D. Mass. Patent Litigation Update: December 2023

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 Deckers Outdoor Corp. v. Primark U.S. Corp., No. 1:23-cv-10233, Judge Burroughs denied Deckers’ motion to strike or dismiss, as appropriate, Primark’s remaining affirmative defenses and counterclaims.

In a case involving Deckers’ design patents, trade dress, and trademarks for its UGG boots, Primark asserted numerous affirmative defenses challenging Deckers’ asserted IP rights, challenging the merits of Deckers’ claims, and asserting equitable defenses. Deckers sought to strike these affirmative defenses as “unrecognized,” immaterial/redundant, or for failing to provide fair notice. The Court addressed each argument in turn. First, the Court expressly found that the supposedly-“unrecognized” defenses of failure to state a claim, and trade dress being invalid as utilitarian “have both been recognized as affirmative defenses by courts in this district.” Second, the Court rejected the bid to find affirmative defenses challenging Deckers’ prima facie case (e.g., trade dress invalid on functionality or distinctiveness grounds; no likelihood of confusion) as “immaterial” or “redundant”. The Court noted there may be discovery on these defenses and thus Deckers will not be unduly prejudiced by keeping them in the case. Last, the Court rejected that Primark’s affirmative defenses failed to meet the fair notice standard, noting that under district precedent and Fed. R. Civ. P. 8(c), a party ““need only ‘affirmatively state any avoidance or affirmative defense’” without “additional particularity.”

Next, the Court considered the motion to dismiss or strike allegedly redundant or immaterial counterclaims seeking declaratory judgment of non-infringement and invalidity, noting that such motions are “rarely granted absent a showing of prejudice to the moving party.” More specifically, the Court found that because it was possible for Primark to avoid liability under one of its affirmative defenses, resulting in issues raised in Primark’s counterclaims being left unaddressed.

Accordingly, the Court denied Deckers’ motion to strike or dismiss in its entirety.

In Mobile Pixels, Inc, v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, Judge Burroughs denied certain defendants’ motion to vacate the Court’s ex parte temporary restraining order (“TRO”) and for a cross-TRO prohibiting plaintiff from filing patent infringement complaints with Amazon.

The motion to vacate was denied as moot, as the Court has previously vacated the TRO as to the moving defendants.

As to the cross-motion for TRO, the Court applied the same four-factor test that applies to a motion for preliminary injunction. In evaluating defendants’ motion, the Court found that the defendants failed to demonstrate a likelihood of success on the merits, outweighing the three other factors. Specifically, the Court rejected the moving defendants’ arguments that “the Plaintiff committed fraud by using an invalid design patent to initiate this lawsuit and misrepresented the Court in issuing the TRO,” noting that even if the defendants had properly asserted fraud or unlawful misrepresentation claims, they failed to present sufficient evidence or a legal basis for the Court to conclude they are likely to succeed on such claims.

Accordingly, the Court denied the moving defendants’ motion for a cross-TRO.

In Insulet Corp. v. EOFlow Co., Ltd., No. 1:23-cv-11780, Magistrate Judge Dein ruled on a dispute arising from proposed redactions to supplemental briefing involving Insulet’s motion for a preliminary injunction.

Defendant EOFlow objected to Insulet’s proposed redactions of information disclosed under the parties’ Protective Order and that it claimed contained “confidential technical information that is not publicly available and that would cause competitive harm to Insulet if publicly disclosed.” EOFlow argued that Insulet was “improperly claiming trade secret protection over ‘generic, industry-standard terminology’ or ‘publicly available information,’” and that Insulet had not provided its express rationale for seeking each redaction.

Insulet offered to provide in camera explanation of the proposed redactions. The Court, however, determined that no further explanations were needed as the redactions were “consistent with the type of information Insulet contends warrants protection in this litigation” and that “the dispute over redactions is not the appropriate place to determine the scope of Insulet’s trade secrets claim.” The Court therefore allowed Insulet’s proposed redactions to remain and directed the Parties to file the redacted briefs publicly.

In Milliman, Inc. v. Gradient A.I. Corp., No. 1:21-cv-10865, Judge Gorton denied both plaintiffs’ and defendants’ Daubert motions, reasoning that there is “considerable overlap” in the experts’ opinions and that “the testimony . . . present[s] a classic battle of the experts.” The Court noted that the minor differences in the competing experts’ approaches “are appropriately left to the jury to resolve” and that “any deficiency in the testimony of [the experts] can best be exposed through vigorous cross-examination, informed by the opposing expert.” The Court therefore denied both parties’ Daubert motions.

The Court also observed that plaintiffs had recently filed an additional motion to strike a declaration submitted in support of defendants' motion for summary judgment. Although it reserved judgment on the declaration, the Court noted that “the summary judgment process does not conform well to the discipline that Daubert imposes,” and, given the high standard to exclude testimony at the summary judgment stage, suggested that “the parties may choose to reconsider how they ask this Court to devote its limited time and resources.”