Order Granting Motion for Summary Judgment of Non-Infringement as to Multi-Actor Patent Claim

McKesson Information Solutions LLC v. Epic Systems Corp., 1:06-cv-02965 (N.D. Ga. Sept. 6, 2009) (Camp, J.)


Defendant moved for summary judgment and argued that it did not infringe the patent-in-suit, which related to an online communication system for use between health care providers and patients, as a matter of law because (i) the claimed method required that certain steps be performed by a health care provider and that other steps be performed by users of the accused online system and (ii) the health care providers did not direct or control users in the performance of the users’ steps.


The parties agreed that the claimed step of “initiating a communication” was performed by a patient or other user upon visiting the Defendant’s website, and not by a healthcare provider. As a result, Plaintiff was required to show that the healthcare providers directed or controlled the users in carrying out the “initiating a communication” step. The Court discussed the “direction or control” standard for finding direct infringement of multi-actor patent claims, as set forth in recent decisions from the Federal Circuit. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1321 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 1585 (2009) and Global Patent Holdings, LLC v. Panthers BRHC LLC, 586 F. Supp. 2d 1331, 1333 n.1 (S.D. Fla. 2008), aff’d, 318 F. App’x 908 (Fed. Cir. 2009). Finding that Plaintiff’s evidence showed only that healthcare providers controlled the users’ access to the accused system, which was held to be insufficient evidence of direction and control in Muniauction, the Court concluded that it was required to grant Defendant’s motion.


Notably, the Court remarked that the Federal Circuit’s rule regarding multi-actor patent claims and its interpretation of the standard for proving infringement of such claims “severely limits the protection provided for patents which would otherwise be valid and enforceable . . . [and] weakens the policy of providing protection to those who devote the time and resources to develop otherwise novel and patentable methods.”