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Judge Matsumoto Declines to Hear Invalidity Arguments on Patent Previously Cancelled in IPR

On March 27, 2018, District Judge Matsumoto (E.D.N.Y.) issued an 83-page decision on the parties' summary judgment briefing, which covered ten issues across three patents relating to multilayer ceramic capacitors. ...more

Successful Section 101 Motion to Dismiss: Digital Ad Delivery Is Abstract Concept

On March 1, 2018, United States District Judge Paul A. Engelmayer (S.D.N.Y.) granted defendants’—Charter Communications, Inc. and Spectrum Management Holding Company, LLC (together, “Charter”)—motion to dismiss a patent...more

Mattress Wars: Casper’s Inequitable Conduct Counterclaim Against Serta Remains

On January 25, 2018, United States District Judge Alvin K. Hellerstein (S.D.N.Y.) denied plaintiff Serta Simmons Bedding, LLC’s (“Serta”) motion to dismiss defendant Casper Sleep Inc.’s (“Casper”) counterclaim and affirmative...more

Judge Koeltl Agrees that “Access” to Confidential Information is Enough to Trigger a Prosecution Bar

On November 20, 2017, District Judge John G. Koeltl (S.D.N.Y.) approved a prosecution bar for “any individual who gains access” to confidential material. In addition, Judge Koeltl determined that post-issuance proceedings,...more

Judge Netburn Holds That a Motion for Reconsideration is Not a Vehicle for Taking a “Second Bite at the Apple”

On November 29, 2017, United States Magistrate Judge Sarah Netburn (S.D.N.Y.) denied plaintiff Seoul Viosys Co., Ltd.'s ("Seoul Viosys") motion for reconsideration of the Court's claim construction ruling....more

Judge Matsumoto Cuts Plaintiff a Little “Slack” in Claim Construction Ruling

On November 20, 2017, United States District Court Judge Kiyo A. Matsumoto issued a claim construction ruling in a suit between two fitness-related companies: Speedfit LLC (“Speedfit”) and Woodway USA, Inc. (“Woodway”)....more

Judge Sweet Allows a Plaintiff to Amend Its Complaint More Than 2 Years After It Was Originally Filedtheat

On October 26, 2017, District Judge Robert W. Sweet (S.D.N.Y.) granted plaintiff Olaf Soot Design, LLC (“OSD”) leave to amend its June 25, 2015 Complaint against Daktronics, Inc. and Daktronics Hoist, Inc. (collectively,...more

4 Out of 5 IPRs Ain’t Bad: Judge Oetken Grants Motion to Stay Pending Resolution of IPR Proceedings Despite Advanced Stage of...

On October 27, 2016, District Judge J. Paul Oetken (S.D.N.Y.) granted defendant Comcast Corp.'s ("Comcast") motion to stay the case pending resolution of inter partes review ("IPR") proceedings instituted by the Patent Trial...more

Judge Broderick Finds That TC Heartland Affected a “Sea Change” and Grants Motion to Dismiss For Improper Venue

On October 20, 2017, District Judge Vernon Broderick (S.D.N.Y.) granted Defendants' Watters Design, Inc.'s, Essense of Australia, Inc.'s, and David's Bridal, Inc.'s motions to dismiss under Federal Rule of Civil Procedure...more

Judge Pauley Rules “About” Means “Approximately”, Maybe!

On September 19, 2017, United States District Court Judge William H. Pauley (S.D.N.Y.) issued a claim construction ruling on the word “about” across two patents directed to topical compositions containing naftifine. Both the...more

Judge Sweet Holds that Standing Question Cannot Be Resolved Until Trial

On September 14, 2017, District Judge Robert W. Sweet (S.D.N.Y.) denied the motion of Ferring B.V., et al. (“Ferring”) to dismiss for lack of standing a patent infringement suit brought by Allergan, Inc., et al. (“Allergan”)....more

When Does “On” Mean “On”? Judge Netburn Holds That It Depends.

On September 11, 2017, Magistrate Judge Sarah Netburn (S.D.N.Y.) issued a claim construction ruling on, among other things, the construction of the word “on” across four different patents directed to semiconductor lasers. In...more

Judge Carter Rules “Customers” Don’t Fit Within the “Customer Exception”

RegenLab USA LLC (“RegenLab”) is the exclusive licensee of U.S. Patent 8,529,957 (“the ’957 patent”) entitled “Cell Preparations for Extemporaneous Use, Useful for Healing and Rejuvenation In Vivo.” RegenLab , who markets and...more

Judge Oetken Construes Twenty-Nine Claim Terms in “Relatively Large” Markman Opinion

On August 10, 2017, District Judge Paul Oetken (S.D.N.Y.) construed 29 claim terms in a dispute between Defendant Comcast Corporation, et al. (“Comcast”) and Plaintiff Rovi Guides, Inc. and its subsidiaries (“Rovi”). The...more

Judge Cote Rules Claim Preamble is Limiting and Not So “Elastic” as to Be Indefinite

On August 4, 2017, District Judge Denise Cote issued a claim construction order that held the preamble of claim 1 of Lumos Technology Co., Ltd.'s ("Lumos") U.S. Patent No. 8,746,906 ("the '906 patent") is limiting and that a...more

Judge Oetken sua sponte Stays Case Pending Ex Parte Reexamination after Three Previous Denials

On August 2, 2017, Judge J. Paul Oetken (S.D.N.Y.) denied Plaintiff Infinity Headwear & Apparel, LLC’s (“Infinity”) motion for summary judgment as to patent infringement, false patent marking and false advertising and denied...more

Forum Selection Clause Not Triggered Based on Statements Made in Another Forum

On May 15, 2017, District Judge Paul Oetken (S.D.N.Y.) denied the motion of Comcast Corporation, et al. (“Comcast”) for reconsideration of the Court’s prior Order dated December 14, 2016. The Court had earlier denied...more

One Out of Three Isn’t Bad, But Case Moves from New York to Florida Anyway

On April 26, 2017, District Judge Gregory H. Woods (S.D.N.Y.) found that one of the three defendants was subject to personal jurisdiction in New York and denied a motion to dismiss for lack of personal jurisdiction, but...more

Judge Swain Finds a “Book” by Any Other Cover is Still Not a “Camera”

Pro se Plaintiff Chikezie Ottah (“Plaintiff”) sued fifteen automobile companies for patent infringement alleging that defendants’ car mounted cameras infringe U.S. Patent No. 7,152,840 (“the ’840 patent”) entitled “Book...more

Judge Forrest Holds that Pre-Suit Knowledge of an Application is Not Pre-Suit Knowledge of a Patent

On December 7, 2016, Judge Katherine B. Forrest (S.D.N.Y.) granted defendant Red Box’s partial motion for summary judgment on plaintiff Verint’s inducement and willfulness claims concerning three of the six patents in suit. ...more

Judge Cote Holds Attorneys Liable for Trying to Keep a “Baseless” Case in E.D. Tex. that Sought Nuisance Payments from Numerous...

On December 8, 2016, District Judge Denise Cote (S.D.N.Y.) granted defendants Gust, Inc.’s (hereinafter, “Gust”) motion for attorneys’ fees and costs under 35 U.S.C. § 285 and 28 U.S.C. § 1927 against plaintiff AlphaCap...more

Judge Forrest Vacates Judge Scheindlin’s Prior Decision Invalidating TiVo Patents Under § 101

On November 29, 2016, District Judge Katherine B. Forrest (S.D.N.Y.) vacated the February 22, 2016 decision of Judge Shira A. Scheindlin, which had granted a motion to dismiss, brought by alleged infringers TNS Media...more

Judge Sullivan Holds “Substantially” the Same is Close Enough for Collateral Estoppel

On September 30, 2016, District Judge Richard J. Sullivan (S.D.N.Y.) granted the defendants’ motion to dismiss, holding one of the two asserted patents invalid under principles of collateral estoppel. Plaintiff Joao...more

Judge Oetken Holds that Amendments Made During Ex Parte Reexamination Are not Effective Until Grant of Reissue Patent

On September 26, 2016, District Judge Paul Oetken (S.D.N.Y.) denied defendant Jay Franco & Sons’ (“Franco”) motion to dismiss, granted plaintiff Infinity Headwear & Apparel’s (“Infinity”) motion for leave to amend to assert...more

Judge Hellerstein Holds That “Arranged On” Means “Connected In Some Fashion”

On September 30, 2016, District Judge Alvin Hellerstein (S.D.N.Y.) denied defendant Nautilus, Inc.’s (“Nautilus”) motion for summary judgment of non-infringement holding that “disposed on said elongated member” does not...more

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