Norman International, Inc. v. Andrew J. Toti Testamentary Trust

9 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,569 times 187 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"
Abbott Laboratories v. Sandoz, Inc.
544 F.3d 1341 (Fed. Cir. 2008) Cited 187 times 5 Legal Analyses
Holding as conditions in which "obvious to try" may negate patentability, "the problem is known, the possible approaches to solving the problem are known and finite, and the solution is predictable through use of a known option"
Unigene Laboratories, Inc. v. Apotex, Inc.
655 F.3d 1352 (Fed. Cir. 2011) Cited 90 times 2 Legal Analyses
Declining to find a claim obvious when the when prior art does not provide "indication of which parameters were critical" or "direction as to which of many possible choices is likely to be successful"
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
Section 311 - Inter partes review
35 U.S.C. § 311 Cited 410 times 204 Legal Analyses
Establishing grounds and scope of IPR proceeding
Section 314 - Institution of inter partes review
35 U.S.C. § 314 Cited 379 times 633 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 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"
Section 42.108 - Institution of inter partes review
37 C.F.R. § 42.108 Cited 46 times 69 Legal Analyses
Permitting partial institution
Section 42.104 - Content of petition
37 C.F.R. § 42.104 Cited 28 times 54 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"

Norman International, Inc. v. Andrew J. Toti Testamentary Trust

9 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 as conditions in which "obvious to try" may negate patentability, "the problem is known, the possible approaches to solving the problem are known and finite, and the solution is predictable through use of a known option"

Declining to find a claim obvious when the when prior art does not provide "indication of which parameters were critical" or "direction as to which of many possible choices is likely to be successful"

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"