Patent Litigation

In her September 2018 summary judgment decision, U.S. District Judge Alison J. Nathan (S.D.N.Y.) found that one of seven patents asserted by Plaintiff Seoul Viosys Co. ("SVC") was invalid, and that SVC was not entitled to a remedy for infringement of another asserted patent.  However, Judge Nathan found that the five remaining patents were valid. Plaintiff's claims related to those five patents were subsequently resolved by stipulation with Defendant P3 International Corp. ("P3").

On October 3, 2019, District Judge Edgardo Ramos  (S.D.N.Y.) granted SBA Communications Corporation’s (“SBA”) motion to transfer to the Eastern District of Texas a dispute over a subpoena served by Fractus, S.A. (“Fractus”) in connection with an ongoing  patent infringement lawsuit filed in the Eastern District of Texas.

On September 11, 2019, Judge J. Paul Oetken issued an order illustrating key factors a patentee is required to prove in order to obtain an injunction barring sales of a defendant’s allegedly infringing products pending the conclusion of the litigation.

SIMO Holding Inc. ("SIMO") sued Defendants uCloudlink Network Technology Ltd. and uCloudlink (America), Ltd. (together, "uCloudlink") in June 2018, alleging infringement of SIMO's U.S. Patent No. 9,736,789 by a line of mobile WiFi hotspot devices and a mobile "world phone" sold by uCloudlink.  In April 2019, Judge Jed S. Rakoff (S.D.N.Y.) granted SIMO's motion for summary judgment of infringement.  At trial, a jury found that uCloudlink willfully infringed and awarded approximately $2.2 million in compensatory damages.  The court thereafter applied a 30% damages enhancement for willfulness.

On August 16, 2019, U.S. District Judge Alison J. Nathan (S.D.N.Y.) denied Plaintiff Seoul Viosys Co.'s ("SVC") motion for reconsideration of the court's September 2018 summary judgment decision, and, on August 21, 2019, the clerk entered judgment in favor of Defendant P3 International Corp. ("P3").

On July 29, 2019, Judge Gregory Woods illustrated how subject matter that is incorporated by reference in the specification can impact the scope of the claims in claim construction.

On June 12, 2019, Judge George B. Daniels (S.D.N.Y.) ruled on claim construction disputes in an action brought by Plaintiff The Topps Company, Inc. (“Topps”) against Koko’s Confectionery & Novelty (“Koko”). Topps alleged infringement of U.S. Patent No. 6,660,316 (“the ’316 patent”), which relates to a candy product comprising a housing with separate chambers.

On June 3, 2019, Judge Jed S. Rakoff (S.D.N.Y.) granted in part Plaintiff SIMO Holdings, Inc. (“SIMO”)’s application for increased damages under 35 U.S.C. § 284.  The ruling followed a series of favorable decisions and verdicts for SIMO, including: summary judgment as to infringement on certain claims of U.S. Patent 9,736,689 (“the ’689 Patent”); a jury award to SIMO for compensatory damages in the amount of $2,183,562.40; and a jury finding that Defendants Hong Kong uCloudlink Network Technology Limited and uCloudlink (America), Ltd. (collectively, “uCloudlink”) had willfully infringed.

On June 11, 2019, District Judge Gregory Woods (S.D.N.Y.) granted Defendants HTC Corp.'s and HTC America, Inc.'s ("HTC America") (collectively, "HTC") motion to transfer a patent infringement case brought by Dynamic Data Technologies, LLC ("DDT") to the Western District of Washington ("W.D. Wash.") pursuant to 28 U.S.C. § 1404(a).

On April 25, 2019, United States District Judge Jed S. Rakoff (S.D.N.Y.) ruled that in the context of a patent, there are times when the conjunctive claim term "and" can be interpreted to mean a disjunctive "or".  Judge Rakoff ruled that this was the case with the claims of U.S. Patent No. 9,736,689. 

On Apri1 15, 2019, District Judge Denise Cote (S.D.N.Y.) denied Defendant St. Lawrence Communications, LLC ("SLC")'s motion for summary judgment that the scope of a covenant not to sue does not preclude a separate lawsuit for patent infringement against LG Electronics, Inc. ("LG") in the Eastern District of Texas. In the E.D. Tex. lawsuit, SLC and its successor-in-interest, EVS Codec Technologies, LLC ("ECT") allege that LG infringes a patent that covers an audio coding standard called "Enhanced Voice Services" ("EVS").

On March 31, U.S. District Judge Gregory H. Woods (S.D.N.Y.) ruled on various summary judgment motions of Plaintiffs Au New Haven, LLC and Trelleborg Coated Systems US, Inc. (together, “Plaintiffs”) and Defendant YKK Corporation and its affiliates (together, “YKK”).  Judge Wood’s decision relied on U.S. Magistrate Judge Sarah Netburn’s (S.D.N.Y.) March 19, 2019 ruling on the parties’ motions to exclude each other’s expert witnesses.

On February 25, 2019, District Judge Kiyo Matsumoto (E.D.N.Y.) ruled on claim construction and indefiniteness disputes in an action brought by Plaintiff Bedgear, LLC against Defendant Fredman Bros. Furniture Co., Inc. d/b/a as Glideaway Sleep Prods. Plaintiff alleged infringement by Defendant of four patents pertaining to pillow covers and bedding systems: U.S. Patent Nos. 8,646,134;  8,887,332; 9,015,883 ("the '883 patent"); and 9,155,408.

On January 30, 2019, District Judge Matsumoto (E.D.N.Y.) ruled that Defendant Presidio Components, Inc. (“Presidio”) was estopped from asserting invalidity grounds that were  not included in its petition for inter partes review against U.S. Patent No. 6,144,547 (“the ’547 patent).

On January 2, 2019, District Judge Paul Oetken (S.D.N.Y.) transferred to the U.S. District Court for the Central District of California ("CDCA") an action brought by Plaintiff NextEngine, Inc. against Defendants NextEngine, Inc. (not a typographical error) and Mark Knighton ("Knighton"). Plaintiff alleged infringement by Defendants of four patents pertaining to 3-D laser scanning and two registered trademarks—"NEXTENGINE" and a gear-shaped logo—in addition to unfair competition under the Lanham Act.

On December 7, 2018, District Judge Oetken (S.D.N.Y.) ruled that Plaintiff Bobcar Media, LLC (“Bobcar”) had not demonstrated that it had standing to sue Defendant Aardvark Event Logistics, Inc. (“Aardvark”) for patent infringement because no competent evidence of a written assignment was produced.

On October 29, 2018, United States District Judge P. Kevin Castel (S.D.N.Y.) issued a decision granting Defendant Bloomberg's Rule 12(b)(6) motion to dismiss iSentium's patent infringement claim because it is directed to subject matter that is not eligible for patenting under 35 U.S.C. § 101.

On September 5, 2018, Chief United States District Judge Colleen McMahon (S.D.N.Y.) issued a decision denying Plaintiff GeigTech's motion for preliminary injunction in its patent and trade dress infringement suit against Defendant Lutron.  GeigTech's motion for expedited discovery was granted-in-part.

On August 27, 2018 U.S. District Judge Brian M. Cogan (E.D.N.Y.) adopted in full the report and recommendation issued by U.S. Magistrate Judge Steven L. Tiscione following a Markman hearing as to the meaning of “movable” in U.S. Patent No. 8,636,507 (the “‘507 Patent”). 

On September 29, 2016, plaintiff OrthoArm Inc. (“OrthoArm”) filed suit against defendants Dentsply GAC International and Dentsply Sirona Inc. (together, “Dentsply”), alleging infringement of the ‘507 Patent by Dentsply’s “In-Ovation Mini” product.  The ‘507 Patent teaches an orthodontic bracket assembly used for dental braces that is “self-ligating,” meaning that it “is manufactured with a built-in, movable shutter that can hold the wire in place and eliminates the need for rubber bands or some other means to hold the archwire.”  Claim 1 requires that the shutter “be movable between a closed position . . . and an open position.”  The parties disputed the meaning of the term “movable.”

On August 8, 2018, Judge Jesse M. Furman (S.D.N.Y.) granted Defendant Synaptive Medical, Inc.’s (“Synaptive”) motion to stay proceedings pending inter partes review (“IPR”) of the patent-in-suit.  Plaintiff Karl Storz Endoscopy-America, Inc. (“KSEA”) sued Synaptive, alleging infringement of U.S. Patent No. 9,468,360 (“the ‘360 patent”).  Less than a month after filing its answer, Synaptive petitioned the Patent Trial and Appeal Board (“PTAB”) for IPR on the validity of the ‘360 patent.  The motion to stay was filed 19 days later.  The PTAB granted the Petition while the stay motion was pending.  Discovery, infringement and invalidity contentions, and claim construction have not yet begun in the case.

On July 19, 2018, United States District Judge Denise Cote (S.D.N.Y.) granted Plaintiff Wine Enthusiast, Inc.'s Rule 12(b)(6) motion to dismiss counterclaims by Defendant Vinotemp International Corp. ("Vinotemp") for infringement of U.S. Design Patent No. D711,936 (the "D936 Patent") but allowed Vinotemp’s trade dress claim in a wine refrigerator to go forward.

On July 18, 2018, United States District Judge Vernon S. Broderick (S.D.N.Y.) denied a motion by defendant Coty Inc. (“Coty”) to dismiss a patent infringement suit brought by plaintiff Lennon Image Technologies, LLC (“Lennon”).

On June 7, 2018, United States Magistrate Judge Cheryl L. Pollak (E.D.N.Y.) denied a motion by defendants—Quest USA Corp. (“Quest”) and Isaac Srour—to strike supplemental infringement contentions submitted by plaintiff PopSockets LLC (“PopSockets”).

On May 24, 2018, Judge Nelson S. Román granted Defendant United States Endoscopy Group, Inc.’s (“Defendant”) Motion to Dismiss for Improper Venue pursuant to Federal Rule of Civil Procedure 12(b)(3).  On August 13, 2013, Plaintiffs CDx Diagnostic, Inc., Shared Medical Resources, LLC, and CDx Medical IP, Inc. (“Plaintiffs”) filed suit against Defendant and various unidentified John Does, alleging infringement of Plaintiffs’ patents.  During discovery, Defendant filed a motion to dismiss for improper venue in light of the recent Supreme Court case TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017).