`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`FOCUS PRODUCTS GROUP INTERNATIONAL, LLC,
`ZAHNER DESIGN GROUP LTD., HOOKLESS SYSTEMS
`OF NORTH AMERICA, INC., SURE FIT HOME
`PRODUCTS, LLC, SURE FIT HOME DECOR HOLDINGS
`CORP., and SF HOMED DECOR, LLC,
`
`15 Civ. 10154 (PAE) (SDA)
`
`ORDER
`
`Plaintiffs,
`
`-v-
`
`KARTRI SALES COMPANY, INC., and MARQUIS MILLS
`INTERNATIONAL, INC.,
`
`Defendants.
`
`PAUL A. ENGELMA YER, District Judge:
`
`The Court has received the parties' letters requesting a final judgment on plaintiffs' claim
`
`of infringement of U.S. Design Patent No. D746,078 ("the '078 patent"), and Marquis Mills
`
`International, Inc.' s ("Marquis") counterclaim for the invalidity of that patent. See, e.g., Dkt.
`
`323 at 6. The Court previously stayed these claims pending the result of reexamination
`
`proceedings, which resulted in the cancellation of the '078 patent in a reexamination certificate
`
`that issued February 28, 2023.
`
`On March 25, 2023, the Second Circuit ordered the parties to request a final judgment on
`
`the remaining claims. Dkt. 534. On March 30, 2023, defendants requested an entry of judgment
`
`dismissing plaintiffs' infringement claim with prejudice, and dismissing Marquis's counterclaim
`
`as moot. Dkt. 535. On March 31, 2023, the Court directed plaintiffs to respond and to address,
`
`specifically, the appropriateness of dismissing with prejudice, as opposed to without prejudice.
`
`Dkt. 536. On June 1, 2023, plaintiffs moved to dismiss both the infringement claim and
`
`Marquis's counterclaim without prejudice. Dkt. 536.
`
`
`
`Case 1:15-cv-10154-PAE Document 538 Filed 06/05/23 Page 2 of 3
`
`Substantially for the reasons stated by plaintiffs, the Court dismisses both the '078 patent
`
`infringement claim and the invalidity counterclaim as moot, without prejudice. "[W]hen a claim
`
`is cancelled, the patentee loses any cause of action based on that claim, and any pending
`
`litigation in which the claims are asserted becomes moot." Fresenius USA, Inc. v. Baxter Int'!,
`
`Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013); see Dkt. 534 at 3 ("[S]uits based on cancelled claims
`
`must be dismissed." (quoting Fresenius, 721 F.3d at 1338)). And where a court dismisses
`
`cancelled patent claims as moot, it is "a dismissal for lack of jurisdiction," which, by definition,
`
`"is not a dismissal on the merits." Target Training Int'!, Ltd v. Extended Disc N Am., Inc., 645
`
`F. App'x 1018, 1025 (Fed. Cir. 2016). Accordingly, the Court dismisses these claims as moot,
`
`and does so without prejudice. See, e.g., Transp. Techs., LLC v. Los Angeles Metro.
`
`TransportationAuth., No. 15 Civ. 6423 (RSWL) (MRW), 2019 WL 2058630, at *2 (C.D. Cal.
`
`May 8, 2019) (dismissing cancelled claim as moot, without prejudice); Lemaire Illumination
`
`Techs., LLC v. HTC Corp., No. 18 Civ. 00021 (JRG), 2019 WL 1489065, at *4 (E.D. Tex. Apr.
`
`4, 2019) (same); Puget Bioventures, LLC v. Biomet Orthopedics LLC, 325 F. Supp. 3d 899, 904
`
`(N.D. Ind. 2018) (same); cf Am. Tech. Ceramics Corp. v. Presidio Components, Inc., No. 14
`
`Civ. 6544 (KAM) (GRB), 2018 WL 1525686, at *8 (E.D.N.Y. Mar. 27, 2018) (at summary
`
`judgment, dismissing plaintiffs' claim for infringement of cancelled patent without prejudice to
`
`defendants' ability to raise arguments relating to invalidity of patent in arguing that proceeding
`
`was brought in bad faith if litigation reached that phase).
`
`2
`
`
`
`Case 1:15-cv-10154-PAE Document 538 Filed 06/05/23 Page 3 of 3
`
`SO ORDERED.
`
`Dated: June 5, 2023
`New York, New York
`
`Paul A. Engelmayer
`United States District Judge
`
`3
`
`
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