BIO/IPCC on the divided infringement cases of Akamai and McKesson

On November 3, 2011, the BIO/IPCC meeting had a panel discussion of the "divided infringement" cases of Akamai and McKesson. For general background on the cases themselves, see McKesson and Akamai En Banc – Claim Drafting for Direct Infringement. The perspective of the panel was that of modifying the current Federal Circuit rule to find direct infringement when two (or more) players are acting in concert to infringe different steps of a method claim.

The McKesson case has facts more relevant to typical BIO members. The relevant patent was in health care:

McKesson’s ’898 patent is directed to an electronic method of communication between healthcare providers and patients involving personalized web pages for doctors and their patients.

AND the punch line of Judge Newman's opinion was

Because McKesson is unable to attribute the performance of all the steps of the asserted method claims to a single party—namely, Epic’s healthcare-provider customers—this court affirms the finding of noninfringement.

with text

Without an agency relationship or
contractual obligation, the MyChart users’ actions cannot
be attributed to the MyChart providers, Epic’s customers.
Thus, McKesson has failed to demonstrate that any single
party directly infringes the ’898 patent. Absent direct
infringement, Epic cannot be liable for indirect infringe-
ment. BMC Res., 498 F.3d at 1379 (stating “[i]ndirect
infringement requires, as a predicate, a finding that some
party amongst the accused actors has committed the
entire act of direct infringement.”).

While understanding the issue that McKesson's lawyers have with
the situation, LBE tried (unsuccessfully) to take the panel discussion
in a different direction, wherein two entities might have a legitimate reason
to perform different steps of a method (and not be deemed "divided infringers.")

Let's say there is a patent with three steps directed to the isolation of a product P, wherein
the three steps involve different machines X, Y, and Z to perform different manipulations on product
P (say one could be distillation; one condensation). Patentee A discovers a process integrating X, Y, and Z,
all of which are known independently in the prior art, by virtue of integrating heat balance between X and Z.
The patentee A truthfully argues to the Patent Office that he has unexpected results because of the integration.
However, the patent claim is merely of the form using X, using Y, and using Z to separate P. The claim is valid.
Later, company B discovers that a device of the form Z can be run without integration with X (or Y) to profitably separate
P. Company B contracts knowingly with Company C for C to do steps X and Y, and Company B does step Z, obtaining
no benefit of the heat integration which was responsible for the issuance of A's patent. Are companies B and C responsible
for divided infringement because collectively they are using X, Y, and Z to separate P?

The panel on November 3 went off on a tangent suggesting A's patent was invalid (like for instance Dippin' Dots method patent; see
Dippin' Dots patent failure contributes to November 2011 Chapter 11 bankruptcy filing ). In the hypothetical of November 3, A's patent is clearly valid, but broadly claimed, so that collectively B and C are performing the steps within the method claim of patentee A, although not obtaining the benefit of A's heat integration discovery, the sole reason for A's patentability. B and C are not in any way "stealing" A's invention.

The point here: there are times when parties might collude to perform separate steps to avoid one single party performing all the steps of a method patent. However, there are times when different parties might perform separate steps of a method patent for entirely logical reasons, without capturing the benefit of the multi-step method patent. Any doctrine of "divided infringement" must make the distinction.