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International Business Machines Corporation

2020006145 (P.T.A.B. Dec. 30, 2021)
International Business Machines Corporation

24 Cited authorities

  1. Finisar v. Directv

    523 F.3d 1323 (Fed. Cir. 2008)   Cited 423 times   6 Legal Analyses
    Holding that "a competent opinion of counsel concluding either [non-infringement or invalidity] would provide a sufficient basis for [the defendant] to proceed without engaging in objectively reckless behavior with respect to the [asserted] patent"

  2. 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"

  3. Continental Can Co. USA, v. Monsanto Co.

    948 F.2d 1264 (Fed. Cir. 1991)   Cited 334 times   3 Legal Analyses
    Holding that an inherent limitation must be “necessarily present” and cannot be established by “probabilities or possibilities”

  4. Dayco Products, Inc. v. Total Containment

    329 F.3d 1358 (Fed. Cir. 2003)   Cited 195 times   3 Legal Analyses
    Holding that disclosure of the `196 application, filed in 1992, could have led to double patenting rejections in the applications that issued as the patents-in-suit, which all claim a 1989 filing date

  5. Transclean Corp. v. Bridgewood Serv., Inc.

    290 F.3d 1364 (Fed. Cir. 2002)   Cited 182 times   3 Legal Analyses
    Upholding district court's construction of a term based on purpose of the invention and disputed term's use within the specification.

  6. Orthokinetics, Inc. v. Safety Travel Chairs

    806 F.2d 1565 (Fed. Cir. 1986)   Cited 253 times
    Holding that the limitation that the claimed wheelchair have a "front leg portion . . . so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof" was not indefinite

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

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 90 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

  8. Verdegaal Bros., v. Union Oil Co. of Calif

    814 F.2d 628 (Fed. Cir. 1987)   Cited 138 times   2 Legal Analyses
    Holding reliance on non-claimed distinction between prior art method and claimed method "inappropriate" and insufficient to save the claim from inherent anticipation

  9. In re Packard

    751 F.3d 1307 (Fed. Cir. 2014)   Cited 37 times   11 Legal Analyses
    Addressing the issues separately

  10. In re Aoyama

    656 F.3d 1293 (Fed. Cir. 2011)   Cited 40 times   2 Legal Analyses
    Holding patent application invalid as indefinite because patent application failed to disclose an algorithm despite patent specification's explanation that each component of the invention could be implemented in hardware or software that included ASICs and FPGAs as examples of such hardware

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,412 times   1064 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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,025 times   1026 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. Section 100 - Definitions

    35 U.S.C. § 100   Cited 623 times   101 Legal Analyses
    Defining a " ‘joint research agreement’ " as a written agreement between "2 or more persons or entities"

  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 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

  16. 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

  17. 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

  18. Section 41.52 - Rehearing

    37 C.F.R. § 41.52   Cited 7 times   9 Legal Analyses

    (a) (1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by

  19. Section 1.42 - Applicant for patent

    37 C.F.R. § 1.42   1 Legal Analyses

    (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 . (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and