BitSight Technologies, Inc. v. NormShield Inc.
1:23-cv-12055
D. Mass.Sep 20, 2024Background
- BitSight Technologies, Inc. (“BitSight”) sued NormShield, Inc. d/b/a Black Kite (“Black Kite”) in the District of Massachusetts, alleging patent infringement on five patents related to cybersecurity rating technologies.
- BitSight also brought claims against Black Kite for false advertising under the Lanham Act and related Massachusetts laws, alleging Black Kite made misleading comparative statements about the parties’ products.
- Black Kite moved to dismiss all claims, contending the patents are directed at non-patentable abstract ideas under 35 U.S.C. § 101, and the false advertising claims are inadequately pled.
- The court analyzed the patents under the Supreme Court’s Alice framework for patent eligibility and reviewed the sufficiency of the false advertising claims under Rule 12(b)(6).
- Ultimately, the court dismissed BitSight’s patent claims (Counts 1-5) but allowed the false advertising and related state law claims (Counts 6-8, with a limitation) to proceed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Patent Eligibility under § 101 | Patents recite inventions using non-conventional network sensors and novel methods for cybersecurity assessment. | Patents merely claim the abstract process of collecting, processing, and presenting data — not patent-eligible. | Patents are directed to abstract ideas and lack inventive concept; dismissed. |
| Sufficiency of False Advertising Claims | Black Kite made specific, measurable, and false representations that misled customers and harmed BitSight. | Statements are puffery, opinions, or otherwise not actionable; BitSight fails to plead harm. | False advertising claims (“literal falsity”) sufficiently pled and may proceed. |
| State Law Claims (Ch. 93A, Ch. 266) | State claims rise/fall with Lanham Act false advertising claim. | N/A | State law claims survive in parallel. |
| Injury from Advertising | Pleaded loss of sales and diversion of customers. | Harm not specifically alleged; no valid injury claim. | BitSight’s specific pleading of diversion is sufficient. |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (Pleading standard for plausibility on a motion to dismiss)
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (Established the two-step test for patent eligibility under § 101)
- Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Abstract idea analysis for data collection, analysis, and display claims under § 101)
- Bilski v. Kappos, 561 U.S. 593 (Patent eligibility of abstract ideas)
- Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343 (Inventive concept must be non-conventional under § 101)
- DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Distinguishing eligible/non-eligible claims in Internet-based inventions)
- Clorox Co. Puerto Rico v. Proctor & Gamble Com. Co., 228 F.3d 24 (Distinguishing puffery from actionable false claims in comparative advertising)
- Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302 (Lanham Act false advertising standard)