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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 Ho Calls Strike Three on Plaintiff’s Subpoena to Baseball Star Bryce Harper

On April 10, 2024, Judge Dale E. Ho granted a motion to quash a third-party subpoena served on Major League Baseball player Bryce Harper in connection with a patent infringement lawsuit filed by Athalonz, LLC against Under...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

One Down But One to Go: Judge McMahon Concludes Asserted Patent is Not Unenforceable Through Infectious Unenforceability

On February 23, 2024, Judge McMahon (S.D.N.Y.) entered findings of fact and conclusions of law pertaining to issues relating to Defendant Lutron Electronics Co. (“Lutron”)’s defenses of invalidity and unenforceability of U.S....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

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

Judge McMahon Rejects Estoppel Argument Based on Lack of Reasonableness and Diligence in Prior Art Searching

On December 21, 2023, Judge McMahon (S.D.N.Y.) denied GeigTech East Bay LLC’s (“GeigTech”) motion to preclude Lutron Electronics Co. (“Lutron”) from raising an affirmative defense of invalidity based on 35 U.S.C. § 325(e)(2),...more

Nothing to See Here: Judge Reznik Finds that Privilege with a Patent Prosecuting Attorney Belongs to the Assignee, Not the...

On November 22, 2023, United States Magistrate Judge Victoria Reznik (S.D.N.Y.) provided some rare insight into “the applicability and scope of the attorney-client privilege as it relates to patent counsel.” Op. at 1. Judge...more

Oh Boy, Can it Core an Apple: Judge Brown Channels the Honeymooners and Finds Plaintiff Entitled to Fees and Costs for...

On December 1, 2023, Judge Gary R. Brown (E.D.N.Y.) awarded Plaintiff Dynamite Marketing, Inc. (“Plaintiff”) fees and costs, declined to enhance damages, granted a permanent injunction against future infringement, and denied...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 McMahon Issues Omnibus Ruling Addressing Numerous Procedural Issues Arising Out of Pre-Trial Motions

On September 20, 2023, Judge McMahon (S.D.N.Y.) issued rulings on the parties’ multiple motions to strike, exclude the opinions and proposed testimony of multiple experts, and for summary judgment in a case brought by...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

Someone Has to Stand Up: Judge Clarke Permits Developer of Crypto Protocol to Intervene in Action Against the Protocol Itself

On September 25, 2023, Judge Jessica Clarke (S.D.N.Y.) granted third party Compound Lab, Inc.'s ("Compound Labs”) motion to intervene in a patent infringement action filed by True Return Systems LLC (“True Return”) against...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 Oetken Construes “Analog”: Can Anything be Truly Digital?

On September 5, 2023, United States District Judge J. Paul Oetken (S.D.N.Y.) construed several terms raised by Plaintiff Dynamics, Inc.(“Dynamics”) and Defendant Samsung Electronics Co., Ltd. (“Samsung”), including “Analog...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

Judge Parker Finds GE’s Privileged Documents Show No Signs of Fraud in Medical Imaging Devices Misappropriation Case

On August 8, 2023, Judge Katharine H. Parker (S.D.N.Y.) denied Spectrum Dynamics Medical Limited’s (“Spectrum”) motion to compel the production of documents that it argued fell under the crime-fraud exception to the...more

Judge Engelmayer Holds that Suit Based on Cancelled Patent Claims Should Be Dismissed Without Prejudice

On June 5, 2023, Judge Engelmayer (S.D.N.Y.) dismissed Plaintiffs' infringement claims against Defendants. After the U.S. Patent & Trademark Office cancelled the asserted patent—U.S. Design Patent No. D746,078—Defendants...more

Halfway There: Judge Wang Recommends Dismissing Design Patent Claims But Allowing Utility Patent Claims

On March 23, 2023, Magistrate Judge Wang (S.D.N.Y.) recommended granting-in-part and denying-in-part Defendants’ T-Mobile, USA, Inc. and Samsung Electronics America, Inc.’s (collectively, “Defendants”) motion to dismiss the...more

If at First You Don’t Succeed, Amend: Judge Cronan Finds Digital Video Patents Directed to Unpatentable Abstract Ideas, But Grants...

On March 24, 2023, Judge John P. Cronan found the asserted claims of two patents to be directed to abstract ideas under 35 U.S.C. § 101, but sua sponte granted leave to amend the complaint and plead additional facts relevant...more

Judge Engelmayer Finds Claims for Timekeeping to be an Abstract Idea: “Whether by Quill or by Computer, Humans Have Undertaken...

On March 7, 2023, Judge Paul A. Engelmayer ruled that claims directed to computerized methods and systems for “timekeeping of tasks on a document-by-document, telephone call-by-telephone call, and client service-by-client...more

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