NY Patent Decisions 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.

Stay In Place: Judge Azrack Declines to Lift Stay Until Federal Circuit Weighs In

by Julie A. Simeone and Lewis V. Popovski on August 12, 2019

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.

Balancing Considerations, Judge Rakoff Grants “Modest” Enhancement of Damages

by Julie A. Simeone and Lewis V. Popovski on June 18, 2019

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.

Judge Furman Denies Summary Judgment to Defendant and Construes Disputed Claim Terms for “Cool” Pet Beds

by Julie A. Simeone and Lewis V. Popovski on March 26, 2019

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.

PTAB Petitions Do Not “Arise Out Of” Licensing Agreement

by Julie A. Simeone and Lewis V. Popovski on November 6, 2018

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.

Judge Hellerstein Holds SDNY Local Patent Rules Cannot Change the Pleading Standard Under Iqbal/Twombly

by Julie A. Simeone and Lewis V. Popovski on May 30, 2018

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.

Judge Oetken “Shelves” Case For Lack of Venue

by Julie A. Simeone and Lewis V. Popovski on April 5, 2018

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].”

Judge Matsumoto Cuts Plaintiff a Little “Slack” in Claim Construction Ruling

by Julie A. Simeone and Lewis V. Popovski on November 28, 2017

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.