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Ex Parte Nuttall et al

13967756 (P.T.A.B. Sep. 14, 2018)
Ex Parte Nuttall et al

18 Cited authorities

  1. Genentech, Inc. v. Novo Nordisk, A/S

    108 F.3d 1361 (Fed. Cir. 1997)   Cited 352 times   5 Legal Analyses
    Holding a preliminary injunction should not issue if defendant raises a substantial question as to validity, enforceability, or infringement

  2. In re Wands

    858 F.2d 731 (Fed. Cir. 1988)   Cited 345 times   44 Legal Analyses
    Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

  3. AK Steel Corp. v. Sollac

    344 F.3d 1234 (Fed. Cir. 2003)   Cited 210 times   1 Legal Analyses
    Holding that "dependent claims are presumed to be of narrower scope than the independent claims from which they depend"

  4. Amgen, Inc. v. Chugai Pharmaceutical Co. LTD

    927 F.2d 1200 (Fed. Cir. 1991)   Cited 274 times   11 Legal Analyses
    Holding that the term "at least about" was indefinite because the patent provided no guidance as to where the line should be drawn between the numerical value of the prior art cited in the prosecution history and the close numerical value in the patent

  5. Sitrick v. Dreamworks

    516 F.3d 993 (Fed. Cir. 2008)   Cited 126 times   3 Legal Analyses
    Affirming summary judgment that claims were invalid for lack of enablement when the claims encompassed both video games and movies, but the specification did not enable the invention for use in movies

  6. Alza Corp. v. Andrx Pharmaceuticals, LLC

    603 F.3d 935 (Fed. Cir. 2010)   Cited 108 times   1 Legal Analyses
    Finding claims were not enabled because relevant field "was not mature" and the claimed dosage was considered a "'breakaway' from the prior art"

  7. Enzo Biochem, Inc. v. Calgene, Inc.

    188 F.3d 1362 (Fed. Cir. 1999)   Cited 136 times   3 Legal Analyses
    Holding that a reasonable amount of experimentation does not invalidate a patent, but undue experimentation does invalidate, and holding that the Wands factors, which determine whether a patent's disclosure is insufficient such that the experimentation required would be undue, apply to inter partes litigation

  8. Magsil Corp. v. Hitachi Global Storage Techs., Inc.

    687 F.3d 1377 (Fed. Cir. 2012)   Cited 93 times   9 Legal Analyses
    Holding that "a patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage"

  9. In re Wright

    999 F.2d 1557 (Fed. Cir. 1993)   Cited 91 times   5 Legal Analyses
    Relying on art published five years after filing date to show what was "sufficiently unpredictable" as of filing date

  10. U.S. v. Telectronics, Inc.

    857 F.2d 778 (Fed. Cir. 1988)   Cited 91 times
    Holding that district court cannot construct limitations of a broader claim so that they are the same as the limitations of a narrower claim

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,419 times   1069 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 6,172 times   492 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,033 times   1028 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 188 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"

  15. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 99 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

  16. Section 1.136 - [Effective until 1/19/2025] Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 Legal Analyses

    (a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title; (iii)