Focus Products Group International, LLC v. Kartri Sales Company, Inc.

Background

The remaining matters concerned plaintiffs’ claim that the defendants infringed U.S. Design Patent No. D746,078, and Marquis Mills International, Inc.’s counterclaim seeking invalidation of that patent. The court had previously stayed those matters while the patent underwent reexamination. The reexamination certificate issued on February 28, 2023, and canceled the patent.

The Second Circuit then directed the parties to request a final judgment on the remaining claims. The defendants asked the court to dismiss the infringement claim with prejudice and the invalidity counterclaim as moot. The plaintiffs instead moved to dismiss both matters without prejudice.

Court’s Analysis

The court explained that when a patent claim is canceled, the patent owner loses any cause of action based on that claim, and pending litigation asserting the claim becomes moot. A mootness dismissal is a dismissal for lack of jurisdiction, meaning the court does not decide the underlying dispute on its merits. Because the patent had been canceled, the infringement claim and Marquis’s invalidity counterclaim could no longer present a live controversy.

Ruling

Judge Paul A. Engelmayer dismissed the ’078 patent-infringement claim as moot, without prejudice, and dismissed Marquis’s invalidity counterclaim as moot, without prejudice. The order therefore did not determine whether the defendants infringed the patent or whether the patent was invalid.