Global Strategies, Inc. v. Interbulk USA, LLC

Filing 25

Judge Richard G. Stearns: ORDER entered denying 6 Motion for Preliminary Injunction; finding as moot 24 Motion for Leave to File Document. Plaintiff Global Strategies manufactures and sells patented heavy duty construction bags under the Demo B ag brand. Global Strategies alleges that defendant Interbulk, in selling its Ox Demolition Clean Up Bag, infringes both Global Strategies' patent and trademark. Global Strategies seeks a preliminary injunction to block the marketing and sales of OX Bags. Of the four factors framework for determining the propriety of preliminary injunctive relief, the likelihood of success is the "main bearing wall." Ross-Simons of Warwick, Inc. v. Baccarat, Inc., 102 F.3d 12, 16 (1st Cir. 1996) (the remaining three factors are: the potential for irreparable harm, the balance of the hardships, and potential effect on public interest). In order to demonstrate a likelihood of success on the merits [on its patent c laim], [Global Strategies] must show that, in light of the presumptions and burdens that will inhere at trial on the merits, (1) [Global Strategies] will likely prove that [Interbulk] infringes [its] patent, and (2) [Global Strategies]'s infrin gement claim will likely withstand [Interbulk]'s challenges to the validity and enforceability of the [] patent.... If [Interbulk] raises a substantial question concerning either infringement or validity, i.e., asserts an infringement or invalid ity defense that the patentee cannot prove "lacks substantial merit," the preliminary injunction should not issue. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350-1351 (Fed. Cir. 2001). In lig ht of the present record, the court agrees with Interbulk that it has "raise[d] a substantial question concerning... [the] validity" of Global Strategies" asserted claims. The application for U.S. Patent #7,510,327 (the '327 pat ent) was filed on March 14, 2015, and the patent issued on March 31, 2009. Claim 1 of the '327 patent recites An ultra strong, tear-resistant, puncture-resistant bag having a high tear strength, comprising: a ribbon-woven b ag having crossed woven ribbons of flat polypropylene sheet devoid of low melting temperature bonding layers between the crossed ribbons, said bag formed in a cylinder and stitched at one end to complete the bag, wherein the stitch count for said bag is 100 per inch.A patent claim is invalid if the invention "was... in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States." 35 U.S.C. §102(b) (pr e-AIA). Interbulk's exhibits demonstrate that, in 2003 and 2004 (more than a year before the '327 patent's 2005 filing date), Interbulk sold cylindrical polypropylene ribbon-woven bags with a 100 stitch count. See Def.'s Exs. A- D. Interbulk also notes that the asserted claims were rejected over various prior art references during their prosecution, and argue that the combination of prior art and common sense would render the claims obvious. (The court agrees with Interbul k that asserted claim 17, disclosing a method for using the bag for claim 1 to remove sharp-edged refuse, is likely a common-sense application of the bag.)Interbulk also raises a substantial challenge to the validity of the Global Strategies& #039; Demo Bag mark on the ground that the mark is generic. See Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985) ("Marks that constitute a common descriptive name are referred to as generic. A generic term is one that refers to the genus of which the particular product is a species.... Generic terms are not registrable, and a registered mark may be canceled at any time on the grounds that it has become generic."). Demo Bag is an abbreviation for the term "demolition bag," and the '327 patent makes clear that the purpose of the invention is to contain and remove demolition refuse. Rather than utilizing non-throwaway barrels and rather than utilizing film bags, in the subject invention a high strength bag suitable for carting away demolition products such as bricks, wood, nails, and glass is comprised of a woven ribbon structure in which the woven material, rather than being a cord or strand, is a ribbon of polypropylene.'327 patent col. 1, ll. 53-58 (emphasis added). Finally, the court notes that Global Strategies has not offered strong evidence of the likelihood of consumer confusion. See Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981) (setting out the factors for assessing likelihood of confusion). There is no substantial similarity between the companies' marks in the contexts in which they are displayed. To the exte nt that Interbulk uses the term "demo bag," it appears to be an abbreviation for "demolition clean up bag" in conjunction with the OX mark. The dominant OX mark (featuring the word in large two-tone letters and a silhouette of a bull) is visually distinct from Global Strategies' triangular logo featuring a muscular forearm. Because it has not demonstrated a substantial likelihood of success on the merits, Global Strategies' motion for a preliminary injunct ion will be DENIED. The parties are to submit a joint proposed pretrial schedule consistent with the attached initial case management order. (Attachments: # 1 Standing Order Re Courtsey Copies, # 2 Standing Order re Default PO, # 3 Standing Order re Related Actions) (RGS, int2)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO. 17-12166
Global Strategies, Inc.
v.
Interbulk USA, LLC
NOTICE OF INITIAL CASE MANAGEMENT ORDER
STEARNS, D.J.:
Consistent with Fed. R. Civ. P. 26(f) and L.R. 16.1, the parties are
ORDERED to engage in initial case management as follows.
A. Meet and Confer.
than 1/22/18, to

The parties are to meet and confer no later

(1) prepare a proposed pretrial schedule for the case that includes a
plan for discovery, and
(2) consider whether they will consent to trial by a magistrate judge,
or agree to mediation through the ADR program sponsored by the Court.
If the parties consent to trial by a magistrate judge, they should so indicate
in their joint statement under Paragraph B.
B. Joint Statement. The parties are to file, no later than 1/26/18, a
joint statement containing a proposed pretrial schedule, which shall include:
(1) A joint discovery plan scheduling the time and length for all
discovery events that shall:
(a) conform to the obligation to limit discovery set forth in
Fed. R. Civ. P. 26(b);
(b) take into account the desirability of conducting phased
discovery in which the first phase is limited to developing
information needed for a realistic assessment of the case and, if
the case does not settle, the second phase is directed to

information needed to prepare for trial; and
(c) consider the need for a protective order in the case, and
if such an order is necessary, set a time to submit a joint proposed
order to the court.
(2) If appropriate, a proposed agreement governing the
preservation and production of electronically stored information (ESI),
including but not limited to, the extent and duration of the preservation
obligation and the format in which relevant ESI will be produced (native,
tagged image file format (TIFF), or portable document format (PDF)).
(3) A proposed schedule for the filing of motions.
(4) Certifications signed by counsel and an authorized
representative of each party affirming that each party and that party’s
counsel have:
(a) conferred with a view to establishing a budget for the
costs of conducting the full course – and various alternative
courses – of the litigation;
(b) considered the resolution of the litigation through the
use of alternative dispute resolution programs such as those
outlined in LR 16.4; and
(c) complied with the requirements of Paragraph C infra.
(5) If the proposed plan for discovery extends beyond 270 days, a
statement of any exceptional circumstances justifying an enlargement of
the time the Court will ordinarily permit for discovery and, where
appropriate, the filing of dispositive motions.
(6) In all patent cases, the parties are to consult the “Model
Scheduling Order for Patent Cases” set out in LR 16.6.
To the extent that all parties are able to reach agreement on a proposed
pretrial schedule, they shall so indicate. To the extent that the parties differ
on the pretrial schedule, they shall set forth separately the items on which they
differ and indicate the nature of the disagreement. One purpose of the
parties’ proposed pretrial schedule or schedules is to advise the judge of the
parties’ best estimates of the amounts of time they will need to accomplish

specified pretrial steps. The parties should be aware that it is the
court’s practice not to grant enlargements of the prescribed
pretrial schedule beyond the date mandated for trial or for the
filing of dispositive motions. The parties’ proposed pretrial schedule or
schedules will be considered by the Court as advisory only. If the parties
believe that an early status conference with the court will aid in the efficient
resolution of significant issues in the case, the parties may identify these issues
and make such a request in their joint statement.
C. Settlement Proposal and Response. Plaintiff[s] shall present
written settlement proposals to all defendants no later than 1/19/18. Defense
counsel shall have conferred with their clients on the subject of settlement and
respond to plaintiff[s] within 7 days of the proposal.
Failure to comply with this Order may result in the imposition of
sanctions including the dismissal of the Complaint.
SO ORDERED,
RICHARD G. STEARNS
UNITED STATES DISTRICT JUDGE
DATED: January 12, 2018
Revised 15 May 2017