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Apple Inc. v. Memory Integrity, LLC, a Delaware limited liability company

10966161 (P.T.A.B. Jun. 21, 2016)
Apple Inc. v. Memory Integrity, LLC, a Delaware limited liability company

37 Cited authorities

  1. 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"

  2. Scimed Life Sys. v. Adv. Cardiovascular

    242 F.3d 1337 (Fed. Cir. 2001)   Cited 861 times   11 Legal Analyses
    Holding that description of "present invention" in specification is limiting on claim

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

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 585 times   76 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]”

  4. Genentech, Inc. v. Novo Nordisk, A/S

    108 F.3d 1361 (Fed. Cir. 1997)   Cited 338 times   5 Legal Analyses
    Holding a preliminary injunction should not issue if defendant raises a substantial question as to validity, enforceability, or infringement

  5. Continental Can Co. USA, v. Monsanto Co.

    948 F.2d 1264 (Fed. Cir. 1991)   Cited 328 times   3 Legal Analyses
    Holding that an inherent limitation must be “necessarily present” and cannot be established by “probabilities or possibilities”

  6. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 333 times   41 Legal Analyses
    Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

  7. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 230 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

  8. In re Gleave

    560 F.3d 1331 (Fed. Cir. 2009)   Cited 149 times
    Finding that the prior art reference was enabling and stating that “the fact that [the reference] provides ‘no understanding of which of the targets would be useful’ is of no import, because [the patent applicant] admits that it is well within the skill of an ordinary person in the art to make any oligodeoxynucleotide sequence”

  9. Aventis Pharma S.A. v. Hospira, Inc.

    675 F.3d 1324 (Fed. Cir. 2012)   Cited 128 times   5 Legal Analyses
    Finding the existence of a characteristic in one or more, or even all, embodiments not enough to impose a limitation on the claim language

  10. In re Cruciferous Sprout Litigation

    301 F.3d 1343 (Fed. Cir. 2002)   Cited 137 times   6 Legal Analyses
    Holding that preamble was limiting in light of arguments made during prosecution "show[ing] a clear reliance by the patentee on the preamble to persuade the Patent Office that the claimed invention is not anticipated by the prior art"

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,280 times   1025 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

  12. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,938 times   949 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. Section 314 - Institution of inter partes review

    35 U.S.C. § 314   Cited 370 times   625 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 132 - Notice of rejection; reexamination

    35 U.S.C. § 132   Cited 308 times   47 Legal Analyses
    Prohibiting addition of "new matter"

  15. 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"

  16. 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)

  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"

  18. 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”

  19. Section 42.73 - Judgment

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

  20. 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

  21. Section 42.65 - Expert testimony; tests and data

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

  22. 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,