Judge Abrams Finds That Working from Home Does Not Mean Venue is Proper
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.
NY Patent Decisions Blog
Visit the Full BlogNYPatentDecisionsBlog.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 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.
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.
You Can’t Use That Now: Judge Matsumoto Estops Defendant from Using Prior Art It Could Have Used During IPR
by George S. Soussou and Lewis V. Popovski on February 6, 2019
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).
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.
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.
Who Knows What "Most Convenient" Is? Judge Failla Rules Claims Are Indefinite
by George S. Soussou and Lewis V. Popovski on May 18, 2018
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
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.
Judge Sweet Allows a Plaintiff to Amend Its Complaint More Than 2 Years After It Was Originally Filed
by George S. Soussou and Lewis V. Popovski on November 9, 2017
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”).
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”).
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.
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.