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ASPLUND V. GILJOHANN et al.

12769514 (P.T.A.B. Dec. 20, 2018)
ASPLUND V. GILJOHANN et al.

22 Cited authorities

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

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 613 times   78 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]”

  2. Falko-Gunter Falkner v. Inglis

    448 F.3d 1357 (Fed. Cir. 2006)   Cited 89 times   16 Legal Analyses
    Holding that where “accessible literature sources clearly provided” a description of the teachings at issue, the written description requirement does not require their incorporation by reference

  3. Biogen Ma, Inc. v. Japanese Found. for Cancer Research

    785 F.3d 648 (Fed. Cir. 2015)   Cited 16 times   5 Legal Analyses
    Holding that this court has exclusive appellate jurisdiction over Board decisions

  4. In re Berger

    279 F.3d 975 (Fed. Cir. 2002)   Cited 15 times   2 Legal Analyses
    Declining to consider the merits of indefiniteness rejections not contested before the Board

  5. Regents of the University of California v. University of Iowa Research Foundation

    455 F.3d 1371 (Fed. Cir. 2006)   Cited 9 times   4 Legal Analyses
    In Regents, this Court explained that a party can defeat a § 135(b)(1) bar by showing "that claims filed after the critical date find support in the claims filed before the critical date" and explained that the relationship between post- and pre-critical date claims is "dispositive of the section 135(b)(1) question."

  6. Adair v. Carter

    668 F.3d 1334 (Fed. Cir. 2012)   Cited 3 times   3 Legal Analyses

    No. 2011–1212. 2012-03-26 John Robert ADAIR, Diljeet Singh Athwal, and John Spencer Emtage, Appellants, v. Paul J. CARTER and Leonard G. Presta, Appellees. Doreen Yatko Trujillo, Cozen O'Connor, P.C., of Philadelphia, PA, argued for appellants. With her on the brief was Kyle Vos Strache. Oliver R. Ashe, Jr., Ashe, P.C., of Reston, Virginia, argued for appellees. Of counsel on the brief were Jeffrey P. Kushan and Rachel H. Townsend, Sidley Austin, LLP, of Washington, DC. LINN Doreen Yatko Trujillo

  7. Corbett v. Chisholm

    568 F.2d 759 (C.C.P.A. 1977)   Cited 15 times   5 Legal Analyses
    Explaining that Congressional intent behind the predecessor to section 135(b), i.e., R.S. 4903, "was clearly to enact a statute of repose . . . so that the patentee might be more secure in his property right"

  8. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,394 times   1049 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

  9. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,016 times   1014 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  10. Section 1 - Establishment

    35 U.S.C. § 1   Cited 518 times   15 Legal Analyses
    Noting that Congress did not intend to change these "narrowing interpretations"

  11. Section 135 - Derivation proceedings

    35 U.S.C. § 135   Cited 287 times   51 Legal Analyses
    Governing interferences

  12. Section 11 - Exchange of copies of patents and applications with foreign countries

    35 U.S.C. § 11   Cited 16 times   1 Legal Analyses

    (a) IN GENERAL.-The Director may exchange copies of specifications and drawings of United States patents and published applications for patents for those of foreign countries. The Director shall not enter into an agreement to provide such copies of specifications and drawings of United States patents and applications to a foreign country, other than a USMCA country or a WTO member country, without the express authorization of the Secretary of Commerce. (b) DEFINITIONS.-In this section- (1) the term

  13. Section 23 - Testimony in Patent and Trademark Office cases

    35 U.S.C. § 23   Cited 14 times   3 Legal Analyses
    Granting the Director of the PTO the authority to "establish rules for taking affidavits and depositions required in cases in the [PTO]"

  14. Section 41.121 - Motions

    37 C.F.R. § 41.121   Cited 15 times   77 Legal Analyses

    (a)Types of motions - (1)Substantive motions. Consistent with the notice of requested relief, if any, and to the extent the Board authorizes, a party may file a motion: (i) To redefine the scope of the contested case, (ii) To change benefit accorded for the contested subject matter, or (iii) For judgment in the contested case. (2)Responsive motions. The Board may authorize a party to file a motion to amend or add a claim, to change inventorship, or otherwise to cure a defect raised in a notice of

  15. Section 41.203 - Declaration

    37 C.F.R. § 41.203   Cited 15 times   9 Legal Analyses

    (a)Interfering subject matter. An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa. (b)Notice of declaration. An administrative patent judge declares the patent interference on behalf of the Director. A notice declaring an interference identifies: (1) The interfering subject matter; (2) The involved applications, patents, and claims; (3) The accorded benefit

  16. Section 41.207 - Presumptions

    37 C.F.R. § 41.207   Cited 13 times   19 Legal Analyses

    (a)Priority - (1)Order of invention. Parties are presumed to have invented interfering subject matter in the order of the dates of their accorded benefit for each count. If two parties are accorded the benefit of the same earliest date of constructive reduction to practice, then neither party is entitled to a presumption of priority with respect to the other such party. (2)Evidentiary standard. Priority may be proved by a preponderance of the evidence except a party must prove priority by clear and

  17. Section 41.127 - Judgment

    37 C.F.R. § 41.127   Cited 9 times   15 Legal Analyses

    (a)Effect within Office - (1)Estoppel. A judgment disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party's failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment. (2)Final disposal

  18. Section 41.125 - Decision on motions

    37 C.F.R. § 41.125   Cited 8 times   25 Legal Analyses
    Allowing the Board to take up motions for decision in any order

  19. Section 41.8 - Mandatory notices

    37 C.F.R. § 41.8   Cited 2 times   6 Legal Analyses

    (a) In an appeal brief (§§ 41.37 , 41.67 , or 41.68 ) or at the initiation of a contested case (§ 41.101 ), and within 20 days of any change during the proceeding, a party must identify: (1) Its real party-in-interest, and (2) Each judicial or administrative proceeding that could affect, or be affected by, the Board proceeding. (b) For contested cases, a party seeking judicial review of a Board proceeding must file a notice with the Board of the judicial review within 20 days of the filing of the

  20. Section 41.204 - Notice of basis for relief

    37 C.F.R. § 41.204   Cited 2 times   2 Legal Analyses

    (a)Priority statement. (1) A party may not submit evidence of its priority in addition to its accorded benefit unless it files a statement setting forth all bases on which the party intends to establish its entitlement to judgment on priority. (2) The priority statement must: (i) State the date and location of the party's earliest corroborated conception, (ii) State the date and location of the party's earliest corroborated actual reduction to practice, (iii) State the earliest corroborated date

  21. Section 41.124 - Oral argument

    37 C.F.R. § 41.124   2 Legal Analyses

    (a)Request for oral argument. A party may request an oral argument on an issue raised in a paper within five business days of the filing of the paper. The request must be filed as a separate paper and must specify the issues to be considered. (b)Copies for panel. If an oral argument is set for a panel, the movant on any issue to be argued must provide three working copies of the motion, the opposition, and the reply. Each party is responsible for providing three working copies of its exhibits relating

  22. Section 41.205 - Settlement agreements

    37 C.F.R. § 41.205

    (a)Constructive notice; time for filing. Pursuant to 35 U.S.C. 135(c) , an agreement or understanding, including collateral agreements referred to therein, made in connection with or in contemplation of the termination of an interference must be filed prior to the termination of the interference between the parties to the agreement. After a final decision is entered by the Board, an interference is considered terminated when no appeal ( 35 U.S.C. 141 ) or other review ( 35 U.S.C. 146 ) has been or