NY Patent Decisions Blog

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. Plaintiff Joao Control & Monitoring Systems ("Plaintiff") had asserted two patents, U.S. Patent Nos....

Judge Sullivan Holds “Substantially” the Same is Close Enough for Collateral Estoppel

October 20, 2016

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. Plaintiff Biosig Instruments, Inc. (“Biosig”) sued Nautilus for...

Judge Hellerstein Holds That “Arranged On” Means “Connected In Some Fashion”

October 7, 2016

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...

Judge Oetken Holds that Amendments Made During Ex Parte Reexamination Are not Effective Until Grant of Reissue Patent

October 7, 2016

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....

Judge Woods Holds That Assignment of a Patent is Not an Assignment of an “Interest” Under a License to the Patent

October 3, 2016

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...

Judge Oetken Holds That Forum-Selection Clause in License Agreement Does Not Trump First-to-File Rule Altogether

September 21, 2016

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. Plaintiffs Gym...

No Way Out for Door Patent

September 16, 2016

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. Richloom Fabrics’ motion to dismiss, or alternatively...

Judge Abrams Dismisses Case Based on Arguments Made to the PTO During Prosecution

August 18, 2016

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. Iron Gate alleged that Lowe’s infringed U.S. Patent Nos. 6,288,641 and 7,203,693 (the “‘693 patent”),...

Judge Forrest Provides Litigants Guidance on Applying Alice

August 9, 2016

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...

Judge Cote Finds Initiating Lawsuits to Obtain Settlements Rather Than a Determination on the Merits is Not an Abuse of Process

August 4, 2016

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. Multimedia alleged that PlayerLync infringed U.S....

Judge Pauley Holds That Administering a Test Using a Computer Is Not Patent-Eligible Under § 101

August 3, 2016

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. JPMC’s motion...

Judge Hellerstein Denies Summary Judgment of Non-Infringement Based On Arguments that “Appear Not to Be Persuasive”

July 26, 2016

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...

Judge McMahon Dismisses Case Because Agreement that Inventor “will assign” Doesn’t Mean “did assign”

July 25, 2016

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. ACI filed its motion in response to a complaint filed...

Judge Woods Holds Multiple Lawsuits on Same Patent Is Not A “Meaningful Connection” to S.D.N.Y. For Venue

June 21, 2016

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...

Judge Briccetti Stays Patent Case Against a Customer Pending Resolution of Lawsuit Against Supplier

June 20, 2016

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...

Judge Griesa Grants Endo an Injunction Against Generic Manufacturers of Opioid Opana ER

May 2, 2016

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”)...

Judge Rakoff Holds a 3-D “Magic Trick” Implemented With Software Is Not Equivalent to One Implemented With Hardware

April 28, 2016

Eastern District of New York (E.D.N.Y.)

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...

April 1, 2016

Eastern District of New York (E.D.N.Y.)

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...

March 25, 2016

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...

Patent Arithmetic: 2 x 473mL Is Greater Than 500mL

March 24, 2016

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...

Pleading Merely that Defendant Had Knowledge of the Patent is Insufficient to Support a Willful Infringement Claim

March 22, 2016

Eastern District of New York (E.D.N.Y.)

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"). JAB filed its complaint against HLC on November 21, 2014, alleging, among other...

March 21, 2016

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. In November 2014,...

March 10, 2016

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. The WPP Companies commenced this action in...

S.D.N.Y. Holds That There is No Presumption of § 101 Patent-Eligibility

March 1, 2016

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”). Plaintiffs had alleged that two models of AGL shoes, the...

Judge Can’t Find Infringement in Camouflage Shoe-Sole Patent Case

February 29, 2016

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...

“Substantial” Is Precise Enough but Means-Plus-Function Claims Need More Specificity

January 21, 2016

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...

“Pulsed” Means “On/Off”, Not “High/Low”

January 11, 2016

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...

Discovery of Foreign Profits and Sales of Accused Products Found Relevant

December 1, 2015

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. The ’156 patent is directed...

A “Clever” Patent on Routing Long-Distance Phone Calls is Held Invalid Under Section 101

November 30, 2015

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...

Sale to Corporate Affiliate Sufficient to Exhaust Patent Rights

November 23, 2015

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Our Patent Practice

NYPatentDecisionsBlog.com is a source for the latest patent decisions from the U.S. District Courts for the Southern and Eastern Districts of New York. The blog is authored by Patterson Belknap’s Patent Litigation practice group, whose members are highly experienced trial attorneys with extensive technical knowledge. Many have advanced scientific degrees and industry experience in fields such as communications, electrical and electro-optical technology, semiconductor technology, metallurgical engineering, chemistry and biochemistry. The team represents consumer products, electrical and software, medical device, mechanical, and pharmaceutical companies in a broad range of patent litigation matters, including district court cases, PTO and PTAB trial proceedings, patent licensing and contractual disputes concerning patent rights.

Firm Highlights

Delaware Bankruptcy Court Crafts Test Concerning Post-Confirmation “Related-To” Jurisdiction

The filing of a bankruptcy case creates an estate consisting of the debtor’s legal and equitable property. The estate will continue until the debtor’s confirmed plan of reorganization or liquidation goes effective. It will then terminate, and the property will either revest in the reorganized debtor or be transferred to another entity such as a post-confirmation liquidation trust. Now and then, bankruptcy judges face this issue: after plan confirmation, when can a liquidation trustee assert state law claims in a lawsuit filed in the bankruptcy court? In terms of a bankruptcy court’s subject matter jurisdiction, the question can be articulated this way: when can a bankruptcy court have post-confirmation related-to jurisdiction over such claims under 28 U.S.C. section 1334?[i] A bankruptcy judge...

You Win Some and Lose Some: Judge Liman Decides Competing Motions to Compel

On September 4, 2026, District Judge Lewis J. Liman (S.D.N.Y.) granted in part and denied in part Plaintiff Lashify, Inc.’s (“Lashify”) motion to compel discovery and denied Defendants Qingdao Network Technology Co., Ltd., d/b/a UCoolMe and Vivicute Limited’s (“UCoolMe”) motion to compel. Lashify, Inc. v. Qingdao Network Tech. Co., Ltd., No. 25-cv-4183 (S.D.N.Y. Sep. 4, 2026). Lashify’s Motion to Compel Lashify moved to compel UCoolMe to provide responses to discovery requests relating to: (i) product samples and raw materials; (ii) manufacturing; (iii) employees and supply chain; (iv) marketing; and (v) finances. Id. at *2. The Court found that each of those topics were relevant under Fed. R. Civ. P. 26(a) and that UCoolMe did not sufficiently respond to discovery requests related to...

U.S. Department of Education Formally Reverts to Title IX Rules from 2020

On September 29, 2026, the U.S. Department of Education (the “ED”) published a Final Rule, “Recodification of Title IX Rules,” formally removing the 2024 Title IX Rule from the Code of Federal Regulations (“CFR”) and restoring the provisions of the 2020 Title IX Rule, with a few exceptions.[1] The 2026 Title IX Rule took effect upon publication. For most schools, colleges, and other recipients of federal education funding, the 2026 Rule does not change day-to-day obligations, because the 2020 framework has governed since early 2025. It does, however, close a chapter of litigation and set the stage for further regulatory action. As we reported in our February 6, 2025 Alert, a federal district court vacated the entirety of the 2024...

AI Companies Find Value in Bankrupt Companies

Spirit Airlines filed for bankruptcy in November 2024 and, after emerging from bankruptcy, filed again in August 2025. During the second case, the company tried to find a way to keep the airline in business but to no avail. In May 2026, Spirit Airlines pivoted towards a wind-down and ceased operations. This summer, as a part of its wind-down, Spirit Airlines began marketing its remaining assets. It had plenty of traditional assets to sell. For example, the debtors’ bid procedures motion filed in May 2026 listed the following assets: takeoff and landing slots at LaGuardia Airport; aircraft hangar(s); corporate headquarters; training center; multi-family residential buildings; ground service equipment; spare engines; flight simulators; aircraft maintenance equipment; and assets related to the...

Barbara Mullin Named Among Benchmark Litigation’s 2026 Top 250 Women in Litigation

Partner Barbara Mullin has been named one of Benchmark Litigation’s 2026 Top 250 Women in Litigation. The ranking uses an extensive research process, including “months of investigation into individual litigators’ professional activities as well as client feedback surveys and one-on-one interviews” to identify women who are “top players” in their field. To learn more, please click here.

Supreme Court Declines to Revisit “Undue Hardship” Standard in Religious Accommodations Cases

On October 5, 2026, the Supreme Court of the United States denied a request by a group of Washington firefighters for further clarification as to whether employers accused of illegally denying religious accommodations pursuant to Title VII of the Civil Rights Act (“Title VII”) must show that the requested workplace adjustments present an actual hardship. Petersen et al. v. Snohomish Regional Fire & Rescue et al., No. 25-1210. The Court’s denial of the petition for certiorari signals a vote of confidence from the Justices in their landmark 2023 Groff v. DeJoy decision, 600 U.S. 447 (2023), which heightened the previous “de minimis” standard for employers’ showing of undue hardship in cases of denied religious accommodations requests. Religious Accommodations and Undue...

Event

Maurene Comey to Speak on New York Criminal Bar Association Panel

On Wednesday, October 21, Partner Maurene Comey will speak on a New York Criminal Bar Association panel titled "Modern Prosecution and Defense of Sex Offenses." Ms. Comey will join Teny Geragos (Founding Partner, Agnifilo Intrater), Moira Penza (Partner, Wilkinson Stekloff), and Isabelle Kirshner (Partner, Clayman Rosenberg Kirshner & Linder LLP) to explore key strategies and considerations for prosecuting and defending modern sex-offense cases. To learn more, please click here.

Law360 Spotlights Firm’s Litigation Department

Joshua Goldberg, Partner and Chair of the firm’s Litigation Department, was profiled by Law360 on the hallmarks of the department, including its trial-ready mindset and commitment to zealous advocacy. The feature also highlights the firm’s single-office operation as a key strength, along with its unique clerkship hiring model, focus on talent development, strategic lateral recruiting, and diverse litigation practice offerings. The profile is featured in Law360’s Litigation Daily and New York Pulse. To read the full profile, please click here.

Data Sale In Spirit Bankruptcy Raises Novel Privacy Risks

In August 2025, Spirit Airlines filed its second bankruptcy less than a year after its first. Although the company tried to find a way to keep the lights on, in May 2026, Spirit Airlines pivoted toward liquidation in the U.S. Bankruptcy Court for the Southern District of New York. Though asset sales are routine practice in large Chapter 11 cases like Spirit Airlines, in this case, the debtors' proposed sale of assets has raised novel data privacy questions that the law may not be ready to answer. To continue reading Daniel A. Lowenthal and Kimberly Black's article on this topic, please click here.

Firm Attorneys Honored by The Legal Aid Society at 2026 Pro Publico Awards

On October 7, 2026, The Legal Aid Society honored Of Counsel David Dykhouse and Associates Kimberly Black and Jillian Horowitz at its annual Pro Bono Publico Awards Ceremony. The Pro Bono Publico Award recognizes pro bono partners for their outstanding contributions to advancing equal justice for New Yorkers. Mr. Dykhouse, Ms. Black, and Ms. Horowitz were honored for their work representing a group of tenants in connection with a real estate group’s bankruptcy filing. Prior to its bankruptcy, the group owned 93 different properties with over 5,000 residential units. The tenants lived in unsafe and unsanitary conditions due to real estate group’s years of neglect. Patterson Belknap filed an objection to the group’s proposed sale of its real estate portfolio, asserting that the...

Delaware Bankruptcy Court Crafts Test Concerning Post-Confirmation “Related-To” Jurisdiction

You Win Some and Lose Some: Judge Liman Decides Competing Motions to Compel

U.S. Department of Education Formally Reverts to Title IX Rules from 2020

AI Companies Find Value in Bankrupt Companies

Barbara Mullin Named Among Benchmark Litigation’s 2026 Top 250 Women in Litigation