Federal Circuit Affirms Non-Infringement of Interactive Computing Method Claims
In McKesson Tech’s. Inc. v. Epic Sys. Corp., No. 2010-1291, 2011 U.S. App. LEXIS 7531 (Fed. Cir. April 12, 2011), found here, the Federal Circuit reaffirmed its recent holdings that infringement of a method claim requires that all the steps of the claim be performed by a single party -- but not without a strong dissent that may portend en banc review.
In McKesson, the defendant sold an interactive computer system that allowed health care providers to create personalized web pages for their patients. The parties did not dispute that the first step of the asserted method claims was performed by the patient and the remaining steps by the health care provider. Citing a series of recent cases, including BMC Resources, Inc. v. Paymentech LP, 498 F.3d 1373 (Fed. Cir. 2007), Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) and Akamai Tech’s., Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010) (summarized here), the Court held that the actions of multiple parties could establish direct infringement of a method claim only where one party exercised control or direction over the entire process. Since the patients were not agents of the health care providers nor were they contractually obligated to perform any of the method steps, the patentee could not show the necessary control or direction.
While McKesson breaks no new legal ground, it is interesting that both Judge Bryson, in a two-sentence concurrence, and Judge Newman, in a lengthy dissent. suggested that the issue may warrant en banc review. Judge Newman pointed out that there was no bar to patenting computer-implemented methods simply because their performance involves more than one entity, yet the majority’s ruling effectively held that such claims could never be infringed. The majority erred, she argued, in pronouncing a “single entity rule” as an absolute rule of law when “no rule of law, no precedent, prohibits patenting and enforcing a method that is performed by interacting entities.”
