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PAN et al. V. Flusberg et al. V. Flusberg et al.

12613291 (P.T.A.B. Aug. 3, 2016)
PAN et al. V. Flusberg et al. V. Flusberg et al.

29 Cited authorities

  1. Arachnid, Inc. v. Merit Industries, Inc.

    939 F.2d 1574 (Fed. Cir. 1991)   Cited 171 times   9 Legal Analyses
    Holding that "shall be the property of [Arachnid], and all rights thereto will be assigned by IDEA ... to [Arachnid]" was not a present assignment

  2. Beech Aircraft Corp. v. EDO Corp.

    990 F.2d 1237 (Fed. Cir. 1993)   Cited 80 times   12 Legal Analyses
    Finding claim for patent infringement, seeking patent assignment, was compulsory counterclaim to an action for a declaration of non-infringement, which sought no affirmative relief

  3. Estee Lauder Inc. v. L'Oreal

    129 F.3d 588 (Fed. Cir. 1997)   Cited 59 times
    Holding that reduction to practice does not occur until inventor knows embodiment will work for its intended purposes

  4. Teets v. Chromalloy Gas Turbine Corp.

    83 F.3d 403 (Fed. Cir. 1996)   Cited 38 times   2 Legal Analyses
    Applying Florida law

  5. Indus. Tech. Research Inst. v. Pac. Biosciences of Cal., Inc.

    640 F. App'x 871 (Fed. Cir. 2016)   Cited 3 times
    Holding that evidence of later assignment or common ownership does not establish the necessary common ownership at the time of the invention

  6. Schulze v. Green

    136 F.3d 786 (Fed. Cir. 1998)   Cited 8 times
    Concluding that the Board could continue an interference and address an issue of patentability even though it was clear that one of the parties would lose on priority

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

    35 U.S.C. § 103   Cited 6,059 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."

  8. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,940 times   952 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  9. Section 116 - Inventors

    35 U.S.C. § 116   Cited 340 times   23 Legal Analyses
    Providing that, outside the IPR context, "the Director may permit the application to be amended" to fix inventorship errors

  10. Section 135 - Derivation proceedings

    35 U.S.C. § 135   Cited 286 times   43 Legal Analyses
    Governing interferences

  11. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 98 times   30 Legal Analyses

    (a) PATENT APPLICANT.-An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.-A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 U.S.C. § 134 July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622

  12. Section 21 - Filing date and day for taking action

    35 U.S.C. § 21   Cited 16 times   19 Legal Analyses

    (a) The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service or would have been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director. (b) When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office

  13. Section 9-B:1 - Findings

    N.H. Rev. Stat. § 9-B:1   Cited 1 times

    The general court finds that: I.In addition to clean water and air, productive mountain, forest, and agricultural open space land is one of the state's most valuable assets, and is necessary for the economy and health and welfare of the citizens. The maintenance of this asset is vital if the state is to provide future generations with the same quality of life and environment that we have traditionally enjoyed. II.Economic development is essential to the well-being and prosperity of our citizens.

  14. Section 1.63 - Inventor's oath or declaration

    37 C.F.R. § 1.63   Cited 27 times   7 Legal Analyses
    Instructing patent applicant must "[i]dentify each inventor"

  15. Section 1.48 - Correction of inventorship pursuant to 35 U.S.C. 116 or correction of the name or order of names in a patent application, other than a reissue application

    37 C.F.R. § 1.48   Cited 23 times   8 Legal Analyses
    Requiring an oath or declaration by all actual inventors that the corrected application correctly states the original or first inventors

  16. Section 41.121 - Motions

    37 C.F.R. § 41.121   Cited 15 times   77 Legal Analyses

    (a)Types of motions - (1)Substantive motions. Consistent with the notice of requested relief, if any, and to the extent the Board authorizes, a party may file a motion: (i) To redefine the scope of the contested case, (ii) To change benefit accorded for the contested subject matter, or (iii) For judgment in the contested case. (2)Responsive motions. The Board may authorize a party to file a motion to amend or add a claim, to change inventorship, or otherwise to cure a defect raised in a notice of

  17. Section 41.202 - Suggesting an interference

    37 C.F.R. § 41.202   Cited 12 times   11 Legal Analyses

    (a)Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must: (1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference, (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts, (3) For each count, provide a claim chart comparing at least one claim of each party corresponding

  18. Section 41.207 - Presumptions

    37 C.F.R. § 41.207   Cited 12 times   19 Legal Analyses

    (a)Priority - (1)Order of invention. Parties are presumed to have invented interfering subject matter in the order of the dates of their accorded benefit for each count. If two parties are accorded the benefit of the same earliest date of constructive reduction to practice, then neither party is entitled to a presumption of priority with respect to the other such party. (2)Evidentiary standard. Priority may be proved by a preponderance of the evidence except a party must prove priority by clear and

  19. Section 41.208 - Content of substantive and responsive motions

    37 C.F.R. § 41.208   Cited 6 times   60 Legal Analyses

    The general requirements for motions in contested cases are stated at § 41.121(c) . (a) In an interference, substantive motions must: (1) Raise a threshold issue, (2) Seek to change the scope of the definition of the interfering subject matter or the correspondence of claims to the count, (3) Seek to change the benefit accorded for the count, or (4) Seek judgment on derivation or on priority. (b) To be sufficient, a motion must provide a showing, supported with appropriate evidence, such that, if

  20. Section 41.100 - Definitions

    37 C.F.R. § 41.100   Cited 4 times
    Construing claims in the PTO such that " claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears"

  21. Section 11.303 - Candor toward the tribunal

    37 C.F.R. § 11.303   Cited 3 times   5 Legal Analyses

    (a) A practitioner shall not knowingly: (1) Make a false statement of fact or law to a tribunal or fail to correct a false statement of material fact or law previously made to the tribunal by the practitioner; (2) Fail to disclose to the tribunal legal authority in the controlling jurisdiction known to the practitioner to be directly adverse to the position of the client and not disclosed by opposing counsel in an inter partes proceeding, or fail to disclose such authority in an ex parte proceeding

  22. Section 41.8 - Mandatory notices

    37 C.F.R. § 41.8   Cited 2 times   6 Legal Analyses

    (a) In an appeal brief (§§ 41.37 , 41.67 , or 41.68 ) or at the initiation of a contested case (§ 41.101 ), and within 20 days of any change during the proceeding, a party must identify: (1) Its real party-in-interest, and (2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding. (b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the

  23. Section 41.204 - Notice of basis for relief

    37 C.F.R. § 41.204   Cited 2 times   2 Legal Analyses

    (a)Priority statement. (1) A party may not submit evidence of its priority in addition to its accorded benefit unless it files a statement setting forth all bases on which the party intends to establish its entitlement to judgment on priority. (2) The priority statement must: (i) State the date and location of the party's earliest corroborated conception, (ii) State the date and location of the party's earliest corroborated actual reduction to practice, (iii) State the earliest corroborated date