Please join us for the SoCal IP Institute meeting, Monday, January 3 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following:

Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 08-1403  (Fed. Cir. Dec. 17, 2010) (case attached)   We will be continuing our previous discussion of statutory subject matter from Research Corp. Technologies, Inc. v. Microsoft Corp., No. 10-1037 (Fed. Cir. Dec. 8, 2010) with this case.  The Federal Circuit issued this opinion reaffirming a holding that Prometheus’ claims regarding a medical treatment procedure were directed to statutory subject matter.  This decision followed a district court decision that the claims were not statutory subject matter, a prior Federal Circuit decision that the claims were directed to statutory subject matter, the Bilski decision and a Supreme Court remand for reconsideration of this case in view of Bilski.  The Federal Circuit reaffirmed that the claimed subject matter was transformative, using a natural phenomenon and, thus, was statutory subject matter under 35 U.S.C. § 101.

Akamai Technologies, Inc. v. Limelight Networks, Inc., No. 09-1372 (Fed. Cir. Dec. 20, 2010) (case attached) Akamai sued Limelight on a number of patents related to hosting techniques for embedded elements of web pages.  Akamai appealed a lower-court entry of JMOL of non-infringement in addition to the claim construction of two terms that resulted in a non-infringement stipulation at the district court.  The JMOL was granted because it was conceded that Limelight did not perform each of the elements of the asserted claims and, thus, there was a split infringement issue.  The district court concluded and the Federal Circuit agreed that Limelight’s customers were not under the direction or control of Limelight.  Notably, the Federal Circuit held that in order for joint infringement to occur, an agency relationship or mutual contractual obligations must exist.  The Federal Circuit affirmed the district court’s claim construction of both terms and, as a result, affirmed the decision of the district court as a whole.