Medgraph, Inc. v. Medtronic, Inc.
-CLERK TO FOLLOW UP-ORDER granting defendant's 135 Motion for Summary Judgment and dismissing the complaint. Signed by Hon. David G. Larimer on 6/29/15. (EMA)
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
DECISION AND ORDER
Patent litigation often involves complex, abstruse matters, since the patents at issue often
relate to cutting-edge technology. The case law governing such litigation can be similarly
complex. This case is one example.
This case involves two patents concerning technology relating to health care. Many of
the legal issues involved center on a particular case that has worked its way to the Federal Circuit
and the Supreme Court, and back again to the Federal Circuit: Akamai Technologies, Inc v.
Limelight Networks, Inc. (“Akamai”). The lengthy history of this litigation is set forth in detail
below, and involves appeals, remands, one en banc decision, and more than one split decision
among the deciding judges.
Despite that extensive history, the relevant, controlling law on the issues presented in the
instant case is clear. Based on that authority, and the facts of this case, defendant’s motion for
summary judgment must be granted. The complaint is therefore dismissed.
Medgraph is a New York corporation, which, according to the complaint, is “in the
business of commercializing its patented inventions by offering for sale and licensing to third
parties the methods and systems claimed in its patents ... .” Dkt. #26 ¶ 2. Defendant Medtronic
states that it “develops, manufactures, and markets a variety of medical devices and systems
including therapies and solutions for ... diabetes ... .” Defendant’s Statement of Undisputed
Material Facts (Dkt. #135-1) ¶ 15.
The two patents in suit, which are owned by plaintiff, are U.S. Patents No. 5,974,124
(“'124 Patent”) and No. 6,122,351 (“'351 Patent”). Both patents are entitled “Method and system
aiding medical diagnosis and treatment.” The '351 Patent is a continuation in part of the '124
Patent. Both patents relate to the electronic collection and storage of patient data, and the
transmission of such data to physicians and other health care professionals. Id.
The ’124 and ’351 patents both claim a “method for improving and facilitating diagnosis
and treatment of patients having medical conditions requiring long-term profiles of specific
variables ... .” The ’124 Patent sets forth fifteen method claims, numbered 1 - 15, as well as a
system claim, numbered claim 16. The '351 Patent contains a single method claim.1 In many
respects, the two patents share nearly identical language, and the ’351 method claim mostly
tracks the language of Claim 1 of the ’124 patent; to the extent that they differ, those differences
are not materially significant for purposes of this Decision and Order.
In layman’s terms, both patents relate to a method whereby medical practitioners or
patients take readings of certain variable data (such as diabetes patients’ blood sugar levels),
input the data into a computer, and transmit the data to a central storage device, from which the
data can be accessed by medical professionals who have been treating the patient. The ’124
patent also claims a system that allows that method to be performed.
In other words, the method and system claimed by the patents enable patients and their
physicians to store patients’ medical data in a way that allows them, as well as other physicians
and medical personnel, to access that data from a remote location, using a computer.
More specifically, Claim 1 of the '124 Patent claims:
A method for improving and facilitating diagnosis and treatment of patients having
medical conditions requiring long-term profiles of specific variables, said method
including the steps of
using at least one measuring device, periodically taking a measurement of at least one
medically important variable that has been identified for a patient from a body of
The differences between method and system claims are addressed, as relevant to the facts
of this case, below. In general, however, a “method claim is directed to specific steps being
performed. In other words, a method claim recites what is being performed. A system claim, on
the other hand, is directed to what is doing the performing or the components that are performing
the steps of a method.” “Cloud Computing and the Doctrine of Joint Infringement: ‘Current
Impact’ and Future Possibilities,” 11 John Marshall Rev. Intell. Prop. 673, 679-80 (Spring
ensuring said patient is separated from said at least one measuring device after taking
each said measurement;
inputting said at least one medically important variable as raw data into a primary
computer system after said step of ensuring said patient is separated and recording
said raw data in a mass storage device integrated with said primary computer
compiling said raw data as data for said patient using the primary computer system, said
data representing a history of values for said at least one medically important
variable for said patient;
receiving a request for data of one of said patients from by a medical practitioner that is
treating said one of said patients; and
outputting requested data for said one of said patients in the form of at least one of a chart
and a graph to said medical practitioner;
said step of inputting comprising one of
transferring said raw data to a remote computer comprising an ordinary general purpose
personal computer, then transferring said raw data to said primary computer;
telephoning an automatic telephone interface and employing one of speech recognition
and touch-tone recognition software to input said raw data into said primary
telephoning a live receptionist, speaking the raw data to said live receptionist for entry
into said primary computer.
Dkt. #26-1 at 8. The ’351 Patent sets forth a similar claim, with some differences that need not
be elaborated upon here. See Dkt. #26-2 at 9.
Claim 16 of the ’124 Patent claims a “system for improving and facilitating diagnosis
and treatment of patients having medical conditions requiring long-term profiles of at least one
predetermined medically important variable ... .” Dkt. #26-1 at 9, col. 10, lines 24-27. That
claimed system allows the method claimed in Claims 1-15 to be performed.
What is alleged to infringe here is Medtronic’s “CareLink System,” a software- and
internet-based system in which diabetes patients can upload blood glucose readings to
Medtronic’s central computer, which is located in Minnesota. Those readings can then be
converted into graphs and charts that are accessible by both the patient (as part of Medtronic’s
“Carelink Personal” system) and the patient’s physician (as part of the “Carelink Pro” system).
The amended complaint (Dkt. #26) sets forth six counts: (1) direct infringement of
Claims 1, 2, 3, 5, 11 and 16 of the ’124 Patent; (2) induced infringement of those claims in the
’124 Patent; (3) contributory infringement of those claims in the ’124 Patent; (4) direct
infringement of the ’351 Patent; (5) induced infringement of the ’351 Patent; and (6) contributory
infringement of the ’351 Patent.
I. General Principles
A. Direct Infringement
Section 271(a) of the Patent Act, 35 U.S.C. § 271(a), provides that “whoever without
authority makes, uses, offers to sell, or sells any patented invention, within the United States or
imports into the United States any patented invention during the term of the patent therefor,
infringes the patent.” Such infringement is commonly referred to as “direct” infringement.
All but one of the claims at issue in this case are “method” claims. “A ‘method’ in a
claim, one of the most common and basic terms of patent drafting, is a ‘process,’ and ‘method’
and ‘process’ have a clear, settled meaning: a set of actions, necessarily taken over time.”
Nassau Precision Casting Co., Inc. v. Acushnet Co., Inc., 566 Fed.Appx. 933, 939 (Fed. Cir.
2014) (citations omitted).
“To [directly] infringe a method claim, a person must have practiced all steps of the
claimed method.” Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir.
2009), cert. denied, 560 U.S. 935 (2010). A single actor–either the defendant or someone acting
under the defendant’s direction or control–must perform each step of the claimed method. See
Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 709 F.3d 1348,
1353 (Fed. Cir. 2013) (“direct infringement requires a single party to perform every step of a
claimed method”); Medisim Ltd. v. BestMed LLC, ___ F.Supp.2d ___, 2012 WL 5954757, at *18
(S.D.N.Y. Nov. 28, 2012) (“In order to directly infringe a method claim, a party must perform
every claimed step”) (citing Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir. 1993)).
With respect to system claims, a party may be held liable for direct infringement only if
the party makes or sells the “complete invention.” Rotec Indus., Inc. v. Mitsubishi Corp., 215
F.3d 1246, 1252 n. 2 (Fed. Cir. 2000). In addition, “[t]o prove literal infringement, the patentee
must show that the accused device contains each and every limitation of the asserted claims.”
Ericsson, Inc. v. D-Link Systems, Inc., 773 F.3d 1201, 1215 (Fed. Cir. 2014) (quoting Presidio
Components, Inc. v. Am. Tech. Ceramics, Corp., 702 F.3d 1351, 1358 (Fed. Cir. 2012)). See also
Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., __ F.Supp.3d __, 2015 WL 1476399,
at *16 (N.D.Cal. Mar. 31, 2015) (“To establish literal infringement, all of the elements of the
claim, as correctly construed, must be present in the accused system”) (quoting NetWord, LLC v.
Centraal Corp., 242 F.3d 1347, 1353 (Fed. Cir. 2001)).
B. Indirect Infringement
In addition to direct infringement, the patent statutes also create liability for so-called
indirect infringement, which generally falls into two categories: induced and contributory
Both types are alleged here, both as to the method claims and the one system
Subsection (b) of 35 U.S.C. § 271 provides that “[w]hoever actively induces infringement
of a patent shall be liable as an infringer.” “In contrast to direct infringement, liability for
inducing infringement attaches only if the defendant knew of the patent and that ‘the induced acts
constitute patent infringement.’” Commil USA, LLC v. Cisco Systems, Inc., __ S.Ct. __, 2015
WL 2456617, at *5 (2015) (quoting Global-Tech Appliances, Inc. v. SEB S.A., __ U.S. __, 131
S.Ct. 2060, 2068 (2011)). See also Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 904 (Fed.
Cir. 2014) (To prove inducement of infringement, the patentee must “show that the accused
inducer took an affirmative act to encourage infringement with the knowledge that the induced
acts constitute patent infringement”) (citing Global-Tech Appliances, Inc. v. SEB S.A., __ U.S.
__, 131 S.Ct. 2060, 2068 (2011)); Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1363 (Fed.
Cir. 2012) (“To prove induced infringement, the patentee ‘must show direct infringement, and
that the alleged infringer knowingly induced infringement and possessed specific intent to
encourage another's infringement’”) (quoting i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d
831, 851 (Fed. Cir. 2010), aff’d, __ U.S. __, 131 S.Ct. 2238 (2011)).
Subsection (c) of § 271 deals with contributory infringement:
Whoever offers to sell or sells within the United States or imports into the United States a
component of a patented machine, manufacture, combination or composition, or a
material or apparatus for use in practicing a patented process, constituting a material part
of the invention, knowing the same to be especially made or especially adapted for use in
an infringement of such patent, and not a staple article or commodity of commerce
suitable for substantial noninfringing use, shall be liable as a contributory infringer.
To establish contributory infringement, the patent owner must show “1) that there is direct
infringement, 2) that the accused infringer had knowledge of the patent, 3) that the component
has no substantial noninfringing uses, and 4) that the component is a material part of the
invention.” Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010) (citing 35 U.S.C.
To establish contributory infringement liability, the patent owner must also “show, among
other things, that there are no substantial non-infringing uses.” Toshiba, 681 F.3d at 1362 (citing
35 U.S.C. § 271(c)). “[N]on-infringing uses are substantial when they are not unusual,
far-fetched, illusory, impractical, occasional, aberrant, or experimental.” Vita-Mix Corp. v. Basic
Holding, Inc., 581 F.3d 1317, 1327 (Fed. Cir. 2009). “Like induced infringement, contributory
infringement requires knowledge of the patent in suit and knowledge of patent infringement.”
Commil USA, 2015 WL 2456617, at *6 (quoting Aro Mfg. Co. v. Convertible Top Replacement
Co., 377 U.S. 476, 488 (1964)).
C. Akamai Technologies
A full understanding of the procedural posture of this case and the relevant legal issues
requires some familiarity with the decisions of the United States Supreme Court and the Court of
Appeals for the Federal Circuit in the Akamai Technologies litigation. In 2010, the Federal
Circuit issued a decision holding in part that “direct infringement [of a method claim] requires a
single party to perform every step of a claimed method.” Akamai Technologies, Inc. v. Limelight
Networks, Inc. (“Akamai I”), 629 F.3d 1311, 1318 (Fed. Cir. 2010). The court in that case
affirmed the district court’s entry of judgment for the defendant Limelight notwithstanding a jury
verdict for the plaintiff patent holder, on the ground that the defendant “did not perform all of the
steps of the asserted method claims, and [because] the record contain[ed] no basis on which to
attribute to Limelight the actions of its customers who carried out the other steps ... .” Id. at
At the time that Medtronic first filed its motion for summary judgment in this action,
Akamai I was good law. In that motion, Medtronic relied in part on the “single actor rule,” i.e.,
the principle that a party cannot be held liable for indirect infringement unless some other, single
actor has committed the entire act of direct infringement. See Dkt. #132-9 at 10.
Afterwards, though, the Federal Circuit, sitting en banc, issued a second decision,
overruling the panel decision in Akamai I. Akamai Technologies, Inc. v. Limelight Networks, Inc.
(“Akamai II”), 692 F.3d 1301 (Fed. Cir. 2012). In a 6-5 ruling, the majority in Akamai II held
that “all the steps of a claimed method must be performed in order to find induced infringement,
but that it is not necessary to prove that all the steps were committed by a single entity.” Id. at
1306. In other words, the court held, to establish a claim for induced infringement, it is not
necessary to prove that any particular entity could be held liable for direct infringement. See
Move, Inc. v. Real Estate Alliance Ltd., 709 F.3d 1117, 1123 (Fed. Cir. 2013) (“all the steps of a
claimed method must be performed in order to find induced infringement, but ... it is not
necessary to prove that all the steps were committed by a single entity”) (citing Akamai II, 692
F.3d at 1307). Such infringement, by more than one party, is sometimes referred to as “divided
In the wake of Akamai II, Medtronic requested, and was granted, leave to file an amended
motion for summary judgment (Dkt. #135). Medtronic’s amended motion papers addressed
Akamai II, although Medtronic took the position that even under Akamai II, Medgraph had failed
to show indirect infringement, because Medgraph had not demonstrated that any entity or
entities, either singly or in combination with each other, had performed all of the steps of the
claimed invention. See Dkt. #135-11 at 7 (noting that under Akamai II, “indirect infringement is
necessarily predicated on actual performance of each and every step of the asserted method by
one or more entities ...”).
Following Akamai II, however, the Supreme Court granted certiorari, and reversed the
Federal Circuit’s en banc decision. The Supreme Court held that a defendant may not be held
liable for inducing infringement of a patent under 35 U.S.C. § 271(b) when no single actor has
directly infringed the patent under § 271(a). Limelight Networks, Inc. v. Akamai Technologies,
Inc. (“Akamai III”), __ U.S. __, 134 S.Ct. 2111, 2115 (2014).
In reaching that conclusion, the Court assumed, without deciding, that the Federal
Circuit’s earlier decision in Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008),
was correct. In Muniauction, the court held that “direct infringement requires a single party to
perform every step of a claimed method, ” id. at 1329, and that this requirement is satisfied even
though the steps are actually undertaken by multiple parties, if a single defendant “exercises
‘control or direction’ over the entire process such that every step is attributable to the controlling
In its decision, the Supreme Court stated that
the reason [defendant] Limelight could not have induced infringement under § 271(b) is
not that no third party is liable for direct infringement; the problem, instead, is that no
direct infringement was committed. Muniauction (which, again, we assume to be correct)
instructs that a method patent is not directly infringed–and the patentee’s interest is thus
not violated–unless a single actor can be held responsible for the performance of all steps
of the patent. Because Limelight did not undertake all steps of the ’703 patent and cannot
otherwise be held responsible for all those steps, respondents’ rights have not been
Id. at 2118-19. The Court added that (1) there is no direct infringement of a method patent where
the performance of all the steps of the claimed method is not attributable to any one person or
entity, and (2) since in that circumstance there is no direct infringement, there can be no
inducement of infringement. Id. at 2117.
The Supreme Court expressly declined to review the merits of the Federal Circuit’s
Muniauction rule for direct infringement under § 271(a). The Court stated that the appeal before
it was “clearly focused on § 271(b), not § 271(a),” and that the issue presented–whether “a
defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even
though no one has committed direct infringement under § 271(a)”–presupposed that the
defendant had not committed direct infringement under § 271(a). Because its decision on the
§ 271(b) question necessitated a remand to the Federal Circuit, the Court added that “on remand,
the Federal Circuit will have the opportunity to revisit the § 271(a) question if it so chooses.” Id.
Following Akamai III, with leave of court, Medtronic submitted a supplemental brief in
this case, asserting that the Supreme Court’s decision in Akamai III “restores Medtronic’s
original (previously withdrawn) argument that it is not liable for inducing infringement of the
method claims of the ’124 and ’351 patents because no single actor, or group of actors under a
single actor’s direction or control, performs each and every step of the asserted methods.” Dkt.
#154 at 1.
Medgraph’s arguments have also changed in response to the various Akamai decisions.
Medgraph’s initial papers in opposition to Medtronic’s motion (which were filed when Akamai
II was controlling) focused almost exclusively on its claims of indirect infringement. At oral
argument, which took place before the Supreme Court handed down the Akamai III decision,
counsel for Medgraph confirmed that Medgraph was withdrawing its claims of direct
infringement, as to the method claims. See Transcript (Dkt. #151) at 3. Medgraph has stated that
“after Akamai II Medgraph could no longer assert direct infringement under §271(a).”
Medgraph’s Supp. Brief (Dkt. #155) at 9.
After the Supreme Court’s reversal of Akamai II, however, Medgraph changed its
position concerning direct infringement. Medgraph concedes that the Supreme Court’s decision
in Akamai III has “undercut” its position as to induced infringement, Dkt. #155 at 5, but
Medgraph now asserts direct infringement by Medtronic of the method claims, under 35 U.S.C.
§ 271(a). Medgraph states that it “has now changed its position and asserts direct infringement
by Medtronic of the method claims,” under § 271(a). Id. at 6.
Medgraph did so based on what it saw as the Supreme Court’s invitation in Akamai III to
the Federal Circuit to revisit the Muniauction holding. Specifically, Medgraph argued that the
Federal Circuit on remand would likely adopt the position taken by Circuit Judge Pauline
Newman in her dissent in Akamai II, in which she argued that “[t]he court should acknowledge
that an all-purpose single-entity requirement is flawed, and restore direct infringement to its
status as occurring when all of the claimed steps are conducted, whether by a single entity or in
interaction or collaboration.” 692 F.3d at 1336.
At the outset, it is worth pointing out that contrary to Medgraph’s assertions, Akamai III
did not effect a change in the law with respect to direct infringement. Where the Supreme Court
and the majority in Akamai II parted ways was over the issue of indirect infringement.
Despite Medgraph’s between-the-lines reading of Akamai III as hinting that the Federal Circuit
should rethink its holding in Muniauction, and despite Medgraph’s speculative assertion that the
Court of Appeals would likely do so, the fact is that the Supreme Court in Akamai III assumed
that Muniauction remained good law, and proceeded to decide the case before it on that basis.
See 134 S.Ct. at 2117.
At any rate, it is unnecessary to guess what the Federal Circuit might do on remand,
because the Federal Circuit has now spoken. On May 13, 2015, a panel of that court issued yet
another decision in Akamai, adhering to the single-actor rule enunciated in Muniauction, and
“again conclud[ing] that because [defendant Limelight] did not perform all of the steps of the
asserted method claims of [the patent-in-suit] and because the record contains no basis on which
to impose liability on Limelight for the actions of its customers who carried out the other steps,
Limelight has not directly infringed the ’703 patent under § 271(a).” Akamai Technologies, Inc.
v. Limelight Networks, Inc. (“Akamai IV”), __ F.3d __, 2015 WL 2216261, at *1 (Fed. Cir. May
The court set forth an extensive review of the legal principles concerning “divided
infringement.” First, the court reiterated that “direct infringement liability of a method claim
under 35 U.S.C. § 271(a) exists when all of the steps of the claim are performed by or attributed
to a single entity ... .” 2015 WL 2216261, at *1. For method patent claims, the court stated,
“direct infringement only occurs when a single party or a joint enterprise performs all of the steps
of the process.” Id.
The court then went on to address indirect infringement:
When a party participates in or encourages infringement but does not directly infringe a
patent, the normal recourse under the law is for the court to apply the standards for
liability under indirect infringement. However, indirect infringement requires, as a
predicate, a finding that some party is directly liable for the entire act of direct
infringement. In circumstances in which one party, acting as “mastermind” exercises
sufficient “direction or control” over the actions of another, such that those actions may
be attributed to the mastermind, the combined performance of the steps of a method claim
will directly infringe under § 271(a).
Id. (citations omitted).
The court in Akamai IV further stated that it remained bound by its prior holdings in
Muniauction, and BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007), in
which the court held that “inducement of infringement requires a predicate finding of direct
infringement.” 498 F.3d at 1380. The court in BMC held that liability for “divided”
infringement requires proof that one party acted as the “mastermind” and controlled or directed
the other party’s acts. Id. at 1381.
In Akamai IV, the court held that “[b]ecause this case involves neither agency nor contract
nor joint enterprise, we find that Limelight is not liable for direct infringement.” 2015 WL
2216261, at *1. The court expressly adhered to the “mastermind” concept embodied in BMC.
Id. Stating that “[t]here is no mutual agency or cooperation when parties act independently for
their own benefit, such as in arms-length seller-customer relationships,” the court said that there
was no evidence before it of any “concert of action” between the defendant Limelight and its
customers. Id. at *8. Absent such evidence, the defendant could not be held liable. Id.
II. Method Claims in this Case
A. Direct Infringement
Medtronic contends that it is undisputed that Medtronic does not, and cannot, directly
infringe the method claims at issue, i.e., claims 1, 2, 3, 5 and 11 of the ’124 patent, because
Medtronic does not, itself, perform the steps of the method claims. As stated, those claims
generally involve taking measurements of patients’ data with a device, and inputting those
readings into a computer. Medtronic states that it does not provide, and has never provided, any
direct patient care; it simply manufactures and sells devices and systems. It provides its
customers with instructions on how to use its systems, but it does not obligate anyone to do so.
As explained above, at one point in this litigation, Medgraph expressly stated that it was
not alleging direct infringement, and that it was withdrawing its claims of direct infringement as
to the method claims. See Transcript (Dkt. #151) at 3. Medgraph’s more recent attempt to
backtrack from that position was based on its prediction that the Federal Circuit would overturn,
or at least modify, its prior holding in Muniauction concerning direct infringement of method
claims, and adopt a rule recognizing some sort of “collaborative” infringement.
That prognostication turned out to be erroneous. The Federal Circuit has adhered to its
prior holdings in Muniauction and BMC. The Federal Circuit’s website also shows that the time
to file a petition for rehearing en banc has passed, with no petition filed. See Fed. R. App. P.
35(c), 40(a)(1) (petition for en banc rehearing must be filed within 14 days after entry of
Thus, with respect to the law governing direct infringement, the legal landscape today is
effectively the same as it was when Medgraph withdrew its direct-infringement claims as to the
method claims. It apparently did so in recognition of the lack of evidence of direct infringement.
See Medgraph’s Supp. Brief (Dkt. #155) at 9 (stating that Medgraph previously withdrew its
direct-infringement claims because “[i]n the present case, more than one person, i.e., the patient
or doctor, neither of whom is an agent of or under contractual obligation to Medtronic, is
required to perform all of the steps of the method claims of the Patents-in-Suit”).
There is no more evidence of direct infringement now than there was then. There has
been no showing that Medtronic itself directly infringed the method claims, or that it acted as a
“mastermind” by controlling or directing anyone else’s direct infringement of Medtronic’s
Just as the panel in Akamai IV was bound by Muniauction and BMC, a fortiori this Court
is as well. Medgraph’s claims of direct infringement of the method claims are therefore
B. Indirect Infringement
The parties have over the course of this litigation expended a great deal of time and effort
addressing the issue of indirect or induced infringement. Much of the reason for that effort is
attributable to the various decisions handed down in the Akamai case, as explained above.
Whatever the vagaries of that litigation may have been, the law in this area, for now at
least, is clear. The Federal Circuit’s decision in Akamai IV lays out the governing principles
First, “[e]ncouraging or instructing others to perform an act is not the same as performing
the act oneself and does not result in direct infringement.” 2015 WL 2216261, at *1. That
matters here because “indirect infringement requires, as a predicate, a finding that some party is
directly liable for the entire act of direct infringement.” Id. Absent “a principal-agent
relationship, a contractual relationship or ... circumstances in which parties work together in a
joint enterprise functioning as a form of mutual agency,” there is no predicate direct
infringement, and hence no indirect infringement either. Id.
In support of its claims, Medgraph has submitted evidence, through its expert, that a user
of Medtronic’s Carelink system could perform each of the steps contained in the method claims
of the patents in suit. See Declaration of Bryan P. Bergeron (Dkt. #141-29). What is glaringly
absent, though, is proof that any direct infringement has occurred, under the standards set forth in
Akamai III and IV and the other controlling case law cited above.
Medgraph has also asserted (again, prior to Akamai IV) that evidence of “syncs,” i.e.,
instances of synchronization between a patient’s doctor and CareLink’s central computer,
confirm the predicate direct infringement needed to sustain a claim of direct infringement under
§ 271(b). Dkt. #141 at 12-13. A sync occurs when a patient uploads data to the system and the
patient’s doctor downloads the data. According to Medgraph, a sync “is the complete
embodiment of the methods and system claimed in the Patents-in-Suit.” Medgraph’s Brief (Dkt.
#141) at 8.
As Medtronic has pointed out, however, the “sync” data do not show any particular
instances of actual infringement. The raw data could include instances in which a patient entered
information (such as diet-related or other “lifestyle” information) that was indisputably outside
the scope of the claimed invention.
In any event, this evidence relates to the concept of so-called divided infringement. As
explained above, under the governing case law, proof of divided infringement cannot give rise to
a claim, absent some basis for vicarious liability, which is lacking here. Akamai IV, __ F.3d at
__, 2015 WL 2216261, at *6 (“the vicarious liability test includes, for example, principal-agent
relationships, contractual arrangements, and joint enterprises”); see also Mankes v. Vivid Seats
Ltd., __ F.Supp.3d __, 2015 WL 847404, at *3-*4 (E.D.N.C. 2015) (stating that “[t]he
controlling rule, consistently applied by the Federal Circuit, is where multiple parties perform all
the steps of a claimed method, there is no direct infringement unless one party exercises control,”
and therefore dismissing plaintiff’s claim of induced infringement as well), petition for cert.
docketed, No. 15-1500 (Fed. Cir. Mar. 27, 2015).
In short, without some act of direct infringement, there simply cannot be any induced
infringement.2 For the reasons stated above, there has been no showing of direct infringement
While Akamai II is no longer good law, it is worth noting that even the Akamai
II majority described the “principle that there can be no indirect infringement without direct
infringement” as “well settled” and “uncontroversial.” 692 F.3d at 1308. It was over the
application of that principle, rather than the principle itself, that the Supreme Court parted ways
with the Akamai II majority.
here. Medtronic is therefore entitled to summary judgment dismissing Medtronic’s claims of
III. System Claim in this Case
Claim 16 of the ’124 Patent claims a “system for improving and facilitating diagnosis and
treatment of patients having medical conditions requiring long-term profiles of at least one
predetermined medically important variable ... .” Dkt. #26-1 at 9. The claimed system
comprises: (1) a “means for measure [sic] said at least one predetermined medically important
variable”; (2) a “means for inputting” that variable in the form of raw data into a computer; (3)
“software for coming said raw data as data for each patient” [sic]; (4) a “means for receiving a
request for data” from a medical practitioner; and (5) a “means for automatically outputting
requested data in response to receiving said request,” in which “said means for measuring and
said means for inputting are operable independently from each other, such that, after obtaining a
measurement, a patient may be separated from said means for measuring during an inputting
operation by said means for inputting.” Id.
In support of its motion for summary judgment, Medtronic focuses on the language
regarding a “means for inputting” data. The patent states that this element
compris[es] software and hardware enabling said primary computer system to operate as
at least one of a web server, a dial-up host, a network server, and a telephone answering
and data collection device whereby raw data can be communicated from a remote
My ruling renders it unnecessary for the Court to address the issue of whether Medgraph
has shown the requisite intent on Medtronic’s part to support a claim of induced infringement.
See Akamai III, 134 S.Ct. at 1308 (to be liable for induced infringement, alleged infringer must
have knowingly “caused, urged, encouraged, or aided” another party to directly infringe, with
“specific intent to encourage” that infringement).
computer proximate a patient comprising an ordinary general purpose personal computer
and from an ordinary telephone wherein data is transmitted as one of spoken data and
touch-tone data ... .
Id., col. 10 lines 32-39.
Regarding the language, “from a remote computer ... and from an ordinary telephone,”
Medtronic takes the position that while the primary computer must be able to operate in at least
one of the four specified modes (i.e., a web server, a dial-up host, a network server, or a
telephone answering and data collection device), the computer must be capable of receiving raw
data from both a general purpose personal computer and an ordinary telephone, in all four
modes. Medtronic argues that its CareLink system does not infringe this claim, because it is not
capable of receiving patient data from an ordinary telephone.
Medtronic also notes that according to the patent, the “means for automatically outputting
requested data in response to receiving said request for data” comprises
means to transmit said requested data in the form of at least one of a chart and graph
generated from said data from said primary computer to a remote computer proximate
said practitioner whereby said primary computer is one of a web server, a dial-up host,
and a network server and means to transmit said requested data by facsimile through a
fax-modem integrated with said primary computer ... .
Id., col. 10 lines 53-60.
Medtronic interprets this language to mean that the system must include two distinct
means of transmitting data. The first of these requires either an internet connection (“web
server”), a modem-to-modem connection (“dial-up host”), or a network connection (“network
server”). The second means to transmit requires a fax machine. In other words, according to
Medtronic, Claim 16 requires the invention to be capable of transmitting data by means of a
computer and by fax. Medtronic contends that the CareLink system cannot infringe the patent
because it lacks a means of transmitting data by fax.
In response, Medgraph contends that the word “and” has in some cases been construed to
mean “or.” Medgraph asserts that the ’124 patent references both a “High Tech” (web-based
computer system) and a “Low Tech” (telephone-based system) version of the claimed system.
According to Medgraph, a system that includes either of those is covered by the patent.
Medgraph is correct that courts have sometimes read “and” to mean “or.” In OrthoMcNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358 (Fed. Cir. 2008) (“Ortho”), the court
held that a patent that used the conjunction “and” in describing certain chemical compounds did
not require the simultaneous existence of both sets of compounds. Id. at 1361.
What Ortho principally teaches, however, is that the construction of conjunctions like
“and” and “or” must be based on the context in which those words are used. In holding that “in
the circumstances of this case, claim 1's use of the term and means or,” the court analyzed the
relevant claim language and stated that “as used in this claim, and conjoins mutually exclusive
possibilities.” Id. at 1361, 1362. The court further examined the “larger context that clarifies
[the term and’s] meaning,” specifically, the use of “and” in conjunction with certain other
modifiers, and the patent’s specification. Id. at 1362.
Such indications are absent here. Far from setting forth mutually exclusive means of
inputting and outputting data, the patent emphasizes the versatility of the claimed invention; see,
e.g., ’124 Patent (Dkt. #26-1) at col. 1, line 65 (stating that the patent provides “simple and
versatile input and output” of information from a centralized database). The patent envisions
users using only one method at any given time, for obvious reasons; a user would have no need
to use more than one means, on any given occasion. But the claimed invention, by its terms, is
capable of receiving and sending data by all the means listed, not just one of them, and those
means are in no way mutually exclusive. See id. at col. 5, lines 26-28 (“All five avenues of data
input can operate concurrently in a single system which is designed to fill every customer’s need,
including both patients and medical practitioners”).
Medgraph contends that the patent claims a “high tech” system, operable through the
internet by means of a web and internet server, and a “low tech” system, operable by means of a
telephone and fax system. The ’124 Patent does mention both versions, using that terminology,
in describing the preferred embodiment. Id. at col. 6, lines 32-34, and Fig. 1.
Reading that description in context, however, it is clear that the claimed invention utilizes
both systems. As stated, the patent repeatedly emphasizes its versatility. Not every reference in
that regard relates to this particular issue, but the point is that the patent stresses throughout that
the claimed invention is capable of being utilized in a variety of ways, using a variety of means.
In addition to the cites quoted above, see, e.g., id. at col. 5, lines 32-33 (“the primary computer
may have any number of ports for accepting data”); lines 38-40 (“system 1 can thus
accommodate a large population of patients under a variety of circumstances having a variety of
needs and capabilities”) (emphasis added).4
In general, when construing claim terms, courts should give those terms their ordinary,
commonly accepted meaning. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.
Cir.2005) (en banc) (“Claim terms are generally given their ordinary and customary meaning as
The patent refers to “system 1,” but there does not appear to be any “system 2.” The
patent states that “[t]he computer system 1 includes of [sic] data input means, data process and
storage means, and data output means.” Dkt. #26-1 at 6, col. 3, lines 47-48.
understood by a person of ordinary skill in the art at the time of the invention”); Chef America,
Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373 (Fed. Cir. 2004) (finding that the patent used
“ordinary, simple English words whose meaning is clear and unquestionable,’ and that there was
“no indication that their use in this particular conjunction changes their meaning. They mean
exactly what they say”).
The court may depart from the plain meaning of a term “1) when a patentee sets out a
definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of
the claim term either in the specification or during prosecution.” Info-Hold, Inc. v. Applied
Media Technologies Corp., 783 F.3d 1262, 1266 (Fed. Cir. 2015) (citing Thorner v. Sony
Computer Entertainment America LLC, 669 F.3d 1362, 1365 (Fed. Cir.2012)).
Neither circumstance exists here. Read in both its immediate context and against the
backdrop of the patent as a whole, the term “and” in Claim 16 means, quite simply, “and,” not
“or.” Claim 16 requires that the means for inputting be capable of receiving input from both a
computer and a telephone, and that the system have two means of outputting data: via the
internet, and by fax, over a telephone line.
“Patent infringement requires that every element and limitation in a correctly construed
claim is embodied in the accused system ... .” Hutchins v. Zoll Med. Corp., 492 F.3d 1377, 1380
(Fed. Cir. 2007). In the case at bar, it is undisputed that Medtronic’s CareLink system lacks a
means to transmit patient data by telephone (such as by fax). Plaintiff’s own expert, Bryan P.
Bergeron, has acknowledged that fact. See Bergeron Depo. Tr. (Dkt. #135-2, Ex. 14 at 235, line
14 (stating, “That’s my understanding” that the CareLink system does not support the capability
of inputting raw data by telephone); id. at 236, lines 9-10 (“no phones are involved in the
Medtronic system”); see also Defendant’s Statement of Undisputed Material Facts (Dkt. #135-1)
¶¶ 26, 27 (stating that it is undisputed that the Carelink system lacks the means to receive or
transmit data by telephone or fax); Medgraph Counterstatement of Material Facts (Dkt. #141-1)
¶¶ 26, 27 (admitting the truth of those assertions). I find as a matter of law, therefore, that
defendant’s CareLink system does not infringe Claim 16 of the ’124 Patent.
Defendant’s motion for summary judgment (Dkt. #135) is granted, and the complaint is
IT IS SO ORDERED.
DAVID G. LARIMER
United States District Judge
Dated: Rochester, New York
June 29, 2015.
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?