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A second patent in a chain falls to obviousness-type double patenting challenge

The court had previously determined that The Kennedy Trust’s U.S. Patent No. 7,846,442 (the “parent patent”) was invalid for obviousness-type double patenting (“ODP”) to U.S. Patent No. 6,270,766 (“the grandparent“). At issue...more

8/21/2014 - Collateral Estoppel Obviousness Parent Patent Patents Pharmaceutical Patents

Meal planning claims bite the dust under the Mayo/Alice framework

Judge Engelmayer found claims of DietGoal’s U.S. Patent No. 6,858,516 (“Method and system for computerized visual behavior analysis, training, and planning”) invalid under § 101, and so he granted Bravo’s motion for summary...more

8/20/2014 - CLS Bank v Alice Corp Patent Infringement Patent-Eligible Subject Matter Patents Software

Judge Forrest orders meet and confer to narrow discovery dispute

Saying, “[t]here is no way the court would ever order 5000+ custodians to be searched (on this record),” Judge Forrest ordered the parties to meet and confer to attempt to narrow a list of custodians whose documents must be...more

8/19/2014 - Discovery Evidence

Judge Hellerstein says Intellectual Ventures’ valuation documents have no relevance in this case

Judge Hellerstein decided three discovery disputes in Intellectual Ventures II LLC v. JP Morgan Chase & Co, et al., where United States Patents Nos. 5,745,574 (“Security infrastructure for electronic transactions”), 6,826,694...more

8/18/2014 - Digital Assets Discovery Valuation

Judge Rakoff’s summary judgment order simplifies e-reader case against B&N

Judge Rakoff granted several of defendants’ summary judgment motions in Adrea’s suit alleging infringement of U.S. Patents Nos. 7,298,851 (“Electronic book security and copyright protection system”), 7,299,501 (Electronic...more

8/15/2014 - Barnes and Noble Judge Rakoff Patent Infringement Patent Litigation Patents

USDJ finds that baseball “can at times prove boring to watch,” and strikes out award of provisional patent rights under 35 USC §...

Baseball Quick developed a way to shorten the time needed to view a recorded baseball game, without omitting any outcome determinative actions. The patent at suit, U.S. Patent No. 7,628,716 (“Method of recording and playing...more

8/14/2014 - Baseball Patent Infringement Patent Litigation Patents

PTAB Discovery of Secondary Considerations of Non-obviousness: How to Get Necessary Prior Authorization

Discovery limitations play an important role in the differences between district court patent litigation and actions at the U.S. Patent Trial and Appeal Board (PTAB). So far, the PTAB has placed significant restrictions on...more

8/8/2014 - Covered Business Method Patents Inter Partes Review Proceedings Obviousness Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents

Judge Rakoff Decides Claim Construction

Judge Rakoff construed the following terms in U.S. Patent No. 6,585,516 (“Method and system for computerized visual behavior analysis, training, and planning”) and its associated ’516 Patent Reexamination Certificate. ...more

8/4/2014 - Claim Construction Judge Rakoff Patent Infringement Patent Litigation Patents

Form 18 of the Federal Rules of Civil Procedure Rejected as an “Off-Ramp” to Twombly

Merus B.V. moved for dismissal, arguing the Federal Circuit created an “off-ramp” for patent cases by holding in K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277 (Fed. Cir. 2013), that when the principles set...more

8/1/2014 - Federal Rules of Civil Procedure Pleading Standards Pleadings Twombly/Iqbal Pleading Standard

Judge Castel Rejects Laches and Equitable Estoppel Defenses

Defendant moved to dismiss Plaintiff’s first amended complaint based on the affirmative defenses of laches and equitable estoppel. The patents-in-suit are U.S Patent Nos. 7,980,095 (“Jewelry method and system”) and 8,479,536...more

7/31/2014 - Affirmative Defenses Equitable Estoppel Equitable Relief Estoppel Laches

Request for Stay Pending Before Institution of Inter Partes Review Denied

US Endoscopy Group requested a stay of proceedings pending resolution of three inter partes review (“IPR”) petitions pending before the U.S. Patent and Trademark Office (“PTO”). Judge Román recognized the benefits of the new...more

7/30/2014 - Inter Partes Review Proceedings Motion To Stay Patent Infringement Patent Litigation Patents USPTO

Judge Forrest Denies Attorneys’ Fees and Ancillary Electronic Discovery Costs

Rejecting claims that the matter was “exceptional” under 35 U.S.C. § 285 so as to permit the recovery of attorneys’ fees, Judge Forrest declined to award fees incurred between the court’s Markman order and order on summary...more

7/29/2014 - Attorney's Fees Exceptional Case Litigation Fees & Costs Octane Fitness v. ICON

Judge Rakoff Grants Permanent Injunction and Awards Attorneys’ Fees for Unreasonable Litigation Tactics and Redundant Post-Trial...

Following a six-day jury trial finding defendants’ infringement of U.S. Patent No. 7,874,487 (“Integrated illumination assembly for symbology reader”) to be willful, Judge Rakoff permitted plaintiffs to move for a permanent...more

7/28/2014 - Attorney's Fees Judge Rakoff paten Patent Infringement Patents Post-Trial Order Willful Infringement

"This Is A Prototypical Exceptional Case - Fees And Expenses Will Be Awarded"

Lumen View Technology, LLC v., Inc. Case Number: 1:13-cv-03599-DLC (Dkt. 83) - Judge Cote used Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (April 29, 2014) to justify...more

6/23/2014 - Attorney's Fees Exceptional Case Octane Fitness v. ICON Patent Infringement Patent Litigation Patents SCOTUS

Judicial Efficiencies and Economy Support Bifurcation of Liability and Damages at Trial

Endo Pharmaceuticals, Inc. v. Actavis, Inc., et al. Case Number: 1:12-cv-08985-TPG (Dkt.55) - Endo brought suit against Actavis, as well as over a dozen other pharmaceutical manufacturers, for allegedly...more

6/20/2014 - Actavis Drug Manufacturers Endo Pharmaceuticals Patent Infringement Patent Litigation Patents Pharmaceutical

Judge Cote Strikes Switched-up Infringement Contentions

Times Three Clothier, LLC v. Spanx, Inc. Case Number: 1:13-cv-02157-DLC (Dkt.60) - Times Three Clothier accused Spanx of patent infringement for the sale if women’s clothing, specifically shapeware. ...more

6/20/2014 - Patent Infringement Patent Litigation Patents Spanx

Judge Griesa Orders Parties to Brief Whether a Patent Prosecution Bar Prevents Defense Counsel From Participating in an Inter...

Endo Pharmaceuticals Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al. Inter Partes Review. Case Number: 1:12-cv-08060-GWG (Dkt. 68) - One of twelve defendants in patent suits brought by Endo petitioned the...more

6/18/2014 - Endo Pharmaceuticals Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents Teva Pharmaceuticals

Judge Forrest Will Delay Considering Counsel’s Potential Joint and Several Liability For Fees and Expenses

Realtime Data LLC v. CME Group, Inc. et al. Case Number: 1:11-cv-06697-KBF (Dkt. 883) - Following defendants’ wins at summary judgment, and at the Federal Circuit, one defendant, CME Group, Inc. et al., moved...more

6/17/2014 - Attorney's Fees CME Joint and Several Liability Summary Judgment

Jury Finds Willful Infringement and $2.5M Damages

Cognex Corp. et al. v. Microscan Systems, Inc. et al. Case Number: 1:13-cv-02027-JSR (Dkt.202) - The jury in Cognex v. Microscan found infringement of U.S. Patent No. 7,874,487 (“Integrated illumination...more

6/16/2014 - Compensatory Awards Compensatory Damages Patent Infringement Patent Litigation Patents Willful Infringement

Judge Forest Approves a Half-day Markman Hearing For 5–Patent Case

JobDiva, Inc. v. Monster Worldwide, Inc. Case Number: 1:13-cv-08229-KBF (Dkt.37) - The court accepted the parties’ proposal to have a half-day Markman hearing for a case entailing five patents....more

6/16/2014 - Claim Construction Patent Infringement Patent Litigation Patents Status Hearings

SDNY Patent Litigation Update: Vol. 1, No. 6

The SDNY Patent Litigation Update provides a single-resource, monthly summary of patent litigation action in SDNY including important decisions, complaints filed, and trending issues. For example, last month Judge Cote,...more

6/16/2014 - Octane Fitness v. ICON Patent Infringement Patent Litigation Patents SCOTUS

Time to answer complaint extended after Canon agrees to assert no more than 50 claims (down from 1,042 possible claims)

Canon Inc. v. Print-Rite N.A., Inc., et al. Case Number: 1:14-cv-00540-DLC (Dkt. 16) The consolidated defendants in this replacement toner infringement case requested an extension to the time to answer...more

6/13/2014 - Canon Patent Infringement Patent Litigation Patents

Inconsistent Figures Render Two Design Patents Indefinite

Spanx, Inc. v. Times Three Clothier, LLC - Case Number: 1:13-cv-02157-DLC (Dkt. 58) - Judge Cote construed claims in six design patents, and determined that two of the patents were indefinite. The patents at...more

6/12/2014 - Definiteness Design Patent Indefiniteness Patent Infringement Patent Litigation Patents

Purgation Case Still Held Up

Braintree Laboratories, Inc. v. Breckenridge Pharmaceuticals, Inc. Case Number: 1:12-cv-06851-AJN (Dkt. 69) - Judge Nathan approved the parties’ proposal to maintain the case on administrative hold pending...more

6/11/2014 - ANDA Patent Infringement Patent Litigation Patents Pharmaceutical Pharmaceutical Patents

Counterclaim and Defenses Dismissed; U.S. Patent Out of Suit Following Failure to Assert in Canada

Radiancy, Inc. v. Viatek Consumer Products Group, Inc. Case Number: 7:13-cv-03767-NSR (Dkt. 117) - Judge Roman, in an amended opinion, dismissed counterclaim defendant PhotoMedex from the case, and dismissed...more

6/9/2014 - Canada Inequitable Conduct Patent Infringement Patent Litigation Patents

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