Patent Prosecution Update
September 2015
The Expansion of Direct Infringement and Its Impact on Claim Drafting
On August 13, 2015, the Federal Circuit decided en banc to effectively expand the scope of direct infringement under 35 U.S.C. § 271(a). Akamai Techs., Inc. v. Limelight Networks, Inc., Nos. 2009-1372, -1380, -1416, -1417 (Fed. Cir. Aug. 13, 2015) (en banc). Specifically, the court held that in cases of divided infringement, one entity could be liable under two circumstances: (1) where the entity directs or controls the other entity’s performance, or (2) where the actors form a joint enterprise. More significantly, the court greatly enlarged the circumstances under which the direction or control test could be satisfied and made divided direct infringement under 35 U.S.C. § 271(a) a viable option for patent owners. More
Federal Circuit: Vandalism Is Not Prior Art
The Federal Circuit’s decision in Circuit Check Inc. v. QXQ Inc., No. 2015-1155 (Fed. Cir. July 28, 2015), not only revived an infringement verdict against the defendant, but also rearticulated what prior art references can properly be used in an obviousness analysis, strengthening the so-called “non-analogous art doctrine.” More
The Expansion of Direct Infringement and Its Impact on Claim Drafting
On August 13, 2015, the Federal Circuit decided en banc to effectively expand the scope of direct infringement under 35 U.S.C. § 271(a). Akamai Techs., Inc. v. Limelight Networks, Inc., Nos. 2009-1372, -1380, -1416, -1417 (Fed. Cir. Aug. 13, 2015) (en banc). Specifically, the court held that in cases of divided infringement, one entity could be liable under two circumstances: (1) where the entity directs or controls the other entity’s performance, or (2) where the actors form a joint enterprise. More significantly, the court greatly enlarged the circumstances under which the direction or control test could be satisfied and made divided direct infringement under 35 U.S.C. § 271(a) a viable option for patent owners. More
Federal Circuit: Vandalism Is Not Prior Art
The Federal Circuit’s decision in Circuit Check Inc. v. QXQ Inc., No. 2015-1155 (Fed. Cir. July 28, 2015), not only revived an infringement verdict against the defendant, but also rearticulated what prior art references can properly be used in an obviousness analysis, strengthening the so-called “non-analogous art doctrine.” More
IP5 Offices
Preparing an IP5-Compatible Patent Application: Incorporation By Reference in the Written Description
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Design Patents
Design Patent Prosecution: It’s Not the Same!
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Rule Review
Only a True Divisional Can Enter the Safe Harbor of 35 U.S.C. § 121
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EPO Practice
Deadly Divisionals, Poisonous Parents, and the Remedy of Partial Priorities
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At the Federal Circuit
Obvious Obviousness: The Federal Circuit Rejects Jury's Verdict of Nonobviousness
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Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
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