In a recent combined en banc decision, a divided Federal Circuit overruled its own prior decision regarding joint infringement – all the steps of a method claim no longer have to be committed by a single entity – by a 6-5 vote. Joint infringement covers cases when a party knowingly encourages a second party to complete the steps of a method patent. The Federal Circuit grew the doctrine over the last six years in order to reach those offenders who simply farm out the steps of a method patent to another party.
The en banc decision actually combined two cases, Akami Technology v. Limelight Networks, and Mckesson Tech v. Epic Systems, both concerning method patents, with Limelight replicating a web content delivery model (in part) and Epic replicating a method of doctor-patient interaction with its MyChart software, with the final steps of the method patent in each case being performed by innocent end users. The court ruled in favor of the plaintiffs on both cases. I’m particularly familiar with the issue at hand in the Epic case, having worked there as a software developer for two years. In fact, having used MyChart myself to communicate with my own physician, and being aware of the lawsuit (and the patent at issue) suddenly makes me a joint infringer (I’ve got lots of loans and little else – sorry McKesson).
The reaction to the decision has been mixed. Some commentators have praised the decision – closing a major loophole that has allowed some large corporate entities, like Epic, to knowingly use a patented invention that would otherwise require a license. Others are concerned about the ramifications – saying “it opens a huge can of worms.” There is concern that the language in the opinion, intended to clear the waters of joint infringement, has instead done the opposite and will come back to haunt the court in the future, either in the form of a Supreme Court decision overruling the Federal Circuit, or for future joint infringement decisions at the Federal Circuit or inferior courts.
The Electronic Frontier Foundation was particularly concerned with the outcome of these cases, worried that the court would expand liability to include innocent third party infringers, but as EFF amicus brief writer Michael Barclay stated the decision was “not all bad” from the EFF’s perspective, as innocent third party infringers are still free from liability, which was the main goal of the EFF amicus brief.
Both parties, particularly Epic, with the usage of MyChart, a cornerstone product, estimated to be in use by millions of patients and doctors, will likely appeal this decision by the Federal Circuit to the Supreme Court, so the final word on joint infringement has probably not yet arrived.