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Chicago Mercantile Exchange, Inc. v. 5th Market Inc.

09695828 (P.T.A.B. Aug. 18, 2015)
Chicago Mercantile Exchange, Inc. v. 5th Market Inc.

38 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,522 times   180 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 5,724 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. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,157 times   62 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  4. Novo Industries, L.P. v. Micro Molds Corp.

    350 F.3d 1348 (Fed. Cir. 2003)   Cited 241 times   5 Legal Analyses
    Holding that a district court may not correct an error unless "the correction is not subject to reasonable debate"

  5. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 231 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

  6. In re GPAC Inc.

    57 F.3d 1573 (Fed. Cir. 1995)   Cited 164 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."

  7. Custom Accessories v. Jeffrey-Allan Indus

    807 F.2d 955 (Fed. Cir. 1986)   Cited 176 times   1 Legal Analyses
    Holding that upon reissue, the burden of proving invalidity is "made heavier"

  8. In re Klopfenstein

    380 F.3d 1345 (Fed. Cir. 2004)   Cited 75 times   17 Legal Analyses
    Holding that whether a reference is publicly accessible is based on the “facts and circumstances surrounding the reference's disclosure to members of the public”

  9. 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.

  10. In re Suitco Surface

    603 F.3d 1255 (Fed. Cir. 2010)   Cited 35 times   5 Legal Analyses
    In Suitco, we disagreed with the Board's broadest reasonable construction of the term "finishing the top surface of the floor," because the Board's construction "allow[ed] the finishing material to fall anywhere above the surface being finished regardless of whether it actually ‘finishes’ the surface."

  11. Rule 702 - Testimony by Expert Witnesses

    Fed. R. Evid. 702   Cited 26,778 times   259 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 22,631 times   81 Legal Analyses
    Adopting a similar standard, but requiring the probative value to be "substantially outweighed" by these risks

  13. Rule 801 - Definitions That Apply to This Article; Exclusions from Hearsay

    Fed. R. Evid. 801   Cited 19,165 times   75 Legal Analyses
    Holding that such a statement must merely be made by the party and offered against that party

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

    Fed. R. Evid. 803   Cited 12,704 times   85 Legal Analyses
    Recognizing exception to rule against hearsay for records of regularly conducted activities

  15. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,283 times   1029 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

  16. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,061 times   459 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."

  17. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,942 times   959 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  18. Rule 901 - Authenticating or Identifying Evidence

    Fed. R. Evid. 901   Cited 5,175 times   48 Legal Analyses
    Holding that "[t]estimony that a matter is what it is claimed to be" is sufficient authentication

  19. Rule 902 - Evidence That Is Self-Authenticating

    Fed. R. Evid. 902   Cited 2,129 times   35 Legal Analyses
    Setting the certification process for domestic records of regularly conducted business activity

  20. Rule 806 - Attacking and Supporting the Declarant's Credibility

    Fed. R. Evid. 806   Cited 355 times   1 Legal Analyses
    Allowing attack on credibility of out-of-court declarant

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

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

  22. Section 42.301 - Definitions

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

  23. Section 42.73 - Judgment

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

  24. 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

  25. 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,