§

Sasai et al. V. Bergendahl et al.

12442245 (P.T.A.B. Jun. 29, 2016)
Sasai et al. V. Bergendahl et al.

28 Cited authorities

  1. Burroughs Wellcome Co. v. Barr Labs., Inc.

    40 F.3d 1223 (Fed. Cir. 1994)   Cited 289 times   27 Legal Analyses
    Holding that a reduction to practice by a third party inures to the benefit of the inventor even without communication of the conception

  2. Invitrogen Corp. v. Clontech Laboratories

    429 F.3d 1052 (Fed. Cir. 2005)   Cited 207 times   8 Legal Analyses
    Holding that a witness's conclusory assertion that the evidence demonstrated "conception, diligence and reduction to practice" did not carry a party's burden on summary judgment

  3. Mycogen Plant Science v. Monsanto Co.

    243 F.3d 1316 (Fed. Cir. 2001)   Cited 89 times   3 Legal Analyses
    Holding that there was sufficient appreciation when an inventor recognized a process in terms of codons — groups of three nucleotides-instead of the ultimately claimed nucleotides

  4. UMC Electronics Co. v. United States

    816 F.2d 647 (Fed. Cir. 1987)   Cited 106 times
    Stating the on-sale bar "does not lend itself to formulation into a set of precise requirements"

  5. Coleman v. Dines

    754 F.2d 353 (Fed. Cir. 1985)   Cited 96 times   5 Legal Analyses
    In Coleman v. Dines (1985) 754 F.2d 353 (Coleman), the appellant testified that he conceived the invention at issue in that case prior to the date of the respondent's patent, and he relied on a letter he sent to a colleague about his work as corroboration for his testimony.

  6. 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

  7. Dow Chemical Co. v. Astro-Valcour, Inc.

    267 F.3d 1334 (Fed. Cir. 2001)   Cited 51 times   4 Legal Analyses
    Finding only the claims at issue invalid under § 102(g)

  8. Griffin v. Bertina

    285 F.3d 1029 (Fed. Cir. 2002)   Cited 44 times
    Holding as limiting a method claim's preamble reciting “diagnosing an increased risk for thrombosis,” where claim covering nucleic-acid tests performed on a “test subject” was meaningless without understanding that “[d]iagnosis is ... the essence of invention”

  9. Singh v. Brake

    222 F.3d 1362 (Fed. Cir. 2000)   Cited 43 times   1 Legal Analyses
    Recognizing the "concern that a party claiming inventorship might be tempted to describe his actions in an unjustifiably self-serving manner in order to obtain a patent or to maintain an existing patent"

  10. Kridl v. Mccormick

    105 F.3d 1446 (Fed. Cir. 1997)   Cited 46 times
    Stating that corroboration is "independent confirmation of the inventor’s testimony"

  11. 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

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

    35 U.S.C. § 103   Cited 6,143 times   481 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."

  13. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,012 times   1009 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  14. Section 135 - Derivation proceedings

    35 U.S.C. § 135   Cited 287 times   51 Legal Analyses
    Governing interferences

  15. Section 11 - Exchange of copies of patents and applications with foreign countries

    35 U.S.C. § 11   Cited 16 times   1 Legal Analyses

    (a) IN GENERAL.-The Director may exchange copies of specifications and drawings of United States patents and published applications for patents for those of foreign countries. The Director shall not enter into an agreement to provide such copies of specifications and drawings of United States patents and applications to a foreign country, other than a USMCA country or a WTO member country, without the express authorization of the Secretary of Commerce. (b) DEFINITIONS.-In this section- (1) the term

  16. Section 90.1 - Scope

    37 C.F.R. § 90.1   Cited 2 times

    The provisions herein govern judicial review for Patent Trial and Appeal Board decisions under chapter 13 of title 35, United States Code. Judicial review of decisions arising out of inter partes reexamination proceedings that are requested under 35 U.S.C. 311 , and where available, judicial review of decisions arising out of interferences declared pursuant to 35 U.S.C. 135 continue to be governed by the pertinent regulations in effect on July 1, 2012. 37 C.F.R. §90.1