On July 29, 2025, Judge Edgardo Ramos (S.D.N.Y.) granted plaintiff Kannuu Pty, Ltd. (“Kannuu”) leave to amend its complaint to allege infringement of two newly-issued patents, after the U.S. Patent and Trademark Office (“USPTO”) invalidated the five patents Kannuu originally asserted.
In 2012 and 2013, Kannuu pitched to Samsung its search and navigation technology for use in Smart TVs and Blu-ray players. After negotiations broke down, Kannuu filed a complaint alleging that Samsung breached the parties’ non-disclosure agreement and infringed five of Kannuu’s patents. Judge Ramos then stayed the case pending conclusion of USPTO inter partes reviews and ex parte reexaminations of the patents-in-suit.
In July 2024, after the USPTO found all five patents invalid, Kannuu moved to amend the complaint to replace them with two new patents issued while the case was stayed. Judge Ramos granted Kannuu’s motion. In doing so, the court noted that leave to amend “should be freely granted” when, like here, the new patents implicated “the same infringing feature,” there was “no indication that Kannuu acted in bad faith or that Samsung [would be] unduly prejudiced,” and Samsung failed to show that the new claims would be “futile” because the new patents are also invalid. Finally, Judge Ramos rejected Samsung’s argument that the court lost supplemental jurisdiction over the claim for breach of contract when the USPTO invalidated the original asserted patents, holding that Kannuu could “cure [any] jurisdictional issue by amending its complaint” to assert new patents.
Kannuu Pty, Ltd. v. Samsung Electronics Co., Ltd., et al., No. 19 Civ. 4297 (ER) (S.D.N.Y. July 29, 2025)
