October 19, 2021

Volume XI, Number 292

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October 19, 2021

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October 18, 2021

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Plaintiff Unable to Meet Relaxed Standard Under Akamai for Direct Infringement of Method Claims

MEDGRAPH v. MEDTRONIC: Dec 13, 2016. Before Lourie, Plager, and Taranto. 

The Takeaway

Under Akamai V, infringement of a method claim requires the plaintiff to show that the defendant conditioned the use of, or receipt of a benefit from, defendant’s system on the performance of all of plaintiff’s method steps.

Procedural Posture

The W.D.N.Y. dismissed with prejudice plaintiff Medgraph’s claims of infringement. Medgraph appealed. The CAFC affirmed.

Analysis

  • Direct infringement of method claims: The CAFC affirmed the district court’s finding of noninfringement because all steps of the method claim were not performed by or attributable to a single entity. Under Akamai V, Medgraph had to show that “Medtronic conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner and timing of performance.” The evidence “indisputably show[ed] that Medtronic does not condition the use of, or receipt of a benefit from, [its diabetes management system] on the performance of all of Medgraph’s method steps.” The CAFC thus affirmed the grant of summary judgment of noninfringement of the method claims.

  • Direct infringement of the system claim: The CAFC affirmed the district court’s grant of summary judgment of noninfringement because the district court correctly construed “and” conjunctively according to its plain and ordinary meaning, rather disjunctively as “or.” Because the asserted claim requires that the means for receiving and transmitting data include both computer and telephonic capabilities, and because Medtronic’s diabetes management system is not capable of transmitting patient data by telephone, a summary judgment of noninfringement was appropriate.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 16
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About this Author

Michael J. Block, Andrews Kurth, patent litigation lawyer, dispute resolution attorney
Associate

Michael is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. He focuses his practice on patent litigation and dispute resolution, especially in the field of electrical engineering.

Michael previously worked in-house at a company where he was engaged in the innovation, development, and monetization of intellectual property and mobile technologies. Michael also has experience in prosecuting patent applications and has written claims, responded to office actions, and participated in interviews with...

212-908-6407
 Vaibhav M. Sharma, Andrews Kurth, Trade Secret Enforcement Lawyer, Patent Litigation Attorney
Associate

Vaibhav is an Associate in the Intellectual Property section of the firm’s New York – Battery Park office. Intellectual property issues are critical to the success of any business, regardless of its size. Andrews Kurth Kenyon helps clients in virtually all industries obtain, protect and enforce patents, trademarks, copyrights, trade secrets and other intellectual property rights. Our IP lawyers have strong technical backgrounds and extensive legal and commercial experience as in-house IP counsel, patent and trademark examiners, engineers and scientists.

212-908-6250
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