Microsoft Corporation v. Bradium Technologies LLC

32 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,522 times 180 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"
Graham v. John Deere Co.
383 U.S. 1 (1966) Cited 3,157 times 62 Legal Analyses
Holding commercial success is a "secondary consideration" suggesting nonobviousness
Vivid Technologies v. American Science
200 F.3d 795 (Fed. Cir. 1999) Cited 730 times 4 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
Activevideo Networks, Inc. v. Verizon Commc'ns, Inc.
694 F.3d 1312 (Fed. Cir. 2012) Cited 311 times 6 Legal Analyses
Holding that the district court did not err in concluding that terms had plain meanings that did not require construction and in rejecting one party's proposed construction, which erroneously read limitations into the claims
Technology v. Videotek
545 F.3d 1316 (Fed. Cir. 2008) Cited 245 times 2 Legal Analyses
Holding that use of term “black box” did not render the claim indefinite because that term was known in the field to represent video standard detector circuitry
Anchor Wall Sys. v. Rockwood Retaining Walls
340 F.3d 1298 (Fed. Cir. 2003) Cited 206 times 1 Legal Analyses
Holding "words of approximation, such as 'generally' and 'substantially,' are descriptive terms commonly used in patent claims to avoid a strict numerical boundary to the specified parameter"
Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc.
773 F.3d 1186 (Fed. Cir. 2014) Cited 131 times 25 Legal Analyses
Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"
In re Paulsen
30 F.3d 1475 (Fed. Cir. 1994) Cited 231 times 3 Legal Analyses
Holding an inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning
In re Cuozzo Speed Technologies, LLC
793 F.3d 1268 (Fed. Cir. 2015) Cited 120 times 26 Legal Analyses
Determining that, under the "broadest reasonable interpretation standard," the construction of the term "integrally attached" as "discrete parts physically joined together as a unit without each part losing its own separate identity" was reasonable
Belden Inc. v. Berk-Tek LLC
805 F.3d 1064 (Fed. Cir. 2015) Cited 108 times 21 Legal Analyses
Holding that a declaration appended to a reply brief "fairly respond[ed] only to arguments made in ... [the patent owner]'s response," as required by § 42.23(b), and that the patent owner had "a meaningful opportunity to respond," as required by the APA
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,061 times 459 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 5,942 times 959 Legal Analyses
Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"
Section 311 - Inter partes review
35 U.S.C. § 311 Cited 397 times 186 Legal Analyses
Establishing grounds and scope of IPR proceeding
Section 314 - Institution of inter partes review
35 U.S.C. § 314 Cited 370 times 627 Legal Analyses
Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"
Section 42.100 - Procedure; pendency
37 C.F.R. § 42.100 Cited 188 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"
Section 42.108 - Institution of inter partes review
37 C.F.R. § 42.108 Cited 45 times 69 Legal Analyses
Permitting partial institution
Section 42.104 - Content of petition
37 C.F.R. § 42.104 Cited 27 times 53 Legal Analyses
Describing the content of the petition, including both "the patents or printed publications relied upon for each ground," and "supporting evidence relied upon to support the challenge"
Section 42.22 - Content of petitions and motions
37 C.F.R. § 42.22 Cited 14 times 15 Legal Analyses
(a) Each petition or motion must be filed as a separate paper and must include: (1) A statement of the precise relief requested; and (2) A full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent. (b)Relief requested. Where a rule in part 1 of this title ordinarily governs the relief sought, the petition or motion must make any showings required under that rule
Section 42.6 - Filing of documents, including exhibits; service
37 C.F.R. § 42.6 Cited 9 times 43 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

Microsoft Corporation v. Bradium Technologies LLC

32 Cited authorities

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"

Holding commercial success is a "secondary consideration" suggesting nonobviousness

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

Holding that the district court did not err in concluding that terms had plain meanings that did not require construction and in rejecting one party's proposed construction, which erroneously read limitations into the claims

Holding that use of term “black box” did not render the claim indefinite because that term was known in the field to represent video standard detector circuitry

Holding "words of approximation, such as 'generally' and 'substantially,' are descriptive terms commonly used in patent claims to avoid a strict numerical boundary to the specified parameter"

Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"

Determining that, under the "broadest reasonable interpretation standard," the construction of the term "integrally attached" as "discrete parts physically joined together as a unit without each part losing its own separate identity" was reasonable

Holding that a declaration appended to a reply brief "fairly respond[ed] only to arguments made in ... [the patent owner]'s response," as required by § 42.23(b), and that the patent owner had "a meaningful opportunity to respond," as required by the APA

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

Establishing grounds and scope of IPR proceeding

Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"

Providing that the PTAB gives " claim . . . its broadest reasonable construction in light of the specification of the patent in which it appears"

Permitting partial institution

Describing the content of the petition, including both "the patents or printed publications relied upon for each ground," and "supporting evidence relied upon to support the challenge"