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Illumina, Inc. v. the Trustees of Columbia University in the City of New York

12804284 (P.T.A.B. Mar. 6, 2014)
Illumina, Inc. v. the Trustees of Columbia University in the City of New York

28 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,559 times   185 Legal Analyses
    Holding that, in an obviousness analysis, "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it"

  2. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,185 times   68 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. Pfizer v. Apotex

    480 F.3d 1348 (Fed. Cir. 2007)   Cited 382 times   7 Legal Analyses
    Holding the district court clearly erred when it failed to consider relevant prior art

  4. Advanced Display Systems, Inc. v. Kent State University

    212 F.3d 1272 (Fed. Cir. 2000)   Cited 381 times   5 Legal Analyses
    Holding that the objective evidence supported an obviousness finding where others had “tried for a long time” to develop the claimed invention but found it “very hard” and “were all not successful”

  5. Net Moneyin v. Verisign

    545 F.3d 1359 (Fed. Cir. 2008)   Cited 283 times   6 Legal Analyses
    Holding that, to anticipate, a single prior art reference must not only disclose all the limitations claimed but also must disclose those limitations "arranged or combined in the same way as recited in the claim"

  6. Stratoflex, Inc. v. Aeroquip Corp.

    713 F.2d 1530 (Fed. Cir. 1983)   Cited 483 times   12 Legal Analyses
    Finding evidence of nonobviousness in the "[r]ecognition and acceptance of patent by competitors who take licenses under it"

  7. Ormco Corp. v. Align Technology, Inc.

    463 F.3d 1299 (Fed. Cir. 2006)   Cited 205 times   5 Legal Analyses
    Holding that evidence that success was due to prior art features rebutted the presumption

  8. Iron Grip Barbell Co. v. USA Sports, Inc.

    392 F.3d 1317 (Fed. Cir. 2004)   Cited 133 times   12 Legal Analyses
    Noting that licenses "may constitute evidence of nonobviousness; however, only little weight can be attributed to such evidence if the patentee does not demonstrate a nexus between the merits of the invention and the licenses of record" (quoting In re GPAC Inc. , 57 F.3d 1573, 1580 (Fed. Cir. 1995) )

  9. In re GPAC Inc.

    57 F.3d 1573 (Fed. Cir. 1995)   Cited 168 times   2 Legal Analyses
    In GPAC, for example, we found that a reference disclosing an equilibrium air door was reasonably pertinent to a patent directed to asbestos removal because they both addressed the same problem of "maintaining a pressurized environment while allowing for human ingress and egress."

  10. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.

    699 F.3d 1340 (Fed. Cir. 2012)   Cited 100 times
    Finding "sufficient evidence of both commercial success and nexus to the features of the claimed invention" as presented through contracts and an employee's testimony

  11. 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."

  12. 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"

  13. Section 311 - Inter partes review

    35 U.S.C. § 311   Cited 407 times   196 Legal Analyses
    Establishing grounds and scope of IPR proceeding

  14. 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"

  15. 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)

  16. Section 19-A:3 - Terms of Office

    N.H. Rev. Stat. § 19-A:3

    The term of office of each member shall be 5 years, provided, however, that of the members first appointed, 3 shall be appointed for terms of one year, 3 for terms of 2 years, 3 for terms of 3 years. The governor shall designate a chairman from the members of the council, to serve as such. The chairman shall be the chief executive officer of the council. All vacancies shall be filled for the balance of the unexpired term in the same manner as original appointments. RSA 19-A:3 1965, 194:1. 1985, 268:28

  17. Section 42.1 - Policy

    37 C.F.R. § 42.1   Cited 21 times   29 Legal Analyses

    (a)Scope. Part 42 governs proceedings before the Patent Trial and Appeal Board. Sections 1.4 , 1.7 , 1.14 , 1.16 , 1.22 , 1.23 , 1.25 , 1.26 , 1.32 , 1.34 , and 1.36 of this chapter also apply to proceedings before the Board, as do other sections of part 1 of this chapter that are incorporated by reference into this part. (b)Construction. This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding. (c)Decorum. Every party must act with courtesy and decorum

  18. Section 42.73 - Judgment

    37 C.F.R. § 42.73   Cited 18 times   62 Legal Analyses
    Regarding judgments

  19. Section 42.120 - Patent owner response

    37 C.F.R. § 42.120   Cited 13 times   1 Legal Analyses

    (a)Scope. A patent owner may file a single response to the petition and/or decision on institution. A patent owner response is filed as an opposition and is subject to the page limits provided in § 42.24 . (b)Due date for response. If no time for filing a patent owner response to a petition is provided in a Board order, the default date for filing a patent owner response is three months from the date the inter partes review was instituted. 37 C.F.R. §42.120 77 FR 48727 , Aug. 14, 2012, as amended

  20. 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