Lewis V. Popovski, Partner

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] 

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 April 21, 2020, Magistrate Judge Barbara Moses (S.D.N.Y.) issued a recommendation that Plaintiff Evriholder Products LLC (“Evriholder”) be awarded: (1) damages under 35 U.S.C. § 289 for infringement of U.S. Patent No. D524,612 ("the '612 patent") by Defendant Simply LBS Ltd. Co. (“Simply LBS”); (2) prejudgment interest; (3) costs; and (4) a permanent injunction forbidding infringement against a default judgment defendant.

On April 6, 2020, U.S. District Judge J. Paul Oetken (S.D.N.Y.) granted defendant Aardvark Event Logistics, Inc’s motions to exclude plaintiff Bobcar Media, LLC’s expert testimony and for summary judgment, dismissing all of Bobcar’s remaining claims.

The years-long dispute may finally be headed for trial between Ferring Pharmaceuticals, Inc. and its affiliates, Serenity Pharmaceuticals, LLC, and Reprise Biopharmaceutics, LLC over patents claiming a sublingual application of desmopressin, a drug used to treat symptoms of diabetes insipidus, including frequent nighttime urination (“nocturia”).  On March 11, 2020, U.S. District Judge Colleen McMahon (S.D.N.Y.) ruled on three motions in limine filed by defendants and counterclaimants Serenity and Reprise.

On March 6, 2020, United States District Court Judge Gregory H. Woods (S.D.N.Y.) granted Defendant Humor Rainbow Inc.’s (“Humor”) motion to dismiss. The Court found that the asserted claim of U.S. Patent 6,685,479 (“the ’479 patent”) was invalid under 35 U.S.C. § 101 as directed to “the abstract idea of a matchmaking algorithm.”

On January 22, 2020, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) denied Defendant Microsoft Corporation (“Microsoft”)’s motion for summary judgment as to non-infringement, but granted Microsoft’s motion as to willful infringement, holding that willfulness should not go to the jury without record evidence of pre-suit knowledge of the patent-in-suit.

Judge Paul G. Gardephe recently issued an Order of Default against Defendant Deep Blue Health New Zealand Ltd. (“Deep Blue Health”). Deep Blue Health had been accused of patent infringement by Plaintiff American Infertility of New York, P.C. (“American Infertility”), yet never defended the litigation. American Infertility sought compensatory damages of $10,000, attorneys’ fees of $24,250, consulting expenses of $19,250, and costs of $4,272.60. On December 30, 2019, Magistrate Judge Barbara Moses (S.D.N.Y.) recommended to Judge Gardephe that American Infertility be awarded $4,273.60 from Deep Blue Health, representative of the $4,272.60 of costs and only $1 of compensatory damages.

On January 14, 2020, District Judge Ronnie Abrams (S.D.N.Y.) granted Defendant LinkedIn Corp.'s ("LinkedIn") motion, pursuant to 28 U.S.C. § 1404(a), to transfer to the Northern District of California a patent infringement action brought against it by Plaintiff NetSoc, LLC's ("NetSoc"). Notably, the Court found relevant the fact that NetSoc is based in Texas and thus already chose to litigate in a forum that requires travel and increased expenses as well as the fact that it has not reported transacting business in New York.

On October 2, 2019, District Judge Ronnie Abrams (S.D.N.Y.) granted Defendant Quora Inc.’s (“Quora”) motion to transfer the case to the Northern District of California.

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 October 2, 2019, District Judge Denise Cote (S.D.N.Y.) granted Defendant Green Dot Corporation's ("Green Dot") motion to dismiss Plaintiff Western Express Bancshares, Inc.'s ("Western Express") on the grounds that the complaint fails to plead facts sufficient to state a plausible claim of patent infringement and that the patent claims patent-ineligible subject matter under 35 U.S.C. § 101.

On September 19, 2019, U.S. District Judge LaShann DeArcy Hall denied an appeal by the defendant in a litigation to correct the inventorship of patents of rulings by Magistrate Judges Gary R. Brown and Peggy Kuo that the defendant had waived the attorney-client privilege as to certain disputed communications.

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 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.

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 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 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 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 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.

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 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 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.