Lewis "Lew" Popovski Patent Litigation Attorney Patterson Belknap

Lewis V. Popovski, Partner

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.

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

by Ryan M. Mott and Lewis V. Popovski on May 17, 2017

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”). 
 

Go

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

by Lewis V. Popovski on May 3, 2017

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.

Go

Judge Sweet Holds Invalidity and Non-Infringement Defenses Cannot Shield a Licensee's Breach of a Patent License

by Abhishek Bapna on March 27, 2017

On March 17, 2017, District Judge Robert Sweet (S.D.N.Y.) granted plaintiff Icahn School of Medicine at Mount Sinai's ("Mt. Sinai") motion to strike defendant Neurocrine Biosciences  ("Neurocrine") affirmative defenses of patent invalidity, non-infringement, and patent misuse, and to dismiss Neurocrine's parallel declaratory judgment counterclaims.

Go

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

by Hui Li and Lewis V. Popovski on February 7, 2017

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. 

Go

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

by Ryan M. Mott and Lewis V. Popovski on December 8, 2016

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. 

Go

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

by Abhishek Bapna and Lewis V. Popovski on October 27, 2016

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.

Go

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

by Hui Li and Lewis V. Popovski on October 7, 2016

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.”

Go

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

by Abhishek Bapna and Lewis V. Popovski on October 3, 2016

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.

Go

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

by Lewis V. Popovski and Abhishek Bapna on September 21, 2016

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”).

Go

No Way Out for Door Patent

by Lewis V. Popovski and Ryan M. Mott on September 16, 2016

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.

Go

Judge Forrest Provides Litigants Guidance on Applying Alice

by Lewis V. Popovski on August 9, 2016

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.

Go

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

by Lewis V. Popovski and Abhishek Bapna on August 4, 2016

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.

Go

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

by Lewis V. Popovski on July 25, 2016

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.  

Go

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

by Lewis V. Popovski and Abhishek Bapna on June 20, 2016

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.

Go

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

by Lewis V. Popovski on May 2, 2016

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.

Go

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

by Abhishek Bapna and Lewis V. Popovski on April 28, 2016

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.

Go

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

by Lewis V. Popovski and Ryan M. Mott on April 1, 2016

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.

Go

Expert Can’t Testify for Plaintiff After Consulting for Defendant

by Lewis V. Popovski on March 25, 2016

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”).  

Go

Patent Arithmetic: 2 x 473mL Is Greater Than 500mL

by Lewis V. Popovski on March 24, 2016

On March 15, 2016, District Judge Alison J. Nathan granted defendant Breckenridge Pharamceutical, Inc.’s (“Breckenridge”) motion for summary judgement of noninfringement of plaintiff Braintree Laboratories Inc.’s (“Braintree”) U.S. Patent No. 6,946,149 (the “‘149 patent”).  Breckenridge had sought FDA approval of a generic version of Braintree’s SUPREP colon cleansing solution, which Braintree alleged infringed the ‘149 patent.

Go

Pleading Merely that Defendant Had Knowledge of the Patent is Insufficient to Support a Willful Infringement Claim

by Lewis V. Popovski and Abhishek Bapna on March 22, 2016

On March 16, 2016, District Judge Shira A. Scheindlin (S.D.N.Y.) granted in part defendant Lowe’s Companies, Inc. (“Lowe’s”)’s motion to dismiss plaintiff Iron Gate Security, Inc. (“Iron Gate”)’s Complaint. Iron Gate commenced the action on November 11, 2015, alleging direct infringement, induced infringement, contributory infringement, and willful infringement, by Lowe’s, of U.S. Patent No. 6,288,641.

Go

Default Leads to Broad Injunction Against Infringement

by Lewis V. Popovski and Ryan M. Mott on March 21, 2016

On March 8, 2016, Magistrate Judge Cheryl L. Pollak recommended to grant in part plaintiff JAB Distributors, LLC's ("JAB's") motion for a default judgment against defendant Home Linen Collections ("HLC").

Go

S.D.N.Y. Holds That There is No Presumption of § 101 Patent-Eligibility

by Lewis V. Popovski and Abhishek Bapna on March 1, 2016

On February 22, 2016, District Judge Shira A. Scheindlin (S.D.N.Y.) granted counterclaim-defendants WPP PLC’s and its subsidiaries’ (collectively, “the WPP Companies”) motion for summary judgment of patent invalidity under 35 U.S.C. § 101.

Go

Judge Can’t Find Infringement in Camouflage Shoe-Sole Patent Case

by Lewis V. Popovski and Ryan M. Mott on February 29, 2016

On February 19, 2016, District Judge Paul A. Crotty granted defendant Attilio Giusti Leombruni S.P.A.’s (“AGL’s”) motion to dismiss the patent infringement claim of plaintiff Lori Silverman and her company Lsil. Col. (“Plaintiffs”).

Go

“Substantial” Is Precise Enough but Means-Plus-Function Claims Need More Specificity

by Lewis V. Popovski on January 21, 2016

On January 4, 2016, District Judge Shira A. Scheindlin held that several phrases using the term “substantial” were sufficiently definite and did not require construction, while finding that several of plaintiff Verint Systems Inc.’s (“Verint”) claims invoked means-plus-function (“MPF”) claiming and were invalid for indefiniteness. 

Go

“Pulsed” Means “On/Off”, Not “High/Low”

by Lewis V. Popovski and Ryan M. Mott on January 11, 2016

On December 22, 2015, District Judge Nelson D. Roman denied plaintiff Radiancy Inc.’s (“Radiancy”) motion for reconsideration of the Court’s construction of the claim term “pulsed heating.” The Court had previously construed “pulse heating of said one or more heat elements” to mean “(1) periodic switching on and off of current to said one or more heat elements or (2) generation of pulses of heat by other means (e.g., by mechanical means).” 

Go

Discovery of Foreign Profits and Sales of Accused Products Found Relevant

by Lewis V. Popovski and Abhishek Bapna on December 1, 2015

On November 25, 2015, District Judge Laura Swain ordered defendant Bio-Rad to produce information related to foreign sales and profits of its Next Generation Chromatography (“NGC”) protein purification devices, overturning Magistrate Judge Netburn’s previous order that Bio-Rad need not produce such information.

Go

Sale to Corporate Affiliate Sufficient to Exhaust Patent Rights

by Lewis V. Popovski and Ryan M. Mott on November 23, 2015

On November 19, 2015, District Judge Denise Cote granted plaintiffs Canon Inc.’s and Canon U.S.A., Inc.’s (“Canon USA”) motion for summary judgment, holding that (i) because Canon Inc. was retroactively licensed under the asserted patents for certain products (“Océ printers”), it could similarly grant a retroactive sublicense for use of this technology to its corporate subsidiary Canon USA; and (ii) Canon USA’s sale of the Océ printers to its corporate affiliate Canon Solutions America, Inc. (“CSA”) exhausted the defendants’ patent rights, rendering CSA’s offer to sell the Océ printers a non-infringing act.  

Go