Category Archives: Liability

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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What Happens When a Prevailing Party Is Still Dissatisfied with PTAB’s Claim Construction

Author: Anthony A. Hartmann
Editor: Lauren J. Dreyer

In SkyHawke Tech., LLC v. DECA Int’l Corp., No. 2016-1325 (Fed. Cir. July 15, 2016), the Federal Circuit limited a prevailing party’s ability to appeal claim construction issues in an inter partes reexamination.

After SkyHawke sued DECA for patent infringement, DECA requested inter partes reexamination, but SkyHawke ultimately prevailed on validity of its patent. Nonetheless, SkyHawke appealed to the Federal Circuit under 35 U.S.C. § 141 (pre-AIA), being “dissatisfied” with the means-plus-function construction and arguing the PTAB had created an erroneous prosecution history that could limit its enforcement rights. DECA moved to dismiss SkyHawke’s appeal for lack of jurisdiction.

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