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Ex Parte Seastrom et al

13831732 (P.T.A.B. Jan. 11, 2018)
Ex Parte Seastrom et al

27 Cited authorities

  1. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,889 times   170 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"

  2. SRI International v. Matsushita Electric Corp.

    775 F.2d 1107 (Fed. Cir. 1985)   Cited 987 times   1 Legal Analyses
    Holding district court erroneously relied on specification in reading limitations from other claims into the disputed claims

  3. Electro Med. Sys. v. Cooper Life Sciences

    34 F.3d 1048 (Fed. Cir. 1994)   Cited 518 times   1 Legal Analyses
    Holding that a particular embodiment appearing in the specification will not be read into the claims when the claim language is broader than such embodiments

  4. Superguide Corp. v. Directv Enterprises

    358 F.3d 870 (Fed. Cir. 2004)   Cited 308 times   12 Legal Analyses
    Holding that a party "waived its right to assert a construction other than 'matches or equals' for the term 'meet'" because it agreed to that construction in its briefs

  5. Depuy Spine, Inc. v. Medtronic Sofamor Danek

    567 F.3d 1314 (Fed. Cir. 2009)   Cited 264 times   7 Legal Analyses
    Holding that the first prong was not met when “the record developed in the infringement proceeding ..., show[ed] that the question of equivalence was a close one,” particularly in light of the intensely factual inquiry involved in the doctrine of equivalents analysis

  6. Golight, Inc. v. Wal-Mart Stores, Inc.

    355 F.3d 1327 (Fed. Cir. 2004)   Cited 181 times   2 Legal Analyses
    Holding that the claimed function of a means-plus-function limitation at issue was contained in language set forth after the word "means"

  7. E-Pass Technologies, Inc. v. 3Com Corp.

    343 F.3d 1364 (Fed. Cir. 2003)   Cited 127 times   3 Legal Analyses
    Holding that the "court's task is not to limit claim language to exclude particular devices because they do no serve a perceived 'purpose' of the invention. Rather, the district court's function is to interpret claims according to their plain language unless the patentee has chosen to be his own lexicographer in the specification or has clearly disclaimed coverage during prosecution. An invention may possess a number of advantages or purposes, and there is no requirement that every claim directed to that invention be limited to encompass all of them."

  8. Spectralytics, Inc. v. Cordis Corp.

    649 F.3d 1336 (Fed. Cir. 2011)   Cited 81 times   6 Legal Analyses
    Holding that, while a finding of willfulness is a “prerequisite” to the award of enhanced damages, the “ ‘paramount determination in deciding to grant enhancement and the amount thereof is the egregiousness of the defendant's conduct based on all the facts and circumstances.’ ” (quoting Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed.Cir.1992))

  9. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 90 times   2 Legal Analyses
    Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter

  10. In re Fulton

    391 F.3d 1195 (Fed. Cir. 2004)   Cited 84 times   8 Legal Analyses
    Holding that "a particular combination" need not "be the preferred, or the most desirable, combination described in the prior art in order to provide motivation"

  11. 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."

  12. 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"

  13. 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

  14. Section 41.50 - Decisions and other actions by the Board

    37 C.F.R. § 41.50   Cited 34 times   30 Legal Analyses
    Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

  15. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  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)

  17. Section 41.41 - Reply brief

    37 C.F.R. § 41.41   Cited 9 times   25 Legal Analyses

    (a)Timing. Appellant may file only a single reply brief to an examiner's answer within the later of two months from the date of either the examiner's answer, or a decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer. (b)Content. (1) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other Evidence. See § 1.116 of this title for amendments, affidavits or other evidence