On August 4, 2017, District Judge Denise Cote issued a claim construction order that held the preamble of claim 1 of Lumos Technology Co., Ltd.'s ("Lumos") U.S. Patent No. 8,746,906 ("the '906 patent") is limiting and that a person of ordinary skill would know what "elastic material" means, and thus the relative phrase does not render claim 5 indefinite.
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NYPatentDecisionsBlog.com is a source for the latest patent decisions from the U.S. District Courts for the Southern and Eastern Districts of New York. The blog is authored by Patterson Belknap’s Patent Litigation practice group, whose members are highly experienced trial attorneys with extensive technical knowledge. Many have advanced scientific degrees and industry experience in fields such as communications, electrical and electro-optical technology, semiconductor technology, metallurgical engineering, chemistry and biochemistry. The team represents consumer products, electrical and software, medical device, mechanical, and pharmaceutical companies in a broad range of patent litigation matters, including district court cases, PTO and PTAB trial proceedings, patent licensing and contractual disputes concerning patent rights.
Judge Sweet Holds Invalidity and Non-Infringement Defenses Cannot Shield a Licensee's Breach of a Patent License
On March 17, 2017, District Judge Robert Sweet (S.D.N.Y.) granted plaintiff Icahn School of Medicine at Mount Sinai's ("Mt. Sinai") motion to strike defendant Neurocrine Biosciences ("Neurocrine") affirmative defenses of patent invalidity, non-infringement, and patent misuse, and to dismiss Neurocrine's parallel declaratory judgment counterclaims.
Judge Cote Holds Attorneys Liable for Trying to Keep a “Baseless” Case in E.D. Tex. that Sought Nuisance Payments from Numerous Defendants
On December 8, 2016, District Judge Denise Cote (S.D.N.Y.) granted defendants Gust, Inc.’s (hereinafter, “Gust”) motion for attorneys’ fees and costs under 35 U.S.C. § 285 and 28 U.S.C. § 1927 against plaintiff AlphaCap Ventures, LLC (hereinafter, “AlphaCap”) and its counsel.
On October 18, District Judge Alison J. Nathan (S.D.N.Y.) granted defendants Verizon Communications Inc.’s, Verizon Services Corp.’s, Verizon Business Network Services Inc.’s, and Cellco Partnership’s (collectively, “Verizon”) motion to stay the litigation until resolution of a consolidated appeal, pending before the United States Court of Appeals for the Federal Circuit, from two decisions of the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) following inter partes review of claims in two of the patents-in-suit.
Judge Woods Holds That Assignment of a Patent is Not an Assignment of an “Interest” Under a License to the Patent
On September 28, 2016, District Judge Gregory Woods (S.D.N.Y.) denied defendant YKK Corp.’s (“YKK”) motion to dismiss the suit, in which plaintiffs Au New Haven, LLC (“Au New Haven”) and Trelleborg Coated Systems US, Inc. (“Trelleborg”) (collectively, “Plaintiffs”) allege infringement of U.S. Patent No. 6,105,214 (“the ‘214 patent”) and breach of the license agreement between the inventor and YKK.
Judge Oetken Holds That Forum-Selection Clause in License Agreement Does Not Trump First-to-File Rule Altogether
On September 16, 2016, District Judge J. Paul Oetken (S.D.N.Y.) denied plaintiff Comcast Corp.’s (“Comcast”) motion for a preliminary injunction seeking to enjoin defendant Rovi Corp. (“Rovi”) from continuing to litigate its patent infringement actions against Comcast in the Eastern District of Texas (“EDTX”) and the International Trade Commission (“ITC”).
Judge Cote Finds Initiating Lawsuits to Obtain Settlements Rather Than a Determination on the Merits is Not an Abuse of Process
On July 28, 2016, District Judge Denise Cote (S.D.N.Y.) granted defendants AlphaCap Ventures, LLC’s, a non-practicing entity, and Richard Juarez’s (collectively, “AlphaCap”) motion to dismiss plaintiff Gust, Inc.’s (“Gust”) allegations of (1) attempted monopolization under the Sherman Act; (2) patent misuse; and (3) abuse of process, stemming from the filing of patent infringement lawsuits in Texas.
On June 3, 2016, District Judge Vincent L. Briccetti (S.D.N.Y.) stayed a patent infringement action brought by plaintiff Marine Travelift (“Marine”) against defendant K. Graefe & Sons Corp. (“Graefe”), pending the resolution of patent litigation between Marine and ASCOM in the United States District Court for the Eastern District of Wisconsin. Marine’s infringement allegations against Graefe were based on Graefe’s purchase of equipment from ASCOM, and both cases involved Marine’s allegations of infringement of its U.S. Patent No. 8,215,441 (“the ’441 patent”). By the time Marine filed suit against Graefe, the case against ASCOM had already reached the summary judgment stage.
Judge Rakoff Holds a 3-D “Magic Trick” Implemented With Software Is Not Equivalent to One Implemented With Hardware
On April 24, 2016, District Judge Jed S. Rakoff (S.D.N.Y.) ruled that defendants Nintendo Co., Ltd. and Nintendo of America, Inc.'s (collectively, “Nintendo”)’s 3DS pocket gaming console does not infringe Tomita Technologies USA, LLC (“Tomita”)’s U.S. Patent No. 7,417,664 (“the ’664 patent”) either literally or under the doctrine of equivalents.
Pleading Merely that Defendant Had Knowledge of the Patent is Insufficient to Support a Willful Infringement Claim
On March 16, 2016, District Judge Shira A. Scheindlin (S.D.N.Y.) granted in part defendant Lowe’s Companies, Inc. (“Lowe’s”)’s motion to dismiss plaintiff Iron Gate Security, Inc. (“Iron Gate”)’s Complaint. Iron Gate commenced the action on November 11, 2015, alleging direct infringement, induced infringement, contributory infringement, and willful infringement, by Lowe’s, of U.S. Patent No. 6,288,641.
On February 22, 2016, District Judge Shira A. Scheindlin (S.D.N.Y.) granted counterclaim-defendants WPP PLC’s and its subsidiaries’ (collectively, “the WPP Companies”) motion for summary judgment of patent invalidity under 35 U.S.C. § 101.
On November 25, 2015, District Judge Laura Swain ordered defendant Bio-Rad to produce information related to foreign sales and profits of its Next Generation Chromatography (“NGC”) protein purification devices, overturning Magistrate Judge Netburn’s previous order that Bio-Rad need not produce such information.
On November 18, 2015, District Judge Colleen McMahon granted defendant Rubard LLC’s (“Rubard”) motion for summary judgment under 35 U.S.C. § 101, holding that U.S. Patent No. 7,346,156 (“the ’156 patent”) is invalid for claiming patent-ineligible subject-matter.