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Microsoft Corporation v. IPR LICENSING, INC.

12615098 (P.T.A.B. Sep. 14, 2015)
Microsoft Corporation v. IPR LICENSING, INC.

34 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,574 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. Scimed Life Sys. v. Adv. Cardiovascular

    242 F.3d 1337 (Fed. Cir. 2001)   Cited 870 times   11 Legal Analyses
    Holding that description of "present invention" in specification is limiting on claim

  4. GE Lighting Solutions, LLC v. Agilight, Inc.

    750 F.3d 1304 (Fed. Cir. 2014)   Cited 307 times   2 Legal Analyses
    Holding that where patentee fails to indicate any intent to define a term, it is proper for the court to find "[t]here is no lexicography or disavowal"

  5. Cordis Corp. v. Boston Scientific Corp.

    561 F.3d 1319 (Fed. Cir. 2009)   Cited 272 times   8 Legal Analyses
    Holding that a reference was not prior art despite "distribution to a limited number of entities without a legal obligation of confidentiality" because it was not sufficiently publicly accessible

  6. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 232 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

  7. In re Cuozzo Speed Technologies, LLC

    793 F.3d 1268 (Fed. Cir. 2015)   Cited 124 times   27 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

  8. In re Kahn

    441 F.3d 977 (Fed. Cir. 2006)   Cited 149 times   11 Legal Analyses
    Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

  9. In re Hiniker Co.

    150 F.3d 1362 (Fed. Cir. 1998)   Cited 180 times   6 Legal Analyses
    Upholding rejection for obviousness even though prior art performed less efficiently than patent's device because it refused to read specification's operational characteristics into broader claims

  10. Kyocera Wireless v. I.T.C

    545 F.3d 1340 (Fed. Cir. 2008)   Cited 124 times   16 Legal Analyses
    Finding public accessibility when the reference was contained in a book sold to the public

  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 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"

  13. 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)

  14. Section 324 - Institution of post-grant review

    35 U.S.C. § 324   Cited 42 times   58 Legal Analyses
    Requiring threshold determination that it is "more likely than not that at least 1 of the claims . . . is unpatentable"

  15. 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"

  16. Section 42.73 - Judgment

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

  17. Section 42.65 - Expert testimony; tests and data

    37 C.F.R. § 42.65   Cited 6 times   19 Legal Analyses
    Discussing "[e]xpert testimony"

  18. Section 90.2 - Notice; service

    37 C.F.R. § 90.2   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,