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Leigh Rothschild

IPR2019-00856 (P.T.A.B. Nov. 19, 2020)
Leigh Rothschild

25 Cited authorities

  1. Nautilus, Inc. v. Biosig Instruments, Inc.

    572 U.S. 898 (2014)   Cited 1,385 times   95 Legal Analyses
    Holding that claims are not indefinite if, "viewed in light of the specification and prosecution history, [they] inform those skilled in the art about the scope of the invention with reasonable certainty"

  2. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,545 times   185 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"

  3. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,178 times   68 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  4. In re NuVasive, Inc.

    842 F.3d 1376 (Fed. Cir. 2016)   Cited 104 times   15 Legal Analyses
    Vacating and remanding so that an agency could fulfill its obligation to "make the necessary findings and have an adequate evidentiary basis for its findings" and to "articulate a satisfactory explanation for its action"

  5. Aqua Prods., Inc. v. Matal

    872 F.3d 1290 (Fed. Cir. 2017)   Cited 81 times   62 Legal Analyses
    Addressing whether the language of § 316(e), which all conceded applied to challenged claims, "applies equally to proposed substitute claims"

  6. In re Magnum Oil Tools Int'l, Ltd.

    829 F.3d 1364 (Fed. Cir. 2016)   Cited 60 times   19 Legal Analyses
    Holding that conclusory statements that "[t]he same analysis" applied to different prior art did not provide sufficient evidence to base its legal conclusion of obviousness

  7. 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.

  8. In re NuVasive, Inc.

    841 F.3d 966 (Fed. Cir. 2016)   Cited 28 times   5 Legal Analyses
    Vacating and remanding based on insufficient notice where the Board relied on a reference's embodiment, raised for the first time on reply, as the only prior art disclosure of a claim limitation

  9. Bosch Auto. Serv. Solutions, LLC v. Matal

    878 F.3d 1027 (Fed. Cir. 2017)   Cited 15 times   5 Legal Analyses

    2015-1928 12-22-2017 BOSCH AUTOMOTIVE SERVICE SOLUTIONS, LLC, Appellant v. Joseph MATAL, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office, Intervenor Timothy M. Mccarthy, Clark Hill, PLC, Chicago, IL, argued for appellant. Also represented by David J. Marr. Frances Lynch, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by Thomas

  10. Nike, Inc. v. Adidas AG

    955 F.3d 45 (Fed. Cir. 2020)   Cited 12 times   10 Legal Analyses
    Concluding that "the Board should not be constrained to arguments and theories raised by the petitioner in its petition or opposition to the motion to amend"

  11. 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

  12. 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."

  13. Section 282 - Presumption of validity; defenses

    35 U.S.C. § 282   Cited 3,932 times   140 Legal Analyses
    Granting a presumption of validity to patents

  14. Section 311 - Inter partes review

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

  15. Section 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 290 times   311 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 186 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 192 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 - [Effective until 10/18/2024] 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 42.8 - Mandatory notices

    37 C.F.R. § 42.8   Cited 11 times   12 Legal Analyses
    Requiring a party to "[i]dentify each real party-in-interest for the party"

  22. 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,