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CaptionCall, L.L.C. v. Ultratec, Inc.

09783679 (P.T.A.B. Mar. 3, 2015)
CaptionCall, L.L.C. v. Ultratec, Inc.

40 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,548 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"

  2. Graham v. John Deere Co.

    383 U.S. 1 (1966)   Cited 3,180 times   68 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

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

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 606 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]”

  4. Vas-Cath Inc. v. Mahurkar

    935 F.2d 1555 (Fed. Cir. 1991)   Cited 395 times   3 Legal Analyses
    Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

  5. Sundance, Inc. v. DeMonte Fabricating Ltd.

    550 F.3d 1356 (Fed. Cir. 2008)   Cited 179 times   9 Legal Analyses
    Holding that the district court abused its discretion in permitting a witness not qualified as an expert in the pertinent art to testify as an expert regarding issues of noninfringement or invalidity

  6. In re Paulsen

    30 F.3d 1475 (Fed. Cir. 1994)   Cited 232 times   3 Legal Analyses
    Holding an inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning

  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. In re Kahn

    441 F.3d 977 (Fed. Cir. 2006)   Cited 145 times   11 Legal Analyses
    Holding that the motivation-suggestion-teaching test, much like the analogous-art test, is used to defend against hindsight

  9. University, Rochester v. G.D. Searle Co.

    358 F.3d 916 (Fed. Cir. 2004)   Cited 138 times   6 Legal Analyses
    Holding the patent invalid because "Rochester did not present any evidence that the ordinarily skilled artisan would be able to identify any compound based on [the specification's] vague functional description"

  10. In re GPAC Inc.

    57 F.3d 1573 (Fed. Cir. 1995)   Cited 168 times   2 Legal Analyses
    In GPAC, for example, we found that a reference disclosing an equilibrium air door was reasonably pertinent to a patent directed to asbestos removal because they both addressed the same problem of "maintaining a pressurized environment while allowing for human ingress and egress."

  11. Rule 702 - Testimony by Expert Witnesses

    Fed. R. Evid. 702   Cited 27,640 times   281 Legal Analyses
    Adopting the Daubert standard

  12. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,366 times   1046 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

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

    35 U.S.C. § 103   Cited 6,130 times   479 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."

  14. Section 120 - Benefit of earlier filing date in the United States

    35 U.S.C. § 120   Cited 600 times   109 Legal Analyses
    Granting an earlier priority date to later applications for inventions that were disclosed in a previous application

  15. Section 311 - Inter partes review

    35 U.S.C. § 311   Cited 404 times   190 Legal Analyses
    Establishing grounds and scope of IPR proceeding

  16. Section 314 - Institution of inter partes review

    35 U.S.C. § 314   Cited 375 times   632 Legal Analyses
    Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"

  17. Section 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 292 times   311 Legal Analyses
    Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

  18. 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"

  19. Section 318 - Decision of the Board

    35 U.S.C. § 318   Cited 161 times   140 Legal Analyses
    Governing the incorporation of claims added via the operation of § 316(d)

  20. 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"

  21. 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

  22. Section 42.73 - Judgment

    37 C.F.R. § 42.73   Cited 18 times   61 Legal Analyses
    Regarding judgments

  23. Section 42.65 - Expert testimony; tests and data

    37 C.F.R. § 42.65   Cited 6 times   15 Legal Analyses
    Discussing "[e]xpert testimony"

  24. Section 42.62 - Applicability of the Federal rules of evidence

    37 C.F.R. § 42.62   Cited 5 times   5 Legal Analyses

    (a)Generally. Except as otherwise provided in this subpart, the Federal Rules of Evidence shall apply to a proceeding. (b)Exclusions. Those portions of the Federal Rules of Evidence relating to criminal proceedings, juries, and other matters not relevant to proceedings under this subpart shall not apply. (c)Modifications in terminology. Unless otherwise clear from context, the following terms of the Federal Rules of Evidence shall be construed as indicated: Appellate court means United States Court

  25. 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,