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Horizon Global Americas Inc.

IPR2019-00625 (P.T.A.B. Aug. 11, 2020)
Horizon Global Americas Inc.

46 Cited authorities

  1. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,861 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"

  2. Vivid Technologies v. American Science

    200 F.3d 795 (Fed. Cir. 1999)   Cited 748 times   5 Legal Analyses
    Holding that party opposing summary judgment must show either that movant has not established its entitlement to judgment on the undisputed facts or that material issues of fact require resolution by trial

  3. Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc.

    566 F.3d 989 (Fed. Cir. 2009)   Cited 259 times   2 Legal Analyses
    Finding that inventor's unwitnessed notebook was not adequate corroborating evidence of an earlier invention date

  4. Burroughs Wellcome Co. v. Barr Labs., Inc.

    40 F.3d 1223 (Fed. Cir. 1994)   Cited 289 times   27 Legal Analyses
    Holding that a reduction to practice by a third party inures to the benefit of the inventor even without communication of the conception

  5. Mahurkar, v. C.R. Bard, Inc.

    79 F.3d 1572 (Fed. Cir. 1996)   Cited 246 times   2 Legal Analyses
    Holding that a royalty needs to be only reasonable and that the "task [of determining a reasonable royalty] is simplified when the record shows an established royalty for the patent in question or for related patents or products"

  6. Medichem, S.A. v. Rolabo, S.L

    437 F.3d 1157 (Fed. Cir. 2006)   Cited 176 times   9 Legal Analyses
    Holding that non-inventor's notebook did not corroborate reduction to practice because the non-inventor "did not testify regarding the notebook or the genuineness of its contents" and the district court was therefore "clearly reliant on the inventor to help identify the author of specific entries made in [the non-inventor's] notebook"

  7. Cooper v. Goldfarb

    154 F.3d 1321 (Fed. Cir. 1998)   Cited 152 times   18 Legal Analyses
    Holding that inventor's date of reduction to practice requires independent corroboration

  8. Taurus IP, LLC v. Daimlerchrysler Corp.

    726 F.3d 1306 (Fed. Cir. 2013)   Cited 97 times   1 Legal Analyses
    Holding that case was exceptional where losing party filed multiple, repetitive motions and continued to litigate a position they already lost in court

  9. In re Jolley

    308 F.3d 1317 (Fed. Cir. 2002)   Cited 102 times   7 Legal Analyses
    Affirming the Board's determination that “reasonable everyday problems” excused gaps in the inventive record

  10. In re Magnum Oil Tools Int'l, Ltd.

    829 F.3d 1364 (Fed. Cir. 2016)   Cited 61 times   19 Legal Analyses
    Holding that conclusory statements that "[t]he same analysis" applied to different prior art did not provide sufficient evidence to base its legal conclusion of obviousness

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,394 times   1049 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 6,148 times   482 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 6,016 times   1014 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. Section 282 - Presumption of validity; defenses

    35 U.S.C. § 282   Cited 3,961 times   142 Legal Analyses
    Granting a presumption of validity to patents

  15. Section 314 - Institution of inter partes review

    35 U.S.C. § 314   Cited 377 times   633 Legal Analyses
    Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"

  16. Section 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 294 times   311 Legal Analyses
    Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

  17. Section 111 - Application

    35 U.S.C. § 111   Cited 220 times   85 Legal Analyses
    Requiring submission of a fee with the application

  18. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 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"

  19. Section 318 - Decision of the Board

    35 U.S.C. § 318   Cited 161 times   140 Legal Analyses
    Governing the incorporation of claims added via the operation of § 316(d)

  20. Section 2 - Powers and duties

    35 U.S.C. § 2   Cited 115 times   26 Legal Analyses
    Authorizing the Patent Office to cover the expenses of "persons" other than federal employees attending programs on intellectual-property protection

  21. Section 42.100 - Procedure; pendency

    37 C.F.R. § 42.100   Cited 192 times   75 Legal Analyses
    Providing that the PTAB gives " claim . . . its broadest reasonable construction in light of the specification of the patent in which it appears"

  22. Section 1.131 - Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art

    37 C.F.R. § 1.131   Cited 117 times   16 Legal Analyses
    Allowing inventors to contest rejection by submitting an affidavit "to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based"

  23. Section 42.4 - Notice of trial

    37 C.F.R. § 42.4   Cited 54 times   6 Legal Analyses
    Stating that "[t]he Board institutes the trial on behalf of the Director"

  24. Section 1.51 - General requisites of an application

    37 C.F.R. § 1.51   Cited 19 times   8 Legal Analyses
    Describing the contents of a provisional patent application

  25. Section 42.8 - Mandatory notices

    37 C.F.R. § 42.8   Cited 11 times   12 Legal Analyses
    Requiring a party to "[i]dentify each real party-in-interest for the party"

  26. Section 42.64 - Objection; motion to exclude

    37 C.F.R. § 42.64   Cited 4 times   24 Legal Analyses

    (a)Deposition evidence. An objection to the admissibility of deposition evidence must be made during the deposition. Evidence to cure the objection must be provided during the deposition, unless the parties to the deposition stipulate otherwise on the deposition record. (b)Other evidence. For evidence other than deposition evidence: (1)Objection. Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial. Once a trial