United States: Massachusetts Patent Litigation Wrap Up – June 2019

Last Updated: September 11 2019
Article by Eda Stark, Matthew C. Berntsen and Elizabeth Trujillo

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

Abiomed, Inc. v. Maquet Cardiovascular LLC, No. 16-cv-10914 (D. Mass. June 4, 2019) (Saylor, J.)

  • Motion for Protective Order – DENIED

Plaintiff, Abiomed Inc. ("Abiomed") moved for a protective order prohibiting Defendant, Maquet Cardiovascular, LLC ("Maquet") from seeking discovery of information related to 35 U.S.C. § 271(f) – that is, foreign sales attributed to products whose components were exported from the United States for assembly and sale outside of the United States. Abiomed contends that because Maquet has not specifically pled infringement on that basis, discovery into those issues is beyond the scope of this litigation, irrelevant, and not proportional to the needs of the case.

The Court denied Abiomed's motion without taking a position on whether Maquet properly pled a claim under 35 U.S.C. § 271(f) finding (1) discovery related to worldwide sales to be potentially relevant to Maquet's claims (for example, as to damages) even assuming that it failed to plead infringement under § 271(f), (2) the requested discovery to be proportional to the needs of the case because it appears to be reasonably targeted and relatively limited in scope, and 3) that Abiomed has not demonstrated that production of the information would constitute an undue burden.

Nike, Inc. v. PUMA North America, Inc., No, 1:18-cv-10876-LTS (D. Mass. June 7, 2019, Sorokin, J.)

  • Motion to Stay Pending Inter Partes Review – DENIED

Plaintiff, PUMA North America Inc. ("PUMA") moved to stay the District Court litigation pending inter partes review ("IPR") of five of the ten patents Defendant Nike, Inc. ("Nike") asserted against PUMA. PUMA is statutorily barred from petitioning for IPR for three of the remaining patents and asserts that it will file IPR petitions for the other two as soon as it is permitted to do so under 35 U.S.C. § 311(c)(1). Under 35 U.S.C. § 311(c), a petition for IPR cannot be filed any earlier than nine months after the date that a patent issued, and two of the ten asserted patents had issued less than nine months before PUMA filed its motion to stay. As to those two patents, Nike argued that PUMA could have sought Post Grant Review ("PGR") under 35 USC § 3211, but that PUMA elected not do so. PGRs allow a petitioner to challenge validity under 35 U.S.C. §§ 101, 102, 103, and 112 and are available until 9 months after a patent is granted.

The Court denied PUMA's Motion to Stay Pending IPR citing to the facts that PUMA did not petition for PGR of the two patents for which it could have and that the PTAB has not actually instituted IPR proceedings as to any of the patents-in-suit.

Rain Computing, Inc. v. Samsung Electronics Co., Ltd. et al, No. 1:18-cv-12639 (D. Mass. June 4, 2019, Stearns, J.)

  • Motion to Dismiss for Failure to State a Claim – DENIED

Defendants, Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and Samsung Research America, Inc. (collectively "Samsung") moved to dismiss Plaintiff, Rain Computing, Inc. ("Rain Computing")'s complaint for failure to state a claim under Fed. R. Civ. 12(b)(6).

Samsung argued that Rain Computing's allegations were insufficient under the Twombly and Iqbal standards because they did not track any claims of the patent-in-suit and failed to allege that Samsung practices all the elements of at least one claim of the patent-in-suit.

The Court denied Samsung's Motion to Dismiss for Failure to State a Claim and ordered Samsung to answer the complaint.

In doing so, the Court cited to Nalco Co. v. Chem-Mod, LLC for the proposition that a patent plaintiff "need not prove its case at the pleading stage. The complaint must place the potential infringer . . . on notice of what activity . . . is being accused of infringement." 883 F.3d 1337, 1350 (Fed. Cir. 2018) (quotation marks and citations omitted). The Court added that contrary to Samsung’s suggestion, "the Federal Rules of Civil Procedure do not require a plaintiff to plead facts establishing that each element of an asserted claim is met." Nalco, 883 F.3d at 1350 (citation omitted).

Here, the asserted patent was directed to "methods and systems for delivering software packages to client terminals based on a subscription service by which a user is charged for specific applications that the user is subscribed to use." Compl. para 11. The Court found paragraph 16 of the complaint which alleges that Samsung infringes by delivering software applications (such as the Smart Home App) to Samsung devices (such as the Galaxy phones) via app stores (such as the Galaxy App Store), and Samsung "controls access to the app stores by requiring the user to register, subscribe, and/or agree to certain terms before that user can receive apps offered through the app stores" as sufficient for the pleading standards required under Twombly and Iqbal.

The Court further noted that Samsung's argument that the asserted claims require a subscription to an application rather to an app store, is a non-infringement position that is premature at this stage of the litigation.

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