Birch Stewart on the McKesson Tech v. Epic Systems Decision


Leonard R. Svensson, Partner at Birch Stewart Kolasch & Birch, sent in this post discussing the recent McKesson Technologis v. Epic Systems decision and how it may impact those in the medical diagnostic or treatment fields.

On April 12th the Federal Circuit issued another decision related to joint infringement situations. This should be another warning to those drafting method claims, particularly in the medical diagnostic or treatment fields. The decision perhaps also portends a future en banc review of the issue. This follows the pattern of several decisions discussed by my partner, Jerry Murphy (Practice Center Contributor), and I at PLI’s 5th Annual Patent Law Institute during our lecture on Federal Circuit decisions in 2010 in the life sciences field.  (Click on the link to view Mr. Svensson and Mr. Murphy’s presentation “All Things Chemical & Biotechnical At The PTO“).

In the April 12th case of McKesson Technologies v. Epic Systems, the patent owner McKesson tried to enforce a patent on a method of electronically communicating between health care providers and patients. Epic Systems developed software and licensed it to heath care providers who used the software to communicate with patients. But since the steps of the method claims were performed by a combination of the patients and the health care providers, the Federal Circuit agreed with the District Court’s finding on summary judgment of no infringement by Epic Systems. The Federal Circuit followed the reasoning of the 2010 decision in Akami Technologies and the prior BMC Resources and Muniauction cases, finding that since there was no “agency relationship or contractual obligation” between the patients and health care providers, McKesson had “failed to demonstrate that any single party directly infringes”.

It is notable that Judge Newman dissented arguing that the decision wan inconsistent with prior case law that “never had en banc reversal” and Judge Bryson concurred but specifically stated that the issue is “one that is close enough and important enough that it may warrant review by the en banc court in an appropriate case”.

To hear more from Svensson and Murphy tune in on demand to PLI’s 5th Annual Patent Law Institute.


Tags: , , , , ,

Leave a Reply

You share in the PLI Practice Center community, so we just ask that you keep things civil. Leave out the personal attacks. Do not use profanity, ethnic or racial slurs, or take shots at anyone's sexual orientation or religion. If you can't be nice, we reserve the right to remove your material and ban users who violate our Terms of Service.

You must be logged in to post a comment.