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 as to willful infringement, holding that willfulness should not go to the jury without record evidence of pre-suit knowledge of the patent-in-suit.

Microsoft argued that its accused “Dynamic Data” product does not infringe the patent-in-suit, but Judge Hellerstein held that whether Microsoft’s product meets the claim’s “automatic” limitations are “questions of fact appropriately resolved by a jury.”  In addition, Judge Hellerstein identified an issue of claim construction implicit in Microsoft’s non-infringement arguments—whether “and” may be read as “and/or”—and concluded that he “cannot decide this issue as a matter of law prior to a trial developing the facts surrounding the context of the [patent-in-suit] and Defendant’s allegedly infringing process.”

However, Judge Hellerstein granted Microsoft’s motion for summary judgment and dismissed Plaintiff Michael Philip Kaufman’s allegations of willful infringement.  Although Plaintiff identified evidence that Microsoft was aware of the patent-in-suit’s inventor’s work, and even knew of the application for the patent-in-suit, Judge Hellerstein held that “this is insufficient as a matter of law” because actual knowledge of the issued patent is required.

Judge Hellerstein acknowledged that the Eastern District of Texas has seemingly held that post-suit knowledge of the patent-in-suit, by way of the filing of the complaint, is sufficient evidence for a willfulness claim to survive summary judgment.  However, Judge Hellerstein stated that “is not the law in this district” and noted that “Plaintiff fails to cite any rulings by the Federal Court of Appeals that supports his proposition.”  Judge Hellerstein’s conclusion is consistent with other district courts, including both the Northern and Southern Districts of California, that have also held that evidence of pre-suit knowledge is required.

The case is Kaufman v. Microsoft Corp., No. 16-cv-02880 (AKH) (S.D.N.Y.).  The week prior, Judge Hellerstein denied Plaintiff’s motion to exclude Defendant’s damages expert, and trial was scheduled to begin January 27, 2020.