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 August 25, 2022, Judge Hellerstein (S.D.N.Y.) granted defendant SAS Institute’s (“SAS”) motion to dismiss plaintiff Invincible IP LLC’s (“Invincible”) complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6).
On August 31, 2022, District Judge Andrew L. Carter, Jr. (S.D.N.Y.) found patent claims directed to a personal organizer with a location-based reminder function on a mobile phone to be directed to an abstract idea ineligible for patenting under 35 U.S.C. § 101.
On August 26, 2022, United States District Court Judge Denise Cote (S.D.N.Y.) granted a motion to dismiss Blackbird Tech LLC (“Blackbird”)’s claim against Argento SC By Sicura, Inc. (“Argento”) to the extent Blackbird sought damages for infringement that occurred before the action was filed.
On August 22, 2022, Magistrate Judge Valerie Figueredo (S.D.N.Y) granted a motion by solar tracker manufacturer FCX Solar, LLC (“FCX”) to compel the production of documents relating to Defendant FTC Solar, Inc’s (“FTC”) development of a “next-generation” solar tracking product. See FCX Solar LLC v. FTC Solar Inc., No. 1:21-CV-03556, 2022 BL 293064 (S.D.N.Y. Aug. 22, 2022).
On July 20, 2022, District Judge Failla (S.D.N.Y.) found venue to be improper and transferred the TrackThings LLC v. Netgear, Inc. case to the United States District Court for the District of Delaware based on facts as they existed at the time of filing, thereby rejecting the Welch Rule.
On July 15, 2022, United States District Court Judge Pamela K. Chen (E.D.N.Y.) issued a Memorandum and Order setting forth the construction of two disputed terms relating to garments in Shaf International v. First Manufacturing Co. Inc.—those terms being “back portion” and “substantially outermost extent.” Judge Chen adopted constructions proposed by the Plaintiff, albeit with modifications, as discussed below.
On June 21, 2022, Judge Gabriel W. Gorenstein (S.D.N.Y.) granted Defendant Verifone System Inc.’s (“Verifone”) motion to dismiss the complaint of Plaintiff Chikezie Ottah (“Ottah”) yet again. Ottah alleged that Verifone infringed claim 1 of U.S. Patent No. 7,152,840 (“the ’840 patent”) directed to a “removable” book holder.
On May 20, 2022, Magistrate Judge Gabriel Gorenstein (S.D.N.Y.) ruled on several discovery disputes inSure Fit Home Prods., LLC v. Maytex Mills Inc.
On May 5, 2022, United States District Court Colleen McMahon (S.D.N.Y.) issued a claim construction decision in a long-running set of patent and trade dress infringement and defamation actions between Plaintiff GeigTech East Bay LLC’s (“GeigTech”) and Defendant Lutron Electronics Co., Inc.’s (“Lutron”) concerning U.S. Patent Nos. 10,294,717 (“the ’717 patent”) and 10,822,872 (“the ’872 patent”), each of which is directed to wall brackets for use with motorized shade systems to conceal the system’s wiring.
On May 3, 2022, Judge Lewis J. Liman found patent claims directed to the computerized processing of financial transaction data that splits the transaction cost between payment methods and awards or discounts to be directed to an abstract idea ineligible for patenting under 35 U.S.C. § 101.
On May 2, 2022, Judge Valerie Caproni (S.D.N.Y) granted a motion by international fashion company Chanel Inc. to stay proceedings in a patent infringement action brought by Molo Design, Ltd. pending an inter partes review proceeding that had just been filed. See Molo Design Ltd. v. Chanel, Inc., 21-CV-01578 (S.D.N.Y. May 2, 2022).
On April 6, 2022, U.S. Magistrate Judge James M. Wicks (E.D.N.Y.) granted Defendant Cartessa Aesthetics, LLC’s (“Cartessa”) motion to stay the litigation pending the resolution of IPRs filed against each of the five asserted patents. Plaintiffs Synkloud Technologies, LLC and Serendia, LLC (collectively, “Plaintiffs”) brought suit against Cartessa in August 2021, alleging infringement of five patents generally directed to “radio frequently microneedling devices used for medical and aesthetic dermatological treatment for tightening skin.” Slip Op. at 1.
On March 8, 2022, Judge John G. Koeltl (S.D.N.Y.) denied Defendant Facebook Inc.’s (“Facebook”) motion for summary judgment that the claims of three related patents directed to “storing documents in a chronologically ordered ‘stream’” and “substreams” are invalid, but granted Facebook’s motion for summary judgement of non-infringement.
On February 24, 2022, Judge LaShann DeArcy Hall found patent claims directed to pressure-activated self-cooling mats for pets to be invalid as indefinite in a case filed by The Green Pet Shop Enterprises LLC against Fine Promotions. Judge Hall focused on two claim terms: “predefined distance” and “endothermically deactivated.”
On January 11, 2022, Judge Paul G. Gardephe (S.D.N.Y.) issued a decision declining to construe disputed terms in three patents relating to computer locks. See Noble Sec., Inc v. ACCO Brands Corp., 2022 U.S. P.Q.2d 41 (S.D.N.Y. 2022).
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.
On December 10, 2021, Judge Katherine Polk Failla (S.D.N.Y.) dismissed with prejudice a pro se plaintiff’s claim that the law firm Bracewell LLP induced infringement of his patent by providing legal advice to a direct infringer. See Ottah v. Bracewell LLP, No. 21 Civ. 455, 2021 BL 472911 (S.D.N.Y. Dec. 10, 2021).
On October 14, 2021, United States District Judge Lorna G. Schofield (S.D.N.Y.) construed the scope of U.S. Design Patent No. 668,091 (“the D091 Patent”) in a dispute between Sure Fit Home Products, LLC, SF Home Décor, LLC, Zahner Design Group, Ltd., and Hookless Systems of North America, Inc. (collectively, “Plaintiffs”) and Maytex Mills, Inc. (“Defendant”). This decision follows the Court’s denial of a preliminary injunction request by Plaintiffs, addressed previously.
On September 28, 2021, United States District Judge Edgardo Ramos (S.D.N.Y.) granted Defendant JLC Tech LLC’s (“JLC”) motion to dismiss for lack of personal jurisdiction and improper venue. Judge Ramos also denied Plaintiff Shenzen OKT Lighting Co., Ltd.’s (“OKT”) motion to file a second amended complaint.
On September 27, 2021, U.S. District Court Judge Mary Kay Vyskocil held that plaintiffs Ajinomoto Co., Inc. and Ajinomoto Heartland Inc. had alleged plausible claims for relief for infringement under 35 U.S.C. § 271(g), for inducement of infringement, and for willful infringement, despite the complaint’s purported “group pleading” and “inconsistent allegations” of infringement by the three related defendant corporations.
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 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.
On July 20, 2021, District Judge Pamela Chen (E.D.N.Y.) adopted, in its entirety, Judge Bulsara’s report and recommendation (“R&R”) in Sunscreen Mist Holdings, LLC v. SnappyScreen, Inc. (“Sunscreen Mist” and “SnappyScreen,” respectively) rejecting SnappyScreen’s argument that certain claim language in Sunscreen Mist’s patent is indefinite. We wrote about the R&R in an earlier post.
On May 26, 2021, United States District Judge Lorna G. Schofield (S.D.N.Y.) denied a preliminary injunction request from Plaintiffs Sure Fit Home Products, LLC, SF Home Décor, LLC, and Zahner Design Group, Ltd. (collectively, "Plaintiffs"). Plaintiffs allege that Defendant Maytex Mills, Inc. ("Defendant") infringes their design patent and trade dress by selling a hookless shower curtain.
On April 29, 2021, District Judge Sarah Netburn (S.D.N.Y.) granted defendant salesforce.com, Inc.’s ("Salesforce") motion for transfer of venue to the Northern District of California ("the NDCA")—where it is based—pursuant to 28 U.S.C. § 1404(a).
On April 27, 2021, United States District Judge Brian M. Cogan (E.D.N.Y.) granted Plaintiff Leviton Manufacturing Co., Inc. ("Leviton") motion for a new trial based on the Court's exclusion of secondary indicia of nonobviousness.
On March 5, 2021, the Federal Circuit affirmed U.S. District Judge J. Paul Oetken’s (S.D.N.Y.) order dismissing the remaining claims of plaintiff Bobcar Media, LLC (“Bobcar”). On March 30, 2021, Judge Oetken denied a motion for attorneys’ fees by defendant Aardvark Event Logistics, Inc. (“Aardvark”).
On February 26, 2021, United States Magistrate Judge Sanket J. Bulsara (E.D.N.Y.) issued a claim construction ruling in Sunscreen Mist Holdings, LLC v. SnappyScreen, Inc. (“Sunscreen Mist” and “SnappyScreen” respectively) that Sunscreen Mist alleges infringement of U.S. Patent No. 6,918,897 (“the ’897 patent”), which relates to a vending machine that dispenses and sprays sunscreen lotion on customers. The parties presented the Court with only one disputed claim term: “means to store sunscreen lotion.” The only question before the Court was whether the patent identified sufficient structure for storing sunscreen lotion.
On February 9, 2021, United States Magistrate Judge Ramon E. Reyes, Jr. (E.D.N.Y.) recommended that Sell Below Cost USA LLC’s (“Sell Below”) DJ complaint against Blue Island Holding Group (US) Inc. (“Blue Island”) that United States design patent No. D854,106 S (the “’106 patent”) is invalid and not infringed be dismissed because Blue Island never actually owned the ’106 patent even though it was the assignee named on the patent’s face.
On February 16, 2021, U.S. Magistrate Judge Steven L. Tiscione (E.D.N.Y.) recommended granting plaintiff Nationwide Sales and Services Inc.’s (“Nationwide”) motion for judgment on the pleadings as to patent misuse counterclaims asserted by defendant Steel City Vacuum Co. (“Steel City”).
On February 9, 2021, District Judge Lorna Schofield (S.D.N.Y.) denied defendant Google LLC’s motion for summary judgment on the defense of equitable estoppel and granted plaintiff Kewazinga Corp.’s cross-motion for summary judgment that equitable estoppel does not apply.
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.
On January 19, 2021, United States District Judge Edgardo Ramos (S.D.N.Y.) denied Kannuu Pty Ltd. (“Kannuu”)’s motion for preliminary injunction and instead granted Samsung Electronics Co., Ltd. (“Samsung”)’s motion to stay pending resolution of two instituted IPRs.
On December 15, 2020, U.S. District Judge Colleen McMahon (S.D.N.Y.) denied plaintiff Perry Street Software, Inc.’s (“Perry Street”) motion to compel arbitration of defendant Jedi Technologies, Inc. (“Jedi”) patent infringement counterclaim.
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.
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.
On November 19, 2020, District Judge Gary Brown (E.D.N.Y.) granted Defendants Polar Electro Oy and Polar Electro Inc.'s (collectively, "Polar Electro") motion to dismiss for lack of patent-eligible subject matter under 35 U.S.C. § 101.
On October 5, 2020, United States District Judge I. Leo Glasser (E.D.N.Y.) denied plaintiff Alexsam, Inc.’s (“Alexsam”) motion for reconsideration of the court’s June 17, 2020 summary judgment ruling.
On September 21, 2020, District Judge Chen (E.D.N.Y.) entered an order granting Defendants Chapco Inc. and Samsara Fitness LLC’s motion for summary judgment of invalidity of Plaintiffs Speedfit LLC and Aurel Astilean’s U.S. Patent No. 8,690,738 (“the ’738 Patent”), which is directed to a motor-less, leg-powered treadmill. The Court also denied Defendants’ motion to strike Plaintiff Astilean’s affidavit (“the Astilean Affidavit”) in support of Plaintiffs’ response to the summary judgment motion.
On September 18, 2020, U.S. District Court Judge Jesse M. Furman ruled that an employee’s apartment in the jurisdiction did not constitute a place of business of Defendant Safety Vision even though Safety Vision’s website suggested that it was.
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.
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 30, 2020, U.S. District Judge Gregory H. Woods (S.D.N.Y.) ruled on a second round of summary judgment motions brought by defendant YKK Corp. and its affiliates (together, “YKK”) against plaintiffs Au New Haven, LLC and Trelleborg Coated Systems US, Inc. (together, “Plaintiffs”), once again readying the case for trial.
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.
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 July 13, 2020, District Judge Matsumoto (E.D.N.Y.) entered a claim construction order construing several claim terms recited in Plaintiff Uni-Systems, LLC’s (“Plaintiff”) U.S. Patent Nos. 6,789,360 (“the ’9360 patent”) and 7,594,360 (“the ’4360 patent”), which relate to retractable roof design and are asserted against a number of defendants including the United States Tennis Association National Tennis Center (collectively, “Defendants”).
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 June 17, 2020, United States District Judge I. Leo Glasser (E.D.N.Y.) ruled on the parties’ objections to reports and recommendations issued by U.S. Magistrate Judge Stephen M. Gold, and ultimately granted a motion for summary judgment by defendant Mastercard International Inc. (“Mastercard”) on plaintiff Alexsam, Inc.’s (“Alexsam”) breach of patent license claims.
On May 29, 2020, United States District Judge J. Paul Oetken (S.D.N.Y.) granted Defendant StoneCastle’s Rule 12(b)(6) motion to dismiss for failure to claim patent eligible subject matter under 35 U.S.C. § 101.[1]
After a series of procedurally complex twist and turns that resulted in an agreement by plaintiff to not oppose defendants’ motion for summary judgment, U.S. District Judge Paul A. Engelmayer (S.D.N.Y.) granted defendants Lori Cheek and Cheek’d Inc.’s motion for attorney fees under 35 U.S.C. § 285 and ruled that plaintiff’s counsel should pay.
