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Epicor Software Corporation v. Protegrity Corporation

12916274 (P.T.A.B. Apr. 18, 2016)
Epicor Software Corporation v. Protegrity Corporation

35 Cited authorities

  1. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,431 times   520 Legal Analyses
    Holding ineligible patent claims directed to the concept of "intermediated settlement," i.e., the use of a third party to mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation

  2. Bilski v. Kappos

    561 U.S. 593 (2010)   Cited 827 times   160 Legal Analyses
    Holding claims directed to hedging risk ineligible

  3. Vitronics Corporation v. Conceptronic, Inc.

    90 F.3d 1576 (Fed. Cir. 1996)   Cited 4,384 times   10 Legal Analyses
    Holding that a claim construction that excludes the preferred embodiment is "rarely, if ever, correct and would require highly persuasive evidentiary support"

  4. Renishaw PLC v. Marposs Societa' Per Azioni

    158 F.3d 1243 (Fed. Cir. 1998)   Cited 1,718 times   4 Legal Analyses
    Holding that there must be a claim term in need of clarification in order to draw in statements from the written description

  5. Diamond v. Diehr

    450 U.S. 175 (1981)   Cited 540 times   130 Legal Analyses
    Holding a procedure for molding rubber that included a computer program is within patentable subject matter

  6. DDR Holdings, LLC v. Hotels.com, L.P.

    773 F.3d 1245 (Fed. Cir. 2014)   Cited 530 times   92 Legal Analyses
    Holding claims on maintaining website look-and-feel patent-eligible because claims were "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks"

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

    598 F.3d 1336 (Fed. Cir. 2010)   Cited 612 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]”

  8. Parker v. Flook

    437 U.S. 584 (1978)   Cited 370 times   63 Legal Analyses
    Holding narrow mathematical formula unpatentable

  9. Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada

    687 F.3d 1266 (Fed. Cir. 2012)   Cited 380 times   13 Legal Analyses
    Holding that the machine-or-transformation test remains an important clue in determining whether some inventions are processes under § 101

  10. Cybersource Corp.. v. Retail Decisions Inc.

    654 F.3d 1366 (Fed. Cir. 2011)   Cited 283 times   22 Legal Analyses
    Holding that a claim whose "steps can be performed in the human mind, or by a human using a pen and paper" is directed to an "unpatentable mental process"

  11. Rule 403 - Excluding Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons

    Fed. R. Evid. 403   Cited 23,436 times   87 Legal Analyses
    Adopting a similar standard, but requiring the probative value to be "substantially outweighed" by these risks

  12. Section 112 - Specification

    35 U.S.C. § 112   Cited 7,386 times   1048 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 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,511 times   2284 Legal Analyses
    Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

  14. 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"

  15. Section 324 - Institution of post-grant review

    35 U.S.C. § 324   Cited 42 times   58 Legal Analyses
    Requiring threshold determination that it is "more likely than not that at least 1 of the claims . . . is unpatentable"

  16. Section 326 - Conduct of post-grant review

    35 U.S.C. § 326   Cited 26 times   23 Legal Analyses

    (a) REGULATIONS.-The Director shall prescribe regulations- (1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion; (2) setting forth the standards for the showing of sufficient grounds to institute a review under subsections (a) and (b) of section 324; (3) establishing

  17. Section 328 - Decision of the Board

    35 U.S.C. § 328   Cited 11 times   11 Legal Analyses

    (a) FINAL WRITTEN DECISION.-If a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d). (b) CERTIFICATE.-If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue

  18. Section 42.301 - Definitions

    37 C.F.R. § 42.301   Cited 21 times   56 Legal Analyses
    Defining the scope of CBM review

  19. Section 42.73 - Judgment

    37 C.F.R. § 42.73   Cited 18 times   62 Legal Analyses
    Regarding judgments

  20. Section 42.300 - Procedure; pendency

    37 C.F.R. § 42.300   Cited 13 times   10 Legal Analyses

    (a) A covered business method patent review is a trial subject to the procedures set forth in subpart A of this part and is also subject to the post-grant review procedures set forth in subpart C except for §§ 42.200 , 42.201 , 42.202 , and 42.204 . (b) In a covered business method patent review proceeding, a claim of a patent, or a claim proposed in a motion to amend under § 42.221 , shall be construed using the same claim construction standard that would be used to construe the claim in a civil

  21. Section 42.64 - Objection; motion to exclude

    37 C.F.R. § 42.64   Cited 4 times   24 Legal Analyses

    (a)Deposition evidence. An objection to the admissibility of deposition evidence must be made during the deposition. Evidence to cure the objection must be provided during the deposition, unless the parties to the deposition stipulate otherwise on the deposition record. (b)Other evidence. For evidence other than deposition evidence: (1)Objection. Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial. Once a trial

  22. Section 42.302 - Who may petition for a covered business method patent review

    37 C.F.R. § 42.302   Cited 4 times   9 Legal Analyses
    Stating that a petitioner for CBM review must have been "sued for infringement or ... charged with infringement" and then defining only "charged with infringement"

  23. Section 42.7 - Management of the record

    37 C.F.R. § 42.7   Cited 1 times   5 Legal Analyses

    (a) The Board may expunge any paper directed to a proceeding or filed while an application or patent is under the jurisdiction of the Board that is not authorized under this part or in a Board order or that is filed contrary to a Board order. (b) The Board may vacate or hold in abeyance any non-Board action directed to a proceeding while an application or patent is under the jurisdiction of the Board unless the action was authorized by the Board. 37 C.F.R. §42.7

  24. 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,