On May 5, 2022, United States District Court Colleen McMahon (S.D.N.Y.) issued a claim construction decision in a long-running set of patent and trade dress infringement and defamation actions between Plaintiff GeigTech East Bay LLC’s (“GeigTech”) and Defendant Lutron Electronics Co., Inc.’s (“Lutron”) concerning  U.S. Patent Nos. 10,294,717 (“the ’717 patent”) and 10,822,872 (“the ’872 patent”), each of which is directed to wall brackets for use with motorized shade systems to conceal the system’s wiring.

On May 3, 2022, Judge Lewis J. Liman found patent claims directed to the computerized processing of financial transaction data that splits the transaction cost between payment methods and awards or discounts to be directed to an abstract idea ineligible for patenting under 35 U.S.C. § 101. 

On March 8, 2022, Judge John G. Koeltl (S.D.N.Y.) denied Defendant Facebook Inc.’s (“Facebook”) motion for summary judgment that the claims of three related patents directed to “storing documents in a chronologically ordered ‘stream’” and “substreams” are invalid, but granted Facebook’s motion for summary judgement of non-infringement.

On January 11, 2022, Judge Paul G. Gardephe (S.D.N.Y.) issued a decision declining to construe disputed terms in three patents relating to computer locks.  See Noble Sec., Inc v. ACCO Brands Corp., 2022 U.S. P.Q.2d 41 (S.D.N.Y. 2022).

On December 10, 2021, Judge Katherine Polk Failla (S.D.N.Y.) dismissed with prejudice a pro se plaintiff’s claim that the law firm Bracewell LLP induced infringement of his patent by providing legal advice to a direct infringer.  See Ottah v. Bracewell LLP, No. 21 Civ. 455, 2021 BL 472911 (S.D.N.Y. Dec. 10, 2021).

On September 27, 2021, U.S. District Court Judge Mary Kay Vyskocil held that plaintiffs Ajinomoto Co., Inc. and Ajinomoto Heartland Inc. had alleged plausible claims for relief for infringement under 35 U.S.C. § 271(g), for inducement of infringement, and for willful infringement, despite the complaint’s purported “group pleading” and “inconsistent allegations” of infringement by the three related defendant corporations.

On September 2, 2021, United States District Judge Loretta A. Preska (S.D.N.Y.) granted in part and denied in part Defendants’ motion for judgement on the pleadings in Berall v. Pentax of America, Inc., et al.  All in all, as set forth below, the decision was a mixed bag for both Plaintiff and Defendants.

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.

On April 27, 2021, United States District Judge Brian M. Cogan (E.D.N.Y.) granted Plaintiff Leviton Manufacturing Co., Inc. ("Leviton") motion for a new trial based on the Court's exclusion of secondary indicia of nonobviousness.

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”).

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.

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.

On January 19, 2021, United States District Judge Edgardo Ramos (S.D.N.Y.) denied Kannuu Pty Ltd. (“Kannuu”)’s motion for preliminary injunction and instead granted Samsung Electronics Co., Ltd. (“Samsung”)’s motion to stay pending resolution of two instituted IPRs.

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.

On November 19, 2020, District Judge Gary Brown (E.D.N.Y.) granted Defendants Polar Electro Oy and Polar Electro Inc.'s (collectively, "Polar Electro") motion to dismiss for lack of patent-eligible subject matter under 35 U.S.C. § 101.

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.

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.

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. 

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”).

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.

On May 29, 2020, United States District Judge J. Paul Oetken (S.D.N.Y.) granted Defendant StoneCastle’s Rule 12(b)(6) motion to dismiss for failure to claim patent eligible subject matter under 35 U.S.C. § 101.[1] 

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.

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.

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.

On March 23, 2020, U.S. District Court Judge Edgardo Ramos granted a motion to dismiss counterclaims and strike affirmative defenses because they were not plausible and did not meet the heightened pleading requirements of Fed. R. Civ. P. 9(b).