NY Patent Decisions Blog

Visit the Full 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.

Judge Oetken Rules Peloton Can Ride Away from Invalid Patent

On April 2, 2020, Judge Oetken granted summary judgment of anticipation and resolved a variety of contract and tort claims in a long-running feud between VR Optics (“VRO”), Peloton Interactive, Inc. (“Peloton”), and Peloton’s design consultant Villency Design Group LLC (“VDG”).

Go

Judge McMahon’s Motions in Limine Rulings Clear Way for Ferring v. Serenity Trial

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.

Go

Judge Woods Finds Dating App Patent Doesn’t “Match Up” With Section 101

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.”

Go

As Trial Concludes, Judge Hellerstein Issues, then Reconsiders, Patent Marking Ruling

As trial in Kaufman v. Microsoft Corporation wound down yesterday, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) granted Defendant Microsoft Corporation (“Microsoft”)’s motion to limit damages to those after the filing of the complaint under 35 U.S.C. § 287(a) because Plaintiff failed to mark a website offering to sell his patented product with the patent number of the patent-in-suit.  However, later that day, the Court granted Plaintiff’s motion for reconsideration, and permitted Plaintiff to seek pre-suit damages.

Go

Judge Hellerstein Holds Post-Suit Knowledge of Patent Inadequate to Survive Summary Judgment of No Willful Infringement

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.

Go

Judge Hellerstein Allows Damages Expert Testimony as “Posture” Isn’t Everything

On January 14, 2020, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) denied Plaintiff Michael Philip Kaufman’s motion to exclude testimony from Defendant Microsoft Corporation (“Microsoft”)’s damages expert, finding that Plaintiff’s objections would be more properly raised during cross-examination.

Go

Judge Moses Holds Awards of More Than $1 are Not “Nominal”

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.

Go

Judge Abrams Analyzes Application of Collateral Estoppel Doctrine Even Though Parties Didn’t Dispute It

On January 13, 2020, District Judge Ronnie Abrams (S.D.N.Y.) granted Defendant Chegg Inc.'s ("Chegg") motion to dismiss Plaintiff NetSoc, LLC's ("NetSoc") complaint on the ground that NetSoc is collaterally estopped from pursuing its claims of infringement of U.S. Patent No. 9,978,107 after a decision by the Northern District of Texas finding the patent invalid under 35 U.S.C. § 101.

Go

Plaintiff’s Filing of Action Outside of State of Residence Supports Transfer of Action

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.

Go

Judge Castel Holds that Contemporaneous Documents Speak Louder than Words

On September 27, 2019, Judge P. Kevin Castel (S.D.N.Y) concluded that Serenity Pharmaceuticals Corporation (“Serenity”) and Reprise Biopharmaceutics, LLC (“Reprise”) had failed to prove by clear and convincing evidence that Dr. Seymour Fein, a former consultant for Ferring B.V., Ferring International Center S.A., and Ferring Pharmaceuticals Inc. (collectively, “Ferring”), was a co-inventor of Ferring’s U.S. Patent Nos. 7,560,429 (“the ’429 patent”) and 7,947,654 (“the ’654 patent”).  The inventorship issue originally arose in the underlying patent infringement suit— as we’ve previously covered here.

Go

Judge Netburn Finds Defendant That Won Partial Summary Judgment Is a "Prevailing Party" for Purposes of Attorneys' Fees

In her September 2018 summary judgment decision, U.S. District Judge Alison J. Nathan (S.D.N.Y.) found that one of seven patents asserted by Plaintiff Seoul Viosys Co. ("SVC") was invalid, and that SVC was not entitled to a remedy for infringement of another asserted patent.  However, Judge Nathan found that the five remaining patents were valid. Plaintiff's claims related to those five patents were subsequently resolved by stipulation with Defendant P3 International Corp. ("P3").

Go

Lights Out: Judge Carter Grants Motion to Dismiss For Improper Venue

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.

Go

Judge Cote Dismisses Complaint that Doesn’t Adequately Allege Infringement of an Abstract Idea

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.

Go

Judge Rakoff Awards Damages Based On Plaintiff’s Estimate of International Sales

SIMO Holding Inc. ("SIMO") sued Defendants uCloudlink Network Technology Ltd. and uCloudlink (America), Ltd. (together, "uCloudlink") in June 2018, alleging infringement of SIMO's U.S. Patent No. 9,736,789 by a line of mobile WiFi hotspot devices and a mobile "world phone" sold by uCloudlink.  In April 2019, Judge Jed S. Rakoff (S.D.N.Y.) granted SIMO's motion for summary judgment of infringement.  At trial, a jury found that uCloudlink willfully infringed and awarded approximately $2.2 million in compensatory damages.  The court thereafter applied a 30% damages enhancement for willfulness.

Go

Licensee May Bring Infringement Suit, For Now

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.

Go

Plaintiff's Infringement Contentions Proved Anticipation of Its Own Patent

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").

Go

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

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.

Go

Judge Daniels Settles an “Over the Top” Dispute Finding “Upper” Means “Above”

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.

Go

Buried Broadband and Single Layer Capacitor Competitors Head to Trial

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.

Go

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

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.

Go

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.

Go

Judge Woods Transfers Case to Where the Witnesses and Documents Are Located

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).

Go

Judge McMahon Holds that Ferring’s Arguments Do Not Undermine Patent Examiner

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. 

Go

Judge Rakoff Rules "And" can mean "Or"

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. 

Go

Judge Cote Interprets Covenant Not to Sue as Broader Than License Grant Within the Same Contract

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").

Go

Water-Resistant Zipper Patent Also Resists Invalidity Arguments and Survives Summary Judgment

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.

Go

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.

Go

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.

Go

Judge Ramos Finds Notice of Infringement Letter to Reseller Isn’t so Bad

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.

Go

Judge Sweet Holds “Transmucosal” Delivery Does Not Require Mucosal Membrane Absorption

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”).

Go

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.

Go

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.

Go

Judge Oetken Rules Patent Owner Has Burden to Prove Assignments of Patents to Show Standing

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.

Go

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.

Go

Claims for Analyzing Twitter Posts Held Unpatentable by Judge Castel

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.

Go

PTAB Petitions Do Not “Arise Out Of” Licensing Agreement

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. 

Go

Judge McMahon Denies Unsubstantiated Bid for Preliminary Injunction

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.

Go

Changing the Wire in Your Dental Braces: Prosecution History Narrows Meaning of “Movable”

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.”

Go

Judge Koeltl Holds Facebook Systems are Not “Main Stream”

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.[1]  Plaintiff Mirror Worlds Techs., LLC (“Mirror Worlds”) owns the three patents.

Go

Judge Furman Stays Case Involving Possible Direct Competitors Pending IPR

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.

Go