Shuji Yoshizaki | April 20, 2011
この問題を解決するためには、単一の者の行為によってクレーム方法が完結するように各ステップを記述すべきであろう。後にリストしている本件訴訟のクレーム１において、最初の“initiating a communication”ステップを削除し、代わりに、2つ目のステップを“enabling communication by transporting a communication initiated by one of the plurality of users to the provider for information, wherein the provider has established a preexisting medical record for each user…” のように記載していれば、そのようなクレーム方法は単一の者によって完結するため、権利行使上の問題を防ぐことができるであろう。
To prove direct infringement of a method claim, the patentee must show that a single party performs every step, or controls or directs the performance of every step, of the claimed method. In other words, where more than one party performs the claimed steps, a single party must control the performance of every step, i.e., the other parties must be the agent of the single party or obligated by contract to follow the commands of the single party.
Without direct infringement, there is no indirect infringement.
To avoid this problem, method claims should be written so that a single party completes every step of the method. In the claimed method described below, the first “initiating a communication” step should be deleted and the second step rewritten to recite “enabling communication by transporting a communication initiated by one of the plurality of users to the provider for information, wherein the provider has established a preexisting medical record for each user…” The claimed method could then be performed by a single party, i.e., the health-care provider.
McKesson owns the ’898 patent directed to an electronic method of communication between healthcare providers (i.e., doctors) and patients involving personalized web pages.
Epic is a software development company that licenses software to healthcare providers.
One such product is the accused MyChart software. MyChart has patient’s personalized web pages, allowing the patients to communicate with their healthcare provider online, and to access to their own medical records, treatment information, scheduling information, and other material.
Epic itself does not use the MyChart software, but the doctors do.
These licensed healthcare providers choose whether to offer MyChart for their patients’ use and none of these healthcare providers requires their patients to actually use the MyChart software.
If a patient chooses to utilize the MyChart software, that patient “initiates a communication” to log in the MyChart web page. Once authenticated, the patient can access to a personalized web page.
A method of automatically and electronically communicating between at least one health-care provider and a plurality of users serviced by the health-care provider, said method comprising the steps of:
- initiating a communication by one of the plu-rality of users to the provider for information, wherein the provider has established a preexisting medical record for each user;
- enabling communication by transporting the communication . . . ;
- electronically comparing content of the com-munication . . . ;
- returning the response to the communication automatically . . .
- said provider/patient interface providing a fully automated mechanism for generating a per-sonalized page or area within the provider’s Web site for each user serviced by the provider; and]
- said patient-provider interface service center for dynamically assembling and delivering cus-tomer content to said user.
District Court Proceedings
Epic moved for summary judgment, arguing that its customers neither directly perform the “initiating a communication” step, nor exercise control or direction over another who performs this step, McKesson failed to demonstrate that a single party directly infringes the ’898 patent and, accordingly, could not have succeeded on its claim of indirect infringement.
District Court granted summary judgment in favor of Epic.
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 control-ling party.” Muniauction, 532 F.3d at 1329
There can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps.” Akamai Technoligies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010)
To establish induced infringement, there must be a direct infringer.
Epic itself does not use the MyChart software, but the doctors did. Thus, Epic was only at a risk of being found an indirect infringer. McKesson alleged induced infringement.
Here, nothing indicates that MyChart users are performing any of the claimed method steps as agents for the MyChart providers.
Nor is there anything indicating that MyChart users were contractually obligated to perform any of the claimed method steps on behalf of the MyChart providers. These facts are undisputed.
Special nature of the doctor-patient relationship (e.g., doctor-patient privilege) does not give rise to an agency relationship or contractual obligation.
MyChart users choose whether or not to initiate communications with their providers and are under no obligation to do so. As in both Akamai and Muniauction, MyChart providers simply control the users’ access to MyChart. Akamai 629 F.3d at 1321 (finding Limelight’s customers chose whether to perform the “tagging” or “scanning” steps);
Without an agency relationship or contractual obligation, the MyChart users’ actions cannot be attributed to the MyChart providers, Epic’s customers.