NY Patent Decisions Blog


NY Patent Decisions Blog is a source for the latest patent decisions from the U.S. District Courts for the Southern and Eastern Districts of New York.

Recent Blog Posts

  • Judge Sullivan Holds “Substantially” the Same is Close Enough for Collateral Estoppel On September 30, 2016, District Judge Richard J. Sullivan (S.D.N.Y.) granted the defendants’ motion to dismiss, holding one of the two asserted patents invalid under principles of collateral estoppel. Plaintiff Joao Control & Monitoring Systems (“Plaintiff”) had asserted two patents, U.S. Patent Nos. 7,277,010 (“‘010 Patent”) and 6,587,046 (“‘046 Patent”), against a number of defendants, including the City of Yonkers and American Traffic Solutions (collectively, “Defendants”).  While one patent claims the use of a website and the other does not, the... More
  • Judge Hellerstein Holds That “Arranged On” Means “Connected In Some Fashion” On September 30, 2016, District Judge Alvin Hellerstein (S.D.N.Y.) denied defendant Nautilus, Inc.’s (“Nautilus”) motion for summary judgment of non-infringement holding that “disposed on said elongated member” does not necessarily mean directly on that member. Plaintiff Biosig Instruments, Inc. (“Biosig”) sued Nautilus for infringement of U.S. Patent No. 5,337,753 (“the ‘753 patent”), which is directed to an exercise machine such as a stationary bicycle having a cylindrical “sensor” bar and “a display arranged on the cylindrical bar for showing the user’s... More
  • Judge Oetken Holds that Amendments Made During Ex Parte Reexamination Are not Effective Until Grant of Reissue Patent On September 26, 2016, District Judge Paul Oetken (S.D.N.Y.) denied defendant Jay Franco & Sons’ (“Franco”) motion to dismiss, granted plaintiff Infinity Headwear & Apparel’s (“Infinity”) motion for leave to amend to assert additional claims, and laid out the Court’s construction of the disputed claim terms.  Infinity alleged that Franco infringed claims 1-2, 6, 8, 10-11, 15-16 and 18-20 of U.S. patent No. 8,864,544 (“the ‘544 patent”), entitled “Hooded Blanket and Stuffed Toy Combination.” During an ongoing ex parte reexamination, Infinity amended... More
  • 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. In 2002, the named inventor of the ‘214 patent entered into an agreement with YKK granting it the exclusive right to practice... More
  • 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”). In April 2016, Rovi filed against Comcast two complaints for patent infringement in the EDTX, and one complaint under Section 337 of the Tariff Act in the ITC. In May 2016, Comcast... More
  • No Way Out for Door Patent On September 12, 2016, District Judge John G. Koeltl (S.D.N.Y.) granted the defendants’ motions to dismiss for failure to state claim of patent infringement under Federal Rule of Civil Procedure (“FRCP”) 12(b)(6).  Claims other than patent infringement remain in the case. Plaintiffs Gym Door Repairs Inc. (“GDRI”) and Safepath Systems LLC (“SPS”) are the manufacturers of the “Safe Path System,” a safety device used on electrically operated doors. According to the Plaintiffs’ complaint, this device was sold to more than 4,700... More
  • Judge Abrams Dismisses Case Based on Arguments Made to the PTO During Prosecution On August 9, 2016, District Judge Ronnie Abrams (S.D.N.Y.) granted defendant Richloom Fabrics Group, Inc.’s motion to dismiss plaintiff Anchor Sales & Marketing, Inc.’s allegation of patent infringement based on the doctrine of equivalents. Richloom Fabrics’ motion to dismiss, or alternatively for summary judgment, arose in response to Anchor Sales’ Amended Complaint alleging infringement of U.S. Patent No. 7,213,633 (the “‘633 Patent”), which is directed to “a method of forming scalloped configuration incurtains and draperies used for hanging from windows.”  Anchor... More
  • Judge Forrest Provides Litigants Guidance on Applying Alice On August 3, 2016, S.D.N.Y. District Judge Katherine B. Forrest denied Defendant Lowe’s Companies, Inc. (“Lowe’s”) motion to dismiss Iron Gate Security, Inc.’s (“Iron Gate”) patent infringement claim. Iron Gate alleged that Lowe’s infringed U.S. Patent Nos. 6,288,641 and 7,203,693 (the “‘693 patent”), the latter by Lowe’s “Iris Smart Home Management System.”  The ‘693 patent is directed to “indexing multimedia data based on motion associated with a person or object.”  Lowe’s moved to dismiss the infringement claims as to the ‘693 patent, arguing... More
  • 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. After the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), AlphaCap initiated a patent infringement action in... More
  • Judge Pauley Holds That Administering a Test Using a Computer Is Not Patent-Eligible Under § 101 On July 29, 2016, S.D.N.Y. District Judge William H. Pauley III granted defendant PlayerLync, LLC’s (“PlayerLync”) motion for judgment on the pleadings and dismissed plaintiffs Multimedia Plus, Inc. and Multimedia Technologies, LLC’s (collectively “Multimedia”) patent infringement action. Multimedia alleged that PlayerLync infringed U.S. Patent No. 7,293,025 (the “‘025 Patent”), which claims a “hosted learning management system” for employee training that “maintain[s] large media files locally while transmitting only minimal data to a centralized server for analysis” by an employer. In its motion, PlayerLync... More