IP Law Daily Akamai decisions did not require reinstating diabetes management system infringement suit
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Tuesday, December 13, 2016

Akamai decisions did not require reinstating diabetes management system infringement suit

By Jody Coultas, J.D.

The U.S. Court of Appeals for the Federal Circuit affirmed the holding of the United States District Court for the Western District of New York that Medtronic, Inc. did not infringe Medgraph, Inc.’s patents. Federal Circuit decision in Akamai Technologies, Inc. v. Limelight Networks, Inc. did not require reversal of the grant of summary judgment in favor of Medtronic (Medgraph, Inc. v. Medtronic, Inc., December 13, 2016, Lourie, A.).

U.S. Patent Nos. 5,974,124 (the ’124 patent) and 6,122,351 (the ’351 patent) are directed to a method for improving and facilitating diagnosis and treatment of patients, whereby data relating to "medically important variable[s]" are uploaded onto a computer and transmitted to a central storage device, from which they can be accessed remotely by medical professionals treating the patient. The ’351 patent is a continuation-in-part of the ’124 patent.

Medtronic’s CareLink® Therapy Management System for Diabetes allows patients to upload data relating to management of their diabetes to Medtronic’s central computer server, where the data are collected and stored in a database so that the patients can keep an online record of the information, and/or share the information remotely with a healthcare provider.

Medgraph’s suit coincided with a multi-year process of judicial reconsideration by this court sitting en banc and by the Supreme Court of the relevant governing law, in a series of five appellate decisions, which the parties refer to as "the Akamai cases."

A district court granted summary judgment of no infringement, noting that the legal standard governing direct infringement after Akamai IV was the same as under Akamai II, which caused Medgraph to withdraw its claim of direct infringement because "more than one person, i.e., the patient or doctor, neither of whom is an agent of or under contractual obligation to Medtronic, is required to perform all of the steps of the method claims . . . ." There was no infringement because there had not been any "showing that Medtronic itself directly infringed the method claims or that it acted as a ‘mastermind’ by controlling or directing anyone else’s direct infringement," according to the court.

After the district court’s entered final judgment, the Federal Circuit issued Akamai V, which broadened the circumstances in which others’ acts may be attributed to an accused infringer in cases of divided infringement. Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1023 (Fed. Cir. 2015).

Direct infringement. Medgraph argued that Medtronic conditioned patients’ and doctors’ participation in the CareLink System, or receipt of the benefit to the patients and doctors of remote access to patient information, upon their performance of the claimed method steps and establishes the manner or timing of that performance. Medtronic countered that remand was unnecessary because the only relevant inquiry necessary based on the change in law from Akamai IV to Akamai V is the relationship between the accused infringer and the third parties that would allow for attribution, and this inquiry is unnecessary in the absence of evidence of patients and doctors performing the claimed steps.

Remand was inappropriate in this case, according to the court. Direct infringement requires that "all steps of the claim are performed by or attributable to a single entity." While Akamai V broadened the circumstances under which attribution may be proper, the direct infringement rule was unaffected. Medgraph failed to show any evidence that would permit attribution of patient- and doctor-performed steps to Medtronic under the sole standard of Akamai V invoked by Medgraph. Medtronic did not condition the use of, or receipt of a benefit from, the CareLink System on the performance of all of Medgraph’s method steps. There was no basis for further proceedings. Thus, the grant of summary judgment was affirmed.

Claim construction. Under the district court’s construction, claim 16 of the ‘124 patent requires both computer (e.g., Internet) and telephone capabilities for receiving and transmitting data. Medgraph argued that the court erred in its construction, and that the written description supported a disjunctive construction because it repeatedly states that the invention transmits data either through "a common network, over telephone lines, or over the Internet."

Claim 16 was properly construed the limitation "and" to mean "and," rather than "or," and the district court correctly granted summary judgment of noninfringement of claim 16 of the ’124 patent, according to the court. Most of the cases cited by Medgraph to support its appeal of the construction were district court cases that were not binding on the court. Also, the cases had a common theme that distinguished them from this case: the specification compels a disjunctive construction for "and." Here, in contrast to those cases, the written description can be interpreted to support either construction.

The case is No. 2015-2019.

Attorneys: Dariush Keyhani (Meredith & Keyhani, PLLC) for Medgraph, Inc. Wayne M. Barsky and Katherine Quinn Dominguez (Gibson, Dunn & Crutcher LLP) for Medtronic, Inc.

Companies: Medgraph, Inc.; Medtronic, Inc.

MainStory: TopStory Patent FedCirNews

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