KSR International Co. v. Teleflex Inc.

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"

Finisar v. Directv

Holding that "a competent opinion of counsel concluding either [non-infringement or invalidity] would provide a sufficient basis for [the defendant] to proceed without engaging in objectively reckless behavior with respect to the [asserted] patent"

Aristocrat Tech v. Intern. Game

Holding that in cases involving means-plus-function claims where structure is "a computer, or microprocessor, programmed to carry out an algorithm," specification must disclose corresponding algorithm to be sufficiently definite

Net Moneyin v. Verisign

Holding that, to anticipate, a single prior art reference must not only disclose all the limitations claimed but also must disclose those limitations "arranged or combined in the same way as recited in the claim"

Typhoon Touch Technologies v. Dell, Inc.

Holding that a patent applicant narrowed its application in a response to the examiner's rejection on prior art grounds

Lockwood v. American Airlines, Inc.

Holding that "[e]ach application in the chain must describe the claimed features" and that if "one of the intervening applications does not describe" the subject matter, the later application cannot claim the benefit of the earlier application

Harris Corp. v. Ericsson Inc.

Holding that while "[w]aiver is a procedural issue," the question of whether there has been "waiver of a claim construction argument . . . [is] indisputably unique to patent law"

In re Gleave

Finding that the prior art reference was enabling and stating that “the fact that [the reference] provides ‘no understanding of which of the targets would be useful’ is of no import, because [the patent applicant] admits that it is well within the skill of an ordinary person in the art to make any oligodeoxynucleotide sequence”

In re Hiniker Co.

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

In re GPAC Inc.

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."

Rule 702 - Testimony by Expert Witnesses

Adopting the Daubert standard

Rule 803 - Exceptions to the Rule Against Hearsay-Regardless of Whether the Declarant Is Available as a Witness

Recognizing exception to rule against hearsay for records of regularly conducted activities

Section 112 - Specification

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

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

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."

Section 102 - Conditions for patentability; novelty

Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

Rule 901 - Authenticating or Identifying Evidence

Holding that "[t]estimony that a matter is what it is claimed to be" is sufficient authentication

Rule 802 - The Rule Against Hearsay

Recognizing federal statutes, the Federal Rules of Evidence, or Supreme Court rules as sources for exceptions to the rule against hearsay

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

Granting an earlier priority date to later applications for inventions that were disclosed in a previous application

Section 316 - Conduct of inter partes review

Stating that "the petitioner shall have the burden of proving a proposition of unpatentability"

Section 6 - Patent Trial and Appeal Board

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"

Section 42.100 - Procedure; pendency

Providing that the PTAB gives " claim . . . its broadest reasonable construction in light of the specification of the patent in which it appears"

Section 1.78 - Claiming benefit of earlier filing date and cross-references to other applications

Explaining that an applicant can file a continuation application to adjust claims of the patent

Section 42.51 - Discovery

Authorizing additional discovery when it is "in the interests of justice"

Section 42.73 - Judgment

Regarding judgments

Section 42.53 - Taking testimony

Section 90.2 - Notice; service