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University of South Florida et al.

2021003062 (P.T.A.B. Mar. 17, 2022)
University of South Florida et al.

16 Cited authorities

  1. Pfizer v. Apotex

    480 F.3d 1348 (Fed. Cir. 2007)   Cited 383 times   7 Legal Analyses
    Holding the district court clearly erred when it failed to consider relevant prior art

  2. In re Kubin

    561 F.3d 1351 (Fed. Cir. 2009)   Cited 137 times   10 Legal Analyses
    Finding patent invalid where an inherent benefit "is not an additional requirement imposed by the claims . . . but rather a property necessarily present" when the other limitations are satisfied

  3. Newell Companies, Inc. v. Kenney Mfg. Co.

    864 F.2d 757 (Fed. Cir. 1988)   Cited 222 times   3 Legal Analyses
    Holding that because the record established such a strong case of obviousness based on the teachings of the prior art, the fact that the product was successful does not overcome the conclusion of obviousness

  4. In re O'Farrell

    853 F.2d 894 (Fed. Cir. 1988)   Cited 168 times   9 Legal Analyses
    Finding patent obvious where the prior art provided a "reasonable expectation of success"

  5. In re Am. Academy of Science Tech Ctr.

    367 F.3d 1359 (Fed. Cir. 2004)   Cited 90 times   2 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

  6. Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc.

    752 F.3d 967 (Fed. Cir. 2014)   Cited 63 times   5 Legal Analyses
    Finding no clear error in district court's fact finding that "entecavir's ‘effectiveness against hepatitis B without known toxicity issues’ was ‘not unexpected ,’ " and deferring to district court's finding that this was not sufficient evidence of nonobviousness

  7. In re Warsaw Orthopedic, Inc.

    832 F.3d 1327 (Fed. Cir. 2016)   Cited 43 times   3 Legal Analyses
    Explaining that the court "may not reweigh ... evidence on appeal"

  8. BTG Int'l Ltd. v. Amneal Pharm. LLC

    923 F.3d 1063 (Fed. Cir. 2019)   Cited 14 times   3 Legal Analyses
    Rejecting the patent owner's argument that a reasonable expectation of success must be based on the likelihood of "survival advantage" of certain steroids, a feature not required by the claims

  9. In re Stepan Co.

    868 F.3d 1342 (Fed. Cir. 2017)   Cited 13 times   5 Legal Analyses

    2016-1811 08-25-2017 IN RE: STEPAN COMPANY, Appellant Thomas J. Wimbiscus, McAndrews, Held & Malloy, Ltd., Chicago, IL, argued for appellant. Also represented by George Wheeler. Jeremiah Helm, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Joseph Matal. Also represented by Nathan K. Kelley, Thomas W. Krause, Frances Lynch. Opinion for the court filed by Circuit Judge Moore. Thomas J. Wimbiscus , McAndrews, Held & Malloy, Ltd., Chicago, IL,

  10. Application of Boesch

    617 F.2d 272 (C.C.P.A. 1980)   Cited 17 times

    Appeal No. 79-597. March 13, 1980. Rehearing Denied July 3, 1980. Robert F. Dropkin and Vincent G. Gioia, Pittsburgh, Pa., attorneys of record for appellants. Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents and Trademarks, John W. Dewhirst, Washington, D.C., of counsel. Appeal from the Patent and Trademark Office Board of Appeals. Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and MALETZ, Judges. The Honorable Herbert N. Maletz of the United States Customs Court, sitting

  11. 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"

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

    35 U.S.C. § 134   Cited 99 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

  13. Section 1.136 - [Effective until 1/19/2025] Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 Legal Analyses

    (a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title; (iii)

  14. Section 1.42 - Applicant for patent

    37 C.F.R. § 1.42   1 Legal Analyses

    (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 . (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and