Joao Control & Monitoring Systems, LLC v. Digital Playground, Inc. et al, 1-12-cv-06781 (NYSD September 30, 2016, Order) (Sullivan, USDJ)
Wednesday, October 12, 2016
Finding of Invalidity Under 35 U.S.C. § 101 Collaterally Estops Infringement Claims as to Substantially Similar Patent
The court granted defendants' motion for judgment on the pleadings because the asserted claims of plaintiff’s remote monitoring apparatus patents encompassed unpatentable subject matter and found that plaintiff was collaterally estopped from pursuing its claims as to one patent-in-suit after a related patent was found invalid in an earlier case. "[T]he Federal Circuit authority above suggests that collateral estoppel applies not only with respect to [the previously invalidated patent], but also with respect to [another patent-in-suit], which is largely duplicative of [the first]. While the Patents each span approximately 100 pages, both Patents in substance claim invention of a system for monitoring a vehicle or premises using two computers located remotely from the vehicle or premises: one computer that records audio or video from the vehicle or premises, and a second computer that receives audio or video information transmitted by the first computer via the Internet. . . . [T]he fact that the Patents may use 'slightly different language to describe substantially the same invention' does not defeat the application of collateral estoppel."