Category Archives: Liability

Patent Owner’s Statements in IPR May Constitute a “Disclaimer” of Claim Scope in Litigation

Author: Sean D. Damon
Editor: Jeff T. Watson

In Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (Fed. Cir. May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be relied upon to support a finding of prosecution disclaimer and affirmed the district court’s grant of SJ of noninfringement to Apple. Continue reading

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Federal Circuit Trends of 2016

Authors: Alissa Lipton, Eric Raciti
Editor: Lauren J. Dreyer

Join us as we review what has been an exciting year at the Federal Circuit and help ring in 2017 with a New Year’s reception at Finnegan’s Boston office on Wednesday, January 11, 2017! We will provide insights on the top Federal Circuit decisions and trends of 2016.

Below, we highlight some of the issues we will discuss on January 11:
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Change in Law Does Not Always Compel Remand

Authors: Jonathan J. Fagan
Editor: Jeff T. Watson

In Medgraph, Inc. v. Medtronic, Inc., No. 15-2019 (Fed. Cir. Dec. 13, 2016), the Federal Circuit affirmed the district court’s summary judgment of noninfringement despite recent changes in the law governing direct infringement. Direct infringement of a method claim requires that a single entity or group of entities perform each step of the method. The legal definition of what may be attributed to a “single entity,” however, changed during this case’s pendency. Before the district court granted summary judgment to accused infringer Medtronic, the law attributed third-party acts to an accused infringer if the third party acted as the accused’s agent or in a contractual relationship with the accused. After the grant of summary judgment, the Federal Circuit broadened this standard to include instances when an accused infringer “conditions participation in an activity or receipt of a benefit upon performance of a step or steps” of the method. Continue reading

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