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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 Oetken Rules Peloton Can Ride Away from Invalid Patent

On April 2, 2020, Judge Oetken granted summary judgment of anticipation and resolved a variety of contract and tort claims in a long-running feud between VR Optics (“VRO”), Peloton Interactive, Inc. (“Peloton”), and Peloton’s...more

Judge Ramos Finds “Bad Faith” Enforcement of a Patent is Not Patent Misuse

On March 23, 2020, U.S. District Court Judge Edgardo Ramos granted a motion to dismiss counterclaims and strike affirmative defenses because they were not plausible and did not meet the heightened pleading requirements of...more

Judge McMahon’s Motions in Limine Rulings Clear Way for Ferring v. Serenity Trial

The years-long dispute may finally be headed for trial between Ferring Pharmaceuticals, Inc. and its affiliates, Serenity Pharmaceuticals, LLC, and Reprise Biopharmaceutics, LLC over patents claiming a sublingual application...more

Judge Woods Finds Dating App Patent Doesn’t “Match Up” With Section 101

On March 6, 2020, United States District Court Judge Gregory H. Woods (S.D.N.Y.) granted Defendant Humor Rainbow Inc.’s (“Humor”) motion to dismiss. The Court found that the asserted claim of U.S. Patent 6,685,479 (“the ’479...more

As Trial Concludes, Judge Hellerstein Issues, then Reconsiders, Patent Marking Ruling

As trial in Kaufman v. Microsoft Corporation wound down yesterday, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) granted Defendant Microsoft Corporation (“Microsoft”)’s motion to limit damages to those...more

Judge Hellerstein Holds Post-Suit Knowledge of Patent Inadequate to Survive Summary Judgment of No Willful Infringement

On January 22, 2020, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) denied Defendant Microsoft Corporation (“Microsoft”)’s motion for summary judgment as to non-infringement, but granted Microsoft’s motion...more

Judge Moses Holds Awards of More Than $1 are Not “Nominal”

Judge Paul G. Gardephe recently issued an Order of Default against Defendant Deep Blue Health New Zealand Ltd. (“Deep Blue Health”). ...more

Judge Hellerstein Allows Damages Expert Testimony as “Posture” Isn’t Everything

On January 14, 2020, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) denied Plaintiff Michael Philip Kaufman’s motion to exclude testimony from Defendant Microsoft Corporation (“Microsoft”)’s damages...more

Plaintiff’s Filing of Action Outside of State of Residence Supports Transfer of Action

On January 14, 2020, District Judge Ronnie Abrams (S.D.N.Y.) granted Defendant LinkedIn Corp.'s ("LinkedIn") motion, pursuant to 28 U.S.C. § 1404(a), to transfer to the Northern District of California a patent infringement...more

Judge Abrams Analyzes Application of Collateral Estoppel Doctrine Even Though Parties Didn’t Dispute It

On January 13, 2020, District Judge Ronnie Abrams (S.D.N.Y.) granted Defendant Chegg Inc.'s ("Chegg") motion to dismiss Plaintiff NetSoc, LLC's ("NetSoc") complaint on the ground that NetSoc is collaterally estopped from...more

Judge Castel Holds that Contemporaneous Documents Speak Louder than Words

On September 27, 2019, Judge P. Kevin Castel (S.D.N.Y) concluded that Serenity Pharmaceuticals Corporation (“Serenity”) and Reprise Biopharmaceutics, LLC (“Reprise”) had failed to prove by clear and convincing evidence that...more

Judge Abrams Finds That Working from Home Does Not Mean Venue is Proper

On October 2, 2019, District Judge Ronnie Abrams (S.D.N.Y.) granted Defendant Quora Inc.’s (“Quora”) motion to transfer the case to the Northern District of California....more

Judge Netburn Finds Defendant That Won Partial Summary Judgment Is a "Prevailing Party" for Purposes of Attorneys' Fees

In her September 2018 summary judgment decision, U.S. District Judge Alison J. Nathan (S.D.N.Y.) found that one of seven patents asserted by Plaintiff Seoul Viosys Co. ("SVC") was invalid, and that SVC was not entitled to a...more

Lights Out: Judge Carter Grants Motion to Dismiss For Improper Venue

On September 30, 2019—more than two years after Plaintiff, Electric Mirror, LLC (“Electric Mirror”) first brought suit for patent infringement in the Southern District of New York—United States District Judge Andrew L. Carter...more

Judge Ramos Determines That Rule 45 Allows the Person Subject to a Subpoena—Not a Party—to Consent to Transfer

On October 3, 2019, District Judge Edgardo Ramos (S.D.N.Y.) granted SBA Communications Corporation’s (“SBA”) motion to transfer to the Eastern District of Texas a dispute over a subpoena served by Fractus, S.A. (“Fractus”)...more

Judge Cote Dismisses Complaint that Doesn’t Adequately Allege Infringement of an Abstract Idea

On October 2, 2019, District Judge Denise Cote (S.D.N.Y.) granted Defendant Green Dot Corporation's ("Green Dot") motion to dismiss Plaintiff Western Express Bancshares, Inc.'s ("Western Express") complaint on the grounds...more

Judge Oetken Clarifies the Evidentiary Proof Needed for a Preliminary Injunction

On September 11, 2019, Judge J. Paul Oetken issued an order illustrating key factors a patentee is required to prove in order to obtain an injunction barring sales of a defendant’s allegedly infringing products pending the...more

Judge Hall Holds an Answer Waived Privilege by Selectively Pleading Protected Communications

On September 19, 2019, U.S. District Judge LaShann DeArcy Hall denied an appeal by the defendant in a litigation to correct the inventorship of patents of rulings by Magistrate Judges Gary R. Brown and Peggy Kuo that the...more

Judge Rakoff Awards Damages Based On Plaintiff’s Estimate of International Sales

SIMO Holding Inc. ("SIMO") sued Defendants uCloudlink Network Technology Ltd. and uCloudlink (America), Ltd. (together, "uCloudlink") in June 2018, alleging infringement of SIMO's U.S. Patent No. 9,736,789 by a line of mobile...more

Licensee May Bring Infringement Suit, For Now

On September 11, 2019, United States District J. Paul Oetken denied Defendants Tekno Products, Inc. and Max Deluxe Limited (“Max Deluxe”)’s motion for judgement on the pleadings in a patent infringement action pending in the...more

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