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HONEYWELL INTERNATIONAL INC. (OWNER) et al.

2020000936 (P.T.A.B. May. 1, 2020)
HONEYWELL INTERNATIONAL INC. (OWNER) et al.

19 Cited authorities

  1. In re Kubin

    561 F.3d 1351 (Fed. Cir. 2009)   Cited 133 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

  2. In re Huai-Hung Kao

    639 F.3d 1057 (Fed. Cir. 2011)   Cited 88 times   16 Legal Analyses
    Holding that a "food effect" was obvious because the effect was an inherent property of the composition

  3. In re O'Farrell

    853 F.2d 894 (Fed. Cir. 1988)   Cited 167 times   9 Legal Analyses
    Finding patent obvious where the prior art provided a "reasonable expectation of success"

  4. Alcon Research, Ltd. v. Apotex Inc.

    687 F.3d 1362 (Fed. Cir. 2012)   Cited 60 times   6 Legal Analyses
    Holding a prior art reference disclosing a range of concentrations expressly disclosed a particular concentration within that range

  5. In re NTP, Inc.

    654 F.3d 1268 (Fed. Cir. 2011)   Cited 48 times   2 Legal Analyses
    Holding "priority can be considered and determined during reexamination proceedings," which are governed by similar statutory language

  6. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,350 times   1045 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

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

    35 U.S.C. § 103   Cited 6,124 times   478 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 315 - Relation to other proceedings or actions

    35 U.S.C. § 315   Cited 548 times   890 Legal Analyses
    Permitting the Director to consolidate separate IPRs challenging the same patent

  9. Section 141 - Appeal to Court of Appeals for the Federal Circuit

    35 U.S.C. § 141   Cited 455 times   91 Legal Analyses
    Imposing no such requirement

  10. Section 311 - Inter partes review

    35 U.S.C. § 311   Cited 403 times   189 Legal Analyses
    Establishing grounds and scope of IPR proceeding

  11. Section 301 - Citation of prior art and written statements

    35 U.S.C. § 301   Cited 118 times   15 Legal Analyses
    Referring to “the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324 ”

  12. Section 1.552 - Scope of reexamination in ex parte reexamination proceedings

    37 C.F.R. § 1.552   Cited 21 times   2 Legal Analyses

    (a) Claims in an ex parte reexamination proceeding will be examined on the basis of patents or printed publications and, with respect to subject matter added or deleted in the reexamination proceeding, on the basis of the requirements of 35 U.S.C. 112 . (b) Claims in an ex parte reexamination proceeding will not be permitted to enlarge the scope of the claims of the patent. (c) Issues other than those indicated in paragraphs (a) and (b) of this section will not be resolved in a reexamination proceeding

  13. Section 1.136 - 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 41.77 - Decisions and other actions by the Board

    37 C.F.R. § 41.77   Cited 16 times   3 Legal Analyses

    (a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner's determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent

  15. Section 41.79 - Rehearing

    37 C.F.R. § 41.79   Cited 5 times

    (a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of: (1) The original decision of the Board under § 41.77(a) , (2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2) , (3) The expiration of the time for the owner to take action under § 41.77(b)(2) , or (4) The new decision of the Board under § 41.77(f) . (b) (1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked

  16. Section 41.81 - Action following decision

    37 C.F.R. § 41.81   Cited 2 times

    The parties to an appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983 of this title until all parties' rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board. 37 C.F.R. §41.81

  17. Section 1.983 - Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination

    37 C.F.R. § 1.983   Cited 2 times

    (a) The patent owner or third party requester in an inter partes reexamination proceeding who is a party to an appeal to the Patent Trial and Appeal Board and who is dissatisfied with the decision of the Patent Trial and Appeal Board may, subject to § 41.81 , appeal to the U.S. Court of Appeals for the Federal Circuit and may be a party to any appeal thereto taken from a reexamination decision of the Patent Trial and Appeal Board. (b) The appellant must take the following steps in such an appeal:

  18. Section 90.1 - Scope

    37 C.F.R. § 90.1   Cited 2 times

    The provisions herein govern judicial review for Patent Trial and Appeal Board decisions under chapter 13 of title 35, United States Code. Judicial review of decisions arising out of inter partes reexamination proceedings that are requested under 35 U.S.C. 311 , and where available, judicial review of decisions arising out of interferences declared pursuant to 35 U.S.C. 135 continue to be governed by the pertinent regulations in effect on July 1, 2012. 37 C.F.R. §90.1

  19. Section 1.956 - Patent owner extensions of time in inter partes reexamination

    37 C.F.R. § 1.956   Cited 1 times

    The time for taking any action by a patent owner in an inter partes reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition fee set forth in § 1.17(g) . See § 1.304(a) for extensions of time for filing a