. The Court concluded that the expert's opinion was inadmissible as unreliable under Fed. R. Evid. 702, judicially estopped, and not a matter appropriate for expert testimony.
Regarding Mersen's motion for summary judgment of no willfulness, the Court analyzed the evidence proffered by Littelfuse and determined that a jury could not find more likely than not that any infringement by Mersen was willful. Mersen had relied on an opinion letter concluding that Mersen's products could not infringe the asserted patent because the claims did not cover single-piece fuse end caps, an interpretation consistent with the Court's first claim construction. Littelfuse argued that the opinion letter was unreliable because of its claim construction, which was ultimately rejected by the Federal Circuit. The Court disagreed that the Federal Circuit's decision rendered the opinion letter unreliable. The Court also found that evidence showing Mersen's knowledge of the patent and efforts to compete with Littelfuse do not alone show an intent to infringe, explaining that “competitive behavior is not itself equivalent to willful patent infringement.”
In BitSight Technologies, Inc. v. Normshield Inc., No. 23-cv-12055 Judge Joun granted Normshield's motion to dismiss as to BitSight's patent infringement claims and denied the motion as to false advertising and related state law claims.
Plaintiff's patents concern locating, collecting, analyzing, and communicating cyber risk management data. Defendant moved to dismiss arguing that the asserted patents are directed to patent-ineligible abstract ideas under 35 U.S.C. § 101. The Court applied the two-step Alice framework to: (1) determine whether the claims at issue are directed to patent-ineligible concepts and, if so, (2) consider whether the additional elements from claims transform the nature of the claims into a patent-eligible application.
Under Alice Step One, the Court found that the asserted patents are directed to patent-ineligible concept because they focus on “collecting information, analyzing it, and displaying certain results of the collection and analysis” – all abstract concepts. The Court also found that supposed technological improvements were claimed so generally as to be no more than “a mere implementation of an abstract idea.” Plaintiff argued that some of its patents recited non-conventional uses of internet-based “sensors” and provided a specific method for more accurately and efficiently identifying and mapping assets to a third-party. However, the Court rejected the argument and observed that recitation of generic non-physical “sensors,” but not how these sensors are designed or configured to collect the information sought, does not transform the claims into a patent-eligible idea. The Court also rejected Plaintiffs contentions that its patents encompass unconventional uses of technology or concrete technological improvements. Thus, the Court found that the asserted patent claims were directed to abstract an idea.
Under Alice Step Two, Plaintiff argued that each asserted patent contained an inventive concept. For example, it argued that some patents recite providing cybersecurity assessments in a new way by collecting external data without permission of the organization, but the Court found that merely selecting externally available information did nothing to change the patentability of the asserted claims and that an inventive concept was lacking because the claims addressed an abstract business practice with insignificant added activities. Therefore, the Court dismissed the claims arising from Plaintiff's asserted patents.
In addition to its patent infringement claims, Plaintiff pled that Defendant's advertising violated the Lanham Act by overstating Defendant's capabilities and painted Plaintiff's offerings as inferior. Defendant moved to dismiss on the grounds that Plaintiff could not prove literal falsity or harm. The Court found that Plaintiff's claims involved questions of fact that could not be undertaken on a motion to dismiss and that Plaintiff's statement showing a diversion of sales sufficiently plead harm under the Lanham Act. Thus, the Court denied the motion as to the false advertising claims. Because Plaintiff's state law claims M.G.L. Ch. 93A and 266, § 91 rise and fall on the merits of the Lanham Act claims, they survived the motion as well.
In Lu v. Hyper Bicycles, Inc., No. 20-11739-NMG, Judge Gorton made a downward adjustment to the attorneys' fees requested by Hyper, after previously finding the case exceptional.
Plaintiff did not contest counsel's hourly rates but asserted the number of hours were excessive to the extent they reflect time for travel, time spent by local counsel on a different pending case in Massachusetts, or time spent in support of Defendant's original request for fees itself. The Court found that travel time is reimbursable, time related to other cases is not reimbursable, and time spent on the fee application may be reimbursed at a reduced rate (here, 50%), with each finding supported by First Circuit precedent. The Court further found that the overall requests fees were excessive and exercised its discretion to reduce the remaining Lodestar amount by 25%.
Hyper had requested $80,075 in fees; after reductions, the Court awarded $56,000.
In Videray Technologies, Inc. et al. v. Viken Detention Corp., No. 23-cv-13035, Judge Joun allowed-in-part and denied-in-part Defendant Viken's motion to dismiss claims for declaratory judgment (“DJ”) of non-infringement and invalidity as to Videray, but not its customer Tek84, and claims relating to the settlement Agreement.
Viken had previously sued Videray and its founder for trade secret misappropriation, which resulted in an Agreement releasing DJ Plaintiff Videray from all causes of action. Prior to the present suit, Defendant sent a cease-and-desist letter to Plaintiffs alleging patent infringement. Plaintiffs countered that Defendant's claims are barred by the previous agreement.
As to the claims regarding the Agreement, the Court found that the release did not extend to Tek84 because it was not then affiliated with Videray and the Agreement does not extend to future affiliates. Additionally, the Court found that while the Complaint sufficiently pled an implied license as to Tek84 to the extent it is a downstream distributor of Viken, such a license would not extend to products developed or manufactured by Tek84. As to asserted patents not issued at the time of the agreement, the Court found that while the release is limited to “claims that existed up to the date of the Agreement,” release also includes pre-Agreement acts even where the resulting cause of action arose later, and thus on the facts pled the Complaint plausibly states a claim of breach of the Agreement even as to patents that only issued later.
As to the DJ claims of non-infringement and invalidity, the Court rejected Defendant's motion to dismiss on the bases of the parties' pre-suit correspondence and precedent of courts, finding that an actual controversy exists as to suppliers (e.g., Videray) where their customers (e.g., Tek84) have been accused of infringement.
The Court thus granted Defendant's motion to dismiss “to the extent that Tek84 is deemed an upstream developer or a manufacturer,” and otherwise denied it.
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