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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 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

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

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

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 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 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

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