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Judge Oetken Rules That Disqualification Motion Will Not Fly

On May 1, 2023, United States District Judge J. Paul Oetken (S.D.N.Y.) denied plaintiff Nike, Inc. (“Nike”)’s motion to disqualify counsel for defendant, Lululemon USA Inc. (“Lululemon”). In an action concerning patents...more

Someone Has to Stand Up: Judge Clarke Permits Developer of Crypto Protocol to Intervene in Action Against the Protocol Itself

On September 25, 2023, Judge Jessica Clarke (S.D.N.Y.) granted third party Compound Lab, Inc.'s ("Compound Labs”) motion to intervene in a patent infringement action filed by True Return Systems LLC (“True Return”) against...more

Judge Failla Not “On Board” with Amtrak’s Section 101 Arguments in Train-Traffic-Control Case

In a patent case involving claims directed to train-traffic-control systems, Judge Failla of the Southern District of New York denied Defendant Amtrak’s motion to dismiss, rejecting Amtrak’s arguments that Plaintiff Railware,...more

Judge Gonzalez Holds that Service By E-mail on a Chinese Defendant Does Not Run Afoul of Hague Convention

On July 28, 2023, Judge Gonzalez (E.D.N.Y.) denied Defendant Shenzhen Keenray Innovations Ltd.’s (“Keenray”) motion to vacate the December 18, 2022 Order for Entry of a Preliminary Injunction ("Preliminary Injunction Order”)....more

Judge Oetken Construes “Analog”: Can Anything be Truly Digital?

On September 5, 2023, United States District Judge J. Paul Oetken (S.D.N.Y.) construed several terms raised by Plaintiff Dynamics, Inc.(“Dynamics”) and Defendant Samsung Electronics Co., Ltd. (“Samsung”), including “Analog...more

This Case Can Wait – Judge Rochon Finds Stay Warranted After Institution of IPR

On August 4, 2023, United States District Judge Jennifer L. Rochon (S.D.N.Y.) granted Plaintiff Nanobebe US Inc.’s (“Nanobebe”) motion to stay the case pending the resolution of an instituted inter partes review (“IPR”)...more

Judge Parker Finds GE’s Privileged Documents Show No Signs of Fraud in Medical Imaging Devices Misappropriation Case

On August 8, 2023, Judge Katharine H. Parker (S.D.N.Y.) denied Spectrum Dynamics Medical Limited’s (“Spectrum”) motion to compel the production of documents that it argued fell under the crime-fraud exception to the...more

Judge Engelmayer Holds that Suit Based on Cancelled Patent Claims Should Be Dismissed Without Prejudice

On June 5, 2023, Judge Engelmayer (S.D.N.Y.) dismissed Plaintiffs' infringement claims against Defendants. After the U.S. Patent & Trademark Office cancelled the asserted patent—U.S. Design Patent No. D746,078—Defendants...more

Halfway There: Judge Wang Recommends Dismissing Design Patent Claims But Allowing Utility Patent Claims

On March 23, 2023, Magistrate Judge Wang (S.D.N.Y.) recommended granting-in-part and denying-in-part Defendants’ T-Mobile, USA, Inc. and Samsung Electronics America, Inc.’s (collectively, “Defendants”) motion to dismiss the...more

If at First You Don’t Succeed, Amend: Judge Cronan Finds Digital Video Patents Directed to Unpatentable Abstract Ideas, But Grants...

On March 24, 2023, Judge John P. Cronan found the asserted claims of two patents to be directed to abstract ideas under 35 U.S.C. § 101, but sua sponte granted leave to amend the complaint and plead additional facts relevant...more

Judge Engelmayer Finds Claims for Timekeeping to be an Abstract Idea: “Whether by Quill or by Computer, Humans Have Undertaken...

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...more

Judge Schofield Finds Assertion of “Weak” Patent Claims Not Exceptional for Purposes of Awarding Attorney’s Fees under 35 U.S.C. §...

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...more

Reflecting on All Factors, District Judge Ronnie Abrams Grants Pre-Institution Stay in lululemon Mirror Case

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. ...more

Judge Roman Hits “Stop” on State Law Claims in Treadmill Patent Infringement Case

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...more

Picking an Outfit Is Not Patentable: Judge Aaron Recommends Invention Ineligible Under Section 101

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...more

Judge Scanlon Provides Guidance for Patent Holders Seeking Default Judgment

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...more

Who’s in Control?- Judge Furman Finds Artist Control of Playlist Not Patentable Subject Matter Under Section 101

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...more

Judge Gonzalez Grants Preliminary Injunction to Accused Infringer For “What Appears to Be a Fraudulent Claim to a Patent”

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,...more

Judge Lehrburger Finds That Original Complaint Can Provide Requisite Knowledge For Willfulness Allegations in Second Amended...

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...more

Judge Lehrburger Recommends Deferring Claim Construction Until Full Record is “Graspable”

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...more

We Will Just Have to Wait – Judge Liman Grants Motion to Stay Pending Resolution of Parallel Motion to Dismiss

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...more

Product or Person, Not Both: Judge Hellerstein Dismisses Complaint for Alleging That the Accused Instrumentality is the Defendant

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...more

Right Place at Right Time Is Not Patentable: Judge Carter Finds Location-Based Reminder Function Ineligible for Patenting Under...

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...more

“Mark it Zero”: Judge Cote Dismisses Claims to Pre-Suit Damages For Failure to Satisfy Patent Marking Requirements

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...more

Magistrate Judge Figueredo “Shines a Light” on Discovery Standards for Potential Non-Infringing Alternatives

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”)...more

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