A claim directed to an electronic method of communication between healthcare providers and patients involving personalized web pages for doctors and their patients was at issue in McKesson Technologies Inc. v. Epic Systems Corp. The method requires that the users-in this case the patients-initiate communication by requesting information. The alleged infringer, on the theory of induced infringement, was the software-development company, which licensed the software to healthcare providers who in turn offered it to their patients.
For there to be induced infringement, there first must be direct infringement, which is present only when each step of a claimed method is performed by a single party or when one party exercises control or direction over the entire process such that every step is attributable to the controlling party. Such control or direction has been held to exist only when there is an agency relationship between the parties that perform the method steps or when one party is contractually obligated to the other to perform the steps. In view of precedent in this area, even providing instructions to perform a single step out of a method to another party to complete a patented method is not adequate for incurring liability for direct infringement of the method. In the present case, there could not be direct infringement because one of the method steps was attributed to patients, who are not agents of the healthcare provider and are not contractually obligated to perform the one method step.
Of the three-judge panel, one strongly dissented and another concurred in the correctness of the decision only in light of recent precedent, but noted that the correctness of those precedent rulings may warrant review by the en banc court when the appropriate case arises.
In a later development, the Federal Circuit announced it will rehear en banc Akamai Technologies, Inc. v. Limelight Networks, Inc., where the decision was based on the reasoning that joint infringement of a patent requires an agency relationship or contractual obligation. The parties were asked to file new briefs addressing the following issue: “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?”
For now it remains important to pursue claims that can be performed by a single party to avoid a situation where a claim for all practical reasons cannot be infringed. In this particular case, a better approach would have been to have the claim require that the doctor receive an initiated communication, or, if possible, to completely eliminate this method step.