D. Mass. Patent Litigation Update: April 2022

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 Ecobee Technologies ULC d/b/a ecobee v. EcoFactor, Inc., No. 22-cv-10049, Judge Saris denied ecobee’s unopposed request to hold an in-person hearing on EcoFactor’s motion to dismiss. Ruling the papers, Judge Saris denied EcoFactor’s motion to dismiss and stayed discovery pending a decision on venue by the Texas court in an infringement action filed by EcoFactor in the Western District of Texas (WDTX).

In November 2019, EcoFactor filed a patent infringement suit against ecobee in the District of Massachusetts, which was stayed in January 2020 pending an investigation at the International Trade Commission. On January 10, 2022, EcoFactor voluntarily dismissed the suit and filed suit in the WDTX the same day (“the Texas Action”). On January 13, 2022, ecobee filed in the District of Massachusetts requesting declaratory judgment of noninfringement.

Although EcoFactor’s Texas Action was the first filed, Judge Saris declined to apply the first-to-file rule “given the clear forum shopping present,” citing EMC Corp. v. Parallel Iron, LLC, 914 F. Supp. 2d 125, 128 (D. Mass. 2012). According to Judge Saris, in this situation, EMC dictates that the Texas District Court also decide which forum is appropriate, noting that ecobee had moved to transfer venue in the Texas Action.

In SimpliSafe, Inc. v. Skybell Technologies, Inc., No. 20-cv-12288, a declaratory action, Judge Burroughs ordered that the stay of the proceedings be entirely lifted. The Court applied the three factors of ACQIS, LLC v. EMC Corp., 109 F. Supp. 3d 352, 356 (D. Mass. 2015), and the totality of the circumstances, for determining whether a stay is appropriate: “(1) the stage of the litigation, including whether discovery is complete and a trial date has been set; (2) whether a stay will simplify the issues in question and the trial of the case; and (3) whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving party.”

SimpliSafe had asked the Court to partially lift the stay so it could move for summary judgment of invalidity (Count XV of its Amended Complaint) in view of the International Trade Commission’s (“ITC”) invalidity determination. Skybell opposed a partial stay, arguing it would be prejudicial to allow SimpliSafe to pursue those claims while prohibiting Skybell from prosecuting its own claims, and because Skybell was appealing the invalidity determination to the Federal Circuit. In lifting the stay entirely, the Court noted that the parties had agreed that the current stay would last only until the ITC issued its Final Determination on the validity of the four asserted patents, which it did on November 10, 2021, declaring all patents invalid. Since the circumstances that warranted the stay no longer exist, there was no reason to maintain the stay, especially considering that any appeal to the Federal Circuit may not be decided until after the patents expire in October 2023. As such, the Court lifted the stay entirely.

In Milliman, Inc. et al. v. Gradient A.I. Corp. et al., No. 21-cv-10865, Judge Gorton granted a joint motion for protective order, but in doing so noted that the “protective order is subject, specifically, to the provisions of Local Rule 7.2,” which outlines the procedure for filing impounded and confidential materials.