Federal Circuit Denies Remand Despite Changes in Direct Infringement Law under Akamai

Federal Circuit, CAFCMedgraph, Inc. v. Medtronic, Inc., No. 2015-2019, 2016 U.S. App. LEXIS 22067 (Fed. Cir. Dec. 13, 2016) (Before Lourie, Plager, and Taranto, J.) (Opinion for the court, Lourie, J.).

Medgraph sued Medtronic for infringement of two patents, U.S. Patent No. 5,974,124 (“the ’124 Patent”) and U.S. Patent No. 6,122,351 (“the ’351 Patent”). The patents concern a method (’124) and system (‘351) for improving and facilitating diagnosis and treatment based on “medically important variable[s].” The district court granted summary judgment of non-infringement to Medtronic on both patents.

This case coincided with a series of appellate decisions in Akamai Techs., Inc. v. Limelight Networks, Inc., involving direct infringement. Ordinarily, to prove direct infringement, the patentee must show that “all steps of the claim are performed by or attributable to a single entity.” The Akamai decisions dealt with the issue of attribution. The latest decision, referred to as “Akamai V,” broadened the circumstances in which acts of another may be attributed to an accused infringer: “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.” The district court’s grant of summary judgment predated Akamai V.

On appeal, Medgraph argued that the district court’s decision on summary judgment should be remanded and reconsidered in light of Akamai V. Medgraph also asserted that the district court’s finding of non-infringement as to the ’351 Patent system claim was erroneous.

The Court held that remand was improper. Generally, remand is proper where the governing legal standards change during appeal. However, the Court found that the change in legal standard would not affect the district court’s order because Medgraph failed to present a case of direct infringement even under the broader theory of attribution in Akamai V.

The ’124 Patent method claim included steps that could be performed by Medtronic as well as patients or doctors. The evidence presented to the district court did not support that Medtronic conditions the use of or receipt of a benefit from their system on the performance of Medgraph’s method steps. For one, a patient’s use is not so constrained because patients can use Medtronic’s system without performing all of Medgraph’s method steps. In fact, Medtronic benefited from patients not being constrained to certain steps. Because the evidence did not indicate a reason for remand, the Court affirmed the district court’s grant of summary judgment of non-infringement of the ’124 method claims. 

On the issue of non-infringement of the system claim, Medgraph challenged the district court’s claim construction of the term “and,” as used in the claim element “whereby raw data can be communicated from a remote computer . . . comprising an ordinary general purpose personal computer and from an ordinary telephone.” The district court construed “and” based on its plain and ordinary meaning, i.e., as conjunctive (including both). Medgraph argued that instead the written description favored the disjunctive meaning, i.e., “and” means “or.” The court rejected Medgraph’s construction, finding that neither the written description nor the claim language favored the disjunctive meaning. The Court distinguished situations where “and” conjoins mutually exclusive possibilities because telephone and computer capabilities are not mutually exclusive. The Court added that the written description could include both interpretations, indicating that the written description does not compel anything but the plain and ordinary meaning.

Remand is not automatic when legal standards change during ongoing litigation. Party seeking remand must show that the change in law could affect the outcome. … In claim construction, “and” will usually be conjunctive (inclusive) and not disjunctive (and/or), as in “capable of,” unless the intrinsic evidence shows the broader meaning.

[Troutman-Ad]

[Troutman-About]

Share

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

No comments yet.