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Olympus America Inc. v. Perfect Surgical Techniques, Inc.

09071689 (P.T.A.B. Jun. 8, 2015)
Olympus America Inc. v. Perfect Surgical Techniques, Inc.

49 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,519 times   169 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 3,154 times   50 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. 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

  4. Price v. Symsek

    988 F.2d 1187 (Fed. Cir. 1993)   Cited 313 times   7 Legal Analyses
    Holding that courts should consider all the evidence of conception and communication as a whole, not individually, and that "an inventor can conceivably prove prior conception by clear and convincing evidence although no one piece of evidence in and of itself establishes the prior conception."

  5. Mahurkar, v. C.R. Bard, Inc.

    79 F.3d 1572 (Fed. Cir. 1996)   Cited 245 times   2 Legal Analyses
    Holding that a royalty needs to be only reasonable and that the "task [of determining a reasonable royalty] is simplified when the record shows an established royalty for the patent in question or for related patents or products"

  6. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 230 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. Connell v. Sears, Roebuck Co.

    722 F.2d 1542 (Fed. Cir. 1983)   Cited 262 times
    Finding that the "right to exclude recognized in a patent is the essence of the concept of property"

  8. Verdegaal Bros., v. Union Oil Co. of Calif

    814 F.2d 628 (Fed. Cir. 1987)   Cited 137 times   2 Legal Analyses
    Holding reliance on non-claimed distinction between prior art method and claimed method "inappropriate" and insufficient to save the claim from inherent anticipation

  9. Coleman v. Dines

    754 F.2d 353 (Fed. Cir. 1985)   Cited 95 times   5 Legal Analyses
    In Coleman v. Dines (1985) 754 F.2d 353 (Coleman), the appellant testified that he conceived the invention at issue in that case prior to the date of the respondent's patent, and he relied on a letter he sent to a colleague about his work as corroboration for his testimony.

  10. In re Translogic Technology

    504 F.3d 1249 (Fed. Cir. 2007)   Cited 44 times   2 Legal Analyses
    Recognizing that the Supreme Court set aside the rigid application of the TSM Test and ensured use of customary knowledge as an ingredient in that equation.

  11. Rule 801 - Definitions That Apply to This Article; Exclusions from Hearsay

    Fed. R. Evid. 801   Cited 19,116 times   75 Legal Analyses
    Holding that such a statement must merely be made by the party and offered against that party

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

    35 U.S.C. § 103   Cited 6,056 times   449 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."

  13. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,938 times   949 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. Rule 901 - Authenticating or Identifying Evidence

    Fed. R. Evid. 901   Cited 5,151 times   48 Legal Analyses
    Holding that "[t]estimony that a matter is what it is claimed to be" is sufficient authentication

  15. Rule 802 - The Rule Against Hearsay

    Fed. R. Evid. 802   Cited 3,827 times   11 Legal Analyses
    Recognizing federal statutes, the Federal Rules of Evidence, or Supreme Court rules as sources for exceptions to the rule against hearsay

  16. Rule 106 - Remainder of or Related Statements

    Fed. R. Evid. 106   Cited 1,053 times   10 Legal Analyses
    Providing that a party is entitled to the admission of any part of a recorded statement which ought, in fairness, be considered contemporaneously with the portion of a statement excerpted by an adverse party

  17. Section 311 - Inter partes review

    35 U.S.C. § 311   Cited 397 times   186 Legal Analyses
    Establishing grounds and scope of IPR proceeding

  18. Section 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 276 times   307 Legal Analyses
    Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

  19. 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"

  20. Section 318 - Decision of the Board

    35 U.S.C. § 318   Cited 159 times   137 Legal Analyses
    Governing the incorporation of claims added via the operation of § 316(d)

  21. 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"

  22. Section 42.23 - Oppositions, replies, and sur-replies

    37 C.F.R. § 42.23   Cited 39 times   39 Legal Analyses
    Taking testimony

  23. Section 42.1 - Policy

    37 C.F.R. § 42.1   Cited 21 times   29 Legal Analyses

    (a)Scope. Part 42 governs proceedings before the Patent Trial and Appeal Board. Sections 1.4 , 1.7 , 1.14 , 1.16 , 1.22 , 1.23 , 1.25 , 1.26 , 1.32 , 1.34 , and 1.36 of this chapter also apply to proceedings before the Board, as do other sections of part 1 of this chapter that are incorporated by reference into this part. (b)Construction. This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding. (c)Decorum. Every party must act with courtesy and decorum

  24. Section 42.73 - Judgment

    37 C.F.R. § 42.73   Cited 17 times   47 Legal Analyses
    Regarding judgments

  25. Section 42.5 - Conduct of the proceeding

    37 C.F.R. § 42.5   Cited 11 times   28 Legal Analyses

    (a) The Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by this part and may enter non-final orders to administer the proceeding. (b) The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension. (c)Times. (1)Setting times. The Board may set times by order. Times set by rule are default and may be modified by order. Any modification of times will take any applicable statutory pendency

  26. 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

  27. Section 42.123 - Filing of supplemental information

    37 C.F.R. § 42.123   Cited 8 times   37 Legal Analyses
    Explaining that the late submission of supplemental information must be in the interests of justice

  28. Section 42.24 - Type-volume or page limits for petitions, motions, oppositions, replies, and sur-replies

    37 C.F.R. § 42.24   Cited 7 times   31 Legal Analyses

    (a)Petitions and motions. (1) The following word counts or page limits for petitions and motions apply and include any statement of material facts to be admitted or denied in support of the petition or motion. The word count or page limit does not include a table of contents, a table of authorities, mandatory notices under § 42.8 , a certificate of service or word count, or appendix of exhibits or claim listing. (i) Petition requesting inter partes review: 14,000 words. (ii) Petition requesting post-grant

  29. Section 1.7 - Times for taking action; Expiration on Saturday, Sunday or Federal holiday

    37 C.F.R. § 1.7   Cited 4 times   8 Legal Analyses

    (a) Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding business day which is not a Saturday, Sunday, or a Federal holiday. See § 90.3 of this chapter for

  30. Section 42.63 - Form of evidence

    37 C.F.R. § 42.63   Cited 2 times   11 Legal Analyses

    (a)Exhibits required. Evidence consists of affidavits, transcripts of depositions, documents, and things. All evidence must be filed in the form of an exhibit. (b)Translation required. When a party relies on a document or is required to produce a document in a language other than English, a translation of the document into English and an affidavit attesting to the accuracy of the translation must be filed with the document. (c)Exhibit numbering. Each party's exhibits must be uniquely numbered sequentially