D. Mass. Patent Litigation Update: November 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 Milliman, Inc. et al v. Gradient A.I. Corp. et al, No. 1:21-cv-10865, Magistrate Judge Kelley allowed in part and denied in part two motions to compel submitted by Milliman.

Milliman sued “for, inter alia, misappropriation of trade secrets and patent infringement.” After prior discovery disputes, the Court stayed certain discovery unrelated to the trade secret claims, pending supplemental trade secret disclosures from Milliman, who has since supplemented twice. Thereafter, defendants moved for summary judgment on the trade secret claims, which motion is pending before the Court but not subject of this summary

Having served supplemental trade secret disclosures, Milliman moved to compel and thus restart discovery, seeking discovery responses, technical documents, and source code that was previously stayed. As part of the Gradient’s technical production pursuant to L.R. 16.6(d)(4)(A), Milliman also sought unredacted copies of certain contracts on which the Court’s order does not elaborate.

Defendants argued that discovery should continue only after resolution of its motion for summary judgment on the trade secret claims, as it allegedly made “no sense” to compel defendants “to undertake the enormously expensive task of reviewing and producing sprawling trade secret discovery that may prove irrelevant.” (internal quotation marks omitted.)

The Court found the prior reason for staying discovery pending disclosure of the trade secrets at issue no longer applied but found good cause to stay trade-secret-related discovery of the supplemental trade secret disclosure pending resolution of defendants’ summary judgment motion. At the same time, the Court ordered defendants to “review and produce patent claims discovery they must review and produce no matter the outcome on their pending summary judgment motion.” The Court further explained that discovery related to patent claims “should be provided now,” even if it may also relate to trade secret claims.

With respect to source code, “for the limited purpose of ordering discovery” the Court rejected defendants’ argument that source code is irrelevant and necessary, observing that the parties had negotiated – and the Court had entered – a protective order that “extensively covers the inspection and production of source code.”

Accordingly, the Court ordered the production of source code, but denied without prejudice Milliman’s request for specific contracts as unnecessary to the satisfaction of L.R. 16.6(d)(4)(A) governing the accused infringers production of technical documents.

Accordingly, the Court granted Milliman’s motions to compel in part.

In SynKloud Technologies, LLC v. Nuance Communications, Inc., No. 1:20-cv-10564, Judge Saris denied SynKloud’s motion “for reconsideration of two sentences in the Memorandum and Order on Claim Construction.” Those sentences state:

Without support in the patent, SynKloud seeks to define the term "voice model" or user's voice model files to include enrollment entries. To reiterate, SynKloud again improperly seeks to conflate enrollment entries with the voice model[.]

First, the Court denied the motion as untimely for being filed 16 months after the Court issued its claim construction order.

Second, the Court noted that striking the two sentences at issue “would not save the day for SynKloud,” observing that the patent uses the terms “enrollment entries” and “Voice Model” separately, and that if “the Court was wrong when it indicated that enrollment entries are distinct from a voice model,” the “term ‘enrollment entries,’ which is not explained in the specification, is imprecise, confusing and indefinite….”

Accordingly, the Court denied SynKloud’s motion for reconsideration.