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:
- 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).
- 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