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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

Judge McMahon Rules on Motions in Limine

On January 5, 2024, Judge McMahon (S.D.N.Y.) decided Plaintiff GeigTech East Bay LLC (“GeigTech”)’s and Defendant Lutron Electronics Co. (“Lutron”)’s motions in limine....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

This Case Can Wait – Judge Rochon Finds Stay Warranted After Institution of IPR

On August 4, 2023, United States District Judge Jennifer L. Rochon (S.D.N.Y.) granted Plaintiff Nanobebe US Inc.’s (“Nanobebe”) motion to stay the case pending the resolution of an instituted inter partes review (“IPR”)...more

Reflecting on All Factors, District Judge Ronnie Abrams Grants Pre-Institution Stay in lululemon Mirror Case

On February 24, United States District Judge Ronnie Abrams (S.D.N.Y.) granted defendants lululemon USA Inc. and Curiouser Products Inc. d/b/a Mirror (collectively “lululemon”)’s motion to stay pending inter partes review. ...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

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 Ramos Finds Forum Selection Clause of NDA Implicates Confidentiality and Not IP Rights and Allows IPRs to Proceed

On January 19, 2021, United States District Judge Edgardo Ramos (S.D.N.Y.) denied Kannuu Pty Ltd. (“Kannuu”)’s motion for preliminary injunction and instead granted Samsung Electronics Co., Ltd. (“Samsung”)’s motion to stay...more

Stay In Place: Judge Azrack Declines to Lift Stay Until Federal Circuit Weighs In

On August 6, 2019, United States District Judge Joan M. Azrack denied Plaintiff Andrea Electronics Corporation (“Andrea”)’s motion to lift the stay in Andrea Electronics Corp. v. Apple Inc., No. 16-cv-5220 (E.D.N.Y.) and,...more

Defendants May Proceed with Inter Partes Review Petitions Despite Forum Selection Clause

On July 2, 2019, District Judge Denise Cote (S.D.N.Y.) denied Plaintiff NuCurrent Inc.'s ("NuCurrent") motion for a preliminary injunction seeking to have Defendants Samsung Electronics Co., Ltd. and Samsung Electronics...more

You Can’t Use That Now: Judge Matsumoto Estops Defendant from Using Prior Art It Could Have Used During IPR

On January 30, 2019, District Judge Matsumoto (E.D.N.Y.) ruled that Defendant Presidio Components, Inc. (“Presidio”) was estopped from asserting invalidity grounds that were not included in its petition for inter partes...more

Magistrate Judge Pollak Recommends Granting Motion to Stay Pending Inter Partes Review

On September 12, 2018, Magistrate Judge Cheryl Pollak issued a report recommending that defendants Quest USA Corp.'s and Isaac Srour's (collectively, "Defendants") motion for a stay pending inter partes review ("IPR") be...more

Judge Furman Stays Case Involving Possible Direct Competitors Pending IPR

On August 8, 2018, Judge Jesse M. Furman (S.D.N.Y.) granted Defendant Synaptive Medical, Inc.’s (“Synaptive”) motion to stay proceedings pending inter partes review (“IPR”) of the patent-in-suit. Plaintiff Karl Storz...more

Judge Pollak Finds 45 Days Is Not Untimely for Supplemental Infringement Contentions

On June 7, 2018, United States Magistrate Judge Cheryl L. Pollak (E.D.N.Y.) denied a motion by defendants—Quest USA Corp. (“Quest”) and Isaac Srour—to strike supplemental infringement contentions submitted by plaintiff...more

Who Knows What "Most Convenient" Is? Judge Failla Rules Claims Are Indefinite

On May 11, 2018, United States District Judge Katherine Polk Failla ruled that claims 1 and 2 of U.S. Patent No. 6,340,189 (“the ’189 patent”), drawn to a device that is placed in a “position most convenient” to a user, were...more

Judge Oetken Lifts Stay on 1 of 5 IPR’ed Patents

On April 5, 2018, Judge Oetken (S.D.N.Y.) granted Plaintiff Rovi Guides Inc.’s (“Rovi”) motion to lift a stay related to U.S. Patent No. 8,122,034 (“the ’034 patent”), only one of five patents at issue in a case that was...more

Judge Matsumoto Declines to Hear Invalidity Arguments on Patent Previously Cancelled in IPR

On March 27, 2018, District Judge Matsumoto (E.D.N.Y.) issued an 83-page decision on the parties' summary judgment briefing, which covered ten issues across three patents relating to multilayer ceramic capacitors. ...more

Judge Koeltl Agrees that “Access” to Confidential Information is Enough to Trigger a Prosecution Bar

On November 20, 2017, District Judge John G. Koeltl (S.D.N.Y.) approved a prosecution bar for “any individual who gains access” to confidential material. In addition, Judge Koeltl determined that post-issuance proceedings,...more

4 Out of 5 IPRs Ain’t Bad: Judge Oetken Grants Motion to Stay Pending Resolution of IPR Proceedings Despite Advanced Stage of...

On October 27, 2016, District Judge J. Paul Oetken (S.D.N.Y.) granted defendant Comcast Corp.'s ("Comcast") motion to stay the case pending resolution of inter partes review ("IPR") proceedings instituted by the Patent Trial...more

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