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JDS Uniphase Corporation v. Fiber, LLC

10197636 (P.T.A.B. Dec. 5, 2014)
JDS Uniphase Corporation v. Fiber, LLC

28 Cited authorities

  1. CCS Fitness, Inc. v. Brunswick Corp.

    288 F.3d 1359 (Fed. Cir. 2002)   Cited 969 times   6 Legal Analyses
    Holding that to act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning

  2. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 597 times   77 Legal Analyses
    Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

  3. Hybritech Inc. v. Monoclonal Antibodies, Inc.

    802 F.2d 1367 (Fed. Cir. 1986)   Cited 471 times   13 Legal Analyses
    Holding that notebook entries not witnessed until several months to a year after entry did not render them "incredible or necessarily of little corroborative value" under the circumstances and in view of other corroborating evidence

  4. Lockwood v. American Airlines, Inc.

    107 F.3d 1565 (Fed. Cir. 1997)   Cited 301 times   6 Legal Analyses
    Holding that "[e]ach application in the chain must describe the claimed features" and that if "one of the intervening applications does not describe" the subject matter, the later application cannot claim the benefit of the earlier application

  5. Oakley, Inc. v. Sunglass Hut International

    316 F.3d 1331 (Fed. Cir. 2003)   Cited 239 times   2 Legal Analyses
    Holding the term "vivid color appearance" not indefinite when the specification presented a formula for calculating the differential effect for a number of examples, which determined whether or not they had a "vivid colored appearance"

  6. Tronzo v. Biomet

    156 F.3d 1154 (Fed. Cir. 1998)   Cited 196 times   2 Legal Analyses
    Holding substantial evidence did not support finding that parent application provided written description of later-claimed genus encompassing any shape where it "tout[ed] the advantages of conical shape," mentioned other shapes only in reciting the prior art, and "specifically distinguishe[d] the prior art as inferior"

  7. In re Hiniker Co.

    150 F.3d 1362 (Fed. Cir. 1998)   Cited 180 times   6 Legal Analyses
    Upholding rejection for obviousness even though prior art performed less efficiently than patent's device because it refused to read specification's operational characteristics into broader claims

  8. Creative Compounds Llc v. Laboratories

    651 F.3d 1303 (Fed. Cir. 2011)   Cited 89 times   3 Legal Analyses
    Finding summary judgment proper where nonmoving party fails to establish genuine issues of material fact

  9. 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.

  10. Dawson v. Dawson

    710 F.3d 1347 (Fed. Cir. 2013)   Cited 14 times   5 Legal Analyses

    Nos. 2012–1214 2012–1215 2012–1216 2012–1217. 2013-03-25 Chandler DAWSON, Appellant, v. Chandler DAWSON and Lyle Bowman, Cross–Appellant. Steven B. Kelber, Berenato & White, LLC, of Bethesda, Maryland, argued for appellant. Joel M. Freed, McDermott Will & Emery, LLP, of Washington, DC, argued for cross-appellant. With him on the brief were Natalia Blinkova and Aamer Ahmed. BRYSON Steven B. Kelber, Berenato & White, LLC, of Bethesda, Maryland, argued for appellant. Joel M. Freed, McDermott Will &

  11. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,329 times   1038 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

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

    35 U.S.C. § 103   Cited 6,105 times   470 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 5,973 times   986 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. Section 314 - Institution of inter partes review

    35 U.S.C. § 314   Cited 374 times   630 Legal Analyses
    Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"

  15. Section 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 288 times   310 Legal Analyses
    Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

  16. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 184 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"

  17. Section 318 - Decision of the Board

    35 U.S.C. § 318   Cited 161 times   139 Legal Analyses
    Governing the incorporation of claims added via the operation of § 316(d)

  18. Section 42.100 - Procedure; pendency

    37 C.F.R. § 42.100   Cited 191 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"

  19. Section 42.121 - Amendment of the patent

    37 C.F.R. § 42.121   Cited 23 times   80 Legal Analyses
    Requiring that a “motion to amend claims must include a claim listing”

  20. 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

  21. Section 42.73 - Judgment

    37 C.F.R. § 42.73   Cited 18 times   59 Legal Analyses
    Regarding judgments

  22. Section 42.20 - Generally

    37 C.F.R. § 42.20   Cited 16 times   38 Legal Analyses

    (a)Relief. Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion. (b)Prior authorization. A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding. (c)Burden of proof. The moving party has the burden of proof to establish that it is entitled to the requested relief. (d)Briefing. The Board may order briefing on any issue involved in the trial. 37 C.F

  23. Section 90.2 - Notice; service

    37 C.F.R. § 90.2   2 Legal Analyses

    (a)For an appeal under 35 U.S.C. 141 . (1) (i) In all appeals, the notice of appeal required by 35 U.S.C. 142 must be filed with the Director by electronic mail to the email address indicated on the United States Patent and Trademark Office's web page for the Office of the General Counsel. This electronically submitted notice will be accorded a receipt date, which is the date in Eastern Time when the correspondence is received in the Office, regardless of whether that date is a Saturday, Sunday,