Category: Southern District of New York (S.D.N.Y.)

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. 

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.

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.

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 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.

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.

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.

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 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] 

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”).

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.

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").

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”). 

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.’”

On August 4, 2017, District Judge Denise Cote issued a claim construction order that held the preamble of claim 1 of Lumos Technology Co., Ltd.'s ("Lumos") U.S. Patent No. 8,746,906 ("the '906 patent") is limiting and that a person of ordinary skill would know what "elastic material" means, and thus the relative phrase does not render claim 5 indefinite.

On July 12, 2017, District Judge Alvin K. Hellerstein granted a motion for reconsideration by Intellectual Ventures II L.L.C. (“IV”) of the Court’s prior Order of April 28, 2017.  At the time of the motion, the only patent at issue in the case was U.S. Patent No. 7,634,666 (“the ’666 Patent”).  The Court had originally denied JP Morgan Chase & Co.’s (“JPMC’s”) motion for summary judgement on noninfringement because while the accused devices didn’t actually infringe, there was a material issue of fact on “ whether the Crypto Cards are capable of infringing on the ’666 Patent.” (emphasis added).  IV asked the court to reconsider whether the accused devices actually infringed.

On April 26, 2017, District Judge Gregory H. Woods (S.D.N.Y.) found that one of the three defendants was subject to personal jurisdiction in New York and denied a motion to dismiss for lack of personal jurisdiction, but granted defendants’ motion to transfer venue from the Southern District of New York to the Middle District of Florida.

Pro se Plaintiff Chikezie Ottah (“Plaintiff”) sued fifteen automobile companies for patent infringement alleging that defendants’ car mounted cameras infringe U.S. Patent No. 7,152,840 (“the ’840 patent”) entitled “Book Holder.”  Five of the defendants moved to dismiss Plaintiff’s Second Amended Complaint for failure to state a claim and another five defendants moved for summary judgment of non-infringement.  On February 1, 2017, Judge Laura Taylor Swain (S.D.N.Y.) granted both motions.

On December 8, 2016, District Judge Denise Cote (S.D.N.Y.) granted defendants Gust, Inc.’s (hereinafter, “Gust”) motion for attorneys’ fees and costs under 35 U.S.C. § 285 and 28 U.S.C. § 1927 against plaintiff AlphaCap Ventures, LLC (hereinafter, “AlphaCap”) and its counsel.

On October 18, District Judge Alison J. Nathan (S.D.N.Y.) granted defendants Verizon Communications Inc.’s, Verizon Services Corp.’s, Verizon Business Network Services Inc.’s, and Cellco Partnership’s (collectively, “Verizon”) motion to stay the litigation until resolution of a consolidated appeal, pending before the United States Court of Appeals for the Federal Circuit, from two decisions of the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) following inter partes review of claims in two of the patents-in-suit.

On September 26, 2016, District Judge Paul Oetken (S.D.N.Y.) denied defendant Jay Franco & Sons’ (“Franco”) motion to dismiss, granted plaintiff Infinity Headwear & Apparel’s (“Infinity”) motion for leave to amend to assert additional claims, and laid out the Court’s construction of the disputed claim terms.  Infinity alleged that Franco infringed claims 1-2, 6, 8, 10-11, 15-16 and 18-20 of U.S. patent No. 8,864,544 (“the ‘544 patent”), entitled “Hooded Blanket and Stuffed Toy Combination.”

On September 28, 2016, District Judge Gregory Woods (S.D.N.Y.) denied defendant YKK Corp.’s (“YKK”) motion to dismiss the suit, in which plaintiffs Au New Haven, LLC (“Au New Haven”) and Trelleborg Coated Systems US, Inc. (“Trelleborg”) (collectively, “Plaintiffs”) allege infringement of U.S. Patent No. 6,105,214 (“the ‘214 patent”) and breach of the license agreement between the inventor and YKK.

On September 12, 2016, District Judge John G. Koeltl (S.D.N.Y.) granted the defendants’ motions to dismiss for failure to state claim of patent infringement under Federal Rule of Civil Procedure (“FRCP”) 12(b)(6).  Claims other than patent infringement remain in the case.

On August 3, 2016, S.D.N.Y. District Judge Katherine B. Forrest denied Defendant Lowe’s Companies, Inc. (“Lowe’s”) motion to dismiss Iron Gate Security, Inc.’s (“Iron Gate”) patent infringement claim.

On July 29, 2016, S.D.N.Y. District Judge William H. Pauley III granted defendant PlayerLync, LLC’s (“PlayerLync”) motion for judgment on the pleadings and dismissed plaintiffs Multimedia Plus, Inc. and Multimedia Technologies, LLC’s (collectively “Multimedia”) patent infringement action.