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 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”).
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”).
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.”
Judge Cote Rules Claim Preamble is Limiting and Not So “Elastic” as to Be Indefinite
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.
Judge Oetken sua sponte Stays Case Pending Ex Parte Reexamination after Three Previous Denials
On August 2, 2017, Judge J. Paul Oetken (S.D.N.Y.) denied Plaintiff Infinity Headwear & Apparel, LLC’s (“Infinity”) motion for summary judgment as to patent infringement, false patent marking and false advertising and denied Defendant Franco & Sons, Inc.’s (“Franco”) motions objecting to Magistrate Judge Ellis’s orders. However, Judge Oetken sua sponte stayed the patent infringement claim in view of the Patent Trial and Appeal Board (“PTAB”)’s recent decision affirming the ex parte reexamination rejection of the asserted claims.
Be Careful What You Wish For, You Just Might Get It: Reconsidering When To Ask for Reconsideration
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.
Forum Selection Clause Not Triggered Based on Statements Made in Another Forum
On May 15, 2017, District Judge Paul Oetken (S.D.N.Y.) denied the motion of Comcast Corporation, et al. (“Comcast”) for reconsideration of the Court’s prior Order dated December 14, 2016. The Court had earlier denied Comcast’s motion for a preliminary injunction seeking to enjoin Rovi Corporation, Rovi Guides, Inc., Rovi Technologies Corp., and Veveo, Inc. (“Rovi”) from prosecuting its patent infringement claims against Comcast before the International Trade Commission (“ITC”).
One Out of Three Isn’t Bad, But Case Moves from New York to Florida Anyway
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.
Judge Sweet Holds Invalidity and Non-Infringement Defenses Cannot Shield a Licensee's Breach of a Patent License
On March 17, 2017, District Judge Robert Sweet (S.D.N.Y.) granted plaintiff Icahn School of Medicine at Mount Sinai's ("Mt. Sinai") motion to strike defendant Neurocrine Biosciences ("Neurocrine") affirmative defenses of patent invalidity, non-infringement, and patent misuse, and to dismiss Neurocrine's parallel declaratory judgment counterclaims.
Judge Swain Finds a “Book” by Any Other Cover is Still Not a “Camera”
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.
Judge Forrest Holds that Pre-Suit Knowledge of an Application is Not Pre-Suit Knowledge of a Patent
On December 7, 2016, Judge Katherine B. Forrest (S.D.N.Y.) granted defendant Red Box’s partial motion for summary judgment on plaintiff Verint’s inducement and willfulness claims concerning three of the six patents in suit.
Judge Cote Holds Attorneys Liable for Trying to Keep a “Baseless” Case in E.D. Tex. that Sought Nuisance Payments from Numerous Defendants
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.
Judge Forrest Vacates Judge Scheindlin’s Prior Decision Invalidating TiVo Patents Under § 101
On November 29, 2016, District Judge Katherine B. Forrest (S.D.N.Y.) vacated the February 22, 2016 decision of Judge Shira A. Scheindlin, which had granted a motion to dismiss, brought by alleged infringers TNS Media Research, LLC and Cavendish Square Holding B.V. (collectively, the declaratory judgment “Plaintiffs”), based on subject matter ineligibility of the asserted patents under 35 U.S.C. § 101.
Judge Nathan Grants Stay Pending Appeal of PTAB’s Inter Partes Review Decisions
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.
Judge Sullivan Holds “Substantially” the Same is Close Enough for Collateral Estoppel
On September 30, 2016, District Judge Richard J. Sullivan (S.D.N.Y.) granted the defendants' motion to dismiss, holding one of the two asserted patents invalid under principles of collateral estoppel.
Judge Oetken Holds that Amendments Made During Ex Parte Reexamination Are not Effective Until Grant of Reissue Patent
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.”
Judge Hellerstein Holds That “Arranged On” Means “Connected In Some Fashion”
On September 30, 2016, District Judge Alvin Hellerstein (S.D.N.Y.) denied defendant Nautilus, Inc.’s (“Nautilus”) motion for summary judgment of non-infringement holding that “disposed on said elongated member” does not necessarily mean directly on that member.
Judge Woods Holds That Assignment of a Patent is Not an Assignment of an “Interest” Under a License to the Patent
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.
Judge Oetken Holds That Forum-Selection Clause in License Agreement Does Not Trump First-to-File Rule Altogether
On September 16, 2016, District Judge J. Paul Oetken (S.D.N.Y.) denied plaintiff Comcast Corp.’s (“Comcast”) motion for a preliminary injunction seeking to enjoin defendant Rovi Corp. (“Rovi”) from continuing to litigate its patent infringement actions against Comcast in the Eastern District of Texas (“EDTX”) and the International Trade Commission (“ITC”).
No Way Out for Door Patent
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.
Judge Abrams Dismisses Case Based on Arguments Made to the PTO During Prosecution
On August 9, 2016, District Judge Ronnie Abrams (S.D.N.Y.) granted defendant Richloom Fabrics Group, Inc.’s motion to dismiss plaintiff Anchor Sales & Marketing, Inc.’s allegation of patent infringement based on the doctrine of equivalents.
Judge Forrest Provides Litigants Guidance on Applying Alice
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.
Judge Cote Finds Initiating Lawsuits to Obtain Settlements Rather Than a Determination on the Merits is Not an Abuse of Process
On July 28, 2016, District Judge Denise Cote (S.D.N.Y.) granted defendants AlphaCap Ventures, LLC’s, a non-practicing entity, and Richard Juarez’s (collectively, “AlphaCap”) motion to dismiss plaintiff Gust, Inc.’s (“Gust”) allegations of (1) attempted monopolization under the Sherman Act; (2) patent misuse; and (3) abuse of process, stemming from the filing of patent infringement lawsuits in Texas.
Judge Pauley Holds That Administering a Test Using a Computer Is Not Patent-Eligible Under § 101
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.
Judge Hellerstein Denies Summary Judgment of Non-Infringement Based On Arguments that “Appear Not to Be Persuasive”
On July 21, 2016, District Judge Alvin K. Hellerstein (S.D.N.Y.) denied Defendants JP Morgan Chase & Co., JPMorgan Chase Bank, National Association, Chase Bank USA, National Association, Chase PaymenTech Solutions LLC, and PaymenTech LLC's (“JPMC”) motion for summary judgment of non-infringement.
Judge McMahon Dismisses Case Because Agreement that Inventor “will assign” Doesn’t Mean “did assign”
On June 14, 2016, S.D.N.Y. District Judge Colleen McMahon granted defendants HTC Corporation, HTC America, Inc., Blackberry Limited, Blackberry Corporation, and Motorola Mobility LLC’s (collectively “Defendants”) motion to dismiss with prejudice a patent infringement complaint filed by plaintiff Advanced Video Technologies LLC (“AVT”) because AVT didn’t join all “necessary” parties.
Judge Woods Holds Multiple Lawsuits on Same Patent Is Not A “Meaningful Connection” to S.D.N.Y. For Venue
On June 1, 2016, District Judge Gregory H. Woods (S.D.N.Y.) granted Defendant ASUS Computer International’s (“ACI’s”) motion to transfer its patent infringement suit to the Northern District of California, where it is headquartered.
Judge Briccetti Stays Patent Case Against a Customer Pending Resolution of Lawsuit Against Supplier
On June 3, 2016, District Judge Vincent L. Briccetti (S.D.N.Y.) stayed a patent infringement action brought by plaintiff Marine Travelift (“Marine”) against defendant K. Graefe & Sons Corp. (“Graefe”), pending the resolution of patent litigation between Marine and ASCOM in the United States District Court for the Eastern District of Wisconsin. Marine’s infringement allegations against Graefe were based on Graefe’s purchase of equipment from ASCOM, and both cases involved Marine’s allegations of infringement of its U.S. Patent No. 8,215,441 (“the ’441 patent”). By the time Marine filed suit against Graefe, the case against ASCOM had already reached the summary judgment stage.
Judge Griesa Grants Endo an Injunction Against Generic Manufacturers of Opioid Opana ER
On April 29, 2016, S.D.N.Y. District Judge Thomas P. Griesa granted Defendants Actavis, Inc., Actavis South Atlantic LLC (together “Actavis”) and Roxane Laboratories, Inc.'s motion to correct the court’s August 14, 2015 judgment by ruling that Endo was not entitled to relief because its patents had not issued at the time Actavis and Roxane filed their ANDAs. The court held that it would not alter Actavis and Roxane’s ANDA filing date but would still enjoin them from making or selling their generic products until Endo’s patents expire.
Judge Rakoff Holds a 3-D “Magic Trick” Implemented With Software Is Not Equivalent to One Implemented With Hardware
On April 24, 2016, District Judge Jed S. Rakoff (S.D.N.Y.) ruled that defendants Nintendo Co., Ltd. and Nintendo of America, Inc.'s (collectively, “Nintendo”)’s 3DS pocket gaming console does not infringe Tomita Technologies USA, LLC (“Tomita”)’s U.S. Patent No. 7,417,664 (“the ’664 patent”) either literally or under the doctrine of equivalents.
Judge Bianco Holds EasyWeb’s “Publishing Patent” Is Not Infringed Even Though It Broadly Claims an Abstract Idea
On March 30, 2016, District Court Judge Joseph F. Bianco granted defendant Twitter Inc.'s ("Twitter") motions for summary judgment of invalidity and non-infringement against plaintiff EasyWeb Innovations, LLC ("EasyWeb"), holding that EasyWeb's asserted patents (the "patents-in-suit") were not directed to eligible subject matter under 35 U.S.C. § 101 and did not cover Twitter's accused technology.
Expert Can’t Testify for Plaintiff After Consulting for Defendant
On March 22, 2016, E.D.N.Y. District Judge Brian M. Cogan granted defendant Clorox Co.’s motion to disqualify plaintiff Auto-Kaps LLC’s expert and strike his affidavit from its summary judgment opposition. Auto-Kaps alleged that Clorox’s “Smart Tube” bottle infringes U.S. Patent No. 7,490,743 (the “‘743 patent”).
Patent Arithmetic: 2 x 473mL Is Greater Than 500mL
On March 15, 2016, District Judge Alison J. Nathan granted defendant Breckenridge Pharmaceutical, Inc.’s (“Breckenridge”) motion for summary judgement of noninfringement of plaintiff Braintree Laboratories Inc.’s (“Braintree”) U.S. Patent No. 6,946,149 (the “‘149 patent”). Breckenridge had sought FDA approval of a generic version of Braintree’s SUPREP colon cleansing solution, which Braintree alleged infringed the ‘149 patent.
Pleading Merely that Defendant Had Knowledge of the Patent is Insufficient to Support a Willful Infringement Claim
On March 16, 2016, District Judge Shira A. Scheindlin (S.D.N.Y.) granted in part defendant Lowe’s Companies, Inc. (“Lowe’s”)’s motion to dismiss plaintiff Iron Gate Security, Inc. (“Iron Gate”)’s Complaint. Iron Gate commenced the action on November 11, 2015, alleging direct infringement, induced infringement, contributory infringement, and willful infringement, by Lowe’s, of U.S. Patent No. 6,288,641.
Default Leads to Broad Injunction Against Infringement
On March 8, 2016, Magistrate Judge Cheryl L. Pollak recommended to grant in part plaintiff JAB Distributors, LLC's ("JAB's") motion for a default judgment against defendant Home Linen Collections ("HLC").
Split How Many Ways?--A Single Verdict on Damages Requires A New Damages Trial Following Post-Trial Invalidation of One of the Two Asserted Patents
On February 24, 2016, District Judge Jed S. Rakoff ordered a new trial as to the damages awarded against defendants Barnes & Noble, Inc., Barnesandnoble.com LLC, and NOOK Media LLC’s (collectively “B&N”) for their popular e-reader device, the Nook.
S.D.N.Y. Holds That There is No Presumption of § 101 Patent-Eligibility
On February 22, 2016, District Judge Shira A. Scheindlin (S.D.N.Y.) granted counterclaim-defendants WPP PLC’s and its subsidiaries’ (collectively, “the WPP Companies”) motion for summary judgment of patent invalidity under 35 U.S.C. § 101.
Judge Can’t Find Infringement in Camouflage Shoe-Sole Patent Case
On February 19, 2016, District Judge Paul A. Crotty granted defendant Attilio Giusti Leombruni S.P.A.’s (“AGL’s”) motion to dismiss the patent infringement claim of plaintiff Lori Silverman and her company Lsil. Col. (“Plaintiffs”).
“Substantial” Is Precise Enough but Means-Plus-Function Claims Need More Specificity
On January 4, 2016, District Judge Shira A. Scheindlin held that several phrases using the term “substantial” were sufficiently definite and did not require construction, while finding that several of plaintiff Verint Systems Inc.’s (“Verint”) claims invoked means-plus-function (“MPF”) claiming and were invalid for indefiniteness.
“Pulsed” Means “On/Off”, Not “High/Low”
On December 22, 2015, District Judge Nelson D. Roman denied plaintiff Radiancy Inc.’s (“Radiancy”) motion for reconsideration of the Court’s construction of the claim term “pulsed heating.” The Court had previously construed “pulse heating of said one or more heat elements” to mean “(1) periodic switching on and off of current to said one or more heat elements or (2) generation of pulses of heat by other means (e.g., by mechanical means).”
Discovery of Foreign Profits and Sales of Accused Products Found Relevant
On November 25, 2015, District Judge Laura Swain ordered defendant Bio-Rad to produce information related to foreign sales and profits of its Next Generation Chromatography (“NGC”) protein purification devices, overturning Magistrate Judge Netburn’s previous order that Bio-Rad need not produce such information.
A “Clever” Patent on Routing Long-Distance Phone Calls is Held Invalid Under Section 101
On November 18, 2015, District Judge Colleen McMahon granted defendant Rubard LLC’s (“Rubard”) motion for summary judgment under 35 U.S.C. § 101, holding that U.S. Patent No. 7,346,156 (“the ’156 patent”) is invalid for claiming patent-ineligible subject-matter.
Sale to Corporate Affiliate Sufficient to Exhaust Patent Rights
On November 19, 2015, District Judge Denise Cote granted plaintiffs Canon Inc.’s and Canon U.S.A., Inc.’s (“Canon USA”) motion for summary judgment, holding that (i) because Canon Inc. was retroactively licensed under the asserted patents for certain products (“Océ printers”), it could similarly grant a retroactive sublicense for use of this technology to its corporate subsidiary Canon USA; and (ii) Canon USA’s sale of the Océ printers to its corporate affiliate Canon Solutions America, Inc. (“CSA”) exhausted the defendants’ patent rights, rendering CSA’s offer to sell the Océ printers a non-infringing act.
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