Undue Experimentation

39 Florida cases classified under this topic · sorted by citation count · browse and sort

• Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.
  730 F.2d 1452· Fed. Cir.· 1984-03-21 ·cited 97×
  The court held that the district court erred in finding the patent invalid due to anticipation, obviousness, and lack of enablement, and reversed the judgment.
• The Ansul Co. v. Uniroyal, Inc.
  448 F.2d 872· 2d Cir.· 1971-04-29 ·cited 34×
  The court denied Daly-Herring's petition for rehearing, finding its arguments regarding treble damages were either not sufficiently proven or not properly raised.
• Spectra-Physics, Inc. v. Coherent, Inc.
  827 F.2d 1524· Fed. Cir.· 1987-08-17 ·cited 29×
• Application of Howard P. Angstadt and William P. Griffin, Jr.
  537 F.2d 498· C.C.P.A.· 1976-06-24 ·cited 24×
  The court held that the patent specification's disclosure was not commensurate with the scope of the claims, failing to provide sufficient guidance for practicing the invention without undue experimentation.
• Martin v. Rayner S. Johnson
  454 F.2d 746· C.C.P.A.· 1972-01-27 ·cited 24×
  The court held that the Johnson applications satisfied the disclosure requirements of 35 U.S.C. § 112, entitling Johnson to the benefit of his earlier filing dates for priority.
• Application of Constantin Chilowsky
  306 F.2d 908· C.C.P.A.· 1962-08-20 ·cited 24×
• White Consol. Indus., Inc. v. Vega Servo-Control, Inc.
  713 F.2d 788· Fed. Cir.· 1983-07-25 ·cited 21×
  The court held that the patent was invalid for failing to meet the enablement requirement of 35 U.S.C. § 112 because it failed to disclose a necessary trade secret translator or sufficiently describe available substitutes. The denial of attorney fees was also affirmed.
• Application of Hector Alfons Vanden Eynde
  480 F.2d 1364· C.C.P.A.· 1973-07-19 ·cited 20×
  The court held that the Board of Appeals erred in refusing to consider evidence submitted in response to a new rationale it advanced and in requiring disclosure of how to use the products derived from the claimed compounds.
• Application of George Bosy
  360 F.2d 972· C.C.P.A.· 1966-05-26 ·cited 18×
  The court held that the specification sufficiently disclosed the invention to enable one skilled in the art to practice it, and that the best mode requirement was met.
• Snitzer v. Etzel
  531 F.2d 1062· C.C.P.A.· 1976-04-08 ·cited 17×
  The senior party-appellant, who copied claims from a patent, failed to demonstrate by clear and convincing evidence that their disclosure supported the counts or was enabling.
• Application of James D. Geerdes
  491 F.2d 1260· C.C.P.A.· 1974-02-21 ·cited 16×
  The court held that the patent claims were not obvious under 35 U.S.C. § 103 and that the specification adequately enabled the claimed invention under 35 U.S.C. § 112.
• Application of Jay R. Brandstadter
  484 F.2d 1395· C.C.P.A.· 1973-09-20 ·cited 16×
  The court affirmed the Patent Office Board of Appeals' rejection of patent claims, finding the disclosure insufficient to enable one skilled in the art to make and use the invention.
• Randomex, Inc. v. Scopus Corp. & Dennis Haskamp
  849 F.2d 585· Fed. Cir.· 1988-06-06 ·cited 12×
  The court held that the patent applicant failed to disclose the best mode contemplated for carrying out the invention, as required by 35 U.S.C. § 112.
• Application of Richard Sichert
  566 F.2d 1154· C.C.P.A.· 1977-12-15 ·cited 12×
  The court held that claims related to plant families and general 'lymphatic congestion' treatment were sufficiently enabled and useful, but claims relying on broad terms like 'ointment base' or specific plant families without further guidance were not enabled.
• Application of Alfred D. Scarbrough
  500 F.2d 560· C.C.P.A.· 1974-06-27 ·cited 12×
  The court held that the patent application's disclosure was insufficient to enable a person skilled in the art to make and use the invention without undue experimentation, affirming the rejection of the claims.
• Application of Hampton G. Corneil and Andrew D. Suttle, Jr.
  347 F.2d 563· C.C.P.A.· 1965-06-17 ·cited 12×
  The court held that the patent application's disclosure was insufficient under 35 U.S.C. § 112 because it did not provide enough detail for a person skilled in the art to carry out the claimed method without undue experimentation, and that claims were unpatentable over the prior
• In re Wands
  858 F.2d 731· Fed. Cir.· 1988-09-30 ·cited 10×
  The court held that the patent applicant did not provide sufficient data to support the broad claims for monoclonal antibodies, as the experimental results were not sufficiently predictable or representative of the entire class claimed.
• Application of William L. Goffe
  542 F.2d 564· C.C.P.A.· 1976-10-07 ·cited 10×
  The court held that the Patent and Trademark Office Board of Appeals erred in affirming the rejection of patent claims under 35 U.S.C. § 112 for insufficient disclosure regarding 'agglomerable' materials and the 'contacting' relationship between layers.
• Application of Hampton G. Corneil and Andrew D. Suttle, Jr.
  347 F.2d 557· C.C.P.A.· 1965-06-17 ·cited 10×
  The court held that the specification's disclosure of an invention was not deficient in detail, despite potential operational problems suggested by prior art experiments.
• Application of Henri Moureu and Paul Chovin
  345 F.2d 595· C.C.P.A.· 1965-05-20 ·cited 10×
• United States v. Telectronics, Inc.
  857 F.2d 778· Fed. Cir.· 1988-09-22 ·cited 9×
  The court held that the district court erred in interpreting the patent claims to require a skin anode, finding that the claims encompass an implanted anode and thus literal infringement. The court also affirmed the district court's finding that the patent was not invalid for lac
• In re Meir Strahilevitz
  668 F.2d 1229· C.C.P.A.· 1982-01-15 ·cited 8×
  The court held that the appellant's patent disclosure was sufficient to enable one of ordinary skill in the art to practice the invention without undue experimentation, reversing the PTO Board of Appeals' rejection.
• Application of Damon M. Gunn
  537 F.2d 1123· C.C.P.A.· 1976-07-15 ·cited 8×
  The court held that the appellant's patent application disclosure was inadequate to enable one skilled in the art to make and use the invention without undue experimentation.
• Application of John A. Stephens
  529 F.2d 1343· C.C.P.A.· 1976-02-19 ·cited 8×
  The court held that the specification was sufficiently enabling under 35 U.S.C. § 112, allowing a skilled artisan to practice the claimed invention without undue experimentation.
• In re the Application of Neil Coleman
  472 F.2d 1062· C.C.P.A.· 1973-02-15 ·cited 8×
  The court held that the patent specification, when viewed in its entirety, enables one skilled in the art to make and use the claimed invention without undue experimentation, despite the use of trademarked materials.
• Application of Roger A. Long
  368 F.2d 892· C.C.P.A.· 1966-11-23 ·cited 8×
  The dissenting judge would affirm the patent board's decision, finding the application insufficient under 35 U.S.C. § 112.
• Gould v. Quigg
  822 F.2d 1074· Fed. Cir.· 1987-06-25 ·cited 6×
  The court held that while the district court correctly determined the patent application's disclosure was enabling, it lacked the authority to direct the Commissioner to issue the patent, instead only authorizing issuance.
• Application of Edward G. Budnick
  537 F.2d 535· C.C.P.A.· 1976-07-15 ·cited 6×
  The court held that the applicant failed to demonstrate that their specification would enable one skilled in the art to make the claimed compounds, affirming the rejection.
• In re Vaeck
  947 F.2d 488· Fed. Cir.· 1991-10-21 ·cited 5×
  The court held that the PTO erred in rejecting claims under 35 U.S.C. § 103 for obviousness, but affirmed in part and reversed in part the rejection of claims under 35 U.S.C. § 112 for lack of enablement.
• Sensormatic Elecs. Corp. v. Tag Co. US, LLC
  632 F. Supp. 2d 1147· S.D. Fla.· 2008-12-19 ·cited 4×
  The court found that the defendants failed to prove by clear and convincing evidence that the asserted patent claims were inherently anticipated or barred by prior sale. The court also found that the defendants stipulated to infringement.
• In re Bundy
  642 F.2d 430· C.C.P.A.· 1981-02-26 ·cited 4×
  The court held that the patent applicant's disclosure adequately satisfied the how-to-use and best mode requirements of 35 U.S.C. § 112, reversing the Patent and Trademark Office Board of Appeals' decision.
• Application of William D. Colianni
  561 F.2d 220· C.C.P.A.· 1977-09-15 ·cited 4×
  The specification is sufficient to enable one of ordinary skill in the art to practice the invention without undue experimentation.
• Tabuchi v. Nubel
  559 F.2d 1183· C.C.P.A.· 1977-08-04 ·cited 4×
  The court held that the first Japanese application's disclosure was enabling under 35 U.S.C. § 112, entitling Tabuchi to the benefit of its filing date.
• Charvat v. Commissioner of Patents
  503 F.2d 138· D.C. Cir.· 1974-06-28 ·cited 4×
  The court held that a patent cannot be granted based on structural elements described in the specification but omitted from the claims, even if those elements distinguish the invention from the prior art.
• In re Johannes B. Buchner
  929 F.2d 660· Fed. Cir.· 1991-03-26 ·cited 2×
  The court held that an expert's declaration is insufficient to overcome a rejection for lack of enabling disclosure if the information is not also present in the patent application itself or well-known in the art.
• Application of Donald S. Morehouse, Jr.
  545 F.2d 162· C.C.P.A.· 1976-11-24 ·cited 2×
  The court held that the appealed patent claims comply with the requirements of 35 U.S.C. § 112, reversing the PTO Board's decision.
• Johnson & Johnson Vision Care, Inc. v. Ciba Vision Corp.
  634 F. Supp. 2d 1293· M.D. Fla.· 2008-12-03 ·cited 1×
  The court denied both parties' motions for summary judgment on infringement and validity issues, finding genuine disputes of material fact.
• In re Wright
  999 F.2d 1557· Fed. Cir.· 1993-07-20 ·cited 1×
  The court held that the patent applicant failed to provide an enabling disclosure for the full scope of claimed vaccines and processes, as one skilled in the art would have needed to engage in undue experimentation to practice the invention as broadly claimed.
• Application of Joseph G. Feinberg
  437 F.2d 1405· C.C.P.A.· 1971-03-04
  The court held that the patent application claims were properly rejected under 35 U.S.C. § 112 for insufficient disclosure, as the specification did not adequately teach how to make the claimed compositions.