Southern District Of New York Grants Motion To Dismiss Patent And Trade Secret Claims, Finding Patents Ineligible Under Section 101 And That Trade Secret Claim Failed To Identify A Protectable Secret
On May 29, 2020, the U.S. District Court for the Southern District of New York issued an opinion granting defendant StoneCastle Cash Management LLC’s motion to dismiss related to plaintiff Island Intellectual Property, LLC’s patent infringement, misappropriation of trade secrets, and related state law claims. Island Intellectual Property, LLC v. StoneCastle Asset Management LLC, No. 19-CV-4792 (JPO) (S.D.N.Y. May 29, 2020). The Court first ruled that the two groups of asserted patents, directed towards computer-implemented, multibank reciprocal-deposit systems, failed the Supreme Court’s two-step Alice test, and were therefore unpatentable under 35 U.S.C. § 101. The Court also ruled that Island’s misappropriation of trade secrets claims were too generalized to survive a motion to dismiss.
Federal Circuit Holds That There Is No Right To A Jury Trial On A Claim For Disgorgement As A Remedy For Trade Secret Misappropriation
On Tuesday, May 1, 2018, the United States Court of Appeals for the Federal Circuit issued a decision affirming liability of plaintiff’s trade secret misappropriation claim, but vacating the monetary damages award. Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., f/k/a Intersil Corp., Appeal Nos. 2016-2121, 2016-2208, and 2016-2235. The Court held that plaintiff Texas Advanced Optoelectronic Solutions (“TAOS”) did not have a jury trial right on its claim for disgorgement of defendant Intersil’s profits, since disgorgement is equitable in nature and was not historically heard by law courts, at least as it concerned intellectual property claims.