On August 2, 2017, Judge J. Paul Oetken (S.D.N.Y.) denied Plaintiff Infinity Headwear & Apparel, LLC’s (“Infinity”) motion for summary judgment as to patent infringement, false patent marking and false advertising and denied Defendant Franco & Sons, Inc.’s (“Franco”) motions objecting to Magistrate Judge Ellis’s orders.  However, Judge Oetken sua sponte stayed the patent infringement claim in view of the Patent Trial and Appeal Board (“PTAB”)’s recent decision affirming the ex parte reexamination rejection of the asserted claims.

Infinity sued Franco for infringement of U.S. Patent No. 8,864,544 (“the ‘544 patent”), false advertising, and false patent marking.  Franco moved to stay the patent infringement action pending the ex parte reexamination.  Judge Oetken denied this motion on September 26, 2016.  Franco attempted to stay the infringement case two more times, but Magistrate Judge Ellis denied Franco’s request both times.

For its part, Infinity filed a motion for summary judgment that Franco’s allegedly infringing “onesies,” are covered by the term “blanket” as construed by the Court.  That Motion too was denied, as were Infinity’s summary motions directed to its false patent marking and false advertising claims.  Thus, Infinity was unable to convince the Court that summary judgement should be granted in its favor.

However, the Court noticed that the PTAB had affirmed the final rejection of the asserted claims in the patent in suit and sua sponte stayed the patent infringement action. 

The case is Infinity Headwear & Apparel, LLC v. Jay Franco & Sons, Inc., No. 15-cv-1259 (JPO) (S.D.N.Y. Aug. 2, 2017).