A divided Federal Circuit Court of Appeals panel, relying on recent precedent, has confirmed that “where the actions of multiple parties combine to perform every step of a claimed method, the claim is directly infringed only if one party exercises ‘control or direction’ over the entire process such that every step is attributable to the controlling party.’”McKesson Techs. Inc. v. Epic Sys. Corp., No. 2010-1291 (Fed. Cir., decided April 12, 2011). The control standard “’is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method.’”
The patent at issue involved “an electronic method of communication between healthcare providers and patients involving personalized web pages for doctors and their patients.” The defendant is a software development company that licenses software to health care providers, including a product called “MyChart” that “allows healthcare providers to associate medical records with a patient’s personalized web page.” It also “allows the patients to communicate with their healthcare provider online through these personalized MyChart web pages.” According to the defendant, because the first step of the method, “initiating communication,” is not directly performed by the defendant’s customers, nor does the company “exercise control or direction over another who performs this step,” the plaintiff failed to demonstrate that a single party directly infringes the patent and thus could not succeed on its indirect infringement claim. The district court and Federal Circuit agreed.
A concurring judge conceded that the decision was correct given existing precedent, but questioned the validity of the cited decisions and suggested that they “may warrant review by the en banc court in an appropriate case.” The dissenting judge complained that the court “again selectively applies some newly minted panel rulings while ignoring others, adding to the conflict with precedent.” She contended that this approach would render “all such interactive methods open for infringement without redress” and also noted that other circuit panels and the U.S. Supreme Court “have held that there can be infringement liability when steps of the claimed method are performed by different entities.”