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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

Judge Failla Transfers Case to Delaware Based on “When the Case Was Filed”

On July 20, 2022, Magistrate 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...more

8/8/2022  /  Patent Litigation , Patents , Venue

Judge Chen “Backs” Construction of Garment Claims, Albeit with Alterations

On July 15, 2022, United States District Court Judge Pamela K. Chen (S.D.N.Y.) issued a Memorandum and Order setting forth the construction of two disputed terms relating to garments in Shaf International v. First...more

No Two Bites at the Apple: Judge Gorenstein Finds Claim Preclusion Prevents Lawsuit

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...more

Judge Gorenstein Rules Either Use Objections or Lose Them in Discovery Responses

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. In a case involving shower curtains, Plaintiff Sure Fit Home Prods. moved...more

Judge McMahon Finds That No Construction Is Necessary: “Period. End of Story”

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...more

Judge Caproni Shelves Infringement Action Concerning Store Partitions Before IPR Institution

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...more

100% Discount on Unpatentable Claims: Judge Liman Holds System for Processing Discounts in Financial Transactions to be Ineligible...

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...more

Magistrate Judge Wicks Stays Litigation Before IPR Institution in Skin-Tightening Dispute

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...more

You Win Some and Lose Some: Judge Koeltl Finds Claims Patent-Eligible But Not Infringed

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...more

Judge DeArcy Hall Finds Asserted Claims Indefinite Because “Absorbing” Heat via an Endothermic Chemical Reaction Cannot Mean...

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...more

Judge Gardephe Gives Bytemark a Second Bite Against Xerox

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...more

Judge Gardephe Declines to “Lock” Down Claim Construction Terms of Computer Padlock Patent

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...more

Judge Failla “Closes the Book” on Patentholder’s Inducement Claim Against Law Firm

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...more

Curtain Wars Continue – Judge Schofield Construes Design Patent Claim Term

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,...more

Judge Vyskocil Allows Amino Acid Case to Go Forward Despite “Group Pleading” and “Inconsistent Allegations” of Infringement

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...more

You Don’t Belong Here – Judge Ramos Grants Defendants’ Motion to Dismiss for Lack of Personal Jurisdiction and Improper Venue

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...more

Judge Preska Allows Laryngoscope Case to Precede, Albeit With Fewer Claims

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 judgment on the pleadings in Berall v. Pentax of America, Inc., et al.  All in all, as...more

Judge McMahon Sua Sponte Stays Case Until End of Year: “Enough really is enough.”

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...more

Judge Chen Notes Split in Authority as to Whether Claim Construction is a Dispositive Pretrial Matter

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,”...more

You Can Keep Your Curtains: Judge Schofield Denies Preliminary Injunction

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,...more

Judge Netburn Grants Transfer Venue Motion

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...more

Judge Cogan Acknowledges the Error of Precluding Evidence of Secondary Considerations of Nonobviousness

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...more

Judge Oetken Rejects Fee Award Despite Plaintiff’s Failure to Prove Standing

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...more

Magistrate Judge Bulsara “Blocks” Indefiniteness Argument Against Sunscreen Dispensing Patent

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)...more

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