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U.S. Court Sets High Bar For Joint Infringement Of Method Claims

The U.S. Court of Appeals for the Federal Circuit issued its remand decision in Akamai Technologies, Inc. v. Limelight Networks, Inc., and this time affirmed the district court decision that Limelight was not liable for infringement of Akamai’s patents because Limelight had not performed each step of the method claims and was not responsible for the actions of its customers. The decision sets a high bar for joint infringement of method claims, requiring a principal-agent relationship, contractual relationship, or joint enterprise to hold a party liable for the actions of another.  

Liability For U.S. Patent Infringement

Liability for U.S. patent infringement is provided for in 35 [...]

USA: ArcelorMittal France v. AK Steel Corp, United States Court of Appeals, Federal Circuit, No. 2014-1191, 12 May 2015

In light of a binding prior Federal Circuit decision narrowly construing a key claim term in a patent relating to type of mechanically-resistant steel sheet, the federal district court in Wilmington, Delaware, properly invalidated the first 23 claims of a reissue patent as impermissibly broader than the original claims, but the court erred in invalidating two newly added claims because they did not exceed the scope of the original claims, the U.S. Court of Appeals for the Federal Circuit has determined (ArcelorMittal France v. AK Steel Corp., May 12, 2015, Hughes, T.). The case was remanded to the district court for a decision on the merits regarding the two valid claims.

A full summary of t [...]

USA: AstraZeneca LP v. Breath Limited, United States Court of Appeals, Federal Circuit, No. 2015-1335, 7 May 2015

The federal district court in Camden, New Jersey, did not err in finding U.S. Patent No. 7,524,834 (“the ’834 patent”) held by AstraZeneca LP and AstraZeneca AB (“AstraZeneca”) and asserted against Breath Limited, Apotex Corp., Apotex, Inc., Sandoz Inc., and Watson Laboratories, Inc. (collectively, the “defendants”), invalid as obvious under 35 U.S.C. § 103, the U.S. Court of Appeals for the Federal Circuit has decided (AstraZeneca LP v. Breath Limited, May 7, 2015, Prost, S.). Thus, the district court’s 166-page opinion, on remand from the Federal Circuit’s earlier decision that reversed and remanded the district court’s noninfringement findings on the ‘834 patent based [...]

Measuring And Improving U.S. Patent Quality

On February 5, 2015, the USPTO announced the launch of an Enhanced Patent Quality Initiative and solicited public comments on certain proposals aimed at improving patent quality, which are due by May 5, 2015. With a few weeks left in the comment period, the Office of Inspector General of the U.S. Department of Commerce issued a report on its review of the USPTO’s quality assurance program. The report is eye-opening and underscores the problems the USPTO faces in measuring and improving patent quality. 

USPTO Patent Quality Pillars and Initiatives

In the February 5 Federal Register Notice, the USPTO identified three patent quality pillars and six new patent quality initiatives  [...]

Fordham Conference 2015 – US Patent Potpourri

John Richards (Ladas & Parry LLP, New York) identifies the problem that filing a patent involves a prior art search which is probably not as focussed as searched that occur in litigation and therefore the patent might require later amendment. The Patent Trial and Appeal Board (PTAB) takes a very strict approach to amendment in the USA. Most jurisdictions do not allow broadening of scope after grant except for the USA and Canada in specific circumstances and under strict time limit.

  • Australia allows amendment and will advertise the amendment and stay any litigation.
  • Canada allows for disclaimers.
  • EPC as originally granted did not allow post grant amendments other than in opposition proceedin [...]
Fordham Conference 2015 – Biosimilars

Penny Gilbert from Powell Gilbert LLP explains the position of biosimilars in the pharmaceutical industry. Biosimilars are essentially generic versions of biologics. Traditional generic compounds are  chemical reproductions of the patented compound which makes regulatory approval more straightforward. Biological compounds (proteins or antibodies which are produced from genes) are not identical with one another and have higher hurdles in terms of achieving regulatory approval. The cost of bringing it to market is significant. Doctors may be less willing to prescribe biosimilars as compared to generic chemical compounds when considering the alternatives to the originator’s product. Undertakin [...]

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