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Ex Parte 5424491 et al

90009467 (P.T.A.B. Feb. 27, 2013)
Ex Parte 5424491 et al

12 Cited authorities

  1. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,714 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"

  2. Medichem, S.A. v. Rolabo, S.L

    437 F.3d 1157 (Fed. Cir. 2006)   Cited 171 times   9 Legal Analyses
    Holding that non-inventor's notebook did not corroborate reduction to practice because the non-inventor "did not testify regarding the notebook or the genuineness of its contents" and the district court was therefore "clearly reliant on the inventor to help identify the author of specific entries made in [the non-inventor's] notebook"

  3. Winner Intern. Royalty Corp. v. Wang

    202 F.3d 1340 (Fed. Cir. 2000)   Cited 152 times
    Holding that "the admission of live testimony on all matters before the Board in a section 146 action, as in this case, makes a factfinder of the district court and requires a de novo trial"

  4. Silicon Graphics, Inc. v. ATI Technologies, Inc.

    607 F.3d 784 (Fed. Cir. 2010)   Cited 81 times
    Finding district court did not err in granting judgment on an invalidity counterclaim the defendant did not pursue at trial where the defendant did not "keep the district court clearly apprised of what parts of its claim it wishe[d] to pursue and which parts, if any, it wishe[d] to reserve for another day"

  5. Flo Healthcare Solutions, LLC v. Kappos

    697 F.3d 1367 (Fed. Cir. 2012)   Cited 52 times   5 Legal Analyses
    Holding that “height adjustment mechanism” imparts sufficient structure so that the presumption against applying § 112, ¶ 6 is not overcome

  6. In re Abbott Diabetes Care Inc.

    696 F.3d 1142 (Fed. Cir. 2012)   Cited 37 times   2 Legal Analyses
    Holding that the conclusion that the claimed electrochemical sensor could not have external wires was supported by, among other considerations, the fact that "every embodiment disclosed in the specification shows . . . sensor without external cables or wires"

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

    35 U.S.C. § 103   Cited 6,056 times   447 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."

  8. 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"

  9. 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

  10. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

  11. Section 1.550 - Conduct of ex parte reexamination proceedings

    37 C.F.R. § 1.550   Cited 32 times   2 Legal Analyses
    Discussing limited involvement of requester and third parties in re-examination proceedings

  12. Section 1.565 - Concurrent office proceedings which include an ex parte reexamination proceeding

    37 C.F.R. § 1.565   Cited 11 times
    Stating that a merged reissue/reexamination proceeding will follow the rules for a reissue patent application (e.g., 37 C.F.R. 171 through 1.179)