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Ex Parte John et al

14177340 (P.T.A.B. Dec. 17, 2018)
Ex Parte John et al

17 Cited authorities

  1. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,436 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

  2. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,869 times   167 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"

  3. 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

  4. Enfish, LLC v. Microsoft Corp.

    822 F.3d 1327 (Fed. Cir. 2016)   Cited 740 times   119 Legal Analyses
    Holding that claims to self-referential tables that allowed for more efficient launching and adaptation of databases were not directed to an abstract idea

  5. Gottschalk v. Benson

    409 U.S. 63 (1972)   Cited 505 times   59 Legal Analyses
    Holding claim involving mathematical formula invalid under § 101 that did not preempt a mathematical formula

  6. Interactive Gift Exp., Inc. v. Compuserve

    256 F.3d 1323 (Fed. Cir. 2001)   Cited 673 times   1 Legal Analyses
    Holding that although a party cannot change the scope of its claim construction on appeal, it is not precluded “from proffering additional or new supporting arguments, based on evidence of record, for its claim construction”

  7. Cybersource Corp.. v. Retail Decisions Inc.

    654 F.3d 1366 (Fed. Cir. 2011)   Cited 283 times   22 Legal Analyses
    Holding that a claim whose "steps can be performed in the human mind, or by a human using a pen and paper" is directed to an "unpatentable mental process"

  8. Crystal Semicond. v. Tritech Microelec

    246 F.3d 1336 (Fed. Cir. 2001)   Cited 305 times   2 Legal Analyses
    Holding "patentee may obtain lost profit damages for that portion of the infringer's sales for which the patentee can demonstrate 'but for' causation and reasonable royalties for any remaining infringing [sales]"; further holding patentee may also recover for "[r]eduction of [its] prices, and consequent loss of profits, enforced by infringing competition"

  9. Digitech Image Technologies, LLC v. Electronics for Imaging, Inc.

    758 F.3d 1344 (Fed. Cir. 2014)   Cited 144 times   27 Legal Analyses
    Holding that a process of gathering and combining data was patent ineligible because it did not require "input from a physical device"

  10. Ariosa Diagnostics, Inc. v. Sequenom, Inc.

    788 F.3d 1371 (Fed. Cir. 2015)   Cited 132 times   67 Legal Analyses
    Holding ineligible the claimed process for using PCR to amplify cff-DNA in a sample before detecting it

  11. 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."

  12. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,522 times   2289 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."

  13. 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"