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EMC IP Holding Company LLC

2019002762 (P.T.A.B. Jul. 30, 2020)
EMC IP Holding Company LLC

13 Cited authorities

  1. 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

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

    948 F.2d 1264 (Fed. Cir. 1991)   Cited 334 times   3 Legal Analyses
    Holding that an inherent limitation must be “necessarily present” and cannot be established by “probabilities or possibilities”

  3. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 89 times   1 Legal Analyses
    Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter

  4. Trivascular, Inc. v. Samuels

    812 F.3d 1056 (Fed. Cir. 2016)   Cited 60 times   7 Legal Analyses
    Finding no motivation to modify the prior art where doing so "would destroy the basic objective" of the prior art

  5. Therasense v. Becton

    593 F.3d 1325 (Fed. Cir. 2010)   Cited 68 times
    Concluding that "[t]he erroneous jury instruction on the law of anticipation" did not upend a verdict of invalidity based on " 'anticipation or obviousness' " because the jury could have found the patents obvious

  6. In re Morris

    127 F.3d 1048 (Fed. Cir. 1997)   Cited 49 times   7 Legal Analyses
    Holding that, in reviewing a claim construction decided under the ‘broadest reasonable interpretation’ standard, we determine whether the interpretation is within the range of reasonableness

  7. In re Smith Int'l, Inc.

    871 F.3d 1375 (Fed. Cir. 2017)   Cited 15 times   3 Legal Analyses
    Reversing an anticipation rejection because it was predicated on an unreasonably broad claim construction

  8. Beloit Corp. v. Valmet Oy

    742 F.2d 1421 (Fed. Cir. 1984)   Cited 24 times   4 Legal Analyses
    Noting we do not "sit to review what the Commission has not decided"

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

    35 U.S.C. § 103   Cited 6,154 times   485 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."

  10. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,020 times   1020 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  11. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 187 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"

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

    35 U.S.C. § 134   Cited 98 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

  13. 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