Docket No. 2015-2019
LOURIE, PLAGER, TARANTO
December 13, 2016
Brief Summary: DC dismissal of infringement claims against Medtronic affirmed because Medgraph did not prove “that some entity or group of entities performed all of the claimed steps” (Akamai V) and based on the construction of the claim term “and” to mean “‘and’, rather than ‘or.’”
Summary: Medgraph appealed DC dismissal of infringement claims against Medtronic regarding its diabetes management systems (“CareLink Personal” and “CareLink Pro, collectively the “CareLink System”). The asserted patents were US 5,974,124 and 6,122,351 (CIP of ‘124) relating to a method for improving and facilitating diagnosis and treatment of patients using a “measuring device” to measure “at least one medically important variable” and a computer system. Medtronic’s CareLink System allows patients to upload data relating to their diabetes treatment to Medtronic’s central computer server and into a database for storage or to share with a healthcare professional. The FC panel opinion explains that “[t]his appeal arises in part from the fact that Medgraph’s suit coincided with a multi-year process of judicial reconsideration” of “the Akamai cases” (Akamai I (FC 2010): direct infringement of a method claim requires a single party to perform every step, joint infringement only where acts of another are attributable to the accused infringer through agency or contract; Akamai II (FC 2012) over-ruling/vacating Akamai I and providing “an independent inducement basis for divided infringement liability”; Akamai III (US, 2014), reversed Akamai III; Akamai IV (FC 2015), rejecting direct infringement by Limelight as it did not “direct or control” its customers who were not contractually obligated to Limelight or in “joint enterprise” with it; Akamai V (FC en banc, 2015): “[I]n addition to an agency or contractual relationship, attribution is proper ‘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….an actor who is implicated in that way in all of the claimed steps it does not itself perform may be liable as a direct infringer.”) Medgraph argued the DC decision should be overturned in view of Akamai V (it argued the DC relied solely on Akamai IV) and that claim 16 was improperly construed. Medtronic argued Medgraph “never produced evidence of, inter alia, the steps that are performed by the patient and doctor” (i.e., no proof “that some entity or group of entities performed all of the claimed steps”) and, therefore, remand is unnecessary. The FC panel agreed with Medtronic since “[a] finding of direct infringement requires that ‘all steps of the claim are performed by or attributable to a single entity” (a “rule…unaffected by Akamai V”). “Under the Akamai V standard invoked by Medigraph, the evidence would have to allow a finding that Medtronic ‘conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patent method and establishes the manner and timing of performance” and the FC panel concluded this was not shown. The FC also found the DC to have “correctly concluded” no indirect infringement which is “predicated on direct infringement” (a “rule…also unaffected by Akamai V”). Regarding claim 16, Medgraph argued the DC “erred in construing the claim limitation ‘and’ to mean ‘and’ instead of ‘or’” since the specification describes transmitting data the “a common network, over telephone lines, or over the Internet” (as in Ortho-McNeil, FC 2008 (“claim 1’s use of and means or” based on specification, “and conjoins mutually exclusive possibilities”)). The FC panel found here that “the written description can be interpreted to support either construction” and does not “compel a disjunctive construction for ‘and’” (Merck & Co., D. Del. 2002 (“a conjunctive construction would render tables in the written description meaningless”)). As such, the term was given its plain and ordinary meaning under Phillips (FC 2005) (i.e., “and” means “‘and’, rather than ‘or.’”) Based on this construction, the DC grant of SJ of noninfringement was affirmed.