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Ex Parte Yamanaka et al

13585729 (P.T.A.B. Dec. 12, 2016)
Ex Parte Yamanaka et al

14 Cited authorities

  1. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,714 times   164 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. Ethicon, Inc. v. Quigg

    849 F.2d 1422 (Fed. Cir. 1988)   Cited 656 times   5 Legal Analyses
    Holding the Board may not indefinitely stay an ex parte reexamination in light of parallel district court litigation via the "special dispatch" standard

  3. Alza Corp. v. Andrx Pharmaceuticals, LLC

    603 F.3d 935 (Fed. Cir. 2010)   Cited 106 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"

  4. 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

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

    687 F.3d 1377 (Fed. Cir. 2012)   Cited 89 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"

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

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 87 times   1 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

  7. In re Wright

    999 F.2d 1557 (Fed. Cir. 1993)   Cited 90 times   5 Legal Analyses
    Relying on art published five years after filing date to show what was "sufficiently unpredictable" as of filing date

  8. Wyeth & Cordis Corp. v. Abbott Labs.

    720 F.3d 1380 (Fed. Cir. 2013)   Cited 47 times   20 Legal Analyses
    Holding that undue experimentation was required to practice the full scope of the claims where the specification "disclose[d] only a starting point for further iterative research in an unpredictable and poorly understood field"

  9. Plant Genetic Systems v. Dekalb Genetics

    315 F.3d 1335 (Fed. Cir. 2003)   Cited 65 times   3 Legal Analyses
    Holding that Vitronics does not bar the courts from ever considering extrinsic evidence, and finding trustworthy extrinsic evidence appropriate, and even preferred, for consideration

  10. In re Cortright

    165 F.3d 1353 (Fed. Cir. 1999)   Cited 34 times   1 Legal Analyses
    Noting that the patent's written description must "illuminate a credible utility" to meet the enablement requirement

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,278 times   1024 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 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 182 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 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