En Banc: Federal Circuit to further Address Joint Infringement

McKesson Technologies Inc. v. Epic Systems Corp., (Fed. Cir. 2011) (en banc order)

The Court of Appeals for the Federal Circuit has ordered an en banc rehearing to further address questions of when multi-party actions can lead to a finding of patent infringement.  In McKesson, no single party had performed each and every step of the claimed method. However, one party (the health care provider) had completed a portion and had allegedly induced separate parties (users) to complete the remaining steps.  Of importance to the decision, the encouragement offered by health care provider did not amount to “control” over the users.  Taking these facts, the original Federal Circuit panel held the patent not infringed because (1) no party could be considered a direct infringer of the patent and (2) liability for inducing infringement is not actionable because there is no underlying direct infringement.

In the en banc order, the court identified two questions to be addressed by the parties in their briefs:

  1. If separate entities each perform separate steps of a method claim, under what circumstances, if any, would either entity or any third party be liable for inducing infringement or for contributory infringement?  See Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983).
  2. Does the nature of the relationship between the relevant actors—e.g., service provider/user; doc-tor/patient—affect the question of direct or indirect infringement liability?

A second en banc rehearing on the topic of joint infringement is already pending.  In April 2011, the Federal Circuit ordered en banc rehearing of Akamai Technologies, Inc. v. Limelight Networks, Inc. In that case, the court asked the following question

If separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?

Although not explicitly announced, it is likely that the Federal Circuit will hold oral arguments for these two cases on the same day.  To account for the timing difference, the court had shortened the briefing deadlines in McKesson

22 thoughts on “En Banc: Federal Circuit to further Address Joint Infringement

  1. 22

    So let me get this straight…

    You choose a paragon of virtue and teaching as a pseudonym to point out my lack of virtue for pointing out that someone else lacks virtue for maintaining a weak argument?

    Then you allow yourself to be slapped six ways to Sunday by Hardworking on what it means to have virtue and to teach.

    That’s even weaker than Inviting Body Punches. I really doubt that you should be posting anything telling anybody what to post.

  2. 21

    P.S. your subtlety was in warping the dedication from dedication to having someone learn (in bold from my sentence) to dedication to pointing out errors (your change).

    Thank you for the opportunity to teach you (some more).

  3. 20

    Takes one to know one – but in your instance, you just lack the hard-working part.

    But welcome to the party.

  4. 19

    And so Confucius, just what is it that you think that you have taught me?

    And what have you, yourself, learned in the process?

    (outside of the ability to spot typos on a blog post)

  5. 17

    Your subtle introduction of “dedication” notwithstanding…

    I appreciate your appreciation of my subtlety, but in this instance it is misplaced. In fact, it was you who introduced the concept, when you said:

    There is a whole profession dedicated to this. It is called “teaching.”

    Thank you for the opportunity to teach you something, and thus to be virtuous.

    P.S. I’m guessing you’re not a “tracher,” either.

    P.P.S. Wow, this virtue thing feels really good!

  6. 16


    If you do not realize that until the mistake is accepted, that the way forward is blocked, then you are not Confucius.

    Your subtle introduction of “dedication” notwithstanding (as teaching does involve more than “pointing out” – but no one is arguing otherwise) does not mean that such “pointing out” is not a part of teaching.

    Your guess as to my being a tracher or not is your own, no matter how wrong that guess is.

  7. 15

    HC, if you think that the profession of “teaching” is dedicated to pointing out others’ mistakes, then I’m guessing you’re probably not a teacher.

  8. 14

    Neither is pointing out others’ lack of virtue.

    On the contrary, it is.

    There is always the off-chance that the person engrossed in the non-virutous behavour (here Inviting Body Punches) may learn from the person pointing out the flaw (here anon). There is a whole profession dedicated to this. It is called “teaching.” And it is considered by most to be one of the most virtuous professions. You of all people should know this.

    Likewise, Confucius, you too may learn (again) what you surely have forgotten, if you work hard.

  9. 13

    Maintaining your weakness is not a virtue.

    Neither is pointing out others’ lack of virtue.

  10. 11

    Funny–but I maintain that a unanimous or near-unanimous CAFC decision is the rough equivalent, to the CAFC, of any reasonably coherent USSC decision, regardless of a strong dissent or a plurality.

    Well, maybe not a plurality.

    unanimous CAFC en banc = USSC Lite

  11. 10

    to sit en banc when it will speak with one voice… sort of like a “USSC-lite” decision.

    Do you know how many USSC decisions are made with strong dissents and pluralies?

    Your point does not make sense to me. It is weakly drafted.

  12. 9

    For my money, I want the court to sit en banc when it will speak with one voice, not when there is likely to be a strong dissent or a plurality.

    That is, when each justice is so sure about something that they want future panels on which they sit to be able to point directly to an en banc decision as a unifying source, sort of like a “USSC-lite” decision.

    I don’t think it’s helpful when an en banc decision issues with a strong dissent, which majority decision then leaves a bad taste in the mouths of some of the dissenting justices, especially original panel members.

    The opinions are so weakly drafted, IMHO, that future efforts to distinguish instant cases should be common, and not necessarily difficult–especially in situations like we now have with Therasense versus McKesson and Dayco.

    So I don’t see this as a good or bad thing at the moment, it will all depend on how the decisions come out.

  13. 7

    Joint and several liability for patent infringers. Good topic for the patent reformers, eh ? Where is the House Judiciary committee when you need them ???

  14. 2


    pay attention as this is yet another of the great ping’s golden observations.

    hallowed by his name.

  15. 1

    Good. Now they address Newman’s dissent in Akamai directly. They cite Fromson, as she did. But they also need to carefully consider Univis Lens.

    Newman has consistently been of the view that parties can jointly infringe a patent based on general tort theories. I think that is in accord with the theories behind the original development of contributory infringement (See Walker on Patents for more). But, then we have the issue of whether the 1952 codification of inducement and contributory infringement implicitly overturned these cases.

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