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.
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.
Judge Hellerstein Upholds the Sufficiency of a Complaint that Alleges "Any Implementation" of a Standard is Infringed by Components that Comply with that Standard
On April 23, 2019, United States District Judge Alvin Hellerstein (S.D.N.Y.) denied Defendant Dell Inc.'s motion to dismiss Data Technologies' amended complaint for failure to state a claim pursuant to Rule 12(b)(6).
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").
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.
Use it or Lose It: Judge Cote Denies Motion for Sanctions as Untimely
On April 1, 2019, United States District Judge Denise Cote (S.D.N.Y.) denied Plaintiff Wine Enthusiast, Inc.'s motion for sanctions against Defendant Vinotemp for filing an allegedly frivolous counterclaim of design patent infringement.
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.
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.
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.
You Can’t Use That Now: Judge Matsumoto Estops Defendant from Using Prior Art It Could Have Used During IPR
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).
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”).
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.
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.
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.
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.
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.
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.
Magistrate Judge Pollak Recommends Granting Motion to Stay Pending Inter Partes Review
On September 12, 2018, Magistrate Judge Cheryl Pollak issued a report recommending that defendants Quest USA Corp.'s and Isaac Srour's (collectively, "Defendants") motion for a stay pending inter partes review ("IPR") be granted.
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.
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.”
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.
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.
Judge Engelmayer Makes a “Curtain Call”
That is, Judge Engelmayer makes a call on the meaning of certain shower curtain claims. On August 9, 2018, United States District Judge Paul Engelmayer (S.D.N.Y.) issued a decision construing 14 claim terms across three patents directed to shower curtains.
Judge Cote Ices Claim That Refrigerator Rack Infringes Design Patent
On July 19, 2018, United States District Judge Denise Cote (S.D.N.Y.) granted Plaintiff Wine Enthusiast, Inc.'s Rule 12(b)(6) motion to dismiss counterclaims by Defendant Vinotemp International Corp. ("Vinotemp") for infringement of U.S. Design Patent No. D711,936 (the "D936 Patent") but allowed Vinotemp’s trade dress claim in a wine refrigerator to go forward.
Judge Sweet Holds Knowledge of Patent at Issue Was Not “Acquired” During an Acquisition of One Who Knew
On July 18, 2018, Judge Sweet granted defendants Daktronics, Inc.'s and Daktronics Hoist, Inc.'s (collectively, "Daktronics") motion for summary judgment on the issue of willful infringement. As we wrote in a previous post, more than two years after plaintiff Olaf Sööt Design, LLC ("OSD") filed its complaint, Judge Sweet granted OSD leave to amend its complaint to add the willful infringement claim.
Judge Broderick Denies Motion to Dismiss in Virtual Manicure Case
On July 18, 2018, United States District Judge Vernon S. Broderick (S.D.N.Y.) denied a motion by defendant Coty Inc. (“Coty”) to dismiss a patent infringement suit brought by plaintiff Lennon Image Technologies, LLC (“Lennon”).
Judge Swain Finds Allegations in Customer Suits Support Supplier’s DJ Jurisdiction Action
On July 13, 2018, United States District Judge Laura Taylor Swain (S.D.N.Y.) granted a motion by Plaintiff— BroadSign International, LLC ("BroadSign") —for leave to file a Second Amended Complaint against Defendant T-Rex Property AB ("T-Rex"), seeking, inter alia, declaratory judgments of noninfringement and invalidity of U.S. Patent No. RE39,470, U.S. Patent No. 7,382,334, and U.S. Patent No. 6,430,603 (collectively, the "Patents-in-Suit").
Judge Pollak Finds 45 Days Is Not Untimely for Supplemental Infringement Contentions
On June 7, 2018, United States Magistrate Judge Cheryl L. Pollak (E.D.N.Y.) denied a motion by defendants—Quest USA Corp. (“Quest”) and Isaac Srour—to strike supplemental infringement contentions submitted by plaintiff PopSockets LLC (“PopSockets”).
Judge Brown Grants Summary Judgment Where Plaintiffs Could Not Find Any Infringing Products
On May 30, 2018, United States Magistrate Judge Gary Brown (E.D.N.Y.) granted defendants Envirocare Technologies International, Ltd.'s, Envirocare Technologies, LLC's, and Steel City Vacuum Company's motion for summary judgment based on plaintiffs Nationwide Sales and Services, Inc.'s and Imig, Inc.'s failure to provide patent infringement claim charts, as required by both the local patent rules and the discovery schedule stipulated by the parties.
Judge Hellerstein Holds SDNY Local Patent Rules Cannot Change the Pleading Standard Under Iqbal/Twombly
On May 18, 2018, United States District Judge Alvin K. Hellerstein granted in part and denied in part Defendant Microsoft Corporation (“Microsoft”)’s motion to dismiss Holotouch, Inc. (“Holotouch”)’s complaint. Microsoft moved to dismiss on the grounds: 1) that the allegations of direct infringement in the complaint were insufficient to state a plausible claim of action; and 2) that one of the two asserted patents had expired long before the complaint was filed.
Judge Román Holds Storage Units Don’t Hold Water for Patent Venue Purposes
On May 24, 2018, Judge Nelson S. Román granted Defendant United States Endoscopy Group, Inc.’s (“Defendant”) Motion to Dismiss for Improper Venue pursuant to Federal Rule of Civil Procedure 12(b)(3). On August 13, 2013, Plaintiffs CDx Diagnostic, Inc., Shared Medical Resources, LLC, and CDx Medical IP, Inc. (“Plaintiffs”) filed suit against Defendant and various unidentified John Does, alleging infringement of Plaintiffs’ patents. During discovery, Defendant filed a motion to dismiss for improper venue in light of the recent Supreme Court case TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017).
Who Knows What "Most Convenient" Is? Judge Failla Rules Claims Are Indefinite
On May 11, 2018, United States District Judge Katherine Polk Failla ruled that claims 1 and 2 of U.S. Patent No. 6,340,189 (“the ’189 patent”), drawn to a device that is placed in a “position most convenient” to a user, were invalid as indefinite.
Legaltech News Features Article by Lewis Popovski and George Soussou
Today Lew Popovski and George Soussou published an article in Legaltech News: “A Brief History of Blockchain”.
To read the full article, click here.
Judge Netburn Grants Preliminary Anti-Suit Injunction "Zipping Up" Suit Pending in Japan
On May 8, 2018, United States Magistrate Judge Sarah Netburn (S.D.N.Y.) granted plaintiffs AU New Haven, LLC's ("AU") and Trelleborg Coated Systems US, Inc.'s ("Trelleborg") motion for a preliminary anti-suit injunction concerning an action pending in Japan.
Judge Oetken Lifts Stay on 1 of 5 IPR’ed Patents
On April 5, 2018, Judge Oetken (S.D.N.Y.) granted Plaintiff Rovi Guides Inc.’s (“Rovi”) motion to lift a stay related to U.S. Patent No. 8,122,034 (“the ’034 patent”), only one of five patents at issue in a case that was stayed pending completion of inter partes review (“IPR”) proceedings.
Judge Oetken “Shelves” Case For Lack of Venue
On March 26, 2018, United States District Court Judge J. Paul Oetken granted a motion to transfer venue in Peerless Network, Inc. v. Blitz Telecom Consulting. The focus of the opinion was on whether venue was proper in the Southern District of New York based on a “device the size of a breadbox and the shelf on which it [sat].”
Judge Matsumoto Declines to Hear Invalidity Arguments on Patent Previously Cancelled in IPR
On March 27, 2018, District Judge Matsumoto (E.D.N.Y.) issued an 83-page decision on the parties' summary judgment briefing, which covered ten issues across three patents relating to multilayer ceramic capacitors. The summary judgment briefing between Plaintiffs American Technical Ceramics Corp. and AVX Corporation ("ATC") and Defendant Presidio Components, Inc. ("Presidio") concerned laches; equitable estoppel; waiver; failure to mark; whether the cancellation of claims pursuant to an inter partes review precluded hearing arguments of invalidity on the claims; the availability of enhanced damages under 35 U.S.C. § 284; indefiniteness; and non-infringement.
Successful Section 101 Motion to Dismiss: Digital Ad Delivery Is Abstract Concept
On March 1, 2018, United States District Judge Paul A. Engelmayer (S.D.N.Y.) granted defendants’—Charter Communications, Inc. and Spectrum Management Holding Company, LLC (together, “Charter”)—motion to dismiss a patent infringement action brought by plaintiff Quantum Stream Inc. (“Quantum”).
Mattress Wars: Casper’s Inequitable Conduct Counterclaim Against Serta Remains
On January 25, 2018, United States District Judge Alvin K. Hellerstein (S.D.N.Y.) denied plaintiff Serta Simmons Bedding, LLC’s (“Serta”) motion to dismiss defendant Casper Sleep Inc.’s (“Casper”) counterclaim and affirmative defense.
Judge Koeltl Agrees that “Access” to Confidential Information is Enough to Trigger a Prosecution Bar
On November 20, 2017, District Judge John G. Koeltl (S.D.N.Y.) approved a prosecution bar for “any individual who gains access” to confidential material. In addition, Judge Koeltl determined that post-issuance proceedings, such as IPRs, “are properly subject to a prosecution bar.” However, Judge Koeltl lifted the bar for anyone that does not participate in amending the scope of claims in post-issuance proceedings.
Judge Netburn Holds That a Motion for Reconsideration is Not a Vehicle for Taking a "Second Bite at the Apple"
On November 29, 2017, United States Magistrate Judge Sarah Netburn (S.D.N.Y.) denied plaintiff Seoul Viosys Co., Ltd.'s ("Seoul Viosys") motion for reconsideration of the Court's claim construction ruling.
Judge Matsumoto Cuts Plaintiff a Little “Slack” in Claim Construction Ruling
On November 20, 2017, United States District Court Judge Kiyo A. Matsumoto issued a claim construction ruling in a suit between two fitness-related companies: Speedfit LLC (“Speedfit”) and Woodway USA, Inc. (“Woodway”). The sole term in dispute was “means for slackening” as it was recited in Claim 1 of U.S. Patent 8,343,016 (“the ’016 Patent”) – a patent related to a manually-powered treadmill involving a closed-loop belt designed to maintain a curved running surface.
Judge Sweet Allows a Plaintiff to Amend Its Complaint More Than 2 Years After It Was Originally Filed
On October 26, 2017, District Judge Robert W. Sweet (S.D.N.Y.) granted plaintiff Olaf Soot Design, LLC (“OSD”) leave to amend its June 25, 2015 Complaint against Daktronics, Inc. and Daktronics Hoist, Inc. (collectively, “Daktronics”).
4 Out of 5 IPRs Ain’t Bad: Judge Oetken Grants Motion to Stay Pending Resolution of IPR Proceedings Despite Advanced Stage of Litigation
On October 27, 2017, District Judge J. Paul Oetken (S.D.N.Y.) granted defendant Comcast Corp.'s ("Comcast") motion to stay the case pending resolution of inter partes review ("IPR") proceedings instituted by the Patent Trial and Appeal Board ("PTAB").
Judge Broderick Finds That TC Heartland Affected a "Sea Change" and Grants Motion to Dismiss For Improper Venue
On October 20, 2017, District Judge Vernon Broderick (S.D.N.Y.) granted Defendants' Watters Design, Inc.'s, Essense of Australia, Inc.'s, and David's Bridal, Inc.'s motions to dismiss under Federal Rule of Civil Procedure 12(b)(3) for improper venue.
Judge Pauley Rules “About” Means “Approximately”, Maybe!
On September 19, 2017, United States District Court Judge William H. Pauley (S.D.N.Y.) issued a claim construction ruling on the word “about” across two patents directed to topical compositions containing naftifine. Both the patent holder (“Sebela”) and the alleged infringer (“Taro”) sought claim construction for that term in the phrase “about 0.17 wt% trolamine.” This phrase was in claim 17 of U.S. Patent 8,778,365 (“the ’365 patent”) and claim 21 of U.S. Patent 9,161,914 (“the ’914 patent”).
Judge Sweet Holds that Standing Question Cannot Be Resolved Until Trial
On September 14, 2017, District Judge Robert W. Sweet (S.D.N.Y.) denied the motion of Ferring B.V., et al. (“Ferring”) to dismiss for lack of standing a patent infringement suit brought by Allergan, Inc., et al. (“Allergan”).
When Does “On” Mean “On”? Judge Netburn Holds That It Depends.
On September 11, 2017, Magistrate Judge Sarah Netburn (S.D.N.Y.) issued a claim construction ruling on, among other things, the construction of the word “on” across four different patents directed to semiconductor lasers. In three of the four patents, the court concluded that the term on means “‘directly on or directly connected to the other element or layer, or intervening elements or layers may be present.’”
Judge Carter Rules “Customers” Don’t Fit Within the “Customer Exception”
RegenLab USA LLC (“RegenLab”) is the exclusive licensee of U.S. Patent 8,529,957 (“the ’957 patent”) entitled “Cell Preparations for Extemporaneous Use, Useful for Healing and Rejuvenation In Vivo.” RegenLab , who markets and distributes products based on the ’957 patent, accused Estar Technologies Ltd. (“Estar”), a manufacturer of an allegedly infringing product, and Eclipse Aesthetics LLC (“Eclipse”) and Healeon Medical Inc. (“Healeon”) (collectively, “Movants”), who distribute the accused product, of direct and indirect infringement of the ’957 patent. In a separate and later filed lawsuit, RegenLab also accused Movant’s customers of infringement. Additionally, RegenLab sent various “improper” communications to Movant’s non-party customers.
Judge Oetken Construes Twenty-Nine Claim Terms in “Relatively Large” Markman Opinion
On August 10, 2017, District Judge Paul Oetken (S.D.N.Y.) construed 29 claim terms in a dispute between Defendant Comcast Corporation, et al. (“Comcast”) and Plaintiff Rovi Guides, Inc. and its subsidiaries (“Rovi”). The claim terms were construed pursuant to the ongoing litigation between Comcast on Rovi concerning the alleged infringement by Comcast of six patents, U.S. Patent Nos. 8,713,595, 9,172,987, 8,433,696, 7,895,218, 8,122,034, and 7,966,864 (the “’595,” “’987,” “’696,” “’218,” “’034,” and “’864” patents, respectively). The patents covered “a number of different fields, including interactive program guides (“IPGs”), remote control, and content searching.”
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