310 F.R.D. 208
W.D.N.Y.2015Background
- Medgraph sued Medtronic for infringement of two patents ('124 and '351) covering methods/system for electronic collection, storage, and transmission of patient data.
- '124 includes 15 method claims and one system claim; '351 contains one method claim.
- Central dispute: whether Medtronic can be held liable where no single third party is shown to have performed all steps of the claimed methods.
- The district court granted summary judgment for Medtronic, finding no evidence of direct infringement of the method claims and noninfringement of the system claim; absent direct infringement, no indirect liability could attach.
- Medgraph appealed to the Federal Circuit; while the appeal is pending, Medgraph moved under Fed. R. Civ. P. 62.1 for an indicative ruling that the district court would vacate its judgment and reopen infringement proceedings if the Federal Circuit remanded in light of Akamai.
- The court denied the Rule 62.1 motion as procedurally improper (no underlying timely postjudgment motion) and substantively unnecessary because the appellate court does not need the district court’s advisory view.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court should give an indicative ruling under Rule 62.1 that it would vacate summary judgment if the Federal Circuit remands based on Akamai | Medgraph asked the court to state it would vacate and reopen the case if the Federal Circuit remanded in light of the Federal Circuit’s Akamai decisions | Medtronic opposed; argued there is no proper predicate Rule 60(b) (or other) motion and no need for an advisory district-court statement | Denied: motion procedurally defective (no timely underlying motion) and not warranted—appellate court does not need district court’s advisory view |
| Whether Akamai requires vacatur/remand here | Medgraph contended Akamai (en banc) may alter the legal standard for attributing third-party actions to a defendant and thus could affect the infringement ruling | Medtronic argued the district court correctly ruled on the record and any change is a matter for the Federal Circuit on appeal | Court found this issue for the appellate court to decide and refused to preemptively alter its judgment via Rule 62.1 |
| Whether district court erred in finding no direct infringement evidence | Medgraph implied the changed Federal Circuit law could mean there was evidence attributing steps to Medtronic | Medtronic maintained the lack of evidence of a single actor/control forecloses direct and indirect liability | District court reaffirmed its summary judgment rationale and left reconsideration to the appellate process |
| Whether district court should give guidance to the appellate court | Medgraph sought guidance; argued it would be efficient | Medtronic argued guidance unnecessary and procedurally impermissible | Court: appellate court does not need district court’s advice; no indicative ruling warranted |
Key Cases Cited
- Akamai Technologies, Inc. v. Limelight Networks, Inc., 786 F.3d 899 (Fed. Cir. 2015) (panel decision addressing when steps performed by multiple actors can be attributed to a single entity for direct infringement)
- Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc decision finding sufficient evidence at trial that defendant directed or controlled customers such that all method steps could be attributed to defendant)
- Retirement Bd. of Policemen’s Annuity & Ben. Fund of City of Chicago v. Bank of New York Mellon, 297 F.R.D. 218 (S.D.N.Y. 2013) (district court denied indicative ruling and observed an appellate court does not need district-court assistance in interpreting its precedent)