§Why CasetextPricing

BrightEdge Technologies, Inc. v. Searchmetrics, GmbH. et al

MOTION to Stay the Case Pending Inter Partes Review

44 Cited authorities

  1. Landis v. North American Co.

    299 U.S. 248 (1936)   Cited 8,263 times   6 Legal Analyses
    Holding that a decision to stay proceedings "calls for the exercise of judgment, which must weigh competing interests and maintain an even balance"

  2. Ethicon, Inc. v. Quigg

    849 F.2d 1422 (Fed. Cir. 1988)   Cited 654 times   5 Legal Analyses
    Holding the Board may not indefinitely stay an ex parte reexamination in light of parallel district court litigation via the "special dispatch" standard

  3. Virtualagility Inc. v. Salesforce.Com, Inc.

    759 F.3d 1307 (Fed. Cir. 2014)   Cited 199 times   13 Legal Analyses
    Holding that second-guessing the PTAB's "more likely than not" determination that a CMB claim would be held invalid "amounts to an improper collateral attack" and that "allowing it would create serious practical problems"

  4. Laitram Corp. v. NEC Corp.

    163 F.3d 1342 (Fed. Cir. 1998)   Cited 189 times   2 Legal Analyses
    Holding that a claim is identical to a claim in the original patent only if the scope of the two claims is identical

  5. Universal Electronics Inc. v. Universal Remote Control, Inc.

    943 F. Supp. 2d 1028 (C.D. Cal. 2013)   Cited 115 times   1 Legal Analyses
    Holding that simplification or clarification by PTAB review particularly likely "when a party has obtained PTO review of each of the asserted claims in the patents-in-suit

  6. Telemac Corp. v. Teledigital, Inc.

    450 F. Supp. 2d 1107 (N.D. Cal. 2006)   Cited 114 times   3 Legal Analyses
    Finding that four requests for reexamination that were missing necessary elements suggested movant was taking tactical advantage of opportunities for delay

  7. In re Cygnus Telecommunications Technology, LLC, Patent Litigation

    385 F. Supp. 2d 1022 (N.D. Cal. 2005)   Cited 113 times   1 Legal Analyses
    Holding that in determining whether to grant a stay, courts consider any resulting undue prejudice on the nonmoving party

  8. Ascii Corp. v. STD Entertainment USA, Inc.

    844 F. Supp. 1378 (N.D. Cal. 1994)   Cited 145 times   1 Legal Analyses
    Finding stay was justified because if claims were cancelled in reexamination then the need to try the infringement issue would be eliminated

  9. Bloom Engineering Co. v. North American Manufacturing Co.

    129 F.3d 1247 (Fed. Cir. 1997)   Cited 83 times
    Holding that " ‘[i]dentical’ does not mean verbatim, but means at most without substantive change," and thus, "whether amendments made to overcome rejections based on prior art are substantive depends on the nature and scope of the amendments"

  10. Semiconductor Energy Lab. Co. v. Chimei Innolux Corp.

    Case No. SACV 12-21-JST (JPRx) (C.D. Cal. Dec. 19, 2012)   Cited 44 times   1 Legal Analyses
    Granting stay for inter partes review in part because the request for reexamination included all patents at issue and the plaintiff asserted only patent infringement claims against the defendants

  11. Section 315 - Relation to other proceedings or actions

    35 U.S.C. § 315   Cited 533 times   879 Legal Analyses
    Permitting the Director to consolidate separate IPRs challenging the same patent

  12. Section 311 - Inter partes review

    35 U.S.C. § 311   Cited 396 times   186 Legal Analyses
    Establishing grounds and scope of IPR proceeding

  13. Section 314 - Institution of inter partes review

    35 U.S.C. § 314   Cited 369 times   624 Legal Analyses
    Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"

  14. Section 252 - Effect of reissue

    35 U.S.C. § 252   Cited 290 times   22 Legal Analyses
    Stating that a reissued patent shall have the same effect as the original patent “in so far as the claims of the original and reissued patents are substantially identical ”

  15. Section 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 275 times   307 Legal Analyses
    Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

  16. Section 307 - Certificate of patentability, unpatentability, and claim cancellation

    35 U.S.C. § 307   Cited 116 times   10 Legal Analyses
    Stating that “a reexamination proceeding will have the same effect as that specified in section 252 for reissued patents”

  17. Section 42.100 - Procedure; pendency

    37 C.F.R. § 42.100   Cited 188 times   75 Legal Analyses
    Providing that the PTAB gives " claim . . . its broadest reasonable construction in light of the specification of the patent in which it appears"