NY Patent Decisions Blog

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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 Gardephe Gives Bytemark a Second Bite Against Xerox

On January 10, 2022, U.S. District Court Judge Paul G. Gardephe (S.D.N.Y.) granted Plaintiff Bytemark, Inc’s (“Bytemark”) motion for leave to file a third amended complaint, asserting two new patents after the prior patents-in-suit had been found invalid, against Defendants Xerox Corp., ACS Transport Solutions, Inc., Xerox Transport Solutions, Inc. (collectively, “Xerox”), Conduent Inc., and New Jersey Transit Corp.


Judge McMahon Sua Sponte Stays Case Until End of Year: “Enough really is enough.”

On August 12, 2021, United States District Court Colleen McMahon (S.D.N.Y.) denied Plaintiff GeigTech East Bay LLC’s (“GeigTech”) motions for a preliminary injunction and to dismiss Defendant Lutron Electronics Co., Inc.’s (“Lutron”) counterclaims, and sua sponte stayed the case until the end of the year pending post grant review of a related patent.


Judge Rakoff Sanctions Patentee for Sharing Confidential Documents with Counsel in Overseas Trade Secret Case

On December 7, 2020, United States District Court Judge Jed S. Rakoff (S.D.N.Y.) denied Plaintiff SIMO Holdings Inc.’s (“SIMO”) motion to use four confidential documents in a related trade secret dispute pending in Shenzhen, China, and instead imposed a $40,000 sanction on SIMO for disclosing the confidential documents to Chinese counsel.


Judge Rakoff Refuses to “Ice” Diamond Patent Inequitable Conduct Allegations

On August 31, 2020, United States District Court Jed S. Rakoff denied plaintiffs Carnegie Institute of Washington and M7D Corporation (“Carnegie”)’s motion to dismiss the defendants’ counterclaims for inequitable conduct, holding that the allegations state with particularity a plausible claim.

The two patents-in-suit are directed to methods for growing synthetic diamonds, such as through chemical vapor deposition (“CVD”).  The defendants, Pure Grown Diamonds, Inc. and IIA Technologies, allege that U.S. Patent No. RE41, 189 (the “’189 Patent”) is unenforceable because the patentees intentionally deceived the Patent Office regarding the inventorship of the patent during reissuance.


Judge Cote Reconsiders Dismissal and Reinstates Willfulness Allegations

On April 30, 2020, Judge Cote granted reconsideration of her March 4 dismissal of Plaintiffs Signify North America Corp. and Signify Holding B.V.’s (“Signify”) allegations of willful infringement against Defendant Axis Lighting Inc. (“Axis”).


Judge Oetken Rules Peloton Can Ride Away from Invalid Patent

On April 2, 2020, Judge Oetken granted summary judgment of anticipation and resolved a variety of contract and tort claims in a long-running feud between VR Optics (“VRO”), Peloton Interactive, Inc. (“Peloton”), and Peloton’s design consultant Villency Design Group LLC (“VDG”).


As Trial Concludes, Judge Hellerstein Issues, then Reconsiders, Patent Marking Ruling

As trial in Kaufman v. Microsoft Corporation wound down yesterday, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) granted Defendant Microsoft Corporation (“Microsoft”)’s motion to limit damages to those after the filing of the complaint under 35 U.S.C. § 287(a) because Plaintiff failed to mark a website offering to sell his patented product with the patent number of the patent-in-suit.  However, later that day, the Court granted Plaintiff’s motion for reconsideration, and permitted Plaintiff to seek pre-suit damages.


Judge Hellerstein Holds Post-Suit Knowledge of Patent Inadequate to Survive Summary Judgment of No Willful Infringement

On January 22, 2020, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) denied Defendant Microsoft Corporation (“Microsoft”)’s motion for summary judgment as to non-infringement, but granted Microsoft’s motion as to willful infringement, holding that willfulness should not go to the jury without record evidence of pre-suit knowledge of the patent-in-suit.