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Articles Posted by Gregory S. Cordrey

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PTAB to Apple: No Third or Fourth Bite at the Apple

In inter partes proceeding Apple Inc. v. Rensselaer Polytechnic Institute et al., IPR2014-00320, Petitioner Apple sought a second request for rehearing, before an expanded panel of the PTAB, on the Board’s decision not to institute an inter partes review of RPI’s U.S. Patent No. 7,177,798 (“the ‘778 Patent”). The Board…

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IPR Proceedings Filed Eight Months Apart Is Too Long to Permit Joinder

In the Macronix International Co., Ltd. et al. v. Spansion LLC, the PTAB denied Petitioner’s motion for joinder under Section 315(c). On November 8, 2013, the Petitioner filed a petition for inter partes review of U.S. Patent No. 7,151,027 (“the ‘027 patent”), which was later granted on May 8, 2014.…

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PTAB’s Guidelines for Foreign Language Depositions

In the Ariosa Diagnostics v. ISIS Innovation Limited inter partes review, the PTAB set for the guidelines for taking depositions in a foreign language as required by 37 C.F.R. § 42.53(c). In addition to the requirement of 42.53(c) that the party calling the witness must initiate a conference with the…

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Withholding A Court’s Order From the USPTO in A Co-Pending Reexamination May Render A Patent Unenforceable in Litigation

In Masimo Corporation v. Philips Electronic North America Corporation, et al., the Philips Defendants moved for leave to amend their answer to add a defense of inequitable conduct based on Masimo’s alleged inequitable conduct during the ex parte reexamination of the patent-in-suit. Masimo opposed the amendment on the grounds that…

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Prior Denial of IPR Petitions Dooms Litigation Stay Based On “Second Round” of Petitions Under the Totality of the Circumstances Standard

In CTP Innovations, LLC v. Solo Printing, Case No. 1:14-cv-21499-UU, the Court denied, without prejudice, Defendant’s motion to stay the litigation pending the inter partes review of the two patents-in-suit. In its motion to stay, the Defendant argued the traditional factors considered by court favored a stay, including that the…

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In an IPR Proceeding With Several Listed Petitioners, The Petitioners Must Speak With A Single Voice

In IPR2014-00954, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Petravick, Deshpande, and Clements) issued a decision regarding the proper identification of lead and backup counsel listed in the powers of attorneys in cases involving multiple parties constituting a single Petitioner. The Board explained: According to 37 C.F.R. § 42.2,…

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Patent Case Rulings from the Central District of California: Apr. 1 to Apr. 30, 2013

The following 36 decisions were reported in patent cases pending in the Central District of California for the period of April 1 through April 30, 2013. The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in…

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Patent Case Rulings from the Central District of California: May 1 to May 31, 2013

The following twenty decisions were reported in patent cases pending in the Central District of California for the period of May 1 through May 31, 2013. The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in…

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PTAB Clarifies Motion to Amend Claims

In a pair of recent decisions, the Patent Trial and Appeals Board further clarified the requirements of filing a motion to amend the claims. These recent decisions supplement the Board’s recent decisions in IPR2012-00027 (Paper No. 26) and IPR2012-00005 (Paper No. 27) in which the Board provided guidance regarding the…

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Patent Case Rulings from the Central District of California: Mar. 18 to Mar. 29, 2013

The following four decisions were reported in patent cases pending in the Central District of California for the period of March 18 through March 29, 2013. The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in…

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