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Magistrate Judge Reyes Recommends Dismissal of DJ Action Against Assignee That Never Owned The Patent-In-Suit

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...more

Judge Tiscione Rules Patent Misuse Is Purged When Infringement Tainted Lawsuit Is Dismissed

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...more

Judge Schofield Rejects Application of Rare Equitable Estoppel Defense

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...more

2/19/2021  /  Dismissals , Estoppel , Google , Patents

Judge Hellerstein Upholds Infringement by Microsoft of Kaufman’s “And/Or” Patent

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....more

Judge Ramos Finds Forum Selection Clause of NDA Implicates Confidentiality and Not IP Rights and Allows IPRs to Proceed

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...more

Judge McMahon Rules Outside Counsel’s Pre-Suit Download of Online Dating App Does Not Bind Party to Arbitration Agreement

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...more

A Case That Really “Stands Out” in a Crowd: Judge Abrams Awards Attorneys’ Fees Where Plaintiff Ignores Pleading Deficiencies For...

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...more

Judge Rakoff Sanctions Patentee for Sharing Confidential Documents with Counsel in Overseas Trade Secret Case

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,...more

Judge Brown Disagrees with Both Parties on What the Claimed Invention is and Invalidates Wearable Content Patents Under 35 U.S.C....

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...more

Judge Glasser Holds Judicial Estoppel Does Apply Retroactively

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....more

Speedfit’s Treadmill Patent “Runs Into” On-Sale Bar Invalidity Due to Collateral Estoppel Stemming from a Prior Litigation on a...

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....more

Judge Furman Sends Video Surveillance Case Packing Because an Employee’s Apartment is Not “a Place of the Defendant” Even Though...

On September 18, 2020, U.S. District Court Judge Jesse M. Furman ruled that an employee’s apartment in the jurisdiction did not constitute a place of business of Defendant Safety Vision even though Safety Vision’s website...more

Judge Rakoff Refuses to “Ice” Diamond Patent Inequitable Conduct Allegations

On August 31, 2020, United States District Court Jed S. Rakoff denied plaintiffs Carnegie Institute of Washington and M7D Corporation (“Carnegie”)’s motion to dismiss the defendants’ counterclaims for inequitable conduct,...more

Judge Netburn Finds Complaint Doesn’t Need to Attach Photographs of Accused Exercise Devices To Adequately Plead Direct...

On August 7, 2020, Magistrate Judge Sarah Netburn (S.D.N.Y.) recommended that Defendants’ Motion to Dismiss the Complaint of Plaintiff William Araujo (“Plaintiff”) for failure to state a claim under Federal Rule of Civil...more

Judge Woods Zips Up Loose Ends and Readies Zipper Dispute For Trial

On July 30, 2020, U.S. District Judge Gregory H. Woods (S.D.N.Y.) ruled on a second round of summary judgment motions brought by defendant YKK Corp. and its affiliates (together, “YKK”) against plaintiffs Au New Haven, LLC...more

Judge Gardephe Adopts Judge Moses’ Recommendation Regarding Damages

On July 23, 2020, United States District Court Judge Paul G. Gardephe adopted in full the Report and Recommendation (“R&R”) of Magistrate Judge Barbara Moses. The procedural history of the case and analysis of Judge Moses’...more

You Can’t Clasp That: Judge Schofield Finds No Infringement Under Doctrine of Equivalents Due To Prosecution History Estoppel

On July 16, 2020, United States District Court Judge Lorna G. Schofield granted summary judgment of non-infringement for Defendant Verizon Services Corp (“Verizon”). Pro se plaintiff Chikezie Ottah (“Ottah”) sued Verizon for...more

Judge Matsumoto Holds That “Very Small Side Load” Is Indefinite and That “Retention Element” Is a Means-Plus-Function Claim...

On July 13, 2020, District Judge Matsumoto (E.D.N.Y.) entered a claim construction order construing several claim terms recited in Plaintiff Uni-Systems, LLC’s (“Plaintiff”) U.S. Patent Nos. 6,789,360 (“the ’9360 patent”) and...more

You’re Too Late: Judge Torres Finds Party Missed Deadline for Objecting to Award of Attorney’s Fees

On June 22, 2020, United States District Court Judge Analisa Torres ruled that Plaintiff LCS Group, LLC (“LCS”) and its counsel, Stephen Lobbin, and Foundation Law Group LLP, were jointly and severally liable for attorney’s...more

Judge Glasser Rules Patentee’s PTAB Arguments Against Standing Doom Breach of License Action

On June 17, 2020, United States District Judge I. Leo Glasser (E.D.N.Y.) ruled on the parties’ objections to reports and recommendations issued by U.S. Magistrate Judge Stephen M. Gold, and ultimately granted a motion for...more

Overdrawn: Judge Oetken Dismisses Reciprocal Deposit Patents under Section 101

On May 29, 2020, United States District Judge J. Paul Oetken (S.D.N.Y.) granted Defendant StoneCastle’s Rule 12(b)(6) motion to dismiss for failure to claim patent eligible subject matter under 35 U.S.C. § 101....more

Joint Inventorship Claim for Online Dating Patent Ends in Heartbreak, Attorneys’ Fees Award

After a series of procedurally complex twist and turns that resulted in an agreement by plaintiff to not oppose defendants’ motion for summary judgment, U.S. District Judge Paul A. Engelmayer (S.D.N.Y.) granted defendants...more

What is Produced in the Southern District, Stays in the Southern District: Judge Rakoff Denies Plaintiff’s Requests to Use...

Last year we reported on the patent dispute between Plaintiff SIMO Holdings, Inc. (“SIMO”) and Defendants Hong Kong uCloudlink Network Technology Limited and uCloudlink (America), Ltd. (collectively, “uCloudlink”). ...more

Judge Cote Reconsiders Dismissal and Reinstates Willfulness Allegations

On April 30, 2020, Judge Cote granted reconsideration of her March 4 dismissal of Plaintiffs Signify North America Corp. and Signify Holding B.V.’s (“Signify”) allegations of willful infringement against Defendant Axis...more

Judge Moses Recommends Awarding to Plaintiff Defendant's Profits Under 35 U.S.C. § 289 for Infringement of a Design Patent

On April 21, 2020, Magistrate Judge Barbara Moses (S.D.N.Y.) issued a recommendation that Plaintiff Evriholder Products LLC (“Evriholder”) be awarded: (1) damages under 35 U.S.C. § 289 for infringement of U.S. Patent No....more

4/27/2020  /  Patent Infringement , Patents
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