On August 16, 2019, U.S. District Judge Alison J. Nathan (S.D.N.Y.) denied Plaintiff Seoul Viosys Co.'s ("SVC") motion for reconsideration of the court's September 2018 summary judgment decision, and, on August 21, 2019, the clerk entered judgment in favor of Defendant P3 International Corp. ("P3").
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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.
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 July 29, 2019, Judge Gregory Woods illustrated how subject matter that is incorporated by reference in the specification can impact the scope of the claims in claim construction.
On July 2, 2019, District Judge Denise Cote (S.D.N.Y.) denied Plaintiff NuCurrent Inc.'s ("NuCurrent") motion for a preliminary injunction seeking to have Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, "Samsung") withdraw and dismiss its IPR petitions.
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.
Trial is underway between Plaintiffs American Technical Ceramics Corp. and AVX Corp. (together, “Plaintiffs”) and Defendant Presidio Components, Inc. (“Presidio”), following the Court’s May 30, 2019 ruling on the parties’ Daubert motions and May 31, 2019 ruling on the parties’ various motions in limine. U.S. District Judge Kiyo A. Matsumoto (E.D.N.Y.) is presiding over the trial that began on June 10, 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 Schofield Rules Claims that “Comprise” Elements “Consisting Of” Other Elements Are “Closed-Ended”
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.
On June 11, 2019, District Judge Gregory Woods (S.D.N.Y.) granted Defendants HTC Corp.'s and HTC America, Inc.'s ("HTC America") (collectively, "HTC") motion to transfer a patent infringement case brought by Dynamic Data Technologies, LLC ("DDT") to the Western District of Washington ("W.D. Wash.") pursuant to 28 U.S.C. § 1404(a).
On April 22, 2019, Judge Colleen McMahon (S.D.N.Y.) denied plaintiffs Ferring’s (“Ferring”) motion for summary judgment on invalidity due to lack of written description and lack of enablement and motion for summary judgment on non-infringement in Ferring B.V. v. Serenity Pharm., LLC. Ferring filed a declaratory judgment suit against defendants Serenity and Reprise (“Defendants”) for patent invalidity, unenforceability and non-infringement with respect to the three patents in suit in the District of Delaware. The suit was subsequently transferred to the Southern District of New York, where the Defendants answered the Amended Complaint and asserted counterclaims, including patent infringement.
On April 25, 2019, United States District Judge Jed S. Rakoff (S.D.N.Y.) ruled that in the context of a patent, there are times when the conjunctive claim term "and" can be interpreted to mean a disjunctive "or". Judge Rakoff ruled that this was the case with the claims of U.S. Patent No. 9,736,689.
On Apri1 15, 2019, District Judge Denise Cote (S.D.N.Y.) denied Defendant St. Lawrence Communications, LLC ("SLC")'s motion for summary judgment that the scope of a covenant not to sue does not preclude a separate lawsuit for patent infringement against LG Electronics, Inc. ("LG") in the Eastern District of Texas. In the E.D. Tex. lawsuit, SLC and its successor-in-interest, EVS Codec Technologies, LLC ("ECT") allege that LG infringes a patent that covers an audio coding standard called "Enhanced Voice Services" ("EVS").
On April 1, 2019, United States District Judge Denise Cote (S.D.N.Y.) denied Plaintiff Wine Enthusiast, Inc.'s motion for sanctions against Defendant Vinotemp for filing an allegedly frivolous counterclaim of design patent infringement.
On March 31, U.S. District Judge Gregory H. Woods (S.D.N.Y.) ruled on various summary judgment motions of Plaintiffs Au New Haven, LLC and Trelleborg Coated Systems US, Inc. (together, “Plaintiffs”) and Defendant YKK Corporation and its affiliates (together, “YKK”). Judge Wood’s decision relied on U.S. Magistrate Judge Sarah Netburn’s (S.D.N.Y.) March 19, 2019 ruling on the parties’ motions to exclude each other’s expert witnesses.
Judge Furman Denies Summary Judgment to Defendant and Construes Disputed Claim Terms for “Cool” Pet Beds
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.
Judge Matsumoto "Puts to Bed" Claim Construction Disputes by Adopting Several Independent Constructions, But Defers Ruling on Indefiniteness
On February 25, 2019, District Judge Kiyo Matsumoto (E.D.N.Y.) ruled on claim construction and indefiniteness disputes in an action brought by Plaintiff Bedgear, LLC against Defendant Fredman Bros. Furniture Co., Inc. d/b/a as Glideaway Sleep Prods. Plaintiff alleged infringement by Defendant of four patents pertaining to pillow covers and bedding systems: U.S. Patent Nos. 8,646,134; 8,887,332; 9,015,883 ("the '883 patent"); and 9,155,408.
On February 8, 2019, United States District Judge Edgardo Ramos (S.D.N.Y.) issued a decision granting Defendants AAVN and Next Creations Holding's Rule 12(b)(6) motion to dismiss Globe Cotyarn's federal law claim of false advertising under the Lanham Act, and New York State law claims of unfair competition, tortious interference with a business relationship, and deceptive acts, with leave to amend.
You Can’t Use That Now: Judge Matsumoto Estops Defendant from Using Prior Art It Could Have Used During IPR
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).
On January 22, 2019, Judge Robert W. Sweet (S.D.N.Y.) issued a claim construction opinion in Ferring B.V. v. Serenity Pharm., LLC following a Markman hearing. Plaintiffs Ferring (“Ferring”) moved for claim construction of disputed preamble claim terms in U.S. Patent Nos. 7,405,203 (the “’203 Patent”) and 7,579,321 (the “’321 Patent”), two patents owned by Defendants Serenity (“Serenity”).
Judge Oetken Sua Sponte Transfers Action to California Upon Holding that Pendent Venue Cannot Be Exercised Over a Patent Infringement Claim
On January 2, 2019, District Judge Paul Oetken (S.D.N.Y.) transferred to the U.S. District Court for the Central District of California ("CDCA") an action brought by Plaintiff NextEngine, Inc. against Defendants NextEngine, Inc. (not a typographical error) and Mark Knighton ("Knighton"). Plaintiff alleged infringement by Defendants of four patents pertaining to 3-D laser scanning and two registered trademarks—"NEXTENGINE" and a gear-shaped logo—in addition to unfair competition under the Lanham Act.
Judge Gold Rules that Standing for CBMs Is Different from Standing for Breach of a Patent License Agreement
On December 5, 2018, United States Magistrate Judge Steven M. Gold (E.D.N.Y.) recommended denying a motion for summary judgment by defendant Mastercard International Inc. (“Mastercard”), as well as plaintiff Alexsam, Inc.’s (“Alexsam”) motion to dismiss Mastercard’s counterclaims alleging invalidity and noninfringement of two of Alexsam’s patents.
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
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.
On October 29, 2018, United States District Judge P. Kevin Castel (S.D.N.Y.) issued a decision granting Defendant Bloomberg's Rule 12(b)(6) motion to dismiss iSentium's patent infringement claim because it is directed to subject matter that is not eligible for patenting under 35 U.S.C. § 101.
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 September 5, 2018, Chief United States District Judge Colleen McMahon (S.D.N.Y.) issued a decision denying Plaintiff GeigTech's motion for preliminary injunction in its patent and trade dress infringement suit against Defendant Lutron. GeigTech's motion for expedited discovery was granted-in-part.
On September 12, 2018, Magistrate Judge Cheryl Pollak issued a report recommending that defendants Quest USA Corp.'s and Isaac Srour's (collectively, "Defendants") motion for a stay pending inter partes review ("IPR") be granted.
On August 27, 2018 U.S. District Judge Brian M. Cogan (E.D.N.Y.) adopted in full the report and recommendation issued by U.S. Magistrate Judge Steven L. Tiscione following a Markman hearing as to the meaning of “movable” in U.S. Patent No. 8,636,507 (the “‘507 Patent”).
On September 29, 2016, plaintiff OrthoArm Inc. (“OrthoArm”) filed suit against defendants Dentsply GAC International and Dentsply Sirona Inc. (together, “Dentsply”), alleging infringement of the ‘507 Patent by Dentsply’s “In-Ovation Mini” product. The ‘507 Patent teaches an orthodontic bracket assembly used for dental braces that is “self-ligating,” meaning that it “is manufactured with a built-in, movable shutter that can hold the wire in place and eliminates the need for rubber bands or some other means to hold the archwire.” Claim 1 requires that the shutter “be movable between a closed position . . . and an open position.” The parties disputed the meaning of the term “movable.”
On August 11, 2018, Judge Koeltl (S.D.N.Y.) granted Defendant Facebook, Inc.’s motion for summary judgment of non-infringement of three patents alleged to read on Facebook’s “News Feed” “Timeline,” and “Activity Log” functionalities. Plaintiff Mirror Worlds Techs., LLC (“Mirror Worlds”) owns the three patents.
On August 8, 2018, Judge Jesse M. Furman (S.D.N.Y.) granted Defendant Synaptive Medical, Inc.’s (“Synaptive”) motion to stay proceedings pending inter partes review (“IPR”) of the patent-in-suit. Plaintiff Karl Storz Endoscopy-America, Inc. (“KSEA”) sued Synaptive, alleging infringement of U.S. Patent No. 9,468,360 (“the ‘360 patent”). Less than a month after filing its answer, Synaptive petitioned the Patent Trial and Appeal Board (“PTAB”) for IPR on the validity of the ‘360 patent. The motion to stay was filed 19 days later. The PTAB granted the Petition while the stay motion was pending. Discovery, infringement and invalidity contentions, and claim construction have not yet begun in the case.
That is, Judge Engelmayer makes a call on the meaning of certain shower curtain claims. On August 9, 2018, United States District Judge Paul Engelmayer (S.D.N.Y.) issued a decision construing 14 claim terms across three patents directed to shower curtains.
On July 19, 2018, United States District Judge Denise Cote (S.D.N.Y.) granted Plaintiff Wine Enthusiast, Inc.'s Rule 12(b)(6) motion to dismiss counterclaims by Defendant Vinotemp International Corp. ("Vinotemp") for infringement of U.S. Design Patent No. D711,936 (the "D936 Patent") but allowed Vinotemp’s trade dress claim in a wine refrigerator to go forward.
Judge Sweet Holds Knowledge of Patent at Issue Was Not “Acquired” During an Acquisition of One Who Knew
On July 18, 2018, Judge Sweet granted defendants Daktronics, Inc.'s and Daktronics Hoist, Inc.'s (collectively, "Daktronics") motion for summary judgment on the issue of willful infringement. As we wrote in a previous post, more than two years after plaintiff Olaf Sööt Design, LLC ("OSD") filed its complaint, Judge Sweet granted OSD leave to amend its complaint to add the willful infringement claim.
On July 18, 2018, United States District Judge Vernon S. Broderick (S.D.N.Y.) denied a motion by defendant Coty Inc. (“Coty”) to dismiss a patent infringement suit brought by plaintiff Lennon Image Technologies, LLC (“Lennon”).
On July 13, 2018, United States District Judge Laura Taylor Swain (S.D.N.Y.) granted a motion by Plaintiff— BroadSign International, LLC ("BroadSign") —for leave to file a Second Amended Complaint against Defendant T-Rex Property AB ("T-Rex"), seeking, inter alia, declaratory judgments of noninfringement and invalidity of U.S. Patent No. RE39,470, U.S. Patent No. 7,382,334, and U.S. Patent No. 6,430,603 (collectively, the "Patents-in-Suit").
On June 7, 2018, United States Magistrate Judge Cheryl L. Pollak (E.D.N.Y.) denied a motion by defendants—Quest USA Corp. (“Quest”) and Isaac Srour—to strike supplemental infringement contentions submitted by plaintiff PopSockets LLC (“PopSockets”).
On May 30, 2018, United States Magistrate Judge Gary Brown (E.D.N.Y.) granted defendants Envirocare Technologies International, Ltd.'s, Envirocare Technologies, LLC's, and Steel City Vacuum Company's motion for summary judgment based on plaintiffs Nationwide Sales and Services, Inc.'s and Imig, Inc.'s failure to provide patent infringement claim charts, as required by both the local patent rules and the discovery schedule stipulated by the parties.
On May 24, 2018, Judge Nelson S. Román granted Defendant United States Endoscopy Group, Inc.’s (“Defendant”) Motion to Dismiss for Improper Venue pursuant to Federal Rule of Civil Procedure 12(b)(3). On August 13, 2013, Plaintiffs CDx Diagnostic, Inc., Shared Medical Resources, LLC, and CDx Medical IP, Inc. (“Plaintiffs”) filed suit against Defendant and various unidentified John Does, alleging infringement of Plaintiffs’ patents. During discovery, Defendant filed a motion to dismiss for improper venue in light of the recent Supreme Court case TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017).
Judge Hellerstein Holds SDNY Local Patent Rules Cannot Change the Pleading Standard Under Iqbal/Twombly
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 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.
On May 8, 2018, United States Magistrate Judge Sarah Netburn (S.D.N.Y.) granted plaintiffs AU New Haven, LLC's ("AU") and Trelleborg Coated Systems US, Inc.'s ("Trelleborg") motion for a preliminary anti-suit injunction concerning an action pending in Japan.
On April 5, 2018, Judge Oetken (S.D.N.Y.) granted Plaintiff Rovi Guides Inc.’s (“Rovi”) motion to lift a stay related to U.S. Patent No. 8,122,034 (“the ’034 patent”), only one of five patents at issue in a case that was stayed pending completion of inter partes review (“IPR”) proceedings.
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 March 27, 2018, District Judge Matsumoto (E.D.N.Y.) issued an 83-page decision on the parties' summary judgment briefing, which covered ten issues across three patents relating to multilayer ceramic capacitors. The summary judgment briefing between Plaintiffs American Technical Ceramics Corp. and AVX Corporation ("ATC") and Defendant Presidio Components, Inc. ("Presidio") concerned laches; equitable estoppel; waiver; failure to mark; whether the cancellation of claims pursuant to an inter partes review precluded hearing arguments of invalidity on the claims; the availability of enhanced damages under 35 U.S.C. § 284; indefiniteness; and non-infringement.
On March 1, 2018, United States District Judge Paul A. Engelmayer (S.D.N.Y.) granted defendants’—Charter Communications, Inc. and Spectrum Management Holding Company, LLC (together, “Charter”)—motion to dismiss a patent infringement action brought by plaintiff Quantum Stream Inc. (“Quantum”).
On January 25, 2018, United States District Judge Alvin K. Hellerstein (S.D.N.Y.) denied plaintiff Serta Simmons Bedding, LLC’s (“Serta”) motion to dismiss defendant Casper Sleep Inc.’s (“Casper”) counterclaim and affirmative defense.
Judge Koeltl Agrees that “Access” to Confidential Information is Enough to Trigger a Prosecution Bar
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 Netburn Holds That a Motion for Reconsideration is Not a Vehicle for Taking a "Second Bite at the Apple"
On November 29, 2017, United States Magistrate Judge Sarah Netburn (S.D.N.Y.) denied plaintiff Seoul Viosys Co., Ltd.'s ("Seoul Viosys") motion for reconsideration of the Court's claim construction ruling.
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.
Judge Sweet Allows a Plaintiff to Amend Its Complaint More Than 2 Years After It Was Originally Filed
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”).
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