George S. Soussou

George S. Soussou, Associate

NY Patent Decisions Blog

Visit the Full Blog

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.

We Will Just Have to Wait – Judge Liman Grants Motion to Stay Pending Resolution of Parallel Motion to Dismiss

by George S. Soussou and Lewis V. Popovski on October 25, 2022

On October 4, 2022, District Judge Lewis J. Liman (S.D.N.Y.) granted a motion to stay pending the resolution of a motion to dismiss in a parallel proceeding. In April 2022, Plaintiff Diatek Licensing LLC (“Diatek”) asserted that Estrella Media, Inc. (“Estrella”) infringed claims of U.S. Patent No. 7,079,752 and U.S. Patent No. 8,195,828 (collectively, “the patents-in-suit”). Several months prior, Diatek filed a lawsuit in the same Court, asserting the same patents-in-suit against a different defendant, Accuweather (the “Accuweather Matter”). Accuweather filed a motion to dismiss under 35 U.S.C. § 101. Estrella filed a motion to dismiss on identical grounds and requested a stay pending resolution of the motion to dismiss in the Accuweather Matter.

Go

No Two Bites at the Apple: Judge Gorenstein Finds Claim Preclusion Prevents Lawsuit

by George S. Soussou and Lewis V. Popovski on June 29, 2022

On June 21, 2022, Judge Gabriel W. Gorenstein (S.D.N.Y.) granted Defendant Verifone System Inc.’s (“Verifone”) motion to dismiss the complaint of Plaintiff Chikezie Ottah (“Ottah”) yet again. Ottah alleged that Verifone infringed claim 1 of U.S. Patent No. 7,152,840 (“the ’840 patent”) directed to a “removable” book holder.

Go

You Win Some and Lose Some: Judge Koeltl Finds Claims Patent-Eligible But Not Infringed

by George S. Soussou and Lewis V. Popovski on March 16, 2022

On March 8, 2022, Judge John G. Koeltl (S.D.N.Y.) denied Defendant Facebook Inc.’s (“Facebook”) motion for summary judgment that the claims of three related patents directed to “storing documents in a chronologically ordered ‘stream’” and “substreams” are invalid, but granted Facebook’s motion for summary judgement of non-infringement.

Go

Curtain Wars Continue – Judge Schofield Construes Design Patent Claim Term

by Lewis V. Popovski and George S. Soussou on October 20, 2021

On October 14, 2021, United States District Judge Lorna G. Schofield (S.D.N.Y.) construed the scope of U.S. Design Patent No. 668,091 (“the D091 Patent”) in a dispute between Sure Fit Home Products, LLC, SF Home Décor, LLC, Zahner Design Group, Ltd., and Hookless Systems of North America, Inc. (collectively, “Plaintiffs”) and Maytex Mills, Inc. (“Defendant”). This decision follows the Court’s denial of a preliminary injunction request by Plaintiffs, addressed previously.

Go

You Don’t Belong Here – Judge Ramos Grants Defendants’ Motion to Dismiss for Lack of Personal Jurisdiction and Improper Venue

by George S. Soussou and Lewis V. Popovski on October 5, 2021

On September 28, 2021, United States District Judge Edgardo Ramos (S.D.N.Y.) granted Defendant JLC Tech LLC’s (“JLC”) motion to dismiss for lack of personal jurisdiction and improper venue. Judge Ramos also denied Plaintiff Shenzen OKT Lighting Co., Ltd.’s (“OKT”) motion to file a second amended complaint.

Go

You Can Keep Your Curtains: Judge Schofield Denies Preliminary Injunction

by George S. Soussou and Lewis V. Popovski on June 2, 2021

On May 26, 2021, United States District Judge Lorna G. Schofield (S.D.N.Y.) denied a preliminary injunction request from Plaintiffs Sure Fit Home Products, LLC, SF Home Décor, LLC, and Zahner Design Group, Ltd. (collectively, "Plaintiffs"). Plaintiffs allege that Defendant Maytex Mills, Inc. ("Defendant") infringes their design patent and trade dress by selling a hookless shower curtain.

Go

Judge Netburn Finds Complaint Doesn’t Need to Attach Photographs of Accused Exercise Devices To Adequately Plead Direct Infringement

by George S. Soussou and Lewis V. Popovski on August 17, 2020

On August 7, 2020, Magistrate Judge Sarah Netburn (S.D.N.Y.) recommended that Defendants’ Motion to Dismiss the Complaint of Plaintiff William Araujo (“Plaintiff”) for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6) be granted with respect to induced patent infringement, but denied with respect to the allegations of direct infringement.

Go

Judge Gardephe Adopts Judge Moses’ Recommendation Regarding Damages

by George S. Soussou and Lewis V. Popovski on July 31, 2020

On July 23, 2020, United States District Court Judge Paul G. Gardephe adopted in full the Report and Recommendation (“R&R”) of Magistrate Judge Barbara Moses. The procedural history of the case and analysis of Judge Moses’ report were discussed in an earlier post here. Judge Gardephe reviewed the R&R for clear error even though the parties waived their right to judicial review. Judge Gardephe agreed that the Defendant was subject to personal jurisdiction in the district because: 1) service of process was procedurally proper, 2) there was a statutory basis for personal jurisdiction, and 3) the exercise of personal jurisdiction comported with constitutional due process principles. He noted that Defendant was properly served under § 387(1)(b) of New Zealand’s Companies Act of 1933. 

Go

You Can’t Clasp That: Judge Schofield Finds No Infringement Under Doctrine of Equivalents Due To Prosecution History Estoppel

by George S. Soussou and Lewis V. Popovski on July 27, 2020

On July 16, 2020, United States District Court Judge Lorna G. Schofield granted summary judgment of non-infringement for Defendant Verizon Services Corp (“Verizon”). Pro se plaintiff Chikezie Ottah (“Ottah”) sued Verizon for patent infringement, alleging that Verizon’s Jotto Desk Universal Laptop Mount (“the Accused Product”) infringed U.S. Patent No. 7,152,840 (“the ’840 patent”).

Go

You’re Too Late: Judge Torres Finds Party Missed Deadline for Objecting to Award of Attorney’s Fees

by George S. Soussou and Lewis V. Popovski on July 7, 2020

On June 22, 2020, United States District Court Judge Analisa Torres ruled that Plaintiff LCS Group, LLC (“LCS”) and its counsel, Stephen Lobbin, and Foundation Law Group LLP, were jointly and severally liable for attorney’s fees in the amount of $133,803.75 to Defendants Shire LLC, Shire Development LLC, Shire PLC, and Haug Partners LLP (collectively, “Defendants”). The Court ruled that LCS and its counsel also missed the deadline to object to the Magistrate Judge’s ruling on attorney’s fees because, instead of objecting to the ruling, Plaintiff improperly appealed to the Second Circuit Court of Appeals.

Go

Judge Matsumoto “Serves Up” Transfer Motions for Improper Venue in EDNY

by George S. Soussou and Lewis V. Popovski on April 16, 2020

On April 7, 2020, U.S. District Judge Kiyo A. Matsumoto (EDNY) granted the motions to transfer for improper venue of two sets of defendants comprising the architects (“Rossetti”) and the engineers (“Morgan”) that designed and built the allegedly patent infringing retractable roof systems of the Arthur Ashe and Louis Armstrong tennis stadiums located in Queens, N.Y. as part of the National Tennis Center.

Go

Judge Woods Finds Dating App Patent Doesn’t “Match Up” With Section 101

by George S. Soussou and Lewis V. Popovski on March 16, 2020

On March 6, 2020, United States District Court Judge Gregory H. Woods (S.D.N.Y.) granted Defendant Humor Rainbow Inc.’s (“Humor”) motion to dismiss. The Court found that the asserted claim of U.S. Patent 6,685,479 (“the ’479 patent”) was invalid under 35 U.S.C. § 101 as directed to “the abstract idea of a matchmaking algorithm.”

Go

Judge Moses Holds Awards of More Than $1 are Not “Nominal”

by George S. Soussou and Lewis V. Popovski on January 24, 2020

Judge Paul G. Gardephe recently issued an Order of Default against Defendant Deep Blue Health New Zealand Ltd. (“Deep Blue Health”). Deep Blue Health had been accused of patent infringement by Plaintiff American Infertility of New York, P.C. (“American Infertility”), yet never defended the litigation. American Infertility sought compensatory damages of $10,000, attorneys’ fees of $24,250, consulting expenses of $19,250, and costs of $4,272.60. On December 30, 2019, Magistrate Judge Barbara Moses (S.D.N.Y.) recommended to Judge Gardephe that American Infertility be awarded $4,273.60 from Deep Blue Health, representative of the $4,272.60 of costs and only $1 of compensatory damages.

Go

Judge Daniels Settles an “Over the Top” Dispute Finding “Upper” Means “Above”

by George S. Soussou and Lewis V. Popovski on July 1, 2019

On June 12, 2019, Judge George B. Daniels (S.D.N.Y.) ruled on claim construction disputes in an action brought by Plaintiff The Topps Company, Inc. (“Topps”) against Koko’s Confectionery & Novelty (“Koko”). Topps alleged infringement of U.S. Patent No. 6,660,316 (“the ’316 patent”), which relates to a candy product comprising a housing with separate chambers.

Go

Judge Schofield Rules Claims that “Comprise” Elements “Consisting Of” Other Elements Are “Closed-Ended”

by George S. Soussou and Lewis V. Popovski on June 14, 2019

On June 4, 2019, Judge Lorna G. Schofield (S.D.N.Y.) ruled on claim construction disputes in an action brought by Plaintiff EMED Technologies Corporation (“EMED”) against Defendant Repro-Med. Systems, Inc. (“RMS”). EMED alleged infringement by RMS of U.S. Patent No. 9,808,576 (“the ’576 patent”), which relates to a medical device for the treatment of Primary Immunodeficiency Disease.

Go

Judge Oetken Rules Patent Owner Has Burden to Prove Assignments of Patents to Show Standing

by George S. Soussou and Lewis V. Popovski on December 19, 2018

On December 7, 2018, District Judge Oetken (S.D.N.Y.) ruled that Plaintiff Bobcar Media, LLC (“Bobcar”) had not demonstrated that it had standing to sue Defendant Aardvark Event Logistics, Inc. (“Aardvark”) for patent infringement because no competent evidence of a written assignment was produced.

Go

Judge Koeltl Grants Section 101 Motion to Dismiss: A System that Collects, Analyzes, and Displays Information is an Abstract Concept

by George S. Soussou and Lewis V. Popovski on November 12, 2018

On October 25, 2018, District Judge Koeltl (S.D.N.Y.) granted Nike, Inc.’s (“Nike”) motion to dismiss Personal Beasties Group LLC’s (“Personal”) complaint under Federal Rule of Civil Procedure 12(b)(6) because the claims of  U.S. Patent 6,769,915 (“the ’915 patent”) are directed to  ineligible subject matter under 35 U.S.C. § 101.

Go

Judge Koeltl Agrees that “Access” to Confidential Information is Enough to Trigger a Prosecution Bar

by George S. Soussou and Lewis V. Popovski on December 11, 2017

On November 20, 2017, District Judge John G. Koeltl (S.D.N.Y.) approved a prosecution bar for “any individual who gains access” to confidential material.  In addition, Judge Koeltl determined that post-issuance proceedings, such as IPRs, “are properly subject to a prosecution bar.” However, Judge Koeltl lifted the bar for anyone that does not participate in amending the scope of claims in post-issuance proceedings.

Go

Judge Pauley Rules “About” Means “Approximately”, Maybe!

by George S. Soussou and Lewis V. Popovski on September 28, 2017

On September 19, 2017, United States District Court Judge William H. Pauley (S.D.N.Y.) issued a claim construction ruling on the word “about” across two patents directed to topical compositions containing naftifine.  Both the patent holder (“Sebela”) and the alleged infringer (“Taro”) sought claim construction for that term in the phrase “about 0.17 wt% trolamine.”  This phrase was in claim 17 of U.S. Patent 8,778,365 (“the ’365 patent”) and claim 21 of U.S. Patent 9,161,914 (“the ’914 patent”). 

Go

Judge Carter Rules “Customers” Don’t Fit Within the “Customer Exception”

by George S. Soussou and Lewis V. Popovski on August 23, 2017

RegenLab USA LLC (“RegenLab”) is the exclusive licensee of U.S. Patent 8,529,957 (“the ’957 patent”) entitled “Cell Preparations for Extemporaneous Use, Useful for Healing and Rejuvenation In Vivo.” RegenLab , who markets and distributes products based on the ’957 patent, accused Estar Technologies Ltd. (“Estar”), a manufacturer of an allegedly infringing product, and Eclipse Aesthetics LLC (“Eclipse”) and Healeon Medical Inc. (“Healeon”) (collectively, “Movants”), who distribute the accused product, of direct and indirect infringement of the ’957 patent.  In a separate and later filed lawsuit, RegenLab also accused Movant’s customers of infringement.  Additionally, RegenLab sent various “improper” communications to Movant’s non-party customers.

Go

Be Careful What You Wish For, You Just Might Get It: Reconsidering When To Ask for Reconsideration

by George S. Soussou and Lewis V. Popovski on July 27, 2017

On July 12, 2017, District Judge Alvin K. Hellerstein granted a motion for reconsideration by Intellectual Ventures II L.L.C. (“IV”) of the Court’s prior Order of April 28, 2017.  At the time of the motion, the only patent at issue in the case was U.S. Patent No. 7,634,666 (“the ’666 Patent”).  The Court had originally denied JP Morgan Chase & Co.’s (“JPMC’s”) motion for summary judgement on noninfringement because while the accused devices didn’t actually infringe, there was a material issue of fact on “ whether the Crypto Cards are capable of infringing on the ’666 Patent.” (emphasis added).  IV asked the court to reconsider whether the accused devices actually infringed.

Go