Massachusetts Patent Litigation Wrap Up — February 2019

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 issued in pending cases.

Altova GmbH v. Syncro Soft SRL, No. 17-cv-11642 (D. Mass. Feb. 7, 2019)

Altova sued Syncro alleging infringement of U.S. Patent No. 9,501,456, which is directed to "methods and apparatus, including computer program products, for an automatic fix for XML errors. The accused product was version 19.0 of Syncro's OXYGEN XML Editor software, which includes a feature called "Quick Fix." Altova alleged that the Quick Fix feature "helps users resolve errors that appear in an XML document by offering Quick Fixes to problems such as missing required attributes or invalid elements."

On July 26, 2018, Chief Judge Saris granted Syncro's motion to disqualify its former law firm Sunstein Kann Murphy & Timbers LLP from representing Altova. Sunstein had previously represented Syncro in copyright, trademark, and trade dress matters, including a matter adverse to Altova. That same day, the Court stayed the proceedings pending the resolution of Syncro's petition for inter partes review ("IPR") of the '456 patent.

On September 5, 2018, the Patent Trial and Appeal Board ("PTAB") instituted IPR, finding that "Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition."

The parties then settled "all of their disputes involving the '456 Patent," including the IPR and the district court litigation, and stipulated to dismissal with prejudice. Accordingly, the Court dismissed the case on February 7, 2019.

Palomar Techs., Inc. v. MRSI Sys., LLC, No. 1-18-cv-10236 (D. Mass. Feb. 13, 2019)

Palomar sued MRSI on July 6, 2015, alleging that MRSI infringed U.S. Patent No. 6,776,327 by making and selling "fully automated, ultra-high precision die-attach and epoxy dispensing devices which utilize double-pick and place of a workpiece to achieve ultra-precise placement." In response, MRSI argued, inter alia, that the '327 patent is invalid "due to the public use and sale of an MRSI substantially similar product more than one year prior to the earliest priority date of the '327 patent."

In October 2015, MRSI filed a petition for IPR of claims 1-48 of the '327 patent. The petition asserted ten prior art references that MRSI had discovered through its own search and through two professional search firms, Kramer IP Search and TechMark Global, LLC. The PTAB instituted IPR in April 2016. In its final written decision, the PTAB upheld the validity of claims 1-47 and invalidated claim 48.

Thereafter, back in district court, MRSI served its invalidity contentions. Those invalidity contentions contained additional prior art that MRSI did not assert in its IPR petition. On August 27, 2018, Palomar moved for partial summary judgment that MRSI was estopped from asserting the additional prior art under 35 U.S.C. § 315(e)(2). In response, MRSI argued that it was not estopped because the prior art searches that MRSI, Kramer and TechMark performed were reasonable. To investigate this claim, Palomar subpoenaed both Kramer and TechMark. MRSI moved to quash the subpoenas. On November 20, 2018, the magistrate judge granted-in-part and denied-in-part MRSI's motions. The order allowed Palomar to proceed with its subpoenas but limited the inquiry to specific topics.

On December 4, 2018, MRSI filed an objection to the magistrate's order. On February 13, 2019, Judge Saylor denied MRSI's objection, holding that the order was "neither clearly erroneous nor contrary to law."

That same day, Judge Saylor also denied Palomar's motions for partial summary judgment of literal infringement and of no invalidity based on MRSI's public use defense. The Court reasoned that Palomar's motions were premature because "the Court has not issued its claim-construction opinion, discovery is not complete, and there appear to be (at least on the present record) disputed issues of material fact." The Court added that "[t]o the extent plaintiff seeks relief from defendant for failure to provide discovery or make the required disclosures, the proper remedy is a motion seeking to compel or for sanctions or other relief."

Palomar is represented by Brian Gaff of Fish & Richardson P.C.

Neotech Prods. LLC v. Sandbox Medical, LLC, No. 1:18-cv-12203-DJC (D. Mass. Feb. 13, 2019)

Neotech initially filed its action for infringement of U.S. Patent No. 6,958,050 against Sandbox in Los Angeles on May 5, 2017. Thereafter, the Supreme Court decided TC Heartland, reversing the Federal Circuit as to the scope of the "residence" prong in the patent venue statute. In light of that decision, Neotech dismissed its original complaint and refiled in the District of Delaware. Upon learning more about Sandbox's corporate formation, however, Neotech moved to transfer the case to the District of Massachusetts. The Delaware district court granted the motion on October 10, 2018.

On November 9, 2018, Sandbox filed a petition for IPR against the '050 patent. Neotech had the option of filing a preliminary response to the petition by February 15, 2019, but declined to do so. The PTAB has three months from that date to decide whether to institute IPR. If the PTAB institutes IPR, a final written decision would be due within 12 months.

Against this backdrop, Neotech moved to stay proceedings in the District of Massachusetts "in deference to the pending petition" for IPR. Sandbox conditionally assented to the motion. On February 13, 2019, Judge Casper granted the motion and stayed the proceedings until May 30, 2019, or until the PTAB issues its decision whether to institute the IPR, whichever occurs first.