Yes, All Elements Rule Still Applies to Infringement

Medgraph v. Medtronic (Fed. Cir. 2016)

Medgraph’s claims are directed to a set of methods “for improving and facilitating diagnosis and treatment of patients.” See U.S. Patent 5,974,124 and U.S. Patent 6,122,351.   The problem is that the claims require actions by both the computer system and also a patient/doctor.  This claim structure directly runs headlong into traditional requirement for direct infringement of a patent – that all steps of the claim be performed-by or attributable-to a single entity.

In its 2015 decision, the district court ruled that Medtronic could not be liable for infringement because there was no “showing that Medtronic itself directly infringed the method claims or that it acted as a ‘mastermind’ by controlling or directing anyone else’s direct infringement.” Citing Akamai Techs., Inc v. Limelight Networks, Inc., 786 F.3d 899 (Fed. Cir. 2015) (decision on remand from SCT).

Following the district court’s decision in this case, the Federal Circuit issued a per curiam en banc decision broadening the scope of potential attribution. Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015).  In this most recent en banc decision, the court held that the “single entity” theory of direct infringement can also be extended “when an alleged infringer 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 or timing of that performance.”

On appeal here, Medgraph argued for remand to allow the district court to consider infringement under this broader theory.  However, the Federal Circuit rejected that suggestion.  The court held instead that Medgraph’s case fails on any and all theories of direct infringement because Medgraph failed to produce evidence that the missing steps were actually performed by the patient and doctor. In addition, Medgraph failed to identify evidence fitting within the new broader attribution guidelines.

“The district court also correctly concluded that Medtronic was not liable under a theory of indirect infringement, because indirect infringement is predicated on direct infringement. That rule was also unaffected by Akamai V, so the outcome would, again, not change if we were to vacate and remand. ”

Dismissal Affirmed

= = = =

I was curious how the patentee here thought it might win without proving infringement of each element. In its reply brief, Medgraph explained that (1) Medtronic instructed users to practice the claim steps; and (2) Medtronic ‘admits’ that about 20% of patients used the system in an infringing manner.  This admission came from Medtronic’s appeal brief that stated “the record shows that approximately 80 percent of customers in fact use the system in this non-infringing way.”  This evidence coupled with its expert testimony are, according to Medgraph, enough to prove infringement. See Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009) (circumstantial evidence sufficient); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed. Cir. 1986) (“[c]ircumstantial evidence is not only sufficient, but may also be more certain, satisfying and persuasive than direct evidence.”).

= = = =

Although the Federal Circuit’s most recent Akamai decision loosened the knot a bit on the strict single-entity requirement, it remains a tough requirement.  Here, for instance, it does not appear to be enough that an accused infringer instructed its customers on how to use its system in a way that infringes.  Rather, liability under Akamai will only be created if the alleged infringer requires that those steps be followed or receives some benefit upon their performance.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

42 thoughts on “Yes, All Elements Rule Still Applies to Infringement

    1. Wow. Earthquake. This will be an 8-0 reversal of the CAFC and utterly devastate the troll business model.

      Hard to guess at this point what all the fallout will be but this is probably bigger than Alice.

      1. this is probably bigger than Alice

        It’ll be more wide-reaching in the sense that it will apply to all patentees, regardless of the claimed subject matter.

        But the effect on the system won’t be as great as Alice.

        A good daily mental exercise for everyone who’s remotely interested is to imagine where we’d be today if Mayo and Alice had been decided the opposite way. If you can wrap your head around that (thankfully purely) hypothetical disaster without getting at least mildly nauseous, then you aren’t thinking hard enough.

        But, hey, maybe the maniac elect will appoint Nathan Myhrvold to head the PTO so the agency can push back even harder when it tries to pretend to be born yesterday [take a wild guess which Republican Congressman Nathan decided to throw some coins to this election cycle ….]

        1. Between DDR, Enfish, and McRO, Alice is already halfway to being overturned by the CAFC.

          And it doesn’t look like the Supremes are interested in reasserting the law so the CAFc will just get more and more bold in erasing Alice from the books next year.

          But TC Heartland would continue to make an enormous difference for a long, long time. Imagine being a Senator trying to explain to local businessmen how you allowed a EDTX type judge a lifetime term to raid their companies again and again.

          1. it doesn’t look like the Supremes are interested in reasserting the law

            If the defendants in any of those cases know what they are doing and they aren’t compromised, I’m sure the Supremes would love to clear things up for the CAFC and their software-loving stakeholders.

          2. Review of Enfish isn’t going to happen because those s00per awes0me claims that were the greatest revolution in database “technology” since the (unpatented) relational database turned out to be 0bvious junk (so shocking).

            A huge amount of money was wasted to get to that result, of course, which is the case every time a logic patent is asserted.

  1. Claim 1 of the `124 patent is full of steps for measuring, compiling, receiving, telephoning and transferring medically important variables. So in the midst of all this informational transformationing there is step 2:


    ensuring said patient is separated from said at least one measuring device after taking each said measurement;

    How does a step like that end up in a nice 1999 information transformation patent? It is not mentioned in the specification or anywhere else that I can see. It even counted against the patent holder in the opinion above which says:

    ‘Indeed, the evidence indicates that Medtronic benefits
    when patients use its continuous glucose monitoring
    device, which does not involve ensuring detachment after
    each measurement. ‘

    1. How does a step like that end up in a nice 1999 information transformation patent? It is not mentioned in the specification or anywhere else that I can see.

      I assume this is a rhetorical question.

      But if it’s not, please accept this sarcastic response: “Distributed information processing! Distributed information processing!” Because it’s sooooooo sooper awesome.

    2. Slash, without even looking at the prosecution history, I can guess that the limitation was added to avoid the prior art. This limitation, nowhere found in the spec., may be the only think new in the claim.

      Yeah. How did this get by the examiner is the better question.

  2. This claim structure directly runs headlong into traditional requirement for direct infringement of a patent – that all steps of the claim be performed-by or attributable-to a single entity.

    Maybe it’s time to change that.

    We might want to play the goose to the AIA-related gander of Lemley’s “it takes a village” to invent (so it is only natural that it just might also take a village to infringe.

    1. This is nonsensical.

      There is no necessary relationship between the number of inventors listed on a patent and the number of people required to infringe a patent, nor should there be.

      We might want to play the goose to the AIA-related gander

      Because you haven’t failed enough already?

      1. No one said anything about a “necessary” relationship, Malcolm.

        Do you understand Lemley’s argument that he proposed during the AIA runup? (rhetorical question, since if you DID, you would not have labeled my post as “nonsensical.”

        Also, no one as of yet has attempted the suggestion, it cannot be said to have failed.

        1. Aside from that, did you want to try to say anything meaningful about the subject of multi-actor infringement?

          Wouldn’t it make claims clearer to not have to “scriven” claims into a “forced” single actor mode?

          Or do you think that there are NO true inventions outside of “single actor” inventions?

          1. did you want to try to say anything meaningful about the subject of multi-actor infringement?

            I already did. I explained to you and everyone else why your proposal is absurd. And you responded by filling your diapers and mewling like a crybaby as usual.

            I’m happy to decimate your silly proposal some more if you like, “anon.” But it’d nice to see you try to defend it first. Of course, we know that you’re never going to do that, and we all know why.

            1. You explained nothing.

              You whined and filled your own diapers, then turned around when invited to contribute in a meaningful way with your usual AccuseOthersOfThatWhichMalcolmDoes.

              Yay Decade of Decadence.

              As for “defending,” maybe you want to actually comment on the comments I already made instead if your mindless accusations:

              Wouldn’t it make claims clearer to not have to “scriven” claims into a “forced” single actor mode?

              Or do you think that there are NO true inventions outside of “single actor” inventions?

              These are not difficult questions.

              1. I’m not going to bite on your tr0lling nonsense, “anon.” We can all see the game you’re playing.

                If you have something to say, then say it. Just be prepared to defend it instead of just soiling your overflowing diapers again. As a holiday gift to you, I’ll consider your nonsense about “multiple actors because multiple inventors” officially retracted. But you should feel free to try again if you want! After all, you’re a very serious person.

            1. you have nothing meaningful to actually say.

              Oh, I have lots of meaninful stuff to say, “anon.” One of the huge differences between you and me (and there are many) is that I’m ready to defend the stuff that I say using reasoned argument, in English.

        2. Do you understand Lemley’s argument that he proposed during the AIA runup?

          Go ahead and explain it to everyone, you super deep and serious person. Better yet: just copy the exact words Lemley used in his alleged “argument that he proposed” (?) and paste them here. Or is that too complicated for you? Because you’re oh-so-very serious. Hey, did you ever hear back about your “protest vote”? How’d that work out for you?

          1. Once again you dodge and duck any meaningful input from yourself.

            How is my “explaining” going to show whether YOU understand what Lemley was saying during the AIA?

              1. What exactly are you having a difficult time “believing” there, Malcolm?

                Do you always show that you understand something by having someone else explain it?

        3. no one as of yet has attempted the suggestion

          And no one ever will

          it cannot be said to have failed.

          I wasn’t referring to that failure. I was referring to your other magnificent failures.

          1. Maybe you should use those short declarative sentences you are always on about to say something clear AND meaningful…

            You have not done so for more than a decade, so let’s see you try something else.

  3. “Medtronic ‘admits’ that about 20% of patients used the system in an infringing manner.”

    I wonder if this admission is of record?

    1. The converse was in the party’s own admitted brief.

      (80% use in a non-infringing manner).

      Admissions against interest…

      😉

      1. No, not *A* non-infringing manner . . . *THIS* non-infringing manner.

        The phrasing does not preclude the remaining 20% from using other non-infringing manners.

        1. You are correct, Dobu.

          But the way that I phrased it is how the perception arose that 20% were infringing and that Medtronic made this admission.

          As you point out though, the actual stated converse does not lead to the explicit result desired by Medgraph (hence, the use of single quotes around “admit” in the write-up above).

          Thanks for clarifying that.

  4. I’m confused. Under Akamai, the “benefit” supposedly runs form the defendant to the end user performing the remaining steps. But the court here says “Medtronic [i.e., the defendant] benefits when patients use its continuous glucose monitoring device, which does not involve ensuring detachment after each measurement.”

  5. That was an odd thing for Judge Schall to say, especially immediately after stating “we have used both the term “element” and the term “limitation” to refer to words in a claim.” Changing the definition of terms that appear ubiquitously throughout a century of case law could make mush out of the case law.
    After decades observing how numerous people use the words, it seems that they are synonymous in usage. If you want to communicate with others who speak English, you are pretty much constrained with going with the flow. And if you want to convince a judge to apply the all-limitations rule of Pfizer, you better use the word “limitation” to avoid denial on the point that the rule requires all limitations, but you only pointed to a missing element, which might not be the same thing. Pfizer, often cited for the all-limitations rule, does not mention elements. Pennwalt Corp. v. Durand-Wayland, Inc. 833 F.2d 931, cited for the rule in the old days, uses both terms both interchangeably and subtly differently ( means-plus-function limitations; and “means element with its associated functional limitations”).

      1. “It is preferable to use the term ‘limitation’ when referring to claim language and the term ‘element’ when referring to the accused device.” Festo v. Shoketsu, 234 F.3d 558, 563 n.1 (Fed. Cir. 2000) (en banc).

        1. Is it just in that context though, Robert?

          In some contexts, there is no “accused device” in the discussion to be referred to (and yet both elements and limitations are being discussed).

      2. DC We still need to figure out what is an element and how is that different from a limitation.

        If you’re talking about a term that actually limits a claim’s scope, then it is preferable to use the term “limitation” but you can also use the term element.

        If you’re talking about an element in a claim that does not limit the claim scope, the term “limitation” is not preferred (for obvious reasons).

        I don’t think there’s much more to it than that, other than what Robert KS has said.

        1. Outside of Robert’s point, can you have something considered to be an element that is not a limitation on scope?

          Maybe a (gasp) example…?

          😉

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