Joshua Makower et al.

13 Cited authorities

Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.
598 F.3d 1336 (Fed. Cir. 2010) Cited 585 times 76 Legal Analyses
Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”
Finisar v. Directv
523 F.3d 1323 (Fed. Cir. 2008) Cited 415 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"
Bicon, Inc. v. Straumann Co.
441 F.3d 945 (Fed. Cir. 2006) Cited 328 times 3 Legal Analyses
Holding a patent claim construction that reads limitations out of a claim is "contrary to the principle that claim language should not [be] treated as meaningless"
Vas-Cath Inc. v. Mahurkar
935 F.2d 1555 (Fed. Cir. 1991) Cited 392 times 3 Legal Analyses
Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements
Hockerson-Halberstadt, Inc. v. Avia Group International, Inc.
222 F.3d 951 (Fed. Cir. 2000) Cited 208 times 1 Legal Analyses
Holding that the public is entitled to rely on the patentee's representations in the prosecution history concerning the scope and meaning of the claims
In re Packard
751 F.3d 1307 (Fed. Cir. 2014) Cited 34 times 11 Legal Analyses
Addressing the issues separately
In re Kaslow
707 F.2d 1366 (Fed. Cir. 1983) Cited 74 times
Holding that prior demonstration of computerized supermarket UPC code system was prior use under meaning of Section 102(b)
Section 112 - Specification
35 U.S.C. § 112 Cited 7,275 times 1022 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
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,054 times 445 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."
Section 102 - Conditions for patentability; novelty
35 U.S.C. § 102 Cited 5,937 times 943 Legal Analyses
Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"
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"
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
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

Joshua Makower et al.

13 Cited authorities

Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

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"

Holding a patent claim construction that reads limitations out of a claim is "contrary to the principle that claim language should not [be] treated as meaningless"

Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

Holding that the public is entitled to rely on the patentee's representations in the prosecution history concerning the scope and meaning of the claims

Addressing the issues separately

Holding that prior demonstration of computerized supermarket UPC code system was prior use under meaning of Section 102(b)

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

Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

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"