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Articles Posted by Gregory S. Cordrey

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Dismissal Based on Petitioner’s Prior DJ Action Cannot Be Waived

In a covered business method review filed by petitioner GTNX, Inc., the petitioner sought review of four patents owned by patent owner INTTRA, Inc. The PTAB instituted trial on all four patents following the patent owner’s preliminary response. Notably, in its preliminary response the patent owner did not raise that…

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PTAB Refuses to Vacate Holding that Patent Claims are Invalid Despite Petitioner’s “Abandonment” of the CBM

In an IPR petition filed by petitioner Salesforce.com, the petitioner sought review of patent owner, VirtualAgility, Inc.’s U.S. Patent No. 8,095,413. The PTAB instituted trial on November 19, 2013, the Patent Owner filed its Patent Owner Response on January 28, 2014, the Petitioner then filed its Reply on April 11,…

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PTAB: Patent Owner / Inventor Cannot Proceed Pro Se

In an IPR petition filed by petitioner Shire Development LLC, the petitioner sought review of patent owner, LCS Group, LLC’s U.S. Patent No. 8,318,813. In its mandatory statement, the patent owner timely designated outside counsel to represent it in the IPR proceeding. Subsequently, the designated counsel for the patent owner…

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PTAB Gives Guidance Regarding What Constitutes A Printed Publication

In an IPR petition filed by petitioner C&D Zodiac, Inc., the petitioner sought review of patent owner, B/E Aerospace, Inc.’s U.S. Patent No. 8,590,838, directed to space-saving aircraft enclosures, including lavatories, closets, and galleys. The petition challenged the validity of claims under Section 102 and 103 based on, among other…

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Motorola: Inventor’s Ex-Spouse’s Co-Owns the Patent-in-Suit

In the matter pending in the Western District of Texas, Katrinecz, et al. v. Motorola Mobility LLC, Motorola moved to dismiss the complaint for lack of subject matter jurisdiction. In its complaint, the plaintiffs alleged that Motorola infringed U.S. Patent No. 7,284,872 entitled “Low power, low cost illuminated keyboards and…

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Apple Motion to Stay Litigation Pending an IPR Is Denied by the District Court for the Northern District of California

In the matter pending in the Northern District of California, Aylus Networks, Inc. v. Apple, Inc., Apple moved to stay the litigation pending inter partes review of the patent-in-suit. On October 9, 2013, plaintiff Aylus Networks filed suit against Apple for infringement of U.S. Patent No. RE44,414. On September 29,…

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PTAB: Claims for Method of Authenticating a Website are Patentable under Alice and Section 101

In a CBM petition filed by petitioners PNC Bank, U.S. Bank, and Bancorp, the petitioners sought review of U.S. Patent No. 7,631,191, which claims a method of authenticating a web page. The petition challenged the validity of claims under Section 101, 103 and 112. After finding that the ‘191 patent…

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Reliance on the Same Prior Art Dooms Medtronic’s Attempt to Correct its Previously Rejected IPR Petition

In IPR proceeding involving Medtronic, Inc. v. NuVasive. Inc., the petitioner, Medtronic, file a petition seeking review of U.S. Patent No. 8,361,156 relating to a spinal implant and methods of spinal fusion using the implant. The petition was Medtronic’s third IPR petition challenging the validity of claims in the ‘156…

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Controlling, or Having the Ability to Control, the Preparation of a Petition Leads to a Finding that the Non-Party Is a Real Party-In-Interest and that the Petition is Time Barred

In IPR proceeding First Data Corporation v. Cardsoft (Assignment for the Benefit of Creditors), LLC, the petitioner, First Data Corporation, attempted to file a petition on April 30, 2014 seeking review of U.S. Patent No. 6,934,945 assigned to Cardsoft (Assignment for the Benefit of Creditors), LLC. On May 20, 2014,…

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The PTAB Authorizes the Patent Owner to File Its Motion for Leave to Take Discovery of General Electric on Possible Privity with a Customer-Defendant

In General Electric Co. v. Transdata, Inc., the patent owner requested authorization to file a motion for leave to take discovery of petitioner General Electric regarding whether GE is in privity with a defendant in litigation with the patent owner. Should the patent owner prevail and prove that GE is…

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