42 Cited authorities

KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007) Cited 1,523 times 180 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"
United States v. Diebold, Inc.
369 U.S. 654 (1962) Cited 11,310 times
Holding that a court must construe all inferences and ambiguities against the movant and in favor of the non-moving party in determining whether a genuine issue of material act has been raised
Edison Co. v. Labor Board
305 U.S. 197 (1938) Cited 18,894 times 6 Legal Analyses
Holding that a Board order cannot be grounded in hearsay
Dickinson v. Zurko
527 U.S. 150 (1999) Cited 959 times 20 Legal Analyses
Holding that the more deferential substantial-evidence standard, and not the "stricter" and less deferential clear-error standard, applies to challenges to Patent and Trademark Office's patent denials, as it does to other agencies
Graham v. John Deere Co.
383 U.S. 1 (1966) Cited 3,157 times 63 Legal Analyses
Holding commercial success is a "secondary consideration" suggesting nonobviousness
Laningham v. U.S. Navy
813 F.2d 1236 (D.C. Cir. 1987) Cited 1,157 times
Finding that Navy did not act intentionally or willfully under § 552a(g) because it was "warranted [in its] belief that its actions were lawful [under the Privacy Act]"
Amazon.com v. Barnesandnoble.com, Inc.
239 F.3d 1343 (Fed. Cir. 2001) Cited 521 times 2 Legal Analyses
Holding that secondary considerations based on "copying Amazon's ‘1-Click®’ feature is legally irrelevant unless the ‘1-Click®’ feature is shown to be an embodiment of the claims"
In re Gartside
203 F.3d 1305 (Fed. Cir. 2000) Cited 511 times 15 Legal Analyses
Holding that factual determinations underlying an obviousness rejection under 35 U.S.C. § 103 are reviewed for substantial evidence
Constant v. Advanced Micro-Devices, Inc.
848 F.2d 1560 (Fed. Cir. 1988) Cited 742 times 3 Legal Analyses
Holding that evidence of routine business practice can be used to prove that a reference was accessible
Pfizer v. Apotex
480 F.3d 1348 (Fed. Cir. 2007) Cited 370 times 7 Legal Analyses
Holding the district court clearly erred when it failed to consider relevant prior art
Rule 56 - Summary Judgment
Fed. R. Civ. P. 56 Cited 329,940 times 158 Legal Analyses
Holding a party may move for summary judgment on any part of any claim or defense in the lawsuit
Rule 26 - Duty to Disclose; General Provisions Governing Discovery
Fed. R. Civ. P. 26 Cited 95,908 times 660 Legal Analyses
Adopting Fed.R.Civ.P. 37
Section 706 - Scope of review
5 U.S.C. § 706 Cited 20,518 times 185 Legal Analyses
Granting courts jurisdiction to "compel agency action unlawfully held or unreasonably delayed"
Section 112 - Specification
35 U.S.C. § 112 Cited 7,288 times 1030 Legal Analyses
Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it
Section 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,065 times 461 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."
Section 102 - Conditions for patentability; novelty
35 U.S.C. § 102 Cited 5,945 times 960 Legal Analyses
Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"
Section 145 - Civil action to obtain patent
35 U.S.C. § 145 Cited 504 times 132 Legal Analyses
Granting 60 days within which to file for District Court review of the PTO's decision
Section 141 - Appeal to Court of Appeals for the Federal Circuit
35 U.S.C. § 141 Cited 454 times 90 Legal Analyses
Imposing no such requirement
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
Section 1.132 - Affidavits or declarations traversing rejections or objections
37 C.F.R. § 1.132 Cited 104 times 13 Legal Analyses
When any claim of an application or a patent under reexamination is rejected or objected to, any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section. 37 C.F.R. §1.132 65 FR 57057, Sept. 20, 2000 Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations. Part 7 is placed in the
Section 1.111 - Reply by applicant or patent owner to a non-final Office action
37 C.F.R. § 1.111 Cited 86 times 6 Legal Analyses
Regarding Application No. 15/892, 603
Section 1.104 - Nature of examination
37 C.F.R. § 1.104 Cited 52 times 9 Legal Analyses
Providing reasons for patent examiner's rejection of claims, including rejection for prior art "unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person . . ."

NOVO NORDISK A/S v. DUDAS

42 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 that a court must construe all inferences and ambiguities against the movant and in favor of the non-moving party in determining whether a genuine issue of material act has been raised

Holding that a Board order cannot be grounded in hearsay

Holding that the more deferential substantial-evidence standard, and not the "stricter" and less deferential clear-error standard, applies to challenges to Patent and Trademark Office's patent denials, as it does to other agencies

Holding commercial success is a "secondary consideration" suggesting nonobviousness

Finding that Navy did not act intentionally or willfully under § 552a(g) because it was "warranted [in its] belief that its actions were lawful [under the Privacy Act]"

Holding that secondary considerations based on "copying Amazon's ‘1-Click®’ feature is legally irrelevant unless the ‘1-Click®’ feature is shown to be an embodiment of the claims"

Holding that factual determinations underlying an obviousness rejection under 35 U.S.C. § 103 are reviewed for substantial evidence

Holding that evidence of routine business practice can be used to prove that a reference was accessible

Holding the district court clearly erred when it failed to consider relevant prior art

Holding a party may move for summary judgment on any part of any claim or defense in the lawsuit

Adopting Fed.R.Civ.P. 37

Granting courts jurisdiction to "compel agency action unlawfully held or unreasonably delayed"

Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

Granting 60 days within which to file for District Court review of the PTO's decision

Imposing no such requirement

Regarding Application No. 15/892, 603

Providing reasons for patent examiner's rejection of claims, including rejection for prior art "unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person . . ."