§

Apotex, Inc. v. Novartis AG

12189323 (P.T.A.B. Sep. 24, 2015)
Apotex, Inc. v. Novartis AG

47 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,519 times   169 Legal Analyses
    Holding that, in an obviousness analysis, "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it"

  2. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,714 times   164 Legal Analyses
    Holding that "because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence"

  3. Vivid Technologies v. American Science

    200 F.3d 795 (Fed. Cir. 1999)   Cited 730 times   4 Legal Analyses
    Holding that party opposing summary judgment must show either that movant has not established its entitlement to judgment on the undisputed facts or that material issues of fact require resolution by trial

  4. Merck & Co. v. Teva Pharmaceuticals USA, Inc.

    395 F.3d 1364 (Fed. Cir. 2005)   Cited 416 times   10 Legal Analyses
    Holding that commercial success is not significantly probative of non-obviousness where others are barred from acting on the prior art

  5. Pfizer v. Apotex

    480 F.3d 1348 (Fed. Cir. 2007)   Cited 370 times   7 Legal Analyses
    Holding the district court clearly erred when it failed to consider relevant prior art

  6. Cross Med Prod v. Medtronic Sofamor Danek

    424 F.3d 1293 (Fed. Cir. 2005)   Cited 347 times   4 Legal Analyses
    Holding that there can be no direct infringement of a product claim where surgeons, and not the defendant, made the claimed apparatus in the operating room, and remanding to determine whether the surgeons directly infringed such that Medtronic could be held liable for indirect infringement

  7. Amgen v. F. Hoffmann-La Roche

    580 F.3d 1340 (Fed. Cir. 2009)   Cited 202 times   16 Legal Analyses
    Determining whether the differences in subject matter between the two claims render the claims patentably distinct "is analogous to an obviousness analysis under 35 U.S.C. § 103"

  8. Medichem, S.A. v. Rolabo, S.L

    437 F.3d 1157 (Fed. Cir. 2006)   Cited 171 times   9 Legal Analyses
    Holding that non-inventor's notebook did not corroborate reduction to practice because the non-inventor "did not testify regarding the notebook or the genuineness of its contents" and the district court was therefore "clearly reliant on the inventor to help identify the author of specific entries made in [the non-inventor's] notebook"

  9. Tokai Corp v. Easton Enterprises, Inc.

    632 F.3d 1358 (Fed. Cir. 2011)   Cited 147 times   1 Legal Analyses
    Holding that regional circuit law governs the decision to exclude evidence

  10. Power-One Inc. v. Artesyn Technologies, Inc.

    599 F.3d 1343 (Fed. Cir. 2010)   Cited 142 times   3 Legal Analyses
    Finding that a claim is not indefinite if "the meaning of the claim is discernible, even though the task may be formidable and the conclusions may be one over which reasonable persons will disagree."

  11. Rule 702 - Testimony by Expert Witnesses

    Fed. R. Evid. 702   Cited 26,688 times   255 Legal Analyses
    Adopting the Daubert standard

  12. Rule 403 - Excluding Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons

    Fed. R. Evid. 403   Cited 22,534 times   81 Legal Analyses
    Adopting a similar standard, but requiring the probative value to be "substantially outweighed" by these risks

  13. Rule 803 - Exceptions to the Rule Against Hearsay-Regardless of Whether the Declarant Is Available as a Witness

    Fed. R. Evid. 803   Cited 12,675 times   85 Legal Analyses
    Recognizing exception to rule against hearsay for records of regularly conducted activities

  14. Rule 402 - General Admissibility of Relevant Evidence

    Fed. R. Evid. 402   Cited 6,662 times   10 Legal Analyses
    Providing relevant evidence is admissible unless prohibited by the United States Constitution, a federal statute, the Federal Rules of Evidence, or other rules prescribed by the Supreme Court

  15. Rule 802 - The Rule Against Hearsay

    Fed. R. Evid. 802   Cited 3,827 times   11 Legal Analyses
    Recognizing federal statutes, the Federal Rules of Evidence, or Supreme Court rules as sources for exceptions to the rule against hearsay

  16. Rule 602 - Need for Personal Knowledge

    Fed. R. Evid. 602   Cited 3,509 times   13 Legal Analyses
    Stating that " witness may testify only if evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter"

  17. Rule 106 - Remainder of or Related Statements

    Fed. R. Evid. 106   Cited 1,052 times   10 Legal Analyses
    Providing that a party is entitled to the admission of any part of a recorded statement which ought, in fairness, be considered contemporaneously with the portion of a statement excerpted by an adverse party

  18. Section 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 276 times   307 Legal Analyses
    Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

  19. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 182 times   63 Legal Analyses
    Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

  20. Section 318 - Decision of the Board

    35 U.S.C. § 318   Cited 159 times   137 Legal Analyses
    Governing the incorporation of claims added via the operation of § 316(d)

  21. 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"

  22. Section 42.23 - Oppositions, replies, and sur-replies

    37 C.F.R. § 42.23   Cited 39 times   39 Legal Analyses
    Taking testimony

  23. Section 42.121 - Amendment of the patent

    37 C.F.R. § 42.121   Cited 21 times   79 Legal Analyses
    Requiring that a “motion to amend claims must include a claim listing”

  24. Section 42.73 - Judgment

    37 C.F.R. § 42.73   Cited 17 times   47 Legal Analyses
    Regarding judgments

  25. Section 42.20 - Generally

    37 C.F.R. § 42.20   Cited 15 times   38 Legal Analyses

    (a)Relief. Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion. (b)Prior authorization. A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding. (c)Burden of proof. The moving party has the burden of proof to establish that it is entitled to the requested relief. (d)Briefing. The Board may order briefing on any issue involved in the trial. 37 C.F

  26. Section 42.22 - Content of petitions and motions

    37 C.F.R. § 42.22   Cited 14 times   15 Legal Analyses

    (a) Each petition or motion must be filed as a separate paper and must include: (1) A statement of the precise relief requested; and (2) A full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent. (b)Relief requested. Where a rule in part 1 of this title ordinarily governs the relief sought, the petition or motion must make any showings required under that rule

  27. Section 42.6 - Filing of documents, including exhibits; service

    37 C.F.R. § 42.6   Cited 9 times   43 Legal Analyses

    (a)General format requirements. (1) Page size must be 81/2 inch * 11 inch except in the case of exhibits that require a larger size in order to preserve details of the original. (2) In documents, including affidavits, created for the proceeding: (i) Markings must be in black or must otherwise provide an equivalent dark, high-contrast image; (ii) 14-point, Times New Roman proportional font, with normal spacing, must be used; (iii) Double spacing must be used except in claim charts, headings, tables

  28. Section 42.65 - Expert testimony; tests and data

    37 C.F.R. § 42.65   Cited 5 times   15 Legal Analyses
    Discussing "[e]xpert testimony"

  29. Section 42.54 - Protective order

    37 C.F.R. § 42.54   7 Legal Analyses

    (a) A party may file a motion to seal where the motion to seal contains a proposed protective order, such as the default protective order set forth in the Office Patent Trial Practice Guide. The motion must include a certification that the moving party has in good faith conferred or attempted to confer with other affected parties in an effort to resolve the dispute. The Board may, for good cause, issue an order to protect a party or person from disclosing confidential information, including, but

  30. Section 90.2 - Notice; service

    37 C.F.R. § 90.2   2 Legal Analyses

    (a)For an appeal under 35 U.S.C. 141 . (1) (i) In all appeals, the notice of appeal required by 35 U.S.C. 142 must be filed with the Director by electronic mail to the email address indicated on the United States Patent and Trademark Office's web page for the Office of the General Counsel. This electronically submitted notice will be accorded a receipt date, which is the date in Eastern Time when the correspondence is received in the Office, regardless of whether that date is a Saturday, Sunday,