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Medtronic, Inc. v. NuVasive, Inc.

12635418 (P.T.A.B. Apr. 3, 2015)
Medtronic, Inc. v. NuVasive, Inc.

24 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,575 times   189 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 3,190 times   68 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. Eurand, Inc. v. Mylan Pharms. Inc. (In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.)

    676 F.3d 1063 (Fed. Cir. 2012)   Cited 318 times   13 Legal Analyses
    Holding that “the proper inquiry [in a best mode analysis] focuses on the adequacy of the disclosure rather than motivation for any nondisclosure”

  4. Wyers v. Master Lock Co.

    616 F.3d 1231 (Fed. Cir. 2010)   Cited 208 times   7 Legal Analyses
    Holding that a motivation to combine and a reasonable expectation of success exist when "it is simply a matter of common sense" to combine known elements of the prior art to solve a known problem

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

    392 F.3d 1317 (Fed. Cir. 2004)   Cited 137 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) )

  6. 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."

  7. Rambus Inc. v. Rea

    731 F.3d 1248 (Fed. Cir. 2013)   Cited 72 times   5 Legal Analyses
    Holding that the Board erred when it found objective evidence lacked a nexus where at least some of the evidence related to the "patented design as a whole"

  8. In re Huang

    100 F.3d 135 (Fed. Cir. 1996)   Cited 94 times   4 Legal Analyses
    Holding that the inventor's opinion as to the purchaser's reason for buying the product is insufficient to demonstrate a nexus

  9. In re DBC

    545 F.3d 1373 (Fed. Cir. 2008)   Cited 64 times   4 Legal Analyses
    Holding the plaintiffs waived their Appointments Clause challenge to two panel members of the United States Patent and Trademark Office Board of Patent Appeals "by failing to raise it before the Board"

  10. Hyatt v. Boone

    146 F.3d 1348 (Fed. Cir. 1998)   Cited 70 times   3 Legal Analyses
    Holding that Board was required to decide priority issue even though applicant had requested conversion of his application to a statutory invention registration during interference

  11. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,172 times   492 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 6,033 times   1028 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. Section 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 298 times   314 Legal Analyses
    Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

  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 318 - Decision of the Board

    35 U.S.C. § 318   Cited 162 times   140 Legal Analyses
    Governing the incorporation of claims added via the operation of § 316(d)

  16. 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"

  17. Section 42.73 - Judgment

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

  18. Section 42.6 - Filing of documents, including exhibits; service

    37 C.F.R. § 42.6   Cited 9 times   44 Legal Analyses

    (a)General format requirements. (1) Page size must be 81/2 inch * 11 inch except in the case of exhibits that require a larger size in order to preserve details of the original. (2) In documents, including affidavits, created for the proceeding: (i) Markings must be in black or must otherwise provide an equivalent dark, high-contrast image; (ii) 14-point, Times New Roman proportional font, with normal spacing, must be used; (iii) Double spacing must be used except in claim charts, headings, tables

  19. Section 90.2 - Notice; service

    37 C.F.R. § 90.2   Cited 1 times   2 Legal Analyses

    (a)For an appeal under 35 U.S.C. 141 . (1) (i) In all appeals, the notice of appeal required by 35 U.S.C. 142 must be filed with the Director by electronic mail to the email address indicated on the United States Patent and Trademark Office's web page for the Office of the General Counsel. This electronically submitted notice will be accorded a receipt date, which is the date in Eastern Time when the correspondence is received in the Office, regardless of whether that date is a Saturday, Sunday,