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 IOT Innovations LLC v. Savant Systems, Inc., No. 1:23-cv-12528, Judge Stearns issued two Orders four days apart.
The first Order noted that under Local Rule 40.1(g)(1), cases are related only if “one or more of the following similarities exist: i. the cases involve the same or substantially similar issues of fact; ii. the cases arise out of the same occurrence, transaction or property; iii. the cases involve insurance coverage for the same property, transaction or occurrence” and ordered IOT to file a brief explaining why it contends the instant case is related to IOT’s prior patent infringement case in the same District against a different defendant selling a different product.
The second Order found that because only infringement was currently at issue, whether a prior defendant’s product infringed has no bearing on whether the different accused product in this case infringes any claim of the same asserted patents. Finding the cases not related, the Court ordered the instant case returned to the queue for random assignment.
In Ocean Semiconductor LLC, v. Analog Devices, Inc., No. 1: No. 20-cv-12310, Judge Saris granted-in-part and denied-in-part Analog Devices (ADI)’s motion to dismiss.
ADI moved to dismiss on three grounds: first that Ocean Semi had failed to plausibly allege that the product newly accused in the Second Amended Complaint infringes, and second and third that Ocean Semi failed to sufficiently plead knowledge necessary to support its claims under 35 U.S.C. §271(b) (inducement) and (g) (importation), respectively.
As to the first issue, the Court noted that under Federal Circuit precedent Ocean Semi was merely required to place ADI on notice of the activity accused of infringement, which was accomplished by Ocean Semi’s 100+ page claim chart. The Court rejected ADI’s argument that quantity is not quality, finding that given the facts at bar and the complex semiconductor technology at issue it was difficult to find against Ocean Semi (for whom all reasonable inferences must be drawn) in the absence of claim construction or discovery. Accordingly, the Court denied ADI’s motion to dismiss on this basis.
As to inducement (§271(b)), the Court observed that the parties disputed whether and when ADI had been given the requisite knowledge of infringement, identifying four possible dates. From earliest to latest, they are: (1) the date that Ocean Semi claims to have placed ADI on notice of the asserted patent and that its actions constituted infringement; (2) the date Ocean Semi filed its original complaint; (3) the date Ocean Semi served a third-party subpoena to the third-party purveyor of a newly-accused system; and (4) the date Ocean Semi filed the Second Amended Complaint and expressly accused that system of infringement. The Court examined each in turn, finding that (1) ADI could not have the requisite knowledge of infringement when it had not known of the existence of the system now accused of infringing; (2) the Original Complaint did not identify the accused system as allegedly infringing and so did not provide notice; (3) service of a broad third-party subpoena does not provide notice of infringement of acts occurring after the service date; and (4) whether or not it provided notice, the Second Amended Complaint failed to provide adequate notice of alleged infringement as it was filed mere days before the patent’s expiration. Finding Ocean Semi had not adequately pled notice, the Court granted ADI’s motion to dismiss the claim for induced infringement.
Last, as to importation (§271(g)), the Court found (i) no precedent for dismissal based on a failure to affirmatively plead notice and (ii) while §271(g) has been limited to the manufacture of physical articles and the claims involve testing rather than manufacturing, Ocean Semi had adequately pled that the asserted claims are directed to activities that are part of the semiconductor manufacturing process. The Court thus denied ADI’s motion to dismiss Ocean Semi’s §271(g) claim.
Accordingly, the Court granted ADI’s motion to dismiss as to induced infringement, and otherwise denied the motion.
In Anywhere Commerce, Inc., and BBPOS Limited v. Ingenico Inc., et al., No. 1:19-cv-11457, Judge Talwani denied Defendants’ motion for attorneys’ fees and opposed Bill of Costs.
The case was originally filed in the Northern District of Georgia and involved counts under state and federal trade secret laws, tortious interference with contractual relations, breach of contractual indemnification obligations, Chapter 93A, and a single count of patent infringement. The case was then significantly narrowed through cross motions for summary judgement. Of the claims that proceeded to trial, only Defendants’ indemnification claim prevailed – and only as to one of four asserted matters – in the amount of approximately $165,000. Defendants sought costs of approximately $60,000 and attorneys’ fees over $2 million.
As to the costs, the Court found that Defendants were only partially successful at trial, with Defendants failing to prevail on the majority of their counterclaims. As such, the Court found that Defendants’ proposed costs of more than one third of the awarded damages were disproportionate to the result achieved and declined to award costs.
As to attorneys’ fees, the Court first declined to award fees under the federal Defend Trade Secrets Act, finding that while Plaintiff BBPOS did not prevail, its claims were not brought in bad faith. The Court also denied the request for fees against Plaintiff Anywhere Commerce, noting that it had brought no trade secret-related claims. Next, the Court declined to award fees under its inherent authority, finding that (i) Defendants’ success at trial on the few remaining claims did not automatically entitle them to fees, (ii) Defendants failed to substantiate and support their request for over $2 million in fees, particularly in light of the mixed results achieved, and (iii) an award of fees was inconsistent with the post-discovery stipulation of dismissal as to the patent infringement claim that specifically stated each side would bear its own fees and costs.
Accordingly, the Court denied both Defendants’ motion for attorneys’ fees and their Bill of Costs.