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There’s an Exception to Every Rule: Judge Schofield Finds a Comparison of the Plaintiff’s Patented System and the Accused System...

In a recently published opinion, Judge Lorna G. Schofield (S.D.N.Y.) found that it was appropriate to compare the accused system to a plaintiff’s commercial system embodying the asserted patent claims, rather than the patent...more

Judge Hellerstein Finds “Substantial Sales Activity” in U.S. Defeats MTD

United States District Judge Alvin K. Hellerstein (S.D.N.Y.) recently denied Defendant R-PAC International LLC’s motion to dismiss Plaintiff Adasa Inc.’s patent infringement complaint. Slip Op. at 1. Defendant moved under...more

The Price of “Sandbagging”: Judge McMahon Orders Sanctions Against Patent Plaintiff For Switching Damages Theory on Eve of Retrial

On November 12, 2024, Judge McMahon (S.D.N.Y.) granted defendant Lutron Electronics Co.’s motion for sanctions against plaintiff Geigtech East Bay LLC, and precluded Geigtech from presenting any theory of damages on retrial...more

X Doesn’t Mark the Spot: Judge Halpern Denies a Motion for Summary Judgment That Alleged Failure to Comply with Marking Statute

On October 4, 2024, District Judge Philip M. Halpern (S.D.N.Y.) denied Defendant Regeneron Pharmaceuticals Inc. (“Regeneron”)’s Motion for Summary Judgment that (1) Allele was not entitled to any pre-suit infringement damages...more

Quit Playing Games!: Judge Woods Grants Epic Games’ Motion to Dismiss

On September 26, 2024, District Judge Gregory H. Woods (S.D.N.Y.) granted Defendant Epic Games, Inc. (“Epic Games”)’s Motion to Dismiss for failure to state a claim because Plaintiff AK Meeting IP, LLC (“AK”)’s allegations...more

Don’t Hit Send: Judge Rochon Denies Motion for Alternative Service via Email

On September 24, 2024, District Judge Jennifer L. Rochon (S.D.N.Y) denied Plaintiff Square One Choices, Inc. (“SOC”)’s Motion for Alternative Service because SOC failed to show that the Hague Convention permits service by...more

You Didn’t Quite Capture It – Judge Gardephe Rejects Several Allegations of Patent Infringement

On September 10, 2024, District Judge Paul G. Gardephe (S.D.N.Y.) granted in part Defendant Adobe, Inc.’s motion to dismiss for failing to plead “facts sufficient to establish infringement.”...more

Tag You’re It: Chief Judge Swain sua sponte Transfers Pro Se Patent Infringement Complaint to Delaware

Chief United States District Judge Laura Taylor Swain (S.D.N.Y.) recently transferred an action for patent infringement brought pro se by Rachel Ohana (“Ohana”) against Mars Petcare US, Inc. (“Mars Petcare”) to the United...more

Show Me the Papers!: Judge Aaron Grants Motion to Compel Document Discovery from Third-Party

United States Magistrate Judge Stewart D. Aaron (S.D.N.Y.) recently granted a motion by Samsung Electronics Co. Ltd and Samsung Electronics America, Inc. (collectively “Samsung”) to compel non-party Microchip Technology...more

Third Time’s the Charm: Judge Hellerstein Denies Summary Judgment on Previously Dismissed Patent Claims Against Google

On August 22, 2024, Judge Alvin K. Hellerstein (S.D.N.Y.) denied Google LLC’s motion for summary judgment that (1) it has not infringed two asserted patents; and (2) the two patents are invalid for lack of written...more

Assigning Away Standing: Judge Choudhury Concludes that Party Lacks Standing to Correct Inventorship of Inventions Previously...

In an ongoing patent dispute between manufacturers of armored fiber optic cables, Judge Choudhury (E.D.N.Y.) recently resolved competing motions to dismiss on several grounds. In doing so, she ruled that Defendant Point 2...more

Judge Furman Declines to “Pink Slip” Infringement Lawsuit Against Work Management Tool Company

On June 21, 2024, Judge Jesse M. Furman (S.D.N.Y.) denied Monday.com Ltd. (“Monday”)’s motion to dismiss a complaint for patent infringement by plaintiff Michael Philip Kaufman. See Kaufman v. Monday.com Ltd., 23-CV-5864...more

Time May Not Be on Your Side: Judge Ho Allows the Addition of New Parties Discovered During Stay

Defendants in patent cases should be wary of the possibility that a plaintiff will attempt to add new defendants after a stay for inter partes review is lifted. In a pending case involving patents directed to “space...more

Look Before You Jump: Judge Ho Rules Hague Convention Applies Where Plaintiff Was Not "Reasonably Diligent" in Finding Defendants'...

On June 17, 2024, United States District Court Judge Dale E. Ho ruled on several motions related to Plaintiff Spin Master, Ltd.’s service of process on Defendants Leqiong, Monkki, Onecemore, Chenghai Lucky Boy Toys Co., Ltd....more

How Much Searching is “Non-Exhaustive”?: Judge Gardephe Invalidates Claims as Indefinite

On April 24, 2024, United States District Court Judge Paul G. Gardephe (S.D.N.Y.) construed claims of three patents asserted by Network-1 Technologies, Inc. against Google LLC and YouTube, LLC. The court found the asserted...more

Judge Rakoff Orders Lab-Made Diamond Maker to Pay Fees for Manufacturing Fake Claims

On February 21, 2024, Judge Rakoff (S.D.N.Y) granted a defendant’s motion for attorney’s fees and costs in Carnegie Institute of Technology v. Fenix Diamonds. The Carnegie Institution for Science and its patent licensee, the...more

Not a Party, Not a Problem: Judge Clarke Grants Intervenor’s Motion to Stay Pending Non-Party’s Inter Partes Review of the...

On January 31, 2024, Judge Jessica G. L. Clarke granted an intervenor’s motion to stay pending the conclusion of a U.S. Patent and Trademark Office inter partes review of the asserted patent that was filed by a third party....more

Knitting Together Rulings for Both Parties: Judge Subramanian Issues Claim Construction Order in Nike v. Lululemon Flyknit

On December 28, 2023, District Judge Subramanian (S.D.N.Y.) issued claim construction rulings in Nike, Inc. v. Lululemon USA Inc. on four disputed terms. The Court resolved two of the disputed terms in favor of Nike, Inc....more

Working Out Damages for Wrongful Enjoinment: Judge Rochon Provides Guidance in Exercise-Equipment Case

In a patent case brought against 163 defendants that was voluntarily dismissed by the plaintiff, Judge Rochon issued an opinion that offers guidance for defendants that have been wrongfully enjoined via an ex parte temporary...more

Third Strike You’re Out: Judge Gardephe Orders Plaintiff to Explain Why Complaint Should Not be Dismissed After the CAFC Found the...

On November 14, 2023, Judge Paul G. Gardephe issued an order directing plaintiff Riggs Technology Holdings, LLC (“Riggs”) to show cause for why its complaint for patent infringement should not be dismissed with prejudice....more

Judge Cogan Sends Patent Dispute between Amazon Vendors Packing to California

On October 30, 2023, Judge Brian M. Cogan (E.D.N.Y) transferred a declaratory judgement patent dispute from the Eastern District of New York to the Central District of California under 28 U.S.C. § 1406, on the basis of...more

Judge Gardephe Denies Dispositive Motions in Massage-Device Patent Case

In a recent decision in a patent case between massage-device companies, Judge Gardephe (S.D.N.Y.) adopted two recommendations of the magistrate judge. The first R&R recommended denial of Defendant Tzumi’s motion for partial...more

Judge Oetken Rules That Disqualification Motion Will Not Fly

On May 1, 2023, United States District Judge J. Paul Oetken (S.D.N.Y.) denied plaintiff Nike, Inc. (“Nike”)’s motion to disqualify counsel for defendant, Lululemon USA Inc. (“Lululemon”). In an action concerning patents...more

Judge Failla Not “On Board” with Amtrak’s Section 101 Arguments in Train-Traffic-Control Case

In a patent case involving claims directed to train-traffic-control systems, Judge Failla of the Southern District of New York denied Defendant Amtrak’s motion to dismiss, rejecting Amtrak’s arguments that Plaintiff Railware,...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

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