Massachusetts Patent Litigation Wrap Up — December 2017

This post is part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders.

StrikeForce Techs., Inc. v. Vasco Data Security, Inc., 1:17-cv-10423 and StrikeForce Techs., Inc. v. Gemalto, Inc., Gemalto N.V., and Safenet, Inc., 1:17-cv-10422 (Stearns, J.)

• Motion to Stay — GRANTED

In light of a case out of the Central District of California (Strikeforce Techs. v. SecureAuth Corp., CV17-04314) finding all but one the claims asserted in this litigation are invalid under § 101, the court granted the parties' joint motion to stay the Massachusetts patent infringement litigations, which involve the same and related patents, until the subject matter patentability issue raised in SecureAuth is "fully resolved.  (The SecureAuth opinion is being appealed to the Federal Circuit.)

Smart Wearable Techs. Inc. v. TomTom, Inc., 1:17-cv-11652 (Saylor, J.)

• Motion to Stay — DENIED

Defendants moved to stay the patent infringement litigation until outcome of the IPR filed on the same patent-at-issue. The test for whether a case should be stayed is case-specific and focuses on the totality of the circumstances while evaluating three prongs: 1) whether the non-moving party will be unduly prejudiced; 2) whether a stay will simplify the issues; and 3) whether discovery is complete and a trial is set. Defendants argued that the case should be stayed because of the lack of prejudice given that the district court litigation was in its nascent stages. Plaintiff argued that the motion to stay was premature given that the PTAB had not yet decided whether to institute the requested IPR. In an electronic order, the court agreed with Plaintiff and denied Defendant's motion, but allowed Defendant to renew its motion if the IPR was instituted. A decision on institution is expected in February 2018 (IPR2017-01826).

Realtime Data LLC d/b/a IXO v. Carbonite, Inc., 1:17-cv-12499 (Young, J.) (Love, M.J.)

• Joint Stipulation to Transfer Action – GRANTED

Pursuant to the parties' joint stipulation, Magistrate Judge Love granted the transfer of venue from the Eastern District of Texas to the District of Massachusetts. Previously, defendant filed a Motion to Dismiss for Improper Venue, which was denied on August 21, 2017. On October 16, in light of TC Heartland, defendants filed a Petition for Writ of Mandamus, which was denied on November 22, deeming the proper course of action was for defendant to move the district court to reconsider its order denying the Motion to Dismiss. In light of the Federal Circuit's disposition, the district court ordered the parties to meet and confer, the outcome of which led to the parties agreeing to transfer the case to the District of Massachusetts.

Brigham and Women's Hospital, Inc., Investors Bio-Tech, L.P. v. Perrigo Co., L. Perrigo Co., 13-cv-11640 (Zobel, J.)

• Judgment

Following the December 2016 jury verdict, the court's April 2017 Order, and the court's November Judgment as a Matter of Law (see previous post), final judgment was entered holding: 1) no infringement; 2) certain claims of the patent were not entitled to an earlier priority date; 3) the patent was not invalid under §§ 102 or 103 grounds raised; 4) Plaintiffs had standing; 5) Plaintiffs' claims were not barred by laches; and 6) Plaintiffs were not entitled to damages.

Egenera, Inc. v. Cisco Systems, Inc., 1:16-cv-11613-RGS (Stearns, J.)

• Motion to Stay — DENIED
• Motion to Dismiss — GRANTED

In this co-pending litigation, IPRs were instituted on only one of two patents-in-suit, which affected the defendant's motion to stay the litigation. In light of plaintiff's offer to dismiss (without prejudice) the ‘044 patent (IPR instituted in October 2017, IPR2017-01340), the court denied defendant's Motion to Stay. The electronic order noted, "[t]he subject matter of the ‘044 patent (the use of virtual MAC addresses) is sufficiently distinct from that of the ‘430 patent (processing area network platform) such that IPR of the ‘044 is unlikely to substantially influence the interpretation of the ‘430 patent." (The IPR filed on the '430 patent was not instituted. IPR2017-01341). The court subsequently granted Plaintiff's Motion to Dismiss all claims related to the '044 patent.

Caffeinate Labs, Inc. v. Vante Inc., 1:16-cv-12480 (O'Toole, J.)

• Motion to Transfer Venue — GRANTED

In an electronic order, the court granted Defendants' Motion to Transfer Venue to the Eastern District of New York, noting:

In light of the Federal Circuit’s recent ruling In Re Micron Technology, Inc., this Court finds that the defendants did not waive their right to challenge venue and timely moved after the decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017). Although given the opportunity, the plaintiff has not identified any other action the defendants took to forfeit their right to object to venue. Finally, because this case is primarily one alleging patent infringement the patent venue rules will be applied, and so this Court will not apply the doctrine of pendent venue for the plaintiff’s Langham Act claim.

Koninklijke Philips N.V. et al v. Wangs Alliance Corp., 1:14-cv-12298 (Casper, J.)

• Motion to Amend to Add Counterclaims — DENIED
• Motion to Compel — DENIED
• Motion to Strike — DENIED
• Claim Construction Memorandum and Order

Initially filed in May 2014, this case between Wangs Alliance Corp. ("WAC") and Koninkijke Philips N.V. ("Philips") involves eight patents related to LED lighting devices. The case was recently reopened after a stay pending the outcome of IPRs that were filed against seven of the eight patents in suit (see Dkt. 156).

In an electronic order, the court denied WAC's motion to amend (Dkt. 73) to add counterclaims (seeking declaratory judgment of noninfringement) regarding two patents that were not included in the initial complaint. Philips unsuccessfully attempted to reach an agreement where WAC would not oppose Philips' request to add infringement claims against two newly-asserted patents.

The court also addressed two discovery-related motions. Philips' motion to compel discovery (Dkt. 43), which WAC argued was stale in light of subsequent production, was denied. Relatedly, Philips' motion to strike WAC's notice of additional facts, which was filed without leave from the court, was denied (Dkt. 150). In the alternative, Philips sought the opportunity to respond to WAC's facts, which Judge Casper allowed nunc pro tunc, noting that the court considered the same in her order regarding the motion to compel.

The court also issued an electronic claim construction order (Dkt. 211), construing 12 terms, 4 of which were also at issue in the prior IPR proceedings. Because the court had previously held a Markman hearing prior to the stay, in addition to briefing, the court required the parties to submit charts detailing the parties' previous positions in the earlier Markman hearing, in the IPR proceedings, and their current positions, as well as the PTAB Board's construction from the IPR proceedings (if any). Of the 4 claims addressed by the Board, the court adopted the Board's construction for 1 term, adopted a similar construction for 2 other terms, and adopted the construction proposed by Philips (instead of the Board's) for 1 term. For the remaining 8 terms, the court construed them in accordance with Philips' (the patentee's) construction.

Summary judgment motions are currently pending.

Sophos, Inc. v. RPost Holdings, Inc. et al, 1:14-CV-13628 and RPost Holdings, Inc. et al v. Sophos Inc., 1:14-cv-12856 (Casper, J.)

• Sophos Motions for Summary Judgment — ALLOWED IN PART, DENIED IN PART, AND MOOT
• Defendants' Motion for Summary Judgment — DENIED
• Motions in Limine — MOOT

These two related cases involve technology used to analyze and authenticate data in electronic messages. Sophos, Inc. ("Sophos"), declaratory judgment Plaintiff and Defendant in a related case, sought summary judgment on the issues of (1) validity of the remaining patent-in-suit (Dkt. 201); (2) RPost Holdings, Inc.'s ("RPost") standing to sue and the ability of RPost Communications Limited ("RComm") to recover damages (Dkt. 207); and (3) infringement (Dkt. 251). RPost and RComm (collectively, the "Defendants") sought cross-summary judgment on the issue of infringement (Dkt. 221). The court denied Sophos' motion for summary judgment with respect to standing, allowed Sophos' motion for summary judgment on patent validity finding the patent invalid and denied as moot the remaining motions.

Standing. The patent-in-suit is assigned to RComm. Sophos argued that because the Defendants never produced a written license, RPost did not, and could not, have standing. The court denied summary judgment because there was a material question of fact as to the existence of a license based on witness testimony that RPost had an exclusive license to the patent-in-suit. The Court did not address Sophos' argument that if the exclusive license was an oral license it would not valid because of the statute of frauds.

Invalidity. Sophos argued that the patent was invalid in light of two prior art patents. First, the court addressed the parties' dispute regarding the priority date of the patent. In both fact and expert discovery, Defendants claimed a priority date of July 27, 2000— the filing date of the parent application. At summary judgment, Defendants attempted to claim an earlier priority date of July 28, 1999 or December 17, 1999, based on the provisional patents referenced in the patent-in-suit. The court found, however, that the record was devoid of evidence that either provisional contained a written description of the invention. The court deemed the priority date as July 27, 2000, allowing both references put forth by Sophos to be properly considered as prior art. The court then granted summary judgment of invalidity on the grounds that the prior art references anticipated all the relevant claims in the patent-in-suit in light of the court's earlier order on claim construction.

Acqis, LLC v. EMC Corp., 1:14-cv-13560-ADB (Burroughs, J.)

• Memorandum and Order on Claim Construction

ACQIS, LLC ("ACQIS") alleges that certain computer storage products of EMC Corporation ("EMC") infringe 22 claims in 11 patents. Initially filed in the Eastern District of Texas in September 2013, the case was transferred to this court after the E.D. Tex. court issued a claim construction order (after holding a Markman hearing). In June 2015, EMC successfully obtained a stay of the district court litigation pending IPR proceedings that involved 3 of the 22 claims. In August 2016, after the PTAB determined the claims were not proven to be unpatentable, the court lifted the stay.

Following additional briefing and a second Markman hearing, the court construed the three terms that remained in dispute, noting that "a claim construction order from outside the instant jurisdiction is entitled to 'reasoned deference' with such deference turning on the persuasiveness of the order, in the end, [however, the Court] will render its own independent claim construction.'" The court further observed that the "doctrine of prosecution disclaimer precludes patentees from recapturing, through claim construction, specific meanings disclaimed during the prosecution of a patent, including in IPR proceedings."