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Jonathan David Sharman et al.

2020001569 (P.T.A.B. Jan. 15, 2021)
Jonathan David Sharman et al.

9 Cited authorities

  1. Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc.

    773 F.3d 1186 (Fed. Cir. 2014)   Cited 141 times   25 Legal Analyses
    Concluding that "[t]he claimed . . . parameters . . . [were] inherent properties of the obvious . . . formulation," and thus "[t]he reduced food effect was an inherent result of [a composition] even if it was previously not known in the prior art that a food effect existed"

  2. General Electric Co. v. Jewel Co.

    326 U.S. 242 (1945)   Cited 113 times   1 Legal Analyses
    Holding a patent invalid when "the prior art discloses the method of making an article having the characteristics of the patented product, though all the advantageous properties of the product had not been fully appreciated"

  3. Estee Lauder Inc. v. L'Oreal

    129 F.3d 588 (Fed. Cir. 1997)   Cited 60 times
    Holding that reduction to practice does not occur until inventor knows embodiment will work for its intended purposes

  4. In re Oelrich

    666 F.2d 578 (C.C.P.A. 1981)   Cited 93 times   5 Legal Analyses
    Stating that "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient" to establish inherency (quoting Hansgirg v. Kemmer , 102 F.2d 212, 214 (C.C.P.A. 1939) )

  5. Millennium Pharms., Inc. v. Sandoz Inc.

    862 F.3d 1356 (Fed. Cir. 2017)   Cited 25 times   10 Legal Analyses
    Rejecting argument that an unexpected result was "inevitable" and thus "inherent," because "obviousness is measured objectively in light of the prior art, as viewed by a person of ordinary skill in the field of the invention," and "[n]o expert testified that they foresaw, or expected, or would have intended" the process that created the claimed result, or the result's "long-sought properties and advantages"

  6. Persion Pharm. LLC v. Alvogen Malta Operations Ltd.

    945 F.3d 1184 (Fed. Cir. 2019)   Cited 16 times   5 Legal Analyses
    Explaining that while mere "possibilities" are not enough, "if the limitation is necessarily present, or is the natural result of the combination of elements explicitly disclosed by the prior art," inherency will render the claimed limitation obvious

  7. Endo Pharms. Sols., Inc. v. Custopharm Inc.

    894 F.3d 1374 (Fed. Cir. 2018)   Cited 8 times   3 Legal Analyses

    2017-1719 07-13-2018 ENDO PHARMACEUTICALS SOLUTIONS, INC., Bayer Intellectual Property GMBH, Bayer Pharma AG, Plaintiffs-Appellees v. CUSTOPHARM INC., Defendant-Appellant Nevin M. Gewertz, Bartlit Beck Herman Palenchar & Scott LLP, Chicago, IL, argued for plaintiffs-appellees. Also represented by Adam Mortara, John Scott McBride, Taylor A.R. Meehan, Faye Paul. Douglass C. Hochstetler, Kelley Drye & Warren, LLP, Chicago, IL, argued for defendant-appellant. Also represented by Constantine Koutsoubas

  8. Section 1.136 - Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 Legal Analyses

    (a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title; (iii)

  9. Section 41.52 - Rehearing

    37 C.F.R. § 41.52   Cited 7 times   9 Legal Analyses

    (a) (1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by