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Ex Parte Kateraas et al

13505699 (P.T.A.B. May. 16, 2018)
Ex Parte Kateraas et al

17 Cited authorities

  1. Williamson v. Citrix Online, LLC

    792 F.3d 1339 (Fed. Cir. 2015)   Cited 614 times   28 Legal Analyses
    Holding that a means-plus-function term is indefinite "if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim"

  2. WMS Gaming Inc. v. International Game Technology

    184 F.3d 1339 (Fed. Cir. 1999)   Cited 536 times   7 Legal Analyses
    Holding that district court correctly determined structure was "an algorithm executed by a computer," but "erred by failing to limit the claim to the algorithm disclosed in the specification"

  3. Watts v. XL Systems, Inc.

    232 F.3d 877 (Fed. Cir. 2001)   Cited 503 times   1 Legal Analyses
    Holding that a patentee's representation about claim language limits that language even if it is later deleted and added elsewhere

  4. Medical Instr. and Diagnostics v. Elekta

    344 F.3d 1205 (Fed. Cir. 2003)   Cited 324 times   1 Legal Analyses
    Holding that district court erred in finding that defendant failed to demonstrate the existence of an issue of material fact on obvious; noting, inter alia , that "[defendant's] expert's declaration quotes from several prior art articles that expressly discuss the combination of stereotaxy with computer imaging technologies"

  5. Greenberg v. Ethicon Endo-Surgery, Inc.

    91 F.3d 1580 (Fed. Cir. 1996)   Cited 282 times   2 Legal Analyses
    Holding that § 112, ¶ 6 did not apply to the term “detent mechanism,” because “the noun ‘detent’ denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms.”

  6. Budde v. Harley-Davidson, Inc.

    250 F.3d 1369 (Fed. Cir. 2001)   Cited 237 times   1 Legal Analyses
    Holding that the specification's reference to "commercially available vacuum sensors" constituted sufficient structure, as one skilled in the art would have understood the reference

  7. Cole v. Kimberly-Clark Corp.

    102 F.3d 524 (Fed. Cir. 1996)   Cited 250 times
    Holding that the limitation "perforation means for tearing" was not a means-plus-function claim because the word "perforation" constituted sufficient structure

  8. Ergo Licensing, LLC v. CareFusion 303, Inc.

    673 F.3d 1361 (Fed. Cir. 2012)   Cited 120 times   3 Legal Analyses
    Holding indefinite a claim reciting a computer-implemented means-plus-function term where "[t]he specification merely provide[d] functional language and d[id] not contain any step-by-step process" for performing the claimed function

  9. In re Kahn

    441 F.3d 977 (Fed. Cir. 2006)   Cited 142 times   11 Legal Analyses
    Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

  10. Valmont Industries, Inc. v. Reinke Mfg. Co.

    983 F.2d 1039 (Fed. Cir. 1993)   Cited 181 times
    Holding that section 112, ¶ 6, permits the use of means-plus-function language in claims, but with the proviso that the claims are limited to the structure, material, or acts disclosed in the specification and their equivalents

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,288 times   1030 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

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

    35 U.S.C. § 103   Cited 6,065 times   461 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 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 183 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"

  14. 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