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Medtronic, Inc. v. NuVasive, Inc.

12628549 (P.T.A.B. Apr. 3, 2015)
Medtronic, Inc. v. NuVasive, Inc.

37 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,538 times   183 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"

  2. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,168 times   66 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  3. Catalina Market. Intern. v. Coolsavings.com

    289 F.3d 801 (Fed. Cir. 2002)   Cited 653 times   5 Legal Analyses
    Holding that "the claims, specification, and prosecution history of the041 patent demonstrate that the preamble phrase `located at predesignated sites such as consumer stores' is not a limitation of Claim 1," for "the applicant did not rely on this phrase to define its invention nor is the phrase essential to understand limitations or terms in the claim body"

  4. Eurand, Inc. v. Mylan Pharms. Inc. (In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.)

    676 F.3d 1063 (Fed. Cir. 2012)   Cited 307 times   13 Legal Analyses
    Holding that “the proper inquiry [in a best mode analysis] focuses on the adequacy of the disclosure rather than motivation for any nondisclosure”

  5. Stratoflex, Inc. v. Aeroquip Corp.

    713 F.2d 1530 (Fed. Cir. 1983)   Cited 481 times   12 Legal Analyses
    Finding evidence of nonobviousness in the "[r]ecognition and acceptance of patent by competitors who take licenses under it"

  6. Crocs v. Int'l Trade Com'n

    598 F.3d 1294 (Fed. Cir. 2010)   Cited 214 times   11 Legal Analyses
    Finding that International Trade Commission's "concentration on small differences in isolation distracted from the overall impression of the claimed ornamental features" and explaining that the "ordinary observer test applies to the patented design in its entirety"

  7. Wyers v. Master Lock Co.

    616 F.3d 1231 (Fed. Cir. 2010)   Cited 205 times   7 Legal Analyses
    Holding that a motivation to combine and a reasonable expectation of success exist when "it is simply a matter of common sense" to combine known elements of the prior art to solve a known problem

  8. Kinetic Concepts, Inc. v. Smith & Nephew, Inc.

    688 F.3d 1342 (Fed. Cir. 2012)   Cited 156 times   4 Legal Analyses
    Finding no motivation to combine where "doctors were not using the disclosed devices and methods to heal wounds with negative pressure because they did not believe that these devices were capable of such healing"

  9. Texas Instruments v. U.S. Intl. Trade Com'n

    988 F.2d 1165 (Fed. Cir. 1993)   Cited 270 times   1 Legal Analyses
    Holding that " 'whereby' clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim."

  10. DeSilva v. DiLeonardi

    181 F.3d 865 (7th Cir. 1999)   Cited 190 times   3 Legal Analyses
    Refusing to consider arguments that were adopted by reference but not actually made in appellate briefs because "adoption by reference amounts to a self-help increase in the length of the appellate brief"

  11. Rule 803 - Exceptions to the Rule Against Hearsay-Regardless of Whether the Declarant Is Available as a Witness

    Fed. R. Evid. 803   Cited 12,878 times   85 Legal Analyses
    Recognizing exception to rule against hearsay for records of regularly conducted activities

  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 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"

  14. 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"

  15. 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)

  16. 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"

  17. Section 42.73 - Judgment

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

  18. Section 42.6 - Filing of documents, including exhibits; service

    37 C.F.R. § 42.6   Cited 9 times   43 Legal Analyses

    (a)General format requirements. (1) Page size must be 81/2 inch * 11 inch except in the case of exhibits that require a larger size in order to preserve details of the original. (2) In documents, including affidavits, created for the proceeding: (i) Markings must be in black or must otherwise provide an equivalent dark, high-contrast image; (ii) 14-point, Times New Roman proportional font, with normal spacing, must be used; (iii) Double spacing must be used except in claim charts, headings, tables

  19. Section 42.53 - Taking testimony

    37 C.F.R. § 42.53   Cited 4 times   21 Legal Analyses

    (a)Form. Uncompelled direct testimony must be submitted in the form of an affidavit. All other testimony, including testimony compelled under 35 U.S.C. 24 , must be in the form of a deposition transcript. Parties may agree to video-recorded testimony, but may not submit such testimony without prior authorization of the Board. In addition, the Board may authorize or require live or video-recorded testimony. (b)Time and location. (1) Uncompelled direct testimony may be taken at any time to support

  20. 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,