Boston Scientific Neuromodulation Corporation v. Nevro Corp.

23 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,575 times 189 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"
Graham v. John Deere Co.
383 U.S. 1 (1966) Cited 3,190 times 68 Legal Analyses
Holding commercial success is a "secondary consideration" suggesting nonobviousness
Vivid Technologies v. American Science
200 F.3d 795 (Fed. Cir. 1999) Cited 750 times 5 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
Net Moneyin v. Verisign
545 F.3d 1359 (Fed. Cir. 2008) Cited 284 times 6 Legal Analyses
Holding that, to anticipate, a single prior art reference must not only disclose all the limitations claimed but also must disclose those limitations "arranged or combined in the same way as recited in the claim"
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
In re Gleave
560 F.3d 1331 (Fed. Cir. 2009) Cited 150 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”
In re Cuozzo Speed Technologies, LLC
793 F.3d 1268 (Fed. Cir. 2015) Cited 124 times 27 Legal Analyses
Determining that, under the "broadest reasonable interpretation standard," the construction of the term "integrally attached" as "discrete parts physically joined together as a unit without each part losing its own separate identity" was reasonable
In re GPAC Inc.
57 F.3d 1573 (Fed. Cir. 1995) Cited 168 times 2 Legal Analyses
In GPAC, for example, we found that a reference disclosing an equilibrium air door was reasonably pertinent to a patent directed to asbestos removal because they both addressed the same problem of "maintaining a pressurized environment while allowing for human ingress and egress."
In re Robertson
169 F.3d 743 (Fed. Cir. 1999) Cited 65 times
Holding that inherent anticipation requires more than mere probability or possibility that the missing descriptive materials are present in the prior art
In re Translogic Technology
504 F.3d 1249 (Fed. Cir. 2007) Cited 44 times 2 Legal Analyses
Recognizing that the Supreme Court set aside the rigid application of the TSM Test and ensured use of customary knowledge as an ingredient in that equation.
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,172 times 492 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."
Section 314 - Institution of inter partes review
35 U.S.C. § 314 Cited 381 times 636 Legal Analyses
Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"
Section 42.100 - Procedure; pendency
37 C.F.R. § 42.100 Cited 192 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"
Section 42.107 - Preliminary response to petition
37 C.F.R. § 42.107 Cited 95 times 56 Legal Analyses
Requiring initiation of IPR within six months of filing and a decision within twelve months thereafter
Section 42.108 - Institution of inter partes review
37 C.F.R. § 42.108 Cited 46 times 69 Legal Analyses
Permitting partial institution
Section 42.104 - Content of petition
37 C.F.R. § 42.104 Cited 28 times 54 Legal Analyses
Describing the content of the petition, including both "the patents or printed publications relied upon for each ground," and "supporting evidence relied upon to support the challenge"
Section 42.65 - Expert testimony; tests and data
37 C.F.R. § 42.65 Cited 6 times 19 Legal Analyses
Discussing "[e]xpert testimony"

Boston Scientific Neuromodulation Corporation v. Nevro Corp.

23 Cited authorities

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"

Holding commercial success is a "secondary consideration" suggesting nonobviousness

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

Holding that, to anticipate, a single prior art reference must not only disclose all the limitations claimed but also must disclose those limitations "arranged or combined in the same way as recited in the claim"

Determining that, under the "broadest reasonable interpretation standard," the construction of the term "integrally attached" as "discrete parts physically joined together as a unit without each part losing its own separate identity" was reasonable

In GPAC, for example, we found that a reference disclosing an equilibrium air door was reasonably pertinent to a patent directed to asbestos removal because they both addressed the same problem of "maintaining a pressurized environment while allowing for human ingress and egress."

Holding that inherent anticipation requires more than mere probability or possibility that the missing descriptive materials are present in the prior art

Recognizing that the Supreme Court set aside the rigid application of the TSM Test and ensured use of customary knowledge as an ingredient in that equation.

Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"

Providing that the PTAB gives " claim . . . its broadest reasonable construction in light of the specification of the patent in which it appears"

Requiring initiation of IPR within six months of filing and a decision within twelve months thereafter

Permitting partial institution

Describing the content of the petition, including both "the patents or printed publications relied upon for each ground," and "supporting evidence relied upon to support the challenge"

Discussing "[e]xpert testimony"