Category Archives: Direct Infringement

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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No Change to Patent Venue Law

Author: Lauren J. Dreyer
Editor: Aaron Gleaton Clay

In In re TC Heartland LLC, No. 2016-105 (Fed. Cir. Apr. 29, 2016), the Federal Circuit denied TC Heartland LLC’s petition for a writ of mandamus that would have directed the Delaware district court to dismiss or transfer the case based on lack of personal jurisdiction or improper venue.

The Court rejected the argument that Congress’s 2011 amendments to the general venue statute effectively overruled the Court’s precedent in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990). It held that when Congress changed the venue statute from “For the purposes of venue under this chapter” to “For all venue purposes,” it broadened the definition of corporate residence, not narrowed it. The Court also rejected Heartland’s argument that the Delaware district court lacked specific personal jurisdiction over Heartland, an Indiana company headquartered in Indiana. Instead, it held that its precedent in Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558 (Fed. Cir. 1994), applied because, as in that case, Heartland admittedly shipped orders of the accused products directly to Delaware. The Court also noted that Heartland did not dispute that the infringement claims arose out of or related to those shipments.

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Specification’s Disparaging Remarks Can Limit Claim Scope, While Functional Language Is Not Indefinite If It Describes System’s Capabilities

Author: Ming Wai Choy
Editor: Kevin D. Rodkey

In UltimatePointer, LLC v. Nintendo Co., Ltd., No. 15-1297 (Fed. Cir. Mar. 1, 2016), the Federal Circuit affirmed the district court’s claim construction and noninfringement findings, but reversed its determination that the asserted claims are indefinite.

UltimatePointer sued Nintendo, alleging infringement of U.S. Patent No. 8,049,729 by Nintendo’s Wii video game system. The district court construed the claim term “handheld device” to require a “direct pointing device” where the cursor shown corresponds to the image on the screen being pointed at. On appeal, the Court affirmed, explaining that “repeated derogatory statements” of indirect pointing devices in the specification indicate that “the criticized technologies were not intended to be within the scope of the claims.” The Court then analyzed the Wii system’s operation and found that, because the pointing correlates to the remote’s position relative to a sensor bar, not the television screen image, the Wii system did not infringe the asserted claims.

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