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. Plaintiff Riggs had filed three litigations asserting infringement of U.S. Patent No. 7,299,067 in the Northern District of California, the District of Massachusetts, and the Southern District of New York. In the California and Massachusetts cases, the court dismissed Riggs’s complaint after the ’067 patent was found to be directed to an unpatentable abstract idea. Judge Gardephe then stayed proceedings in the New York case pending the appeals of the California and Massachusetts cases. In January 2023, the Federal Circuit affirmed, finding that the ’067 patent was “directed to the patent-ineligible abstract mental process of managing training that was provided remotely” and “lack[s] an inventive concept.”

One week later, defendant Relias Learning LLC (“Relias”) filed a letter asking the court to dismiss the New York case with prejudice. Then, in March and June 2023, Relias filed follow-up letters requesting permission to file a renewed motion for judgment on the pleadings to raise the subject matter eligibility defense. After Riggs had still not dismissed the case five months later, Judge Gardephe ordered Riggs to show cause for why the complaint should not be dismissed.

Judge Gardephe relied on the Supreme Court’s decision in Blonder-Tongue Labs, v. Univ. of Ill. Found., 402 U.S. 313, 350 (1971), which held that “[a] final order deeming a patent invalid has preclusive effect on other pending and subsequent actions for infringement of the same patent.” The court strongly hinted that dismissal was warranted because the asserted patent “has now been held to be invalid in final judgments that were affirmed on appeal.” Further, if plaintiff agreed to dismiss the case, the Court ordered Relias to submit a letter and briefing schedule for a motion to recover its attorneys’ fees for an exceptional case under 35 U.S.C. § 285.

Riggs Tech. Holdings, LLC v. Relias Learning LLC, No. 21 Civ. 6229 (PGG) (S.D.N.Y. Nov. 14, 2023)