On January 25, 2021, United States District Judge Alvin Hellerstein (S.D.N.Y.) denied Defendant Microsoft Corp. ("Microsoft")'s motion for judgment as a matter of law pursuant to FRCP 50(b) or a new trial pursuant to FRCP 59.
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Judge Netburn Finds Complaint Doesn’t Need to Attach Photographs of Accused Exercise Devices To Adequately Plead Direct Infringement
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.
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.
You Can’t Clasp That: Judge Schofield Finds No Infringement Under Doctrine of Equivalents Due To Prosecution History Estoppel
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”).
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.
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.
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.”
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.
On October 2, 2019, District Judge Ronnie Abrams (S.D.N.Y.) granted Defendant Quora Inc.’s (“Quora”) motion to transfer the case to the Northern District of California.
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.
Judge Schofield Rules Claims that “Comprise” Elements “Consisting Of” Other Elements Are “Closed-Ended”
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.
You Can’t Use That Now: Judge Matsumoto Estops Defendant from Using Prior Art It Could Have Used During IPR
On January 30, 2019, District Judge Matsumoto (E.D.N.Y.) ruled that Defendant Presidio Components, Inc. (“Presidio”) was estopped from asserting invalidity grounds that were not included in its petition for inter partes review against U.S. Patent No. 6,144,547 (“the ’547 patent).
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.
Judge Koeltl Grants Section 101 Motion to Dismiss: A System that Collects, Analyzes, and Displays Information is an Abstract Concept
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.
On May 11, 2018, United States District Judge Katherine Polk Failla ruled that claims 1 and 2 of U.S. Patent No. 6,340,189 (“the ’189 patent”), drawn to a device that is placed in a “position most convenient” to a user, were invalid as indefinite.
Judge Koeltl Agrees that “Access” to Confidential Information is Enough to Trigger a Prosecution Bar
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.
Judge Sweet Allows a Plaintiff to Amend Its Complaint More Than 2 Years After It Was Originally Filed
On October 26, 2017, District Judge Robert W. Sweet (S.D.N.Y.) granted plaintiff Olaf Soot Design, LLC (“OSD”) leave to amend its June 25, 2015 Complaint against Daktronics, Inc. and Daktronics Hoist, Inc. (collectively, “Daktronics”).
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”).
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.
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.