Judge Engelmayer Finds Claims for Timekeeping to be an Abstract Idea: “Whether by Quill or by Computer, Humans Have Undertaken Such Timekeeping . . . for Centuries”
On March 7, 2023, Judge Paul A. Engelmayer ruled that claims directed to computerized methods and systems for “timekeeping of tasks on a document-by-document, telephone call-by-telephone call, and client service-by-client service basis” are ineligible for patenting under 35 U.S.C. § 101.
Judge Schofield Finds Assertion of “Weak” Patent Claims Not Exceptional for Purposes of Awarding Attorney’s Fees under 35 U.S.C. § 285
On January 23, 2023, United States District Judge Lorna G. Schofield (S.D.N.Y.) denied Maropost Marketing Cloud, Inc.’s (“Maropost”) motion to declare its dispute with Zeta Global Corp. (“Zeta”) exceptional for purposes of awarding attorney’s fees under 35 U.S.C. § 285.
Reflecting on All Factors, District Judge Ronnie Abrams Grants Pre-Institution Stay in lululemon Mirror Case
On February 24, United States District Judge Ronnie Abrams (S.D.N.Y.) granted defendants lululemon USA Inc. and Curiouser Products Inc. d/b/a Mirror (collectively “lululemon”)’s motion to stay pending inter partes review. Judge Abrams ordered the stay even though the IPRs have not yet been instituted.
Judge Roman Hits “Stop” on State Law Claims in Treadmill Patent Infringement Case
On January 17, 2023, Judge Nelson Romàn (S.D.N.Y) granted a motion by defendants LifeCore Fitness (“LifeCore”) and Assault Fitness (“Assault”) to dismiss state law claims as pre-empted or time-barred in a patent infringement case involving treadmill designs. See Speedfit LLC v. LifeCore Fitness Inc., No. 22-CV-3140 (S.D.N.Y. January 23, 2023).
Picking an Outfit Is Not Patentable: Judge Aaron Recommends Invention Ineligible Under Section 101
Judge Scanlon Provides Guidance for Patent Holders Seeking Default Judgment
Who’s in Control?- Judge Furman Finds Artist Control of Playlist Not Patentable Subject Matter Under Section 101
On January 24, 2023, District Judge Jesse M. Furman (S.D.N.Y.) granted Defendant Block, Inc.’s (“Block”) motion to dismiss on the ground that the claims of U.S. Patent No. 9,009,113 (“the ’113 patent”) were directed to an abstract idea not eligible for patent protection. EscapeX IP LLC (“EscapeX”) accused Block of infringing the ’113 patent, which describes “a process for allowing artists to update ‘dynamic albums’ that are stored on user devices.” The patent claims a method for “receiving instructions from an artist to update a dynamic album stored on a user device.”
Judge Gonzalez Grants Preliminary Injunction to Accused Infringer For "What Appears to Be a Fraudulent Claim to a Patent"
On December 18, 2022, Judge Gonzalez (E.D.N.Y.) granted-in-part and denied-in-part Plaintiff Sound Around Inc.'s motion for entry of a preliminary injunction against Defendants Shenzhen Keenray Innovations Ltd., Danxia Wu, and Weng Feng Peng (a/k/a Fenson Peng) pursuant to Federal Rule of Civil Procedure 65. The case involves allegations of infringement of U.S. Patent No. D952,810 (the "'810 Patent") which lists Wu as the inventor and is assigned to Keenray.
Judge Lehrburger Finds That Original Complaint Can Provide Requisite Knowledge For Willfulness Allegations in Second Amended Complaint
Three weeks after recommending deferral of claim construction in a patent dispute between competing massage-device companies, Magistrate Judge Lehrburger recommended denying Defendant Tzumi’s motion to dismiss Plaintiff Therabody’s claims of willful infringement of eight patents in its second amended complaint. See Therabody, Inc. v. Tzumi Elecs. LLC, No. 21-CV-7803, 2022 BL 453263, at *1 (S.D.N.Y. Dec. 19, 2022).
Judge Lehrburger Recommends Deferring Claim Construction Until Full Record is “Graspable”
What does it mean for a handle of a massage device to be “graspable”? We do not yet know. In Therabody, Inc. v. Tzumi Electronics LLC, No. 21-CV-7803, 2022 BL 425916 (S.D.N.Y. Nov. 28, 2022), Magistrate Judge Lehrburger rejected one possible answer to that question, and deferred answering the question definitively until completion of the parties’ briefing on construction of the relevant patent claims
We Will Just Have to Wait – Judge Liman Grants Motion to Stay Pending Resolution of Parallel Motion to Dismiss
On October 4, 2022, District Judge Lewis J. Liman (S.D.N.Y.) granted a motion to stay pending the resolution of a motion to dismiss in a parallel proceeding. In April 2022, Plaintiff Diatek Licensing LLC (“Diatek”) asserted that Estrella Media, Inc. (“Estrella”) infringed claims of U.S. Patent No. 7,079,752 and U.S. Patent No. 8,195,828 (collectively, “the patents-in-suit”). Several months prior, Diatek filed a lawsuit in the same Court, asserting the same patents-in-suit against a different defendant, Accuweather (the “Accuweather Matter”). Accuweather filed a motion to dismiss under 35 U.S.C. § 101. Estrella filed a motion to dismiss on identical grounds and requested a stay pending resolution of the motion to dismiss in the Accuweather Matter.
Product or Person, Not Both: Judge Hellerstein Dismisses Complaint for Alleging That the Accused Instrumentality is the Defendant
On August 25, 2022, Judge Hellerstein (S.D.N.Y.) granted defendant SAS Institute’s (“SAS”) motion to dismiss plaintiff Invincible IP LLC’s (“Invincible”) complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6).
Right Place at Right Time Is Not Patentable: Judge Carter Finds Location-Based Reminder Function Ineligible for Patenting Under Section 101
On August 31, 2022, District Judge Andrew L. Carter, Jr. (S.D.N.Y.) found patent claims directed to a personal organizer with a location-based reminder function on a mobile phone to be directed to an abstract idea ineligible for patenting under 35 U.S.C. § 101.
“Mark it Zero”: Judge Cote Dismisses Claims to Pre-Suit Damages For Failure to Satisfy Patent Marking Requirements
On August 26, 2022, United States District Court Judge Denise Cote (S.D.N.Y.) granted a motion to dismiss Blackbird Tech LLC (“Blackbird”)’s claim against Argento SC By Sicura, Inc. (“Argento”) to the extent Blackbird sought damages for infringement that occurred before the action was filed.
Magistrate Judge Figueredo “Shines a Light” on Discovery Standards for Potential Non-Infringing Alternatives
On August 22, 2022, Magistrate Judge Valerie Figueredo (S.D.N.Y) granted a motion by solar tracker manufacturer FCX Solar, LLC (“FCX”) to compel the production of documents relating to Defendant FTC Solar, Inc’s (“FTC”) development of a “next-generation” solar tracking product. See FCX Solar LLC v. FTC Solar Inc., No. 1:21-CV-03556, 2022 BL 293064 (S.D.N.Y. Aug. 22, 2022).
Judge Failla Transfers Case to Delaware Based on “When the Case Was Filed”
On July 20, 2022, District Judge Failla (S.D.N.Y.) found venue to be improper and transferred the TrackThings LLC v. Netgear, Inc. case to the United States District Court for the District of Delaware based on facts as they existed at the time of filing, thereby rejecting the Welch Rule.
Judge Chen “Backs” Construction of Garment Claims, Albeit with Alterations
On July 15, 2022, United States District Court Judge Pamela K. Chen (E.D.N.Y.) issued a Memorandum and Order setting forth the construction of two disputed terms relating to garments in Shaf International v. First Manufacturing Co. Inc.—those terms being “back portion” and “substantially outermost extent.” Judge Chen adopted constructions proposed by the Plaintiff, albeit with modifications, as discussed below.
No Two Bites at the Apple: Judge Gorenstein Finds Claim Preclusion Prevents Lawsuit
On June 21, 2022, Judge Gabriel W. Gorenstein (S.D.N.Y.) granted Defendant Verifone System Inc.’s (“Verifone”) motion to dismiss the complaint of Plaintiff Chikezie Ottah (“Ottah”) yet again. Ottah alleged that Verifone infringed claim 1 of U.S. Patent No. 7,152,840 (“the ’840 patent”) directed to a “removable” book holder.
Judge Gorenstein Rules Either Use Objections or Lose Them in Discovery Responses
On May 20, 2022, Magistrate Judge Gabriel Gorenstein (S.D.N.Y.) ruled on several discovery disputes inSure Fit Home Prods., LLC v. Maytex Mills Inc.
Judge McMahon Finds That No Construction Is Necessary: “Period. End of Story”
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.
Judge Caproni Shelves Infringement Action Concerning Store Partitions Before IPR Institution
On May 2, 2022, Judge Valerie Caproni (S.D.N.Y) granted a motion by international fashion company Chanel Inc. to stay proceedings in a patent infringement action brought by Molo Design, Ltd. pending an inter partes review proceeding that had just been filed. See Molo Design Ltd. v. Chanel, Inc., 21-CV-01578 (S.D.N.Y. May 2, 2022).
100% Discount on Unpatentable Claims: Judge Liman Holds System for Processing Discounts in Financial Transactions to be Ineligible for Patenting Under Section 101
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.
Magistrate Judge Wicks Stays Litigation Before IPR Institution in Skin-Tightening Dispute
On April 6, 2022, U.S. Magistrate Judge James M. Wicks (E.D.N.Y.) granted Defendant Cartessa Aesthetics, LLC’s (“Cartessa”) motion to stay the litigation pending the resolution of IPRs filed against each of the five asserted patents. Plaintiffs Synkloud Technologies, LLC and Serendia, LLC (collectively, “Plaintiffs”) brought suit against Cartessa in August 2021, alleging infringement of five patents generally directed to “radio frequently microneedling devices used for medical and aesthetic dermatological treatment for tightening skin.” Slip Op. at 1.
You Win Some and Lose Some: Judge Koeltl Finds Claims Patent-Eligible But Not Infringed
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.
Judge DeArcy Hall Finds Asserted Claims Indefinite Because “Absorbing” Heat via an Endothermic Chemical Reaction Cannot Mean “Releasing” Heat
On February 24, 2022, Judge LaShann DeArcy Hall found patent claims directed to pressure-activated self-cooling mats for pets to be invalid as indefinite in a case filed by The Green Pet Shop Enterprises LLC against Fine Promotions. Judge Hall focused on two claim terms: “predefined distance” and “endothermically deactivated.”
Judge Gardephe Declines to “Lock” Down Claim Construction Terms of Computer Padlock Patent
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).
Judge Gardephe Gives Bytemark a Second Bite Against Xerox
On January 10, 2022, U.S. District Court Judge Paul G. Gardephe (S.D.N.Y.) granted Plaintiff Bytemark, Inc’s (“Bytemark”) motion for leave to file a third amended complaint, asserting two new patents after the prior patents-in-suit had been found invalid, against Defendants Xerox Corp., ACS Transport Solutions, Inc., Xerox Transport Solutions, Inc. (collectively, “Xerox”), Conduent Inc., and New Jersey Transit Corp.
Judge Failla “Closes the Book” on Patentholder’s Inducement Claim Against Law Firm
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).
Curtain Wars Continue – Judge Schofield Construes Design Patent Claim Term
On October 14, 2021, United States District Judge Lorna G. Schofield (S.D.N.Y.) construed the scope of U.S. Design Patent No. 668,091 (“the D091 Patent”) in a dispute between Sure Fit Home Products, LLC, SF Home Décor, LLC, Zahner Design Group, Ltd., and Hookless Systems of North America, Inc. (collectively, “Plaintiffs”) and Maytex Mills, Inc. (“Defendant”). This decision follows the Court’s denial of a preliminary injunction request by Plaintiffs, addressed previously.
Judge Vyskocil Allows Amino Acid Case to Go Forward Despite “Group Pleading” and “Inconsistent Allegations” of Infringement
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.
You Don’t Belong Here – Judge Ramos Grants Defendants’ Motion to Dismiss for Lack of Personal Jurisdiction and Improper Venue
On September 28, 2021, United States District Judge Edgardo Ramos (S.D.N.Y.) granted Defendant JLC Tech LLC’s (“JLC”) motion to dismiss for lack of personal jurisdiction and improper venue. Judge Ramos also denied Plaintiff Shenzen OKT Lighting Co., Ltd.’s (“OKT”) motion to file a second amended complaint.
Judge Preska Allows Laryngoscope Case to Proceed, Albeit With Fewer Claims
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.
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.
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.
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.
Judge Cogan Acknowledges the Error of Precluding Evidence of Secondary Considerations of Nonobviousness
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.
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).
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”).
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.
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.
Judge Tiscione Rules Patent Misuse Is Purged When Infringement Tainted Lawsuit Is Dismissed
On February 16, 2021, U.S. Magistrate Judge Steven L. Tiscione (E.D.N.Y.) recommended granting plaintiff Nationwide Sales and Services Inc.’s (“Nationwide”) motion for judgment on the pleadings as to patent misuse counterclaims asserted by defendant Steel City Vacuum Co. (“Steel City”).
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.
Judge Hellerstein Upholds Infringement by Microsoft of Kaufman's “And/Or” Patent
On January 25, 2021, United States District Judge Alvin Hellerstein (S.D.N.Y.) denied Defendant Microsoft Corp. ("Microsoft")'s motion for judgment as a matter of law pursuant to FRCP 50(b) or a new trial pursuant to FRCP 59.
Judge Ramos Finds Forum Selection Clause of NDA Implicates Confidentiality and Not IP Rights and Allows IPRs to Proceed
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.
Judge McMahon Rules Outside Counsel’s Pre-Suit Download of Online Dating App Does Not Bind Party to Arbitration Agreement
On December 15, 2020, U.S. District Judge Colleen McMahon (S.D.N.Y.) denied plaintiff Perry Street Software, Inc.’s (“Perry Street”) motion to compel arbitration of defendant Jedi Technologies, Inc. (“Jedi”) patent infringement counterclaim.
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.
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.
Judge Brown Disagrees with Both Parties on What the Claimed Invention is and Invalidates Wearable Content Patents Under 35 U.S.C. § 101
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.
Judge Glasser Holds Judicial Estoppel Does Apply Retroactively
On October 5, 2020, United States District Judge I. Leo Glasser (E.D.N.Y.) denied plaintiff Alexsam, Inc.’s (“Alexsam”) motion for reconsideration of the court’s June 17, 2020 summary judgment ruling.
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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