Medgraph, Inc. v. Medtronic, Inc.
843 F.3d 942
| Fed. Cir. | 2016Background
- Medgraph owns two patents (the ’124 and ’351 patents) claiming methods and a system for uploading patients’ medically important data (e.g., glucose) to a central computer for remote access by clinicians. Claim 1 (method) and claim 16 (system) are representative.
- Medtronic’s accused product is its CareLink System, which permits patients to upload diabetes data to Medtronic’s central server for storage and clinician access.
- Medgraph sued Medtronic for infringement; summary judgment of noninfringement was granted by the district court and Medgraph appealed.
- The litigation overlapped a series of Federal Circuit and Supreme Court decisions addressing divided infringement (the Akamai line), culminating in Akamai V which broadened when third-party acts can be attributed to an accused infringer.
- The district court applied the then-governing law and found (1) method claims not directly infringed because patients and doctors perform steps not attributable to Medtronic, and (2) system claim 16 not infringed because it requires both telephone and computer means and CareLink lacks telephone transmission capability.
Issues
| Issue | Medgraph’s Argument | Medtronic’s Argument | Held |
|---|---|---|---|
| Whether district court’s noninfringement ruling on method claims must be vacated/remanded under Akamai V | Akamai V broadened attribution; remand required so evidence can be evaluated under the new standard (Medtronic conditions participation/benefit on third-party performance and dictates manner/timing) | Even under Akamai V Medgraph lacks evidence that patients/doctors performed all claim steps or that Medtronic conditioned benefits/use on those steps; remand would be futile | Affirmed: no remand; record lacks evidence to attribute third-party acts to Medtronic under Akamai V and summary judgment stands |
| Whether system claim 16 requires both telephone and computer capabilities (conjunctive “and” vs. disjunctive “or”) | Claim language and some specification passages support reading “and” as “or”; patentees meant alternative transmission modes | Claim terms get plain meaning; specification supports a system having both capabilities (high-tech and low-tech versions), so “and” is conjunctive | Affirmed: “and” given plain meaning = conjunctive; CareLink lacks telephone transmission so does not meet claim 16 |
Key Cases Cited
- Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (U.S. 2014) (Supreme Court decision addressing induced infringement and remanding divided infringement issues)
- Akamai Techs., Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010) (panel decision on single-entity requirement for method infringement)
- Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (en banc decision recognizing inducement theory in divided-infringement contexts)
- Akamai Techs., Inc. v. Limelight Networks, Inc., 786 F.3d 899 (Fed. Cir. 2015) (panel decision applying single-entity/direct-control standard for divided infringement)
- Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc decision expanding circumstances for attributing third-party acts when accused conditions participation/benefit and prescribes manner/timing)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (plain and ordinary meaning and role of specification in claim construction)
- Teva Pharm. U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S. 2015) (standard of review for claim construction factual findings)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary judgment standard)