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.
by Lewis V. Popovski and Ryan J. Sheehan on March 17, 2023
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.
Go
by Lewis V. Popovski and Matthew B. Weiss on March 15, 2023
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.
Go
by Lewis V. Popovski and Julie A. Simeone on March 13, 2023
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.
Go
by Lewis V. Popovski and Amanda S. First on March 7, 2023
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).
Go
by Lewis V. Popovski and George S. Soussou on February 27, 2023
On February 21, 2023, United States Magistrate Judge Stewart D. Aaron (S.D.N.Y.) recommended that Defendant FindMine, Inc.’s (“FindMine”) motion to dismiss the complaint of Plaintiff Stylitics, Inc. (“Stylitics”) be granted for failure to claim patent-eligible subject matter. Stylitics asserted that FindMine infringed U.S. Patent No. 11,100,552 (“the ’552 patent) by...
Go
by Lewis V. Popovski and Basil Williams on February 14, 2023
You are a patent holder seeking default judgment against an infringer. What requirements must you meet to obtain default judgment, damages, attorneys’ fees, and pre-judgment interest? Magistrate Judge Scanlon recently articulated those requirements in a patent case involving drinking glasses with built-in cigar holders. See Godinger Silver Art Ltd. v....
Go
by George S. Soussou and Lewis V. Popovski on February 7, 2023
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.”
Go
by Lewis V. Popovski and Abhishek Bapna on January 12, 2023
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.
Go
by Lewis V. Popovski and Basil Williams on January 5, 2023
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).
Go
by Basil Williams and Lewis V. Popovski on December 15, 2022
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
Go
by George S. Soussou and Lewis V. Popovski on October 25, 2022
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.
Go
by Abhishek Bapna and Lewis V. Popovski on September 16, 2022
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).
Go
by George S. Soussou and Lewis V. Popovski on September 14, 2022
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.
Go
by Lewis V. Popovski and Julie A. Simeone on September 13, 2022
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.
Go
by Amanda S. First and Lewis V. Popovski on August 29, 2022
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).
Go
by Abhishek Bapna and Lewis V. Popovski on August 4, 2022
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.
Go
by Julie A. Simeone and Lewis V. Popovski on July 26, 2022
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.
Go
by George S. Soussou and Lewis V. Popovski on June 29, 2022
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.
Go
by Abhishek Bapna and Lewis V. Popovski on June 1, 2022
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.
Go
by Lewis V. Popovski on May 19, 2022
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.
Go
by Lewis V. Popovski and Ryan J. Sheehan on May 9, 2022
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.
Go
by Lewis V. Popovski and Amanda S. First on May 9, 2022
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).
Go
by Lewis V. Popovski on April 11, 2022
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.
Go
by George S. Soussou and Lewis V. Popovski on March 16, 2022
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.
Go
by Ryan J. Sheehan and Lewis V. Popovski on March 1, 2022
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.”
Go
by Amanda S. First and Lewis V. Popovski on January 18, 2022
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).
Go
by Lewis V. Popovski on January 18, 2022
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.
Go
by Amanda S. First and Lewis V. Popovski on December 15, 2021
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).
Go
by Lewis V. Popovski and George S. Soussou on October 20, 2021
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.
Go
by George S. Soussou and Lewis V. Popovski on October 5, 2021
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.
Go
by Ryan J. Sheehan and Lewis V. Popovski on October 5, 2021
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.
Go
by Lewis V. Popovski and Julie A. Simeone on September 30, 2021
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.
Go
by Lewis V. Popovski on August 17, 2021
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.
Go
by Abhishek Bapna and Lewis V. Popovski on August 3, 2021
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.
Go
by George S. Soussou and Lewis V. Popovski on June 2, 2021
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.
Go
by Abhishek Bapna and Lewis V. Popovski on May 5, 2021
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).
Go
by George S. Soussou and Lewis V. Popovski on May 5, 2021
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.
Go
by Lewis V. Popovski on April 22, 2021
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”).
Go
by Lewis V. Popovski on March 3, 2021
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.
Go
by Matthew B. Weiss and Lewis V. Popovski on March 2, 2021
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.
Go
by Lewis V. Popovski on March 1, 2021
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”).
Go
by Abhishek Bapna and Lewis V. Popovski on February 18, 2021
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.
Go
by George S. Soussou and Lewis V. Popovski on January 29, 2021
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.
Go
by Matthew B. Weiss and Lewis V. Popovski on January 26, 2021
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.
Go
by Lewis V. Popovski on December 23, 2020
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.
Go
by Julie A. Simeone and Lewis V. Popovski on December 16, 2020
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.
Go
by Lewis V. Popovski on December 10, 2020
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.
Go
by Abhishek Bapna and Lewis V. Popovski on December 2, 2020
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.
Go
by Lewis V. Popovski on October 12, 2020
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.
Go
by Abhishek Bapna and Lewis V. Popovski on September 28, 2020
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.
Go