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CAFC Weekly: April 15, 2011

by Orlando Lopez

There were two precedential patent-related decisions this week. One related to joint infringement and another related to reissue applications.

In McKesson Technologies Inc. v. Epic Systems Corp, McKesson owns a patent for a system that allows patients to access visit-related content online following a doctor’s visit, and sued Epic for inducing infringement of the method claims by licensing software to healthcare providers who provide the software to their patients.  The claims were written as such that it required several parties, patients and providers, to perform the steps of the claims.  After claim construction, Epic moved for summary judgment of non-infringement, since joint infringement requires one infringing party to exercise control over the other infringing party.  The District Court granted the judgment of non-infringement.  McKesson appealed to the CAFC.  Based on the recent CAFC decision in Akamai, the CAFC upheld the judgment of the District Court.  While the result was predictable, a decision with three opinions, the opinion of the panel, a concurring opinion requesting a rehearing en banc and a dissenting opinion showing the divergence of precedent with the recent opinions, was unexpected.  As a postscript, the CAFC has responded to the need for an en banc decision on joint infringement and has granted rehearing en banc for Akamai.

In re Tanaka is an opinion resulting from an appeal of the decision of the USPTO Board of Patent Appeals and Interferences (BP AI).  Tanaka had obtained a patent and filed a reissue application in order to add dependent claims.  The examiner rejected the reissue application after determining that a failure to add dependent claims was not an error correctable by reissue.  The BPAI upheld the examiner’s decision.  Tanaka appealed to the CAFC.  The CAFC reversed the BPAI decision citing precedent contrary to the BPAI decision.

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