§

Endo Pharmaceutical Inc. v. Depomed, Inc.

09282233 (P.T.A.B. Sep. 21, 2015)
Endo Pharmaceutical Inc. v. Depomed, Inc.

25 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,519 times   169 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. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,154 times   50 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. In re Gartside

    203 F.3d 1305 (Fed. Cir. 2000)   Cited 511 times   15 Legal Analyses
    Holding that factual determinations underlying an obviousness rejection under 35 U.S.C. § 103 are reviewed for substantial evidence

  4. Eurand, Inc. v. Mylan Pharms. Inc. (In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.)

    676 F.3d 1063 (Fed. Cir. 2012)   Cited 304 times   13 Legal Analyses
    Holding that “the proper inquiry [in a best mode analysis] focuses on the adequacy of the disclosure rather than motivation for any nondisclosure”

  5. Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc.

    566 F.3d 989 (Fed. Cir. 2009)   Cited 250 times   2 Legal Analyses
    Finding that inventor's unwitnessed notebook was not adequate corroborating evidence of an earlier invention date

  6. Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc.

    773 F.3d 1186 (Fed. Cir. 2014)   Cited 130 times   25 Legal Analyses
    Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"

  7. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 230 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

  8. In re Cuozzo Speed Technologies, LLC

    793 F.3d 1268 (Fed. Cir. 2015)   Cited 120 times   26 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

  9. In re Kubin

    561 F.3d 1351 (Fed. Cir. 2009)   Cited 130 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

  10. In re Kahn

    441 F.3d 977 (Fed. Cir. 2006)   Cited 141 times   11 Legal Analyses
    Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

  11. Rule 401 - Test for Relevant Evidence

    Fed. R. Evid. 401   Cited 13,406 times   34 Legal Analyses
    Providing that evidence is relevant if " it has any tendency to make a fact more or less probable than it would be without the evidence; and (b) the fact is of consequence in determining the action"

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

    35 U.S.C. § 103   Cited 6,056 times   449 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 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 276 times   307 Legal Analyses
    Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

  14. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 182 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"

  15. Section 318 - Decision of the Board

    35 U.S.C. § 318   Cited 159 times   137 Legal Analyses
    Governing the incorporation of claims added via the operation of § 316(d)

  16. Section 42.100 - Procedure; pendency

    37 C.F.R. § 42.100   Cited 188 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"

  17. Section 42.1 - Policy

    37 C.F.R. § 42.1   Cited 21 times   29 Legal Analyses

    (a)Scope. Part 42 governs proceedings before the Patent Trial and Appeal Board. Sections 1.4 , 1.7 , 1.14 , 1.16 , 1.22 , 1.23 , 1.25 , 1.26 , 1.32 , 1.34 , and 1.36 of this chapter also apply to proceedings before the Board, as do other sections of part 1 of this chapter that are incorporated by reference into this part. (b)Construction. This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding. (c)Decorum. Every party must act with courtesy and decorum

  18. Section 42.73 - Judgment

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

  19. Section 42.20 - Generally

    37 C.F.R. § 42.20   Cited 15 times   38 Legal Analyses

    (a)Relief. Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion. (b)Prior authorization. A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding. (c)Burden of proof. The moving party has the burden of proof to establish that it is entitled to the requested relief. (d)Briefing. The Board may order briefing on any issue involved in the trial. 37 C.F

  20. 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,