§

WhitServe LLC

IPR2019-01019 (P.T.A.B. Oct. 29, 2020)
WhitServe LLC

29 Cited authorities

  1. KSR International Co. v. Teleflex Inc.

    550 U.S. 398 (2007)   Cited 1,551 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 5,844 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 3,181 times   68 Legal Analyses
    Holding commercial success is a "secondary consideration" suggesting nonobviousness

  4. Liebel-Flarsheim Company v. Medrad, Inc.

    358 F.3d 898 (Fed. Cir. 2004)   Cited 1,324 times   6 Legal Analyses
    Holding that claim terms are given the full breadth of their ordinary meaning unless a clear disavowal of scope is stated in the specification

  5. Eurand, Inc. v. Mylan Pharms. Inc. (In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.)

    676 F.3d 1063 (Fed. Cir. 2012)   Cited 310 times   13 Legal Analyses
    Holding that “the proper inquiry [in a best mode analysis] focuses on the adequacy of the disclosure rather than motivation for any nondisclosure”

  6. Winner Intern. Royalty Corp. v. Wang

    202 F.3d 1340 (Fed. Cir. 2000)   Cited 153 times
    Holding that "the admission of live testimony on all matters before the Board in a section 146 action, as in this case, makes a factfinder of the district court and requires a de novo trial"

  7. In re GPAC Inc.

    57 F.3d 1573 (Fed. Cir. 1995)   Cited 168 times   2 Legal Analyses
    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."

  8. In re Mouttet

    686 F.3d 1322 (Fed. Cir. 2012)   Cited 86 times   4 Legal Analyses
    Finding "the Board's determination that eliminating the optical components of Falk would not destroy its principle of operation to be supported by substantial evidence"

  9. Openwave Sys., Inc. v. Apple Inc.

    808 F.3d 509 (Fed. Cir. 2015)   Cited 50 times   2 Legal Analyses
    Holding that the specification may reveal an intentional disclaimer, or disavowal, but the standard of such a disavowal is exacting

  10. In re Bigio

    381 F.3d 1320 (Fed. Cir. 2004)   Cited 71 times   10 Legal Analyses
    Affirming conclusion that toothbrush and small hair brush were in same field of endeavor because "the structural similarities between toothbrushes and small brushes for hair would have led one of ordinary skill in the art working in the specific field of hairbrushes to consider all similar brushes including toothbrushes"

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

    35 U.S.C. § 103   Cited 6,133 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."

  12. Section 102 - Conditions for patentability; novelty

    35 U.S.C. § 102   Cited 6,005 times   1001 Legal Analyses
    Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

  13. Section 282 - Presumption of validity; defenses

    35 U.S.C. § 282   Cited 3,947 times   140 Legal Analyses
    Granting a presumption of validity to patents

  14. 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"

  15. 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"

  16. 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)

  17. Section 325 - Relation to other proceedings or actions

    35 U.S.C. § 325   Cited 44 times   249 Legal Analyses

    (a) INFRINGER'S CIVIL ACTION.- (1) POST-GRANT REVIEW BARRED BY CIVIL ACTION.-A post-grant review may not be instituted under this chapter if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent. (2) STAY OF CIVIL ACTION.-If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner

  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 42.71 - Decision on petitions or motions

    37 C.F.R. § 42.71   Cited 22 times   44 Legal Analyses

    (a)Order of consideration. The Board may take up petitions or motions for decisions in any order, may grant, deny, or dismiss any petition or motion, and may enter any appropriate order. (b)Interlocutory decisions. A decision on a motion without a judgment is not final for the purposes of judicial review. If a decision is not a panel decision, the party may request that a panel rehear the decision. When rehearing a non-panel decision, a panel will review the decision for an abuse of discretion. A

  20. Section 42.8 - Mandatory notices

    37 C.F.R. § 42.8   Cited 11 times   12 Legal Analyses
    Requiring a party to "[i]dentify each real party-in-interest for the party"

  21. Section 42.123 - Filing of supplemental information

    37 C.F.R. § 42.123   Cited 8 times   38 Legal Analyses
    Explaining that the late submission of supplemental information must be in the interests of justice

  22. Section 42.65 - Expert testimony; tests and data

    37 C.F.R. § 42.65   Cited 6 times   15 Legal Analyses
    Discussing "[e]xpert testimony"

  23. 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,