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BANDL-KONRAD et al. V. Gandhi et al.

11690214 - (J) (P.T.A.B. Jul. 26, 2013)
BANDL-KONRAD et al. V. Gandhi et al.

40 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. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,860 times   167 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. 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

  4. Comark Communications v. Harris Corp.

    156 F.3d 1182 (Fed. Cir. 1998)   Cited 1,194 times
    Holding the "doctrine of claim differentiation create a presumption that each claim in a patent has a different scope"

  5. Amgen Inc. v. Hoechst Marion Roussel, Inc.

    314 F.3d 1313 (Fed. Cir. 2003)   Cited 506 times   14 Legal Analyses
    Holding that “non-naturally occurring” and “not isolated” were structural elements defining the source of the claimed material, rather than steps for obtaining it

  6. Ethicon, Inc. v. Quigg

    849 F.2d 1422 (Fed. Cir. 1988)   Cited 663 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

  7. Schering Corp. v. Geneva Pharmaceuticals

    339 F.3d 1373 (Fed. Cir. 2003)   Cited 342 times   8 Legal Analyses
    Holding a claim invalid as anticipated when it claimed compounds in Markush form and a prior art reference disclosed one of the claimed compounds

  8. Vas-Cath Inc. v. Mahurkar

    935 F.2d 1555 (Fed. Cir. 1991)   Cited 396 times   3 Legal Analyses
    Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

  9. 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

  10. Finnigan Corp. v. Inter. Trade Comm

    180 F.3d 1354 (Fed. Cir. 1999)   Cited 235 times   3 Legal Analyses
    Holding that a witness's testimony of an invalidating public use must be corroborated to satisfy the interested party's burden of proving invalidity by clear and convincing evidence

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,393 times   1049 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 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,148 times   481 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."

  13. 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"

  14. Section 135 - Derivation proceedings

    35 U.S.C. § 135   Cited 287 times   51 Legal Analyses
    Governing interferences

  15. Section 41.121 - Motions

    37 C.F.R. § 41.121   Cited 15 times   77 Legal Analyses

    (a)Types of motions - (1)Substantive motions. Consistent with the notice of requested relief, if any, and to the extent the Board authorizes, a party may file a motion: (i) To redefine the scope of the contested case, (ii) To change benefit accorded for the contested subject matter, or (iii) For judgment in the contested case. (2)Responsive motions. The Board may authorize a party to file a motion to amend or add a claim, to change inventorship, or otherwise to cure a defect raised in a notice of

  16. Section 41.207 - Presumptions

    37 C.F.R. § 41.207   Cited 13 times   19 Legal Analyses

    (a)Priority - (1)Order of invention. Parties are presumed to have invented interfering subject matter in the order of the dates of their accorded benefit for each count. If two parties are accorded the benefit of the same earliest date of constructive reduction to practice, then neither party is entitled to a presumption of priority with respect to the other such party. (2)Evidentiary standard. Priority may be proved by a preponderance of the evidence except a party must prove priority by clear and

  17. Section 41.127 - Judgment

    37 C.F.R. § 41.127   Cited 9 times   15 Legal Analyses

    (a)Effect within Office - (1)Estoppel. A judgment disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party's failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment. (2)Final disposal

  18. Section 41.125 - Decision on motions

    37 C.F.R. § 41.125   Cited 8 times   25 Legal Analyses
    Allowing the Board to take up motions for decision in any order

  19. Section 41.208 - Content of substantive and responsive motions

    37 C.F.R. § 41.208   Cited 6 times   60 Legal Analyses

    The general requirements for motions in contested cases are stated at § 41.121(c) . (a) In an interference, substantive motions must: (1) Raise a threshold issue, (2) Seek to change the scope of the definition of the interfering subject matter or the correspondence of claims to the count, (3) Seek to change the benefit accorded for the count, or (4) Seek judgment on derivation or on priority. (b) To be sufficient, a motion must provide a showing, supported with appropriate evidence, such that, if

  20. Section 1.125 - Substitute specification

    37 C.F.R. § 1.125   Cited 1 times   1 Legal Analyses

    (a) If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten. (b) Subject to § 1.312 , a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes

  21. Section 41.205 - Settlement agreements

    37 C.F.R. § 41.205

    (a)Constructive notice; time for filing. Pursuant to 35 U.S.C. 135(c) , an agreement or understanding, including collateral agreements referred to therein, made in connection with or in contemplation of the termination of an interference must be filed prior to the termination of the interference between the parties to the agreement. After a final decision is entered by the Board, an interference is considered terminated when no appeal ( 35 U.S.C. 141 ) or other review ( 35 U.S.C. 146 ) has been or