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Judge McMahon Sua Sponte Stays Case Until End of Year: “Enough really is enough.”

On August 12, 2021, United States District Court Colleen McMahon (S.D.N.Y.) denied Plaintiff GeigTech East Bay LLC’s (“GeigTech”) motions for a preliminary injunction and to dismiss Defendant Lutron Electronics Co., Inc.’s (“Lutron”) counterclaims, and sua sponte stayed the case until the end of the year pending post grant review of a related patent.

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Judge Chen Notes Split in Authority as to Whether Claim Construction is a Dispositive Pretrial Matter

On July 20, 2021, District Judge Pamela Chen (E.D.N.Y.) adopted, in its entirety, Judge Bulsara’s report and recommendation (“R&R”) in Sunscreen Mist Holdings, LLC v. SnappyScreen, Inc. (“Sunscreen Mist” and “SnappyScreen,” respectively) rejecting SnappyScreen’s argument that certain claim language in Sunscreen Mist’s patent is indefinite. We wrote about the R&R in an earlier post.

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You Can Keep Your Curtains: Judge Schofield Denies Preliminary Injunction

On May 26, 2021, United States District Judge Lorna G. Schofield (S.D.N.Y.) denied a preliminary injunction request from Plaintiffs Sure Fit Home Products, LLC, SF Home Décor, LLC, and Zahner Design Group, Ltd. (collectively, "Plaintiffs"). Plaintiffs allege that Defendant Maytex Mills, Inc. ("Defendant") infringes their design patent and trade dress by selling a hookless shower curtain.

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Judge Netburn Grants Transfer Venue Motion

On April 29, 2021, District Judge Sarah Netburn (S.D.N.Y.) granted defendant salesforce.com, Inc.’s ("Salesforce") motion for transfer of venue to the Northern District of California ("the NDCA")—where it is based—pursuant to 28 U.S.C. § 1404(a).

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Judge Oetken Rejects Fee Award Despite Plaintiff’s Failure to Prove Standing

On March 5, 2021, the Federal Circuit affirmed U.S. District Judge J. Paul Oetken’s (S.D.N.Y.) order dismissing the remaining claims of plaintiff Bobcar Media, LLC (“Bobcar”).  On March 30, 2021, Judge Oetken denied a motion for attorneys’ fees by defendant Aardvark Event Logistics, Inc. (“Aardvark”).

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Magistrate Judge Bulsara “Blocks” Indefiniteness Argument Against Sunscreen Dispensing Patent

On February 26, 2021, United States Magistrate Judge Sanket J. Bulsara (E.D.N.Y.) issued a claim construction ruling in Sunscreen Mist Holdings, LLC v. SnappyScreen, Inc. (“Sunscreen Mist” and “SnappyScreen” respectively) that Sunscreen Mist alleges infringement of U.S. Patent No. 6,918,897 (“the ’897 patent”), which relates to a vending machine that dispenses and sprays sunscreen lotion on customers. The parties presented the Court with only one disputed claim term: “means to store sunscreen lotion.”  The only question before the Court was whether the patent identified sufficient structure for storing sunscreen lotion.

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Magistrate Judge Reyes Recommends Dismissal of DJ Action Against Assignee That Never Owned The Patent-In-Suit

On February 9, 2021, United States Magistrate Judge Ramon E. Reyes, Jr. (E.D.N.Y.) recommended that Sell Below Cost USA LLC’s (“Sell Below”) DJ complaint against Blue Island Holding Group (US) Inc. (“Blue Island”) that United States design patent No. D854,106 S (the “’106 patent”) is invalid and not infringed be dismissed because Blue Island never actually owned the ’106 patent even though it was the assignee named on the patent’s face.

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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.

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A Case That Really “Stands Out” in a Crowd: Judge Abrams Awards Attorneys’ Fees Where Plaintiff Ignores Pleading Deficiencies For Three Months

On December 10, 2020, United States District Judge Ronnie Abrams (S.D.N.Y.) granted Oath Inc. (“Oath”) and Quora, Inc. (“Quora”)’s motions for attorneys’ fees under 35 U.S.C. § 285.  Section 285 permits courts to award reasonable attorneys’ fees to a prevailing party in exceptional cases.  The standard was met here, according to Judge Abrams, most particularly because Plaintiff NetSoc, LLC (“NetSoc”) ignored deficiencies in its pleading for roughly three months after being informed of errors therein.

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Judge Rakoff Sanctions Patentee for Sharing Confidential Documents with Counsel in Overseas Trade Secret Case

On December 7, 2020, United States District Court Judge Jed S. Rakoff (S.D.N.Y.) denied Plaintiff SIMO Holdings Inc.’s (“SIMO”) motion to use four confidential documents in a related trade secret dispute pending in Shenzhen, China, and instead imposed a $40,000 sanction on SIMO for disclosing the confidential documents to Chinese counsel.

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Speedfit’s Treadmill Patent “Runs Into” On-Sale Bar Invalidity Due to Collateral Estoppel Stemming from a Prior Litigation on a Different Patent

On September 21, 2020, District Judge Chen (E.D.N.Y.) entered an order granting Defendants Chapco Inc. and Samsara Fitness LLC’s motion for summary judgment of invalidity of Plaintiffs Speedfit LLC and Aurel Astilean’s U.S. Patent No. 8,690,738 (“the ’738 Patent”), which is directed to a motor-less, leg-powered treadmill. The Court also denied Defendants’ motion to strike Plaintiff Astilean’s affidavit (“the Astilean Affidavit”) in support of Plaintiffs’ response to the summary judgment motion.

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Judge Rakoff Refuses to “Ice” Diamond Patent Inequitable Conduct Allegations

On August 31, 2020, United States District Court Jed S. Rakoff denied plaintiffs Carnegie Institute of Washington and M7D Corporation (“Carnegie”)’s motion to dismiss the defendants’ counterclaims for inequitable conduct, holding that the allegations state with particularity a plausible claim.

The two patents-in-suit are directed to methods for growing synthetic diamonds, such as through chemical vapor deposition (“CVD”).  The defendants, Pure Grown Diamonds, Inc. and IIA Technologies, allege that U.S. Patent No. RE41, 189 (the “’189 Patent”) is unenforceable because the patentees intentionally deceived the Patent Office regarding the inventorship of the patent during reissuance.

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Judge Netburn Finds Complaint Doesn’t Need to Attach Photographs of Accused Exercise Devices To Adequately Plead Direct Infringement

On August 7, 2020, Magistrate Judge Sarah Netburn (S.D.N.Y.) recommended that Defendants’ Motion to Dismiss the Complaint of Plaintiff William Araujo (“Plaintiff”) for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6) be granted with respect to induced patent infringement, but denied with respect to the allegations of direct infringement.

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Judge Woods Zips Up Loose Ends and Readies Zipper Dispute For Trial

On July 30, 2020, U.S. District Judge Gregory H. Woods (S.D.N.Y.) ruled on a second round of summary judgment motions brought by defendant YKK Corp. and its affiliates (together, “YKK”) against plaintiffs Au New Haven, LLC and Trelleborg Coated Systems US, Inc. (together, “Plaintiffs”), once again readying the case for trial. 

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Judge Gardephe Adopts Judge Moses’ Recommendation Regarding Damages

On July 23, 2020, United States District Court Judge Paul G. Gardephe adopted in full the Report and Recommendation (“R&R”) of Magistrate Judge Barbara Moses. The procedural history of the case and analysis of Judge Moses’ report were discussed in an earlier post here. Judge Gardephe reviewed the R&R for clear error even though the parties waived their right to judicial review. Judge Gardephe agreed that the Defendant was subject to personal jurisdiction in the district because: 1) service of process was procedurally proper, 2) there was a statutory basis for personal jurisdiction, and 3) the exercise of personal jurisdiction comported with constitutional due process principles. He noted that Defendant was properly served under § 387(1)(b) of New Zealand’s Companies Act of 1933. 

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You Can’t Clasp That: Judge Schofield Finds No Infringement Under Doctrine of Equivalents Due To Prosecution History Estoppel

On July 16, 2020, United States District Court Judge Lorna G. Schofield granted summary judgment of non-infringement for Defendant Verizon Services Corp (“Verizon”). Pro se plaintiff Chikezie Ottah (“Ottah”) sued Verizon for patent infringement, alleging that Verizon’s Jotto Desk Universal Laptop Mount (“the Accused Product”) infringed U.S. Patent No. 7,152,840 (“the ’840 patent”).

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Judge Matsumoto Holds That “Very Small Side Load” Is Indefinite and That “Retention Element” Is a Means-Plus-Function Claim Limitation

On July 13, 2020, District Judge Matsumoto (E.D.N.Y.) entered a claim construction order construing several claim terms recited in Plaintiff Uni-Systems, LLC’s (“Plaintiff”) U.S. Patent Nos. 6,789,360 (“the ’9360 patent”) and 7,594,360 (“the ’4360 patent”), which relate to retractable roof design and are asserted against a number of defendants including the United States Tennis Association National Tennis Center (collectively, “Defendants”).

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    You’re Too Late: Judge Torres Finds Party Missed Deadline for Objecting to Award of Attorney’s Fees

    On June 22, 2020, United States District Court Judge Analisa Torres ruled that Plaintiff LCS Group, LLC (“LCS”) and its counsel, Stephen Lobbin, and Foundation Law Group LLP, were jointly and severally liable for attorney’s fees in the amount of $133,803.75 to Defendants Shire LLC, Shire Development LLC, Shire PLC, and Haug Partners LLP (collectively, “Defendants”). The Court ruled that LCS and its counsel also missed the deadline to object to the Magistrate Judge’s ruling on attorney’s fees because, instead of objecting to the ruling, Plaintiff improperly appealed to the Second Circuit Court of Appeals.

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    Judge Glasser Rules Patentee’s PTAB Arguments Against Standing Doom Breach of License Action

    On June 17, 2020, United States District Judge I. Leo Glasser (E.D.N.Y.) ruled on the parties’ objections to reports and recommendations issued by U.S. Magistrate Judge Stephen M. Gold, and ultimately granted a motion for summary judgment by defendant Mastercard International Inc. (“Mastercard”) on plaintiff Alexsam, Inc.’s (“Alexsam”) breach of patent license claims.

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    Joint Inventorship Claim for Online Dating Patent Ends in Heartbreak, Attorneys’ Fees Award

    After a series of procedurally complex twist and turns that resulted in an agreement by plaintiff to not oppose defendants’ motion for summary judgment, U.S. District Judge Paul A. Engelmayer (S.D.N.Y.) granted defendants Lori Cheek and Cheek’d Inc.’s motion for attorney fees under 35 U.S.C. § 285 and ruled that plaintiff’s counsel should pay.

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    What is Produced in the Southern District, Stays in the Southern District: Judge Rakoff Denies Plaintiff’s Requests to Use Documents In Chinese Proceeding

    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.

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    Judge Cote Reconsiders Dismissal and Reinstates Willfulness Allegations

    On April 30, 2020, Judge Cote granted reconsideration of her March 4 dismissal of Plaintiffs Signify North America Corp. and Signify Holding B.V.’s (“Signify”) allegations of willful infringement against Defendant Axis Lighting Inc. (“Axis”).

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    Judge Moses Recommends Awarding to Plaintiff Defendant's Profits Under 35 U.S.C. § 289 for Infringement of a Design Patent

    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.

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    Judge Matsumoto “Serves Up” Transfer Motions for Improper Venue in EDNY

    On April 7, 2020, U.S. District Judge Kiyo A. Matsumoto (EDNY) granted the motions to transfer for improper venue of two sets of defendants comprising the architects (“Rossetti”) and the engineers (“Morgan”) that designed and built the allegedly patent infringing retractable roof systems of the Arthur Ashe and Louis Armstrong tennis stadiums located in Queens, N.Y. as part of the National Tennis Center.

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    Mobile Marketing Vehicle Infringement Suit Runs Out of Gas

    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.

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    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”).

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    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.

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    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.”

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    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.

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    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.

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    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.

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    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.

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    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.

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    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.

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    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.

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    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").

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    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.

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    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.

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