Ex Parte HAKOZAKI et al

13 Cited authorities

Alice Corp. v. CLS Bank International
573 U.S. 208 (2014) Cited 1,435 times 521 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
Mayo Collaborative Servs. v. Prometheus Labs., Inc.
566 U.S. 66 (2012) Cited 817 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
Diamond v. Diehr
450 U.S. 175 (1981) Cited 541 times 130 Legal Analyses
Holding a procedure for molding rubber that included a computer program is within patentable subject matter
Berkheimer v. HP Inc.
881 F.3d 1360 (Fed. Cir. 2018) Cited 547 times 47 Legal Analyses
Holding that claims may be treated as "representative" in a § 101 inquiry if a patentee makes no "meaningful argument for the distinctive significance of any claim limitations not found in the representative claim"
Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.
598 F.3d 1336 (Fed. Cir. 2010) Cited 613 times 78 Legal Analyses
Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”
Atmel Corp. v. Info. Storage Devices, Inc.
198 F.3d 1374 (Fed. Cir. 1999) Cited 298 times 5 Legal Analyses
Holding that the determination of whether sufficient structure is disclosed in the specification to support a means-plus-function limitation is based on the understanding of one skilled in the art
Intellectual Ventures I LLC v. Capital One Fin. Corp.
850 F.3d 1332 (Fed. Cir. 2017) Cited 173 times 5 Legal Analyses
Holding abstract claims "directed to ... collecting, displaying, and manipulating data"
W.L. Gore Associates, Inc. v. Garlock
721 F.2d 1540 (Fed. Cir. 1983) Cited 327 times 7 Legal Analyses
Holding the district court erred by "considering the references in less than their entireties, i.e., in disregarding disclosures in the references that diverge from and teach away from the invention at hand"
Spectra-Physics, Inc. v. Coherent, Inc.
827 F.2d 1524 (Fed. Cir. 1987) Cited 146 times 2 Legal Analyses
Holding that violation of the best mode requirement is a question of fact dependent upon the patent applicant's intent
Section 112 - Specification
35 U.S.C. § 112 Cited 7,394 times 1049 Legal Analyses
Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it
Section 101 - Inventions patentable
35 U.S.C. § 101 Cited 3,519 times 2288 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."
Section 6 - Patent Trial and Appeal Board
35 U.S.C. § 6 Cited 186 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"
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

Ex Parte HAKOZAKI et al

13 Cited authorities

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

Holding that "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility

Holding a procedure for molding rubber that included a computer program is within patentable subject matter

Holding that claims may be treated as "representative" in a § 101 inquiry if a patentee makes no "meaningful argument for the distinctive significance of any claim limitations not found in the representative claim"

Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

Holding that the determination of whether sufficient structure is disclosed in the specification to support a means-plus-function limitation is based on the understanding of one skilled in the art

Holding abstract claims "directed to ... collecting, displaying, and manipulating data"

Holding the district court erred by "considering the references in less than their entireties, i.e., in disregarding disclosures in the references that diverge from and teach away from the invention at hand"

Holding that violation of the best mode requirement is a question of fact dependent upon the patent applicant's intent

Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

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"