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Opiant Pharmaceuticals, Inc.

IPR2019-00688 (P.T.A.B. Aug. 21, 2020)
Opiant Pharmaceuticals, Inc.

17 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,559 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 5,861 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 3,185 times   68 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  4. 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

  5. Tec Air, Inc. v. Denso Manufacturing Michigan Inc.

    192 F.3d 1353 (Fed. Cir. 1999)   Cited 112 times
    Holding that regardless of whether defendant had shown a motivation to combine the prior art, the showing could be rebutted by evidence of commercial success

  6. In re Magnum Oil Tools Int'l, Ltd.

    829 F.3d 1364 (Fed. Cir. 2016)   Cited 61 times   19 Legal Analyses
    Holding that conclusory statements that "[t]he same analysis" applied to different prior art did not provide sufficient evidence to base its legal conclusion of obviousness

  7. In re Gurley

    27 F.3d 551 (Fed. Cir. 1994)   Cited 102 times   3 Legal Analyses
    Upholding obviousness finding where patent was directed to one of two alternative resins disclosed in prior art reference, even though reference described claimed resin as "inferior."

  8. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.

    868 F.3d 1013 (Fed. Cir. 2017)   Cited 13 times   9 Legal Analyses

    2016-2321 08-22-2017 NIDEC MOTOR CORPORATION, Appellant v. ZHONGSHAN BROAD OCEAN MOTOR CO. LTD., Broad Ocean Motor LLC, Broad Ocean Technologies LLC, Appellees Joseph MATAL, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office, Intervenor Scott R. Brown, Hovey Williams LLP, Overland Park, KS, argued for appellant. Also represented by Matthew B. Walters ; Christopher Michael Holman, University of Missouri-Kansas

  9. Okajima v. Bourdeau

    261 F.3d 1350 (Fed. Cir. 2001)   Cited 26 times   1 Legal Analyses
    Discussing how the prior art typically informs the question of the level of one of ordinary skill

  10. Adapt Pharma Operations Ltd. v. Teva Pharm. U.S., Inc.

    Case No. 2:16-cv-7721 (BRM) (JAD) (D.N.J. Jun. 5, 2020)

    Case No. 2:16-cv-7721 (BRM) (JAD) 06-05-2020 ADAPT PHARMA OPERATIONS LIMITED, et al., Plaintiffs, v. TEVA PHARMACEUTICALS USA, INC., et al., Defendants. MARTINOTTI, DISTRICT JUDGE NOT FOR PUBLICATION OPINION FILED TEMPORARILY UNDER SEAL [REDACTED] MARTINOTTI, DISTRICT JUDGE Before the Court is an Amended Complaint for Patent Infringement brought by Plaintiffs Adapt Pharma Operations Limited; Adapt Pharma, Inc.; Adapt Pharma Limited (collectively "Adapt"); and Opiant Pharmaceuticals, Inc. ("Opiant")

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

    35 U.S.C. § 103   Cited 6,148 times   482 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."

  12. Section 316 - Conduct of inter partes review

    35 U.S.C. § 316   Cited 294 times   311 Legal Analyses
    Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

  13. 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"

  14. 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)

  15. 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"

  16. 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

  17. 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,