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 Banhazl v. The American Ceramic Society, et al., No. 1:16-cv-10791, following a bench trial Judge Burroughs awarded plaintiff Terrie Banhazl $161,939.52 in damages for indirect infringement of her patent for a method of transferring two-dimensional images onto kiln fire able glossy substrates by defendant The American Ceramic Society (“ACS”). Judge Burroughs also found the asserted patent not invalid.

On infringement, Banhazl claimed ACS directly infringed through the production of two videos demonstrating a technique identical to the one disclosed in her patent. Judge Burroughs disagreed, determining that Banhazl failed to show ACS had direct control over the steps performed by the ceramists in the videos.

Although ACS did not itself directly infringe, the Court found that “it is more likely than not that at least one reader or viewer of the Accused Media [including videos, books, and articles in publications] directly infringed….” On the issue of intent, Judge Burroughs found that the “unusual set of facts [at bar] results in a close call, but Defendant's advertisement and promotion of decal paper that does not include a license to perform the process just barely” demonstrate that the Accused Media “go beyond just showing the method and … actively promote or advertise an infringing use.” Accordingly, the Court found that ACS induced infringement.

On validity, Judge Burroughs found that: 1) the patented invention was not obvious, given the warnings against it found in the prior art and secondary considerations of commercial success and industry praise; 2) the specification satisfied the written description requirement; and 3) Defendant had not shown that “undue experimentation” would be required for a POSITA to practice the invention.

On damages, Banhazl's expert calculated a reasonable royalty based on a hypothetical negotiation. ACS presented no expert, but rather argued that Banhazl failed to meet her burden of proof. Judge Burroughs ultimately found that the rate proposed by Banhazl's expert was based on a license rate between Banhazl and a third party that had dropped significantly since the expert performed his calculation. Accordingly, the Court adjusted the award to be consistent with the current license rate and other evidence presented at trial, determining that Banhazl was entitled to $161,939.52 in damages. The Court denied Banhazl's request for enhanced damages and attorneys' fees based on the fact that it had barely found ACS liable in the first place.

In Kologik Capital, LLC v. In Force Technology, LLC et. al., No. 1:18-cv-11168, Magistrate Judge Bowler granted-in-part Kologik's motion to compel and also denied Defendants' motion for an extension of time to comply with the former order. Magistrate Judge Bowler also granted Kologik's motion to extend discovery.

In 2018, Kologik filed a suit against In Force Technology, LLC (“IFT”), Brandon-COPsync LLC, and Brandon D. Flanagan alleging, inter alia, patent infringement. During discovery, the Court ordered Defendants to produce certain documents. Kologik again moved the Court to order Defendants to produce missing documents, including third party customer communications and the source code repository and working copies of all iterations of the accused IFT software.

In deciding the later motion, Magistrate Judge Bowler ordered Defendants to produce certain documents that they undisputedly possessed. Magistrate Judge Bowler also ordered Defendants to produce working copies of all iterations of the accused software, finding that it was insufficient for them to “simply testify to what changes were made over the development and rollout phases” of their software. Finally, the Court found that financial data and written agreements with customers would be relevant to some of the claims, and ordered them produced.

After this order, Defendants moved for a seven-day extension of time to comply due to the recent passing of the father-in-law of defendant Brandon Flanagan, who is also the CEO of defendant IFT. The Court denied this motion, explaining that it had already provided Defendants numerous opportunities to comply with their discovery obligations over the three-year pendency of the case, and was unwilling to offer yet another opportunity.

In view of the outstanding discovery, Magistrate Judge Bowler also granted Plaintiff's motion to extend the discovery period, noting that there would be no further extensions or exceptions.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.