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Apple Inc. v. ContentGuard Holdings, Inc.

10956121 (P.T.A.B. Jun. 21, 2016)
Apple Inc. v. ContentGuard Holdings, Inc.

39 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,558 times   185 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. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,185 times   68 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. Cuozzo Speed Techs., LLC v. Lee

    136 S. Ct. 2131 (2016)   Cited 278 times   164 Legal Analyses
    Holding that the Board's interpretation of the petition to have implicitly presented a challenge was unreviewable

  4. CCS Fitness, Inc. v. Brunswick Corp.

    288 F.3d 1359 (Fed. Cir. 2002)   Cited 975 times   6 Legal Analyses
    Holding that to act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning

  5. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 613 times   78 Legal Analyses
    Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

  6. Bicon, Inc. v. Straumann Co.

    441 F.3d 945 (Fed. Cir. 2006)   Cited 336 times   3 Legal Analyses
    Holding a patent claim construction that reads limitations out of a claim is "contrary to the principle that claim language should not [be] treated as meaningless"

  7. Lockwood v. American Airlines, Inc.

    107 F.3d 1565 (Fed. Cir. 1997)   Cited 304 times   6 Legal Analyses
    Holding that "[e]ach application in the chain must describe the claimed features" and that if "one of the intervening applications does not describe" the subject matter, the later application cannot claim the benefit of the earlier application

  8. On Demand Machine v. Ingram Industries

    442 F.3d 1331 (Fed. Cir. 2006)   Cited 192 times   1 Legal Analyses
    Holding "providing means for a customer to visually review" nested in a method claim was a means-plus-function term

  9. Eaton Corp. v. Rockwell Intern. Corp.

    323 F.3d 1332 (Fed. Cir. 2003)   Cited 198 times   3 Legal Analyses
    Holding that preamble limited claim where claim referred to “said vehicle master clutch” and “said drive train” and those terms were described in the preamble

  10. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 232 times   3 Legal Analyses
    Holding an inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning

  11. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,016 times   1014 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  12. Section 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 294 times   311 Legal Analyses
    Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

  13. Section 252 - Effect of reissue

    35 U.S.C. § 252   Cited 291 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 ”

  14. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 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"

  15. Section 324 - Institution of post-grant review

    35 U.S.C. § 324   Cited 42 times   58 Legal Analyses
    Requiring threshold determination that it is "more likely than not that at least 1 of the claims . . . is unpatentable"

  16. Section 326 - Conduct of post-grant review

    35 U.S.C. § 326   Cited 27 times   23 Legal Analyses

    (a) REGULATIONS.-The Director shall prescribe regulations- (1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion; (2) setting forth the standards for the showing of sufficient grounds to institute a review under subsections (a) and (b) of section 324; (3) establishing

  17. Section 328 - Decision of the Board

    35 U.S.C. § 328   Cited 11 times   11 Legal Analyses

    (a) FINAL WRITTEN DECISION.-If a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d). (b) CERTIFICATE.-If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue

  18. Section 42.301 - Definitions

    37 C.F.R. § 42.301   Cited 21 times   56 Legal Analyses
    Defining the scope of CBM review

  19. Section 42.73 - Judgment

    37 C.F.R. § 42.73   Cited 18 times   62 Legal Analyses
    Regarding judgments

  20. Section 42.20 - Generally

    37 C.F.R. § 42.20   Cited 16 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

  21. Section 42.300 - Procedure; pendency

    37 C.F.R. § 42.300   Cited 13 times   10 Legal Analyses

    (a) A covered business method patent review is a trial subject to the procedures set forth in subpart A of this part and is also subject to the post-grant review procedures set forth in subpart C except for §§ 42.200 , 42.201 , 42.202 , and 42.204 . (b) In a covered business method patent review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.221 , shall be construed using the same claim construction standard that would be used to construe the claim in a civil

  22. 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

  23. Section 42.11 - Duty of candor; signing papers; representations to the Board; sanctions

    37 C.F.R. § 42.11   Cited 7 times   40 Legal Analyses

    (a)Duty of candor. Parties and individuals involved in the proceeding have a duty of candor and good faith to the Office during the course of a proceeding. (b)Signature. Every petition, response, written motion, and other paper filed in a proceeding must comply with the signature requirements set forth in § 11.18(a) of this chapter. The Board may expunge any unsigned submission unless the omission is promptly corrected after being called to the counsel's or party's attention. (c)Representations to

  24. 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,