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.
On September 2, 2021, United States District Judge Loretta A. Preska (S.D.N.Y.) granted in part and denied in part Defendants’ motion for judgement on the pleadings in Berall v. Pentax of America, Inc., et al. All in all, as set forth below, the decision was a mixed bag for both Plaintiff and Defendants.
On December 10, 2020, United States District Judge Ronnie Abrams (S.D.N.Y.) granted Oath Inc. (“Oath”) and Quora, Inc. (“Quora”)’s motions for attorneys’ fees under 35 U.S.C. § 285. Section 285 permits courts to award reasonable attorneys’ fees to a prevailing party in exceptional cases. The standard was met here, according to Judge Abrams, most particularly because Plaintiff NetSoc, LLC (“NetSoc”) ignored deficiencies in its pleading for roughly three months after being informed of errors therein.
Last year we reported on the patent dispute between Plaintiff SIMO Holdings, Inc. (“SIMO”) and Defendants Hong Kong uCloudlink Network Technology Limited and uCloudlink (America), Ltd. (collectively, “uCloudlink”). (See posts from June 2019 and October 2019.) With the trial concluded—and with numerous pre- and post-trial disputes on appeal to the Federal Circuit—all was momentarily quiet on the district court front. The parties, however, recently returned to the Southern District of New York with a fresh controversy.
On January 14, 2020, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) denied Plaintiff Michael Philip Kaufman’s motion to exclude testimony from Defendant Microsoft Corporation (“Microsoft”)’s damages expert, finding that Plaintiff’s objections would be more properly raised during cross-examination.
On September 30, 2019—more than two years after Plaintiff, Electric Mirror, LLC (“Electric Mirror”) first brought suit for patent infringement in the Southern District of New York—United States District Judge Andrew L. Carter granted Defendants Project Light, LLC, Project Light, Inc., Prospetto Light, LLC, and Prospetto Lighting, LLC’s (collectively, “Project Light”) motion to dismiss for improper venue.
The case had been stayed for more than a year pending the outcome of a related proceeding before the United States International Traded Commission (“ITC”). Once the ITC-related stay was lifted, Defendants filed a motion to dismiss pursuant to 28 U.S.C. § 1406(a) for, inter alia, improper venue. Plaintiff challenged the timeliness of that motion, as well as the merits.
On September 11, 2019, United States District J. Paul Oetken denied Defendants Tekno Products, Inc. and Max Deluxe Limited (“Max Deluxe”)’s motion for judgement on the pleadings in a patent infringement action pending in the Southern District of New York. Defendants argued that Plaintiff MIEH, Inc. (“MIEH”) had failed to join in the action the assignee of the disputed U.S. Patent No. 9,731, 212 (the “’212 Patent”), entitling Max Deluxe to a dismissal pursuant to Federal Rule of Civil Procedure 12(c). The Court disagreed, for now.
On August 6, 2019, United States District Judge Joan M. Azrack denied Plaintiff Andrea Electronics Corporation (“Andrea”)’s motion to lift the stay in Andrea Electronics Corp. v. Apple Inc., No. 16-cv-5220 (E.D.N.Y.) and, accordingly, granted Defendant Apple Inc. (“Apple”)’s cross-motion to continue the stay. The stay will remain in place pending final resolution of the IPR proceedings before the Court of Appeals for the Federal Circuit.
On June 3, 2019, Judge Jed S. Rakoff (S.D.N.Y.) granted in part Plaintiff SIMO Holdings, Inc. (“SIMO”)’s application for increased damages under 35 U.S.C. § 284. The ruling followed a series of favorable decisions and verdicts for SIMO, including: summary judgment as to infringement on certain claims of U.S. Patent 9,736,689 (“the ’689 Patent”); a jury award to SIMO for compensatory damages in the amount of $2,183,562.40; and a jury finding that Defendants Hong Kong uCloudlink Network Technology Limited and uCloudlink (America), Ltd. (collectively, “uCloudlink”) had willfully infringed.
On March 13, 2019, District Judge Jesse M. Furman (S.D.N.Y.) ruled on Defendant European Home Design, LLC’s (“European Home”) motion for summary judgment, as well as the parties briefing on claim construction of certain disputed terms in U.S. Patent No. 8,720, 218 (“the ’218 Patent”). In this suit, Plaintiff Green Pet Shop Enterprises, LLC (“Green Pet Shop”) sued European Home claiming that it had infringed its patent for a cooling platform for animals. You got it: A bed for pets that is capable of temperature regulation.
On October 16, 2018 Magistrate Judge Gold, of the Eastern District of New York, issued a report recommending that Plaintiff Alexsam, Inc. (“Alexsam”) be denied leave to file a supplemental complaint against Defendant Mastercard International Inc. (“Mastercard”) asserting Mastercard breached an agreement by filing CBM petitions against Alexsam’s patents.
On May 18, 2018, United States District Judge Alvin K. Hellerstein granted in part and denied in part Defendant Microsoft Corporation (“Microsoft”)’s motion to dismiss Holotouch, Inc. (“Holotouch”)’s complaint. Microsoft moved to dismiss on the grounds: 1) that the allegations of direct infringement in the complaint were insufficient to state a plausible claim of action; and 2) that one of the two asserted patents had expired long before the complaint was filed.
On March 26, 2018, United States District Court Judge J. Paul Oetken granted a motion to transfer venue in Peerless Network, Inc. v. Blitz Telecom Consulting. The focus of the opinion was on whether venue was proper in the Southern District of New York based on a “device the size of a breadbox and the shelf on which it [sat].”
On November 20, 2017, United States District Court Judge Kiyo A. Matsumoto issued a claim construction ruling in a suit between two fitness-related companies: Speedfit LLC (“Speedfit”) and Woodway USA, Inc. (“Woodway”). The sole term in dispute was “means for slackening” as it was recited in Claim 1 of U.S. Patent 8,343,016 (“the ’016 Patent”) – a patent related to a manually-powered treadmill involving a closed-loop belt designed to maintain a curved running surface.
