§Why CasetextPricing

Centrify Corporation v. Quest Software, Inc.

Memorandum in Opposition re MOTION to Stay

25 Cited authorities

  1. Landis v. North American Co.

    299 U.S. 248 (1936)   Cited 8,566 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. Lockyer v. Mirant Corp.

    398 F.3d 1098 (9th Cir. 2005)   Cited 1,552 times
    Holding that the district court's stay was improper where, among other considerations, "the proceeding in the bankruptcy court [was] unlikely to decide, or contribute to the decision of, the factual and legal issues before the district court"

  3. Viskase Corp. v. American Nat. Can Co.

    261 F.3d 1316 (Fed. Cir. 2001)   Cited 156 times   2 Legal Analyses
    Affirming a district court's decision declining to stay or reopen proceedings after judgment was entered against the defendant pending ongoing patent reexaminations that the defendant initiated post-trial

  4. Cherokee Nation of Oklahoma v. U.S.

    124 F.3d 1413 (Fed. Cir. 1997)   Cited 92 times
    Holding that trial court's stay was an abuse of discretion because pending actions "may take years to complete" and because proceedings on liability could not be justifiably stayed "merely because a precise determination of damages is not possible at this moment . . ."

  5. Cooper Notification, Inc. v. Twitter, Inc.

    Civ. No. 09-865-LPS (D. Del. Dec. 13, 2010)   Cited 39 times   1 Legal Analyses
    In Cooper Notification, Inc., 2010 WL 5149351, the parties had already completed their Markman briefings and the court had heard oral arguments on claim construction.

  6. Tesco Corporation v. Weatherford International Inc.

    722 F. Supp. 2d 755 (S.D. Tex. 2010)   Cited 19 times
    Noting that where parties are direct competitors, stay would likely prejudice nonmovant and finding that stay would prejudice patent holder's "rights to exclusive use of technology on which it holds a valid patent."

  7. Bartex Research, LLC v. Fedex Corp.

    611 F. Supp. 2d 647 (E.D. Tex. 2009)   Cited 19 times
    Denying stay pending reexamination of patent-in-suit, noting that "[b]ecause the stay could last over six years, witnesses could become unavailable, their memories may fade, and evidence may be lost"

  8. Eplus, Inc. v. Lawson Software, Inc.

    Civil No. 3:09cv620 (E.D. Va. Mar. 31, 2010)   Cited 9 times
    Denying a stay after the Markman hearing

  9. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,350 times   1045 Legal Analyses
    Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

  10. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,124 times   478 Legal Analyses
    Holding the party seeking invalidity must prove "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."

  11. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,990 times   998 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  12. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,484 times   2270 Legal Analyses
    Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

  13. Section 315 - Relation to other proceedings or actions

    35 U.S.C. § 315   Cited 548 times   890 Legal Analyses
    Permitting the Director to consolidate separate IPRs challenging the same patent

  14. Section 311 - Inter partes review

    35 U.S.C. § 311   Cited 403 times   189 Legal Analyses
    Establishing grounds and scope of IPR proceeding

  15. Section 116 - Inventors

    35 U.S.C. § 116   Cited 344 times   23 Legal Analyses
    Providing that, outside the IPR context, "the Director may permit the application to be amended" to fix inventorship errors

  16. Section 312 - Petitions

    35 U.S.C. § 312   Cited 128 times   119 Legal Analyses
    Governing inter partes reexamination

  17. Section 301 - Citation of prior art and written statements

    35 U.S.C. § 301   Cited 118 times   15 Legal Analyses
    Referring to “the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324 ”

  18. Section 41.77 - Decisions and other actions by the Board

    37 C.F.R. § 41.77   Cited 16 times   3 Legal Analyses

    (a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner's determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent

  19. Section 41.61 - Notice of appeal and cross appeal to Board

    37 C.F.R. § 41.61   Cited 6 times   4 Legal Analyses

    (a) (1) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the owner may appeal to the Board with respect to the final rejection of any claim of the patent by filing a notice of appeal within the time provided in the Right of Appeal Notice and paying the fee set forth in § 41.20(b)(1) . (2) Upon the issuance of a Right of Appeal Notice under § 1.953 of this title, the requester may appeal to the Board with respect to any final decision favorable to the patentability, including

  20. Section 1.947 - Comments by third party requester to patent owner's response in inter partes reexamination

    37 C.F.R. § 1.947   Cited 4 times

    Each time the patent owner files a response to an Office action on the merits pursuant to § 1.945 , a third party requester may once file written comments within a period of 30 days from the date of service of the patent owner's response. These comments shall be limited to issues raised by the Office action or the patent owner's response. The time for submitting comments by the third party requester may not be extended. For the purpose of filing the written comments by the third party requester,

  21. Section 1.951 - Options after Office action closing prosecution in inter partes reexamination

    37 C.F.R. § 1.951   Cited 4 times

    (a) After an Office action closing prosecution in an inter partes reexamination, the patent owner may once file comments limited to the issues raised in the Office action closing prosecution. The comments can include a proposed amendment to the claims, which amendment will be subject to the criteria of § 1.116 as to whether or not it shall be admitted. The comments must be filed within the time set for response in the Office action closing prosecution. (b) When the patent owner does file comments

  22. Section 1.953 - Examiner's Right of Appeal Notice in inter partes reexamination

    37 C.F.R. § 1.953   Cited 4 times

    (a) Upon considering the comments of the patent owner and the third party requester subsequent to the Office action closing prosecution in an inter partes reexamination, or upon expiration of the time for submitting such comments, the examiner shall issue a Right of Appeal Notice, unless the examiner reopens prosecution and issues another Office action on the merits. (b) Expedited Right of Appeal Notice: At any time after the patent owner's response to the initial Office action on the merits in an

  23. Section 1.949 - Examiner's Office action closing prosecution in inter partes reexamination

    37 C.F.R. § 1.949   Cited 2 times

    Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not

  24. Section 1.945 - Response to Office action by patent owner in inter partes reexamination

    37 C.F.R. § 1.945   Cited 2 times

    (a) The patent owner will be given at least thirty days to file a response to any Office action on the merits of the inter partes reexamination. (b) Any supplemental response to the Office action will be entered only where the supplemental response is accompanied by a showing of sufficient cause why the supplemental response should be entered. The showing of sufficient cause must include: (1) An explanation of how the requirements of § 1.111(a)(2)(i) are satisfied; (2) An explanation of why the supplemental

  25. Section 1.935 - Initial Office action usually accompanies order for inter partes reexamination

    37 C.F.R. § 1.935   Cited 2 times

    The order for inter partes reexamination will usually be accompanied by the initial Office action on the merits of the reexamination. 37 C.F.R. §1.935 Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 7 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 1 is placed in the separate grouping of parts pertaining to patents regulations