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Ex Parte 8,033,120 et al

95001783 (P.T.A.B. Mar. 21, 2019)
Ex Parte 8,033,120 et al

11 Cited authorities

  1. In re Kubin

    561 F.3d 1351 (Fed. Cir. 2009)   Cited 135 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

  2. In re Huai-Hung Kao

    639 F.3d 1057 (Fed. Cir. 2011)   Cited 88 times   16 Legal Analyses
    Holding that a "food effect" was obvious because the effect was an inherent property of the composition

  3. In re O'Farrell

    853 F.2d 894 (Fed. Cir. 1988)   Cited 168 times   9 Legal Analyses
    Finding patent obvious where the prior art provided a "reasonable expectation of success"

  4. Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc.

    752 F.3d 967 (Fed. Cir. 2014)   Cited 60 times   5 Legal Analyses
    Finding no clear error in district court's fact finding that "entecavir's ‘effectiveness against hepatitis B without known toxicity issues’ was ‘not unexpected ,’ " and deferring to district court's finding that this was not sufficient evidence of nonobviousness

  5. Alcon Research, Ltd. v. Apotex Inc.

    687 F.3d 1362 (Fed. Cir. 2012)   Cited 60 times   6 Legal Analyses
    Holding a prior art reference disclosing a range of concentrations expressly disclosed a particular concentration within that range

  6. Honeywell Int'l Inc. v. Mexichem Amanco Holding S.A. de C.V.

    865 F.3d 1348 (Fed. Cir. 2017)   Cited 20 times   11 Legal Analyses
    Holding the reasonable-expectation-of-success requirement is not satisfied when the skilled artisan would have had no expectation of success

  7. Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc.

    769 F.3d 1339 (Fed. Cir. 2014)   1 Legal Analyses

    No. 2013–1306. 2014-10-20 BRISTOL–MYERS SQUIBB COMPANY, Plaintiff–Appellant, v. TEVA PHARMACEUTICALS USA, INC., Defendant–Appellee. William F. Lee, Wilmer Cutler Pickering Hale and Dorr, LLP, of Boston, MA, filed a petition for panel rehearing and rehearing en banc for plaintiff-appellant. With him on the petition were Lauren B. Fletcher and Andrew J. Danford, of Boston, MA, and Amy K. Wigmore and Thomas G. Saunders, of Washington, DC. Of counsel on the petition were Paul H. Berghoff, Alison J. Baldwin

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

    35 U.S.C. § 103   Cited 6,135 times   480 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."

  9. Section 41.77 - Decisions and other actions by the Board

    37 C.F.R. § 41.77   Cited 16 times   3 Legal Analyses

    (a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner's determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent

  10. Section 41.79 - Rehearing

    37 C.F.R. § 41.79   Cited 5 times

    (a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of: (1) The original decision of the Board under § 41.77(a) , (2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2) , (3) The expiration of the time for the owner to take action under § 41.77(b)(2) , or (4) The new decision of the Board under § 41.77(f) . (b) (1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked

  11. Section 1.943 - Requirements of responses, written comments, and briefs in inter partes reexamination

    37 C.F.R. § 1.943

    (a) The form of responses, written comments, briefs, appendices, and other papers must be in accordance with the requirements of § 1.52 . (b) Responses by the patent owner and written comments by the third party requester shall not exceed 50 pages in length, excluding amendments, appendices of claims, and reference materials such as prior art references. (c) Appellant's briefs filed by the patent owner and the third party requester shall not exceed thirty pages or 14,000 words in length, excluding