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 Brown Grants Summary Judgment Where Plaintiffs Could Not Find Any Infringing Products

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.

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Judge Román Holds Storage Units Don’t Hold Water for Patent Venue Purposes

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). 

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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.

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Judge Oetken Lifts Stay on 1 of 5 IPR’ed Patents

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. 

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Judge Oetken “Shelves” Case For Lack of Venue

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].”

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Judge Matsumoto Declines to Hear Invalidity Arguments on Patent Previously Cancelled in IPR

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.

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Successful Section 101 Motion to Dismiss: Digital Ad Delivery Is Abstract Concept

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”).

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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.

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Judge Matsumoto Cuts Plaintiff a Little “Slack” in 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.

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Judge Pauley Rules “About” Means “Approximately”, Maybe!

On September 19, 2017, United States District Court Judge William H. Pauley (S.D.N.Y.) issued a claim construction ruling on the word “about” across two patents directed to topical compositions containing naftifine.  Both the patent holder (“Sebela”) and the alleged infringer (“Taro”) sought claim construction for that term in the phrase “about 0.17 wt% trolamine.”  This phrase was in claim 17 of U.S. Patent 8,778,365 (“the ’365 patent”) and claim 21 of U.S. Patent 9,161,914 (“the ’914 patent”). 

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When Does “On” Mean “On”? Judge Netburn Holds That It Depends.

On September 11, 2017, Magistrate Judge Sarah Netburn (S.D.N.Y.) issued a claim construction ruling on, among other things, the construction of the word “on” across four different patents directed to semiconductor lasers.  In three of the four patents, the court concluded that the term on means “‘directly on or directly connected to the other element or layer, or intervening elements or layers may be present.’”

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Judge Carter Rules “Customers” Don’t Fit Within the “Customer Exception”

RegenLab USA LLC (“RegenLab”) is the exclusive licensee of U.S. Patent 8,529,957 (“the ’957 patent”) entitled “Cell Preparations for Extemporaneous Use, Useful for Healing and Rejuvenation In Vivo.” RegenLab , who markets and distributes products based on the ’957 patent, accused Estar Technologies Ltd. (“Estar”), a manufacturer of an allegedly infringing product, and Eclipse Aesthetics LLC (“Eclipse”) and Healeon Medical Inc. (“Healeon”) (collectively, “Movants”), who distribute the accused product, of direct and indirect infringement of the ’957 patent.  In a separate and later filed lawsuit, RegenLab also accused Movant’s customers of infringement.  Additionally, RegenLab sent various “improper” communications to Movant’s non-party customers.

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Judge Oetken Construes Twenty-Nine Claim Terms in “Relatively Large” Markman Opinion

On August 10, 2017, District Judge Paul Oetken (S.D.N.Y.) construed 29 claim terms in a dispute between Defendant Comcast Corporation, et al. (“Comcast”) and Plaintiff Rovi Guides, Inc. and its subsidiaries (“Rovi”).  The claim terms were construed pursuant to the ongoing litigation between Comcast on Rovi concerning the alleged infringement by Comcast of six patents, U.S. Patent Nos. 8,713,595, 9,172,987, 8,433,696, 7,895,218, 8,122,034, and 7,966,864 (the “’595,” “’987,” “’696,” “’218,” “’034,” and “’864” patents, respectively).  The patents covered “a number of different fields, including interactive program guides (“IPGs”), remote control, and content searching.” 
 

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Judge Cote Rules Claim Preamble is Limiting and Not So “Elastic” as to Be Indefinite

On August 4, 2017, District Judge Denise Cote issued a claim construction order that held the preamble of claim 1 of Lumos Technology Co., Ltd.'s ("Lumos") U.S. Patent No. 8,746,906 ("the '906 patent") is limiting and that a person of ordinary skill would know what "elastic material" means, and thus the relative phrase does not render claim 5 indefinite.

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Judge Oetken sua sponte Stays Case Pending Ex Parte Reexamination after Three Previous Denials

On August 2, 2017, Judge J. Paul Oetken (S.D.N.Y.) denied Plaintiff Infinity Headwear & Apparel, LLC’s (“Infinity”) motion for summary judgment as to patent infringement, false patent marking and false advertising and denied Defendant Franco & Sons, Inc.’s (“Franco”) motions objecting to Magistrate Judge Ellis’s orders.  However, Judge Oetken sua sponte stayed the patent infringement claim in view of the Patent Trial and Appeal Board (“PTAB”)’s recent decision affirming the ex parte reexamination rejection of the asserted claims.

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Be Careful What You Wish For, You Just Might Get It: Reconsidering When To Ask for Reconsideration

On July 12, 2017, District Judge Alvin K. Hellerstein granted a motion for reconsideration by Intellectual Ventures II L.L.C. (“IV”) of the Court’s prior Order of April 28, 2017.  At the time of the motion, the only patent at issue in the case was U.S. Patent No. 7,634,666 (“the ’666 Patent”).  The Court had originally denied JP Morgan Chase & Co.’s (“JPMC’s”) motion for summary judgement on noninfringement because while the accused devices didn’t actually infringe, there was a material issue of fact on “ whether the Crypto Cards are capable of infringing on the ’666 Patent.” (emphasis added).  IV asked the court to reconsider whether the accused devices actually infringed.

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Forum Selection Clause Not Triggered Based on Statements Made in Another Forum

On May 15, 2017, District Judge Paul Oetken (S.D.N.Y.) denied the motion of Comcast Corporation, et al. (“Comcast”) for reconsideration of the Court’s prior Order dated December 14, 2016.  The Court had earlier denied Comcast’s motion for a preliminary injunction seeking to enjoin Rovi Corporation, Rovi Guides, Inc., Rovi Technologies Corp., and Veveo, Inc. (“Rovi”) from prosecuting its patent infringement claims against Comcast before the International Trade Commission (“ITC”). 
 

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One Out of Three Isn’t Bad, But Case Moves from New York to Florida Anyway

On April 26, 2017, District Judge Gregory H. Woods (S.D.N.Y.) found that one of the three defendants was subject to personal jurisdiction in New York and denied a motion to dismiss for lack of personal jurisdiction, but granted defendants’ motion to transfer venue from the Southern District of New York to the Middle District of Florida.

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Judge Swain Finds a “Book” by Any Other Cover is Still Not a “Camera”

Pro se Plaintiff Chikezie Ottah (“Plaintiff”) sued fifteen automobile companies for patent infringement alleging that defendants’ car mounted cameras infringe U.S. Patent No. 7,152,840 (“the ’840 patent”) entitled “Book Holder.”  Five of the defendants moved to dismiss Plaintiff’s Second Amended Complaint for failure to state a claim and another five defendants moved for summary judgment of non-infringement.  On February 1, 2017, Judge Laura Taylor Swain (S.D.N.Y.) granted both motions.

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Judge Forrest Vacates Judge Scheindlin’s Prior Decision Invalidating TiVo Patents Under § 101

On November 29, 2016, District Judge Katherine B. Forrest (S.D.N.Y.) vacated the February 22, 2016 decision of Judge Shira A. Scheindlin, which had granted a motion to dismiss, brought by alleged infringers TNS Media Research, LLC and  Cavendish Square Holding B.V. (collectively, the declaratory judgment “Plaintiffs”), based on subject matter ineligibility of the asserted patents under 35 U.S.C. § 101. 

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Judge Nathan Grants Stay Pending Appeal of PTAB’s Inter Partes Review Decisions

On October 18, District Judge Alison J. Nathan (S.D.N.Y.) granted defendants Verizon Communications Inc.’s, Verizon Services Corp.’s, Verizon Business Network Services Inc.’s, and Cellco Partnership’s (collectively, “Verizon”) motion to stay the litigation until resolution of a consolidated appeal, pending before the United States Court of Appeals for the Federal Circuit, from two decisions of the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) following inter partes review of claims in two of the patents-in-suit.

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Judge Oetken Holds that Amendments Made During Ex Parte Reexamination Are not Effective Until Grant of Reissue Patent

On September 26, 2016, District Judge Paul Oetken (S.D.N.Y.) denied defendant Jay Franco & Sons’ (“Franco”) motion to dismiss, granted plaintiff Infinity Headwear & Apparel’s (“Infinity”) motion for leave to amend to assert additional claims, and laid out the Court’s construction of the disputed claim terms.  Infinity alleged that Franco infringed claims 1-2, 6, 8, 10-11, 15-16 and 18-20 of U.S. patent No. 8,864,544 (“the ‘544 patent”), entitled “Hooded Blanket and Stuffed Toy Combination.”

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Judge Woods Holds That Assignment of a Patent is Not an Assignment of an “Interest” Under a License to the Patent

On September 28, 2016, District Judge Gregory Woods (S.D.N.Y.) denied defendant YKK Corp.’s (“YKK”) motion to dismiss the suit, in which plaintiffs Au New Haven, LLC (“Au New Haven”) and Trelleborg Coated Systems US, Inc. (“Trelleborg”) (collectively, “Plaintiffs”) allege infringement of U.S. Patent No. 6,105,214 (“the ‘214 patent”) and breach of the license agreement between the inventor and YKK.

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Judge Oetken Holds That Forum-Selection Clause in License Agreement Does Not Trump First-to-File Rule Altogether

On September 16, 2016, District Judge J. Paul Oetken (S.D.N.Y.) denied plaintiff Comcast Corp.’s (“Comcast”) motion for a preliminary injunction seeking to enjoin defendant Rovi Corp. (“Rovi”) from continuing to litigate its patent infringement actions against Comcast in the Eastern District of Texas (“EDTX”) and the International Trade Commission (“ITC”).

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No Way Out for Door Patent

On September 12, 2016, District Judge John G. Koeltl (S.D.N.Y.) granted the defendants’ motions to dismiss for failure to state claim of patent infringement under Federal Rule of Civil Procedure (“FRCP”) 12(b)(6).  Claims other than patent infringement remain in the case.

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Judge Forrest Provides Litigants Guidance on Applying Alice

On August 3, 2016, S.D.N.Y. District Judge Katherine B. Forrest denied Defendant Lowe’s Companies, Inc. (“Lowe’s”) motion to dismiss Iron Gate Security, Inc.’s (“Iron Gate”) patent infringement claim.

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Judge Cote Finds Initiating Lawsuits to Obtain Settlements Rather Than a Determination on the Merits is Not an Abuse of Process

On July 28, 2016, District Judge Denise Cote (S.D.N.Y.) granted defendants AlphaCap Ventures, LLC’s, a non-practicing entity, and Richard Juarez’s (collectively, “AlphaCap”) motion to dismiss plaintiff Gust, Inc.’s (“Gust”) allegations of (1) attempted monopolization under the Sherman Act; (2) patent misuse; and (3) abuse of process, stemming from the filing of patent infringement lawsuits in Texas.

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Judge McMahon Dismisses Case Because Agreement that Inventor “will assign” Doesn’t Mean “did assign”

On June 14, 2016, S.D.N.Y. District Judge Colleen McMahon granted defendants HTC Corporation, HTC America, Inc., Blackberry Limited, Blackberry Corporation, and Motorola Mobility LLC’s (collectively “Defendants”) motion to dismiss with prejudice a patent infringement complaint filed by plaintiff Advanced Video Technologies LLC (“AVT”) because AVT didn’t  join all “necessary” parties.  

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Judge Briccetti Stays Patent Case Against a Customer Pending Resolution of Lawsuit Against Supplier

On June 3, 2016, District Judge Vincent L. Briccetti (S.D.N.Y.) stayed  a patent infringement action brought by plaintiff Marine Travelift (“Marine”) against defendant K. Graefe & Sons Corp. (“Graefe”), pending the resolution of patent litigation between Marine and ASCOM in the United States District Court for the Eastern District of Wisconsin. Marine’s infringement allegations against Graefe were based on Graefe’s purchase of equipment from ASCOM, and both cases involved Marine’s allegations of infringement of its U.S. Patent No. 8,215,441 (“the ’441 patent”). By the time Marine filed suit against Graefe, the case against ASCOM had already reached the summary judgment stage.

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Judge Griesa Grants Endo an Injunction Against Generic Manufacturers of Opioid Opana ER

On April 29, 2016, S.D.N.Y. District Judge Thomas P. Griesa granted  Defendants Actavis, Inc., Actavis South Atlantic LLC (together “Actavis”) and Roxane Laboratories, Inc.'s motion to correct the court’s August 14, 2015 judgment by ruling that Endo was not entitled to relief because its patents had not issued at the time Actavis and Roxane filed their ANDAs.  The court held that it would not alter Actavis and Roxane’s ANDA filing date but would still enjoin them from making or selling their generic products until Endo’s patents expire.

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Judge Rakoff Holds a 3-D “Magic Trick” Implemented With Software Is Not Equivalent to One Implemented With Hardware

On April 24, 2016, District Judge Jed S. Rakoff (S.D.N.Y.) ruled  that defendants Nintendo Co., Ltd. and Nintendo of America, Inc.'s (collectively, “Nintendo”)’s 3DS pocket gaming console does not infringe Tomita Technologies USA, LLC (“Tomita”)’s U.S. Patent No. 7,417,664 (“the ’664 patent”) either literally or under the doctrine of equivalents.

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Judge Bianco Holds EasyWeb’s “Publishing Patent” Is Not Infringed Even Though It Broadly Claims an Abstract Idea

On March 30, 2016, District Court Judge Joseph F. Bianco granted defendant Twitter Inc.'s ("Twitter") motions for summary judgment of invalidity and non-infringement against plaintiff EasyWeb Innovations, LLC ("EasyWeb"), holding that EasyWeb's asserted patents (the "patents-in-suit") were not directed to eligible subject matter under 35 U.S.C. § 101 and did not cover Twitter's accused technology.

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Expert Can’t Testify for Plaintiff After Consulting for Defendant

On March 22, 2016, E.D.N.Y. District Judge Brian M. Cogan granted defendant Clorox Co.’s motion to disqualify plaintiff Auto-Kaps LLC’s expert and strike his affidavit from its summary judgment opposition.  Auto-Kaps alleged that Clorox’s “Smart Tube” bottle infringes U.S. Patent No. 7,490,743 (the “‘743 patent”).  

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