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NY Patent
Decisions Blog

  • The NY Patent Decisions Blog of Patterson Belknap Webb & Tyler LLP
  • Judge Abrams Dismisses Case Based on Arguments Made to the PTO During Prosecution

    Hui Li | Lewis V. Popovski
    August 18, 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.

    READ MORE Southern District of New York (S.D.N.Y.)

    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.

    READ MORE Southern District of New York (S.D.N.Y.)

    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.

    READ MORE Southern District of New York (S.D.N.Y.)

    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.

    READ MORE Southern District of New York (S.D.N.Y.)

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

    Lewis V. Popovski | Ryan Mott
    July 26, 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.

    READ MORE Southern District of New York (S.D.N.Y.)

    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.

    READ MORE Southern District of New York (S.D.N.Y.)

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

    Lewis V. Popovski | Ryan Mott
    June 21, 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.

    READ MORE Southern District of New York (S.D.N.Y.)

    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.

    READ MORE Southern District of New York (S.D.N.Y.)

    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.

    READ MORE Southern District of New York (S.D.N.Y.)

    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.

    READ MORE Southern District of New York (S.D.N.Y.)

    Judge Bianco Holds EasyWeb’s “Publishing Patent” Is Not Infringed Even Though It Broadly Claims an Abstract Idea

    Lewis V. Popovski | Ryan Mott
    April 1, 2016

    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.

    READ MORE 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 (the “‘743 patent”).

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

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

    On March 15, 2016, District Judge Alison J. Nathan granted defendant Breckenridge Pharamceutical, 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.

    READ MORE Southern District of New York (S.D.N.Y.)

    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.

    READ MORE Southern District of New York (S.D.N.Y.)

    Default Leads to Broad Injunction Against Infringement

    Lewis V. Popovski | Ryan Mott
    March 21, 2016

    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").

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

    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.

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    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.

    READ MORE Southern District of New York (S.D.N.Y.)

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

    Lewis V. Popovski | Ryan Mott
    February 29, 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”).

    READ MORE Southern District of New York (S.D.N.Y.)

    “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.

    READ MORE Southern District of New York (S.D.N.Y.)

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

    Lewis V. Popovski | Ryan Mott
    January 11, 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 “(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).”

    READ MORE Southern District of New York (S.D.N.Y.)

    Discovery of Foreign Profits and Sales of Accused Products Found Relevant

    Lewis V. Popovski | Abhishek Bapna
    December 1, 2015

    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.

    READ MORE Southern District of New York (S.D.N.Y.)

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

    Lewis V. Popovski | Abhishek Bapna
    November 30, 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.

    READ MORE Southern District of New York (S.D.N.Y.)

    Sale to Corporate Affiliate Sufficient to Exhaust Patent Rights

    Lewis V. Popovski | Ryan Mott
    November 23, 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 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.

    READ MORE Southern District of New York (S.D.N.Y.)