NY Patent Decisions Blog

Judge Schofield Rejects Application of Rare Equitable Estoppel Defense

On February 9, 2021, District Judge Lorna Schofield (S.D.N.Y.) denied defendant Google LLC’s motion for summary judgment on the defense of equitable estoppel and granted plaintiff Kewazinga Corp.’s cross-motion for summary judgment that equitable estoppel does not apply.

This case involves three patents on methods and systems that utilize cameras to achieve “navigable telepresence” (collectively, the “Kewazinga Patents”). The technology allows for remote, seamless viewing of an environment. The Kewazinga Patents are being asserted against Google Maps Street View feature.

Kewazinga has previously sued Google in 2013 for infringement of two of the three Kewazinga Patents. The parties engaged in settlement discussion for some time after which  Google moved to dismiss the complaint because it had not been timely served with the complaint. Kewazinga did not oppose and responded that it had "no intention" of serving Google while they were engaged in settlement discussions. Per the parties’ agreement, the action was dismissed without prejudice in November 2013.

For its equitable estoppel defense, Google was required to prove that the only possible inference to be drawn from the evidence is that Kewazinga would not pursue infringement claims against Google as to the Kewazinga Patents. Google asserted that Kewazinga engaged in misleading conduct by abandoning its 2013 action and remaining silent for over six years. The court, however, ruled that Google had not met its burden of proof. The court’s ruling was premised on its finding that the six years of silence that followed the dismissal of the 2013 action was not evidence of misleading conduct because “Plaintiff clearly communicated its belief that Defendant infringed the [two Kewazinga Patents] and emphasized that dismissal . . . was ‘without prejudice.’”

Case: Kewazinga Corp. v. Google LLC, No. 20-cv-1106, Dkt. No. 117 (S.D.N.Y. Feb. 9, 2021).