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Eastman, Scott et al.

18 Cited authorities

  1. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,454 times   522 Legal Analyses
    Holding ineligible patent claims directed to the concept of "intermediated settlement," i.e., the use of a third party to mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation

  2. 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"

  3. Mayo Collaborative Servs. v. Prometheus Labs., Inc.

    566 U.S. 66 (2012)   Cited 831 times   153 Legal Analyses
    Holding that "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility

  4. Gottschalk v. Benson

    409 U.S. 63 (1972)   Cited 505 times   59 Legal Analyses
    Holding claim involving mathematical formula invalid under § 101 that did not preempt a mathematical formula

  5. Bristol-Myers Squibb v. Ben Venue Labs

    246 F.3d 1368 (Fed. Cir. 2001)   Cited 279 times   12 Legal Analyses
    Holding preamble language non-limiting in method of treatment claims containing two steps, the second of which was administering a compound

  6. In re Kubin

    561 F.3d 1351 (Fed. Cir. 2009)   Cited 137 times   10 Legal Analyses
    Finding patent invalid where an inherent benefit "is not an additional requirement imposed by the claims . . . but rather a property necessarily present" when the other limitations are satisfied

  7. Credit Acceptance Corp. v. Westlake Servs.

    859 F.3d 1044 (Fed. Cir. 2017)   Cited 94 times   15 Legal Analyses
    Holding that, under the now-expired scheme for covered business method patents, § 324(e) did not bar review of post-institution estoppel determinations under § 325(e)

  8. Vanda Pharms. Inc. v. W.-Ward Pharms. Int'l Ltd.

    887 F.3d 1117 (Fed. Cir. 2018)   Cited 85 times   57 Legal Analyses
    Holding that "[t]he contents of the label itself may permit the inference of specific intent to encourage, recommend, or promote infringement"

  9. Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC

    915 F.3d 743 (Fed. Cir. 2019)   Cited 49 times   23 Legal Analyses
    Holding that there is no inventive concept in "applying standard techniques in a standard way to observe a natural law"

  10. Nat. Alts. Int'l, Inc. v. Creative Compounds, LLC

    918 F.3d 1338 (Fed. Cir. 2019)   Cited 40 times   22 Legal Analyses
    Finding that a patent involving beta-alanine (which exists in nature) is directed at patent-eligible subject matter because the beta-alanine quantities being administered "greatly exceed natural levels"

  11. 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."

  12. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,547 times   2302 Legal Analyses
    Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

  13. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 188 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"

  14. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 99 times   30 Legal Analyses

    (a) PATENT APPLICANT.-An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.-A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 U.S.C. § 134 July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622

  15. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  16. Section 1.136 - [Effective until 1/19/2025] Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 Legal Analyses

    (a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title; (iii)

  17. Section 1.42 - Applicant for patent

    37 C.F.R. § 1.42   1 Legal Analyses

    (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 . (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and