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Google Inc. v. Intellectual Ventures II LLC

12033824 (P.T.A.B. Dec. 7, 2015)
Google Inc. v. Intellectual Ventures II LLC

51 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. Phillips v. AWH Corp.

    415 F.3d 1303 (Fed. Cir. 2005)   Cited 5,831 times   167 Legal Analyses
    Holding that "because extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean, it is permissible for the district court in its sound discretion to admit and use such evidence"

  3. 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

  4. Vitronics Corporation v. Conceptronic, Inc.

    90 F.3d 1576 (Fed. Cir. 1996)   Cited 4,375 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"

  5. Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.

    381 F.3d 1111 (Fed. Cir. 2004)   Cited 1,937 times   2 Legal Analyses
    Holding that the claims are not "presumed" to be restricted to the embodiments disclosed in the specification

  6. Thorner v. Sony Computer Entertainment America LLC

    669 F.3d 1362 (Fed. Cir. 2012)   Cited 1,071 times   10 Legal Analyses
    Holding that “flexible” should be given its plain and ordinary meaning and reversing the construction of “capable of being noticeably flexed with ease”

  7. Renishaw PLC v. Marposs Societa' Per Azioni

    158 F.3d 1243 (Fed. Cir. 1998)   Cited 1,717 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

  8. Vivid Technologies v. American Science

    200 F.3d 795 (Fed. Cir. 1999)   Cited 746 times   5 Legal Analyses
    Holding that party opposing summary judgment must show either that movant has not established its entitlement to judgment on the undisputed facts or that material issues of fact require resolution by trial

  9. Apple Inc. v. Motorola, Inc.

    757 F.3d 1286 (Fed. Cir. 2014)   Cited 465 times   10 Legal Analyses
    Holding that when deciding whether the means test is triggered, the question is whether "in view of the specification, prosecution history, etc.," the patent "still provide sufficient structure such that the presumption against means-plus-function claiming remains intact"

  10. Interactive Gift Exp., Inc. v. Compuserve

    256 F.3d 1323 (Fed. Cir. 2001)   Cited 671 times   1 Legal Analyses
    Holding that although a party cannot change the scope of its claim construction on appeal, it is not precluded “from proffering additional or new supporting arguments, based on evidence of record, for its claim construction”

  11. 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

  12. Rule 402 - General Admissibility of Relevant Evidence

    Fed. R. Evid. 402   Cited 6,974 times   12 Legal Analyses
    Stating that relevant evidence is generally admissible at trial

  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 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 5,998 times   1001 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  15. Rule 901 - Authenticating or Identifying Evidence

    Fed. R. Evid. 901   Cited 5,325 times   53 Legal Analyses
    Holding that "[t]estimony that a matter is what it is claimed to be" is sufficient authentication

  16. 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"

  17. 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)

  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 42.104 - Content of petition

    37 C.F.R. § 42.104   Cited 28 times   54 Legal Analyses
    Describing the content of the petition, including both "the patents or printed publications relied upon for each ground," and "supporting evidence relied upon to support the challenge"

  20. Section 42.73 - Judgment

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

  21. 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,