United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MCKESSON TECHNOLOGIES INC. (formerly 

McKesson Information Solutions, LLC), 

Plaintiff-Appellant, 

v. 

EPIC SYSTEMS CORPORATION, 

Defendant-Appellee. 

__________________________ 

2010-1291 

__________________________ 

Appeal from the United States District Court for the 

Northern District of Georgia in case no. 06-CV-2965, 

Chief Judge Jack T. Camp. 

__________________________ 

Decided: April 12, 2011 

__________________________ 

PAUL D. CLEMENT, King & Spalding LLP, of Washington, DC, argued for plaintiff-appellant. With him on the 

brief were DARYL JOSEFFER; and TIMOTHY G. BARBER and 

ADAM M. CONRAD, of Charlotte, North Carolina. 

STEVEN D. MOORE, Kilpatrick Stockton LLP, of Atlanta, Georgia, argued for defendants-appellees. With 

him on the brief were WILLIAM H. BOICE, RUSSELL A.

KORN, D. CLAY HOLLOWAY, and JASON D. GARDNER; and 

ADAM H. CHARNES of Winston-Salem, North Carolina. 
MCKESSON TECH v. EPIC SYSTEMS 2

__________________________ 

Before NEWMAN, BRYSON, and LINN, Circuit Judges. 

Opinion for the court filed by Circuit Judge LINN. Concurring opinion filed by Circuit Judge BRYSON. Dissenting opinion filed by Circuit Judge NEWMAN. 

LINN, Circuit Judge. 

McKesson Technologies Inc. (“McKesson”) appeals the 

district court’s grant of Epic Systems Corporation’s 

(“Epic”) renewed motion for summary judgment of noninfringement of claims 1-10, 12-14, and 16-18 of U.S. Patent 

No. 6,757,898 (the “’898 patent”). McKesson Info. Solutions LLC v. Epic Sys. Corp., No. 06-cv-2965, 2009 WL 

2915778 (N.D. Ga. Sept. 8, 2009) (“Summary Judgment 

Order”). 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. 

BACKGROUND

I. The Technology and Nature of the Dispute 

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. See ’898 patent col.4 ll.3-44. This 

solution facilitates direct communication between patients and their doctors. See id. col.4 ll.24-40. For example, the ’898 patent discloses a system whereby a patient 

can access visit-specific content online following every 

doctor visit. Id. col.4 ll.57-63. This online content “offers 

the patient significantly more information than he/she 

could have absorbed during a typical visit with the physician.” Id. col.4 ll.63-65. This solution also increases 

efficiencies for both doctors and patients. See id. col.4 
3 MCKESSON TECH v. EPIC SYSTEMS

ll.24-40. For example, patients may submit appointment 

and prescription refill requests online and physicians may 

respond to these requests and manage callbacks at their 

convenience. Id. col.4 l.65–col.5 l.3; col.9 ll.37-39. 

Epic is a privately owned software development company that licenses software to healthcare providers. One 

such product is the accused MyChart software. MyChart 

allows healthcare providers to associate medical records 

with a patient’s personalized web page. MyChart also 

allows the patients to communicate with their healthcare 

provider online through these personalized MyChart web 

pages. In this way, patients are given access to their own 

medical records, treatment information, scheduling 

information, and other material. 

Epic itself does not use the MyChart software. 

Rather, Epic licenses the MyChart software to healthcare 

providers. These licensed healthcare providers choose 

whether to offer MyChart as an option for their patients’ 

use and none of these healthcare providers requires their 

patients to actually use the MyChart software. If a 

patient chooses to utilize the MyChart software, that 

patient “initiates a communication” to the provider by 

logging on to the healthcare provider’s MyChart web 

page. Once authenticated, the patient is then presented 

with a personalized web page from which that patient 

may access his or her medical records and other such 

information. 

II. Proceedings Before the District Court 

On December 6, 2006, McKesson sued Epic in the 

United States District Court for the Northern District of 

Georgia alleging that Epic induced infringement of claims 

1-10, 12-14, and 16-18 of the ’898 patent by licensing 

MyChart to healthcare providers who subsequently 
MCKESSON TECH v. EPIC SYSTEMS 4

offered it to their patients. Claim 1 is representative of 

the asserted claims and reads as follows: 

1. A method of automatically and electronically 

communicating between at least one health-care 

provider and a plurality of users serviced by the 

health-care provider, said method comprising the 

steps of: 

initiating a communication by one of the plurality of users to the provider for information, 

wherein the provider has established a preexisting 

medical record for each user; 

enabling communication by transporting the 

communication . . . ; 

electronically comparing content of the communication . . . ; 

returning the response to the communication 

automatically . . . ; 

said provider/patient interface providing a 

fully automated mechanism for generating a personalized page or area within the provider’s Web 

site for each user serviced by the provider; and 

said patient-provider interface service center 

for dynamically assembling and delivering customer content to said user. 

’898 patent col.44 l.60–col.45 l.24 (emphasis added). 

Epic first moved for summary judgment of noninfringement on January 14, 2008, on the issue of joint 

infringement. The parties do not dispute that Epic’s 

customers do not directly perform the first step of the 

asserted method claims, the “initiating a communication” 

step. The district court, in denying Epic’s motion, relied 

on BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 

1373 (Fed. Cir. 2007), and found “questions of material 
5 MCKESSON TECH v. EPIC SYSTEMS

fact remain as to whether the providers using Epic’s 

MyChart software direct and control the user to perform 

the first step of the method” based upon an expert declaration filed by McKesson. McKesson Info. Solutions LLC 

v. Epic Sys. Corp., No. 06-cv-2965 (N.D. Ga. May 19, 

2008). 

Following claim construction and the close of discovery, Epic renewed its motion for summary judgment of 

noninfringement on the issue of joint infringement, citing 

both Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 

(Fed. Cir. 2008), and McKesson’s withdrawal of its expert 

declaration. Epic argued that because its customers 

neither directly perform the “initiating a communication” 

step of the asserted method claims nor exercise control or 

direction over another who performs this step, McKesson 

failed to demonstrate that a single party directly infringes 

the ’898 patent and, accordingly, could not have succeeded 

on its claim of indirect infringement. The district court 

agreed and granted Epic’s renewed motion for summary 

judgment of noninfringement on September 8, 2009. 

Summary Judgment Order. 

McKesson appealed and this court has jurisdiction 

under 28 U.S.C. § 1295(a)(1). 

DISCUSSION 

This court reviews summary judgment of noninfringement without deference to ascertain whether genuine issues of material fact exist. BMC Res., 498 F.3d at 

1378. Summary judgment is appropriate only “if the 

pleadings, the discovery and disclosure materials on file, 

and any affidavits show that there is no genuine issue as 

to any material fact and that the movant is entitled to 

judgment as a matter of law.” Fed. R. Civ. P. 56(c). In 

assessing the evidence, all reasonable inferences are 

drawn in favor of the non-movant. Del. Valley Floral 
MCKESSON TECH v. EPIC SYSTEMS 6

Grp., Inc. v. Shaw Rose Nets, LLC, 597 F.3d 1374, 1379 

(Fed. Cir. 2010). 

McKesson alleged induced infringement, which requires a direct infringer. BMC Res., 498 F.3d at 1379. A 

method claim is directly infringed only if each step of the 

claimed method is performed by a single party. Id. at 

1378-79. McKesson and Epic agree that no single party 

performs every step of the asserted method claims. Thus, 

the sole issue presented by this appeal relates to whether 

the relationship between Epic’s customers (MyChart 

providers) and the MyChart users is such that performance of the “initiating a communication” step may be 

attributed to the MyChart providers. 

In both BMC Resources and Muniauction, this court 

confronted the situation where the actions of multiple 

parties combined to perform the steps of a claimed 

method, but no single party performed every step of the 

claimed method. This court concluded that “where the 

actions of multiple parties combine to perform every step 

of a claimed method, the claim is directly infringed only if 

one party exercises ‘control or direction’ over the entire 

process such that every step is attributable to the controlling party.” Muniauction, 532 F.3d at 1329 (citing BMC 

Res., 498 F.3d at 1380-81). “[T]he ‘control or direction’ 

standard is satisfied in situations where the law would 

traditionally hold the accused direct infringer vicariously 

liable for the acts committed by another party that are 

required to complete performance of a claimed method.” 

Id. at 1330 (citing BMC Res., 498 F.3d at 1379). 

Recently, in Akamai Technologies, Inc. v. Limelight 

Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010), the patentee sought to attribute the actions of multiple parties, 

each performing a subset of the claimed method steps, to 

a single party for a finding of direct infringement. 

Akamai’s asserted method claims were directed towards a 
7 MCKESSON TECH v. EPIC SYSTEMS

content delivery service that permitted a content provider 

to outsource the storage and delivery of discrete portions 

of its website content. Id. at 1351. It was undisputed 

that Limelight performed all but the “tagging” and “serving” steps of the asserted method claims. Id. at 1317. 

Limelight instead provided a service to its customers 

along with the information necessary for its customers to 

perform the “tagging” and “serving” steps themselves. Id. 

Additionally, Limelight’s standard customer contract, 

while not obligating Limelight’s customers to perform the 

“tagging” or “serving” steps, explained that the customer 

would have to perform this step itself if the customer 

decided to take advantage of Limelight’s service. Id. at 

1321. 

The court in Akamai held “there can only be joint infringement when there is an agency relationship between 

the parties who perform the method steps or when one 

party is contractually obligated to the other to perform 

the steps.” Id. at 1320. The court concluded that Limelight’s customers were not performing any of the claimed 

method steps as agents for Limelight nor were they 

contractually obligated to perform any of the claimed 

method steps. Id. Because Limelight did not perform all 

of the steps of the asserted method claims and there was 

no basis to attribute to Limelight the actions of its customers who carried out the remaining steps, this court 

affirmed the district court’s judgment as a matter of law 

of noninfringement. Id. at 1322. 

In this case, nothing indicates that MyChart users are 

performing any of the claimed method steps as agents for 

the MyChart providers. Nor does McKesson argue an 

agency relationship existed here. Indeed, McKesson 

faulted the district court for applying this court’s control 

or direction test as one “that is satisfied only . . . through 

an employment or other agency relationship, such that 
MCKESSON TECH v. EPIC SYSTEMS 8

the other acts out of obligation rather than consent.” 

McKesson Br. 27. McKesson instead argues that the 

special nature of the doctor-patient relationship is something more than a mere arms length relationship and is 

sufficient to provide attribution, because “[t]he phrase 

‘doctor’s orders’ says it all” and because of the existence of 

a doctor-patient privilege. Id. at 18, 31. This argument 

misses the mark. A doctor-patient relationship does not 

by itself give rise to an agency relationship or impose on 

patients a contractual obligation such that the voluntary 

actions of patients can be said to represent the vicarious 

actions of their doctors. 

Nor is there anything indicating that MyChart users 

were contractually obligated to perform any of the 

claimed method steps on behalf of the MyChart providers. 

These facts are undisputed. MyChart users choose 

whether or not to initiate communications with their 

providers and are under no obligation to do so. As in both 

Akamai and Muniauction, MyChart providers simply 

control the users’ access to MyChart. Akamai 629 F.3d at 

1321 (finding Limelight’s customers chose whether to 

perform the “tagging” or “scanning” steps); Muniauction, 

532 F.3d at 1330 (finding that although the accused 

infringer controlled access to its system and instructed 

bidders on its use, that was insufficient to incur liability 

for direct infringement). Here, as in Akamai, MyChart 

users “acted principally for their own benefit and under 

their own control.” Akamai 629 F.3d at 1321. 

McKesson has identified no viable legal theory under 

which the actions of MyChart users may be attributed to 

Epic’s customers. 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-
9 MCKESSON TECH v. EPIC SYSTEMS

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.”). 

McKesson argues that this court’s precedents contravene ordinary principles of law involving concerted action. 

Specifically, McKesson compares this court’s precedents 

with joint tortfeasor liability and vicarious copyright 

liability. Under tort law, according to McKesson, joint 

liability attaches “where the acts of each of two or more 

parties, standing alone, would not be wrongful, but together they cause harm to the plaintiff.” McKesson Br. 20 

(citing Prosser & Keeton on Torts § 52, at 354 (5th ed. 

1984)). Similarly, McKesson cites various copyright cases 

where courts have found vicarious copyright liability 

stemming from a defendant’s decision to profit from 

infringement “while declining to exercise a right to stop or 

limit it.” McKesson Br. 23 (quoting Metro-GoldwynMayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 

(2005)). 

This court finds McKesson’s invitation to depart from 

our precedents unpersuasive, let alone beyond our authority as a three-judge panel. See Newell Cos. v. Kenney Mfg. 

Co., 864 F.2d 757, 765 (Fed. Cir. 1988) (“This court has 

adopted the rule that prior decisions of a panel of the 

court are binding precedent on subsequent panels unless 

and until overturned in banc.”). Patent law is a creature 

of statute and “expanding the rules governing direct 

infringement to reach independent conduct of multiple 

actors would subvert the statutory scheme for indirect 

infringement.” BMC Res., 498 F.3d at 1381. The notion 

of indirect patent infringement, encompassing contributory and induced infringement, already addresses the 

joint tortfeasor problem. See 35 U.S.C. §§ 271(b), (c). 

Indeed, an indirect infringer is a type of joint tortfeasor 
MCKESSON TECH v. EPIC SYSTEMS 10

because, while his actions alone do not harm the patentee, 

his actions along with another cause a single harm to the 

plaintiff. See Aro Mfg. Co. v. Convertible Top Replacement 

Co., 377 U.S. 476, 500 (1964). That “single harm,” however, is direct patent infringement, a strict-liability offense limited to those who practice each and every 

element of the claimed invention. BMC Res., 498 F.3d at 

1381; Jurgens v. CBK, Ltd., 80 F.3d 1566, 1570 n.2 (Fed. 

Cir. 1996). Absent direct infringement, the patentee has 

not suffered a compensable harm. BMC Res., 498 F.3d at 

1379; cf. Grokster, 545 U.S. at 930 (stating “[o]ne infringes 

contributorily by intentionally inducing or encouraging 

direct infringement and infringes vicariously by profiting 

from direct infringement while declining to exercise a 

right to stop or limit it.” (citations omitted) (emphases 

added)). Finally, in patent law, unlike in other areas of 

tort law, the patentee specifically defines the boundaries 

of his or her exclusive rights and provides notice to the 

public to permit avoidance of infringement. This stands 

in sharp contrast to the circumstances surrounding a joint 

tort where the victim has no ability to define the injurious 

conduct upfront and where, absent joint liability, the 

victim would stand uncompensated as a consequence. 

McKesson also relies upon Peerless Equipment Co. v. 

W.H. Miner, Inc., 93 F.2d 98 (7th Cir. 1937), in arguing 

that the regional courts of appeals have affirmed liability 

where one party performed most of the patented method 

and simply handed it over to another party to complete 

the method. Id. at 105 (finding liability where a seller of 

gears knowingly left it to customers to flatten the gears’ 

crown, thereby “completing the final step of the [patented] 

process.”). The Peerless opinion is neither binding nor 

persuasive. This court has time and again rejected liability where one party performed most of the patented 

method and left it to another party to complete the 

method in the absence of any contractual obligation or 
11 MCKESSON TECH v. EPIC SYSTEMS

agency relationship that would vicariously attribute the 

acts of the one party to the other. See Akamai 629 F.3d at 

1322; Muniauction, 532 F.3d at 1330; BMC Res., 498 F.3d 

at 1381-82. Nor is this court persuaded by the conclusory 

reasoning in Peerless affirming the district court’s finding 

of contributory infringement. See Peerless, 93 F.2d at 105 

(stating “we think that finding is correct.”). 

CONCLUSION

For the foregoing reasons, this court affirms the district court’s grant of Epic’s renewed motion for summary 

judgment of noninfringement of the ’898 patent. 

AFFIRMED 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MCKESSON TECHNOLOGIES INC. (formerly 

McKesson Information Solutions, LLC), 

Plaintiff-Appellant, 

v. 

EPIC SYSTEMS CORPORATION, 

Defendant-Appellee. 

__________________________ 

2010-1291 

__________________________ 

Appeal from the United States District Court for the 

Northern District of Georgia in Case No. 06-CV-2965, 

Chief Judge Jack T. Camp. 

__________________________ 

BRYSON, Circuit Judge, concurring. 

I agree that the decision in this case is correct in light 

of this court’s decisions in BMC Resources, Muniauction, 

and Akamai Technologies. Whether those decisions are 

correct is another question, one that is close enough and 

important enough that it may warrant review by the en 

banc court in an appropriate case. 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MCKESSON TECHNOLOGIES INC. (formerly 

McKesson Information Solutions, LLC), 

Plaintiff-Appellant, 

v. 

EPIC SYSTEMS CORPORATION, 

Defendant-Appellee. 

__________________________ 

2010-1291 

__________________________ 

Appeal from the United States District Court for the 

Northern District of Georgia in Case No. 06-CV-2965, Chief 

Judge Jack T. Camp. 

__________________________ 

NEWMAN, Circuit Judge, dissenting. 

The court again departs from the “prior panel rule,” 

which requires appellate panels to conform to the earlier of 

conflicting panel precedent. Instead, the court again selectively applies some newly minted panel rulings while ignoring others, adding to the conflict with precedent. Our 

obligation is either to obtain en banc resolution of divergent 

statements in various panel opinions, or to follow the earlier 
MCKESSON TECH v. EPIC SYSTEMS 2

panel holding, as do the other circuits.1 The court does 

neither. I must, respectfully, dissent. 

The question is whether there can be infringement of a 

patented method, when a step of the method is performed 

by an entity that is not “controlled or directed” by the same 

entity that performs the other steps. Interactive methods 

have been enabled by advances in computer-based technology. In the McKesson method, a patient initiates inquiry 

into various kinds of information relating to the patient and 

maintained by the patient’s physician; the panel majority 

holds that even if every step of the claimed method is performed there can be no infringement, on the theory that 

there is no direct infringement and thus no indirect infringement. Some recent panel holdings are of similar vein, 

holding that neither collaboration nor joint action nor facilitation nor authorization nor invitation can overcome the 

immutable barrier to infringement when all of the participating entities are not under the “control or direction” of a 

mastermind infringer. 

According to the panel majority today, there can be no 

infringement of this interactive patent, on the theory that 

the physician does not control or direct the patient who 

performs the step of entering the system maintained by the 

physician. The court thus eliminates the patent incentive 

from such interactive procedures, rendering McKesson’s 

new method, and all such interactive methods, open for 

infringement without redress. However, other panels of this 

court, and the Supreme Court, have held that there can be 

infringement liability when steps of the claimed method are 

performed by different entities. This new retrenchment of 

 1 See Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 

757, 765 (Fed. Cir. 1988); cf. Teague v. City of Flower 

Mound, Tex., 179 F.3d 377, 383 (5th Cir. 1999) (referring to 

the “rule of orderliness”). 
3 MCKESSON TECH v. EPIC SYSTEMS

the patent grant disserves commerce, fairness, and the 

innovation incentive. 

The patent in suit, U.S. Patent No. 6,757,898, is directed to “a communication system for providing automated, 

electronic communications between at least one health-care 

provider and a plurality of users of the health-care provider.” ‘898 patent, abstract. The ‘898 patent describes the 

operation of personalized web pages for patients. The 

patent states that “once the patient has logged into his/her 

own Web page,” the patient can access data in the practitioner’s scheduling and billing systems and a variety of practice-based services including “appointment requests and 

updates, prescription refills, online triage, health search 

information and the like.” Col.4 ll.50-56. 

Computer-implemented methods that are new, useful, 

nonobvious, described, enabled, and particularly claimed, 

are not excluded from the patent system simply because 

their performance involves more than one entity. Here the 

patient initiates the interaction with the health-care provider, by performing the first step of claim 1: 

1. A method of automatically and electronically 

communicating between at least one health-care 

provider and a plurality of users serviced by the 

health-care provider, said method comprising the 

steps of: 

initiating a communication by one of the plurality of users to the provider for information, wherein 

the provider has established a preexisting medical 

record for each user; 

 enabling communication by transporting the 

communication through a provider/patient interface 

over an electronic communication network to a Web 
MCKESSON TECH v. EPIC SYSTEMS 4

site which is unique to the provider, whereupon the 

communication is automatically reformatted and 

processed or stored on a central server, said Web 

site supported by or in communication with the central server through a provider-patient interface service center; 

 electronically comparing content of the communication with mapped content, which has been previously provided by the provider to the central 

server, to formulate a response as a static or dynamic object, or a combined static and dynamic object; and 

 returning the response to the communication 

automatically to the user’s computer, whereupon 

the response is read by the user or stored on the 

user’s computers 

 said provider/patient interface providing a fully 

automated mechanism for generating a personalized 

page or area within the provider’s Web site for each 

user serviced by the provider; and 

 said patient-provider interface service center for 

dynamically assembling and delivering custom content to said user. 

All but the first step are performed by or controlled or 

directed by the health-care provider. The court today holds 

that the claim cannot be infringed as a matter of law, on the 

theory that a “single-entity rule” is violated because the 

provider does not control or direct the patient who initiates 

the communication, in that the patient is neither the agent 

of the health-care provider nor contractually obligated to 

initiate the communication. Maj. Op. at 8-9. There is no 

such rule of law. Even the recent creation of a “single-entity 

rule” by this court does not go that far. 
5 MCKESSON TECH v. EPIC SYSTEMS

Interactive methods that meet all of the conditions and 

requirements of the Patent Act are fully entitled to participate in the patent system. The court’s removal of interactive methods from the purview of the patent system, 

through its newly minted and now enlarged “single-entity 

rule,” is contrary to law and policy. Conflicts in precedent 

require resolution, not enlargement, for inconsistent precedent is as much a deterrent to innovation as is elimination 

of the patent right entirely. 

I 

CONFLICT WITH PRECEDENT 

Precedent requires that: “For infringement of a process 

invention, all of the claimed steps of the process must be 

performed.” EMI Grp. N. Am., Inc. v. Intel Corp., 157 F.3d 

887, 896 (Fed. Cir. 1998). The panel majority now rules 

that: “A method claim is directly infringed only if each step 

of the claimed method is performed by a single party.” Maj. 

Op. at 6. Since the user (patient), not the provider (physician), decides whether to initiate the communication, the 

court holds that the provider does not “control or direct” 

whether the user takes this initiating step. Thus the court 

holds, first, that the method claim cannot be directly infringed, as a matter of law. The court then holds that 

without direct infringement there cannot be indirect infringement, such as induced or contributory infringement, 

as a matter of law. Thus the court concludes that the claims 

can never be infringed, although the patent meets every 

requirement of patentability and every step of the claimed 

method is practiced. These rulings and conclusion are 

contrary to statute and precedent. 

The patent statute grants to every patentee the right to 

exclude others from practicing the patented invention: 
MCKESSON TECH v. EPIC SYSTEMS 6

35 U.S.C. §154(a)(1) Every patent shall contain a 

short title of the invention and a grant to the patentee, his heirs and assigns, of the right to exclude 

others from making, using, offering for sale, or selling the invention . . . . 

35 U.S.C. §154(a)(1) (2006). “The franchise which the 

patent grants, consists altogether in the right to exclude 

every one from making, using, or vending the thing patented, without the permission of the patentee.” Bloomer v. 

McQuewan, 55 U.S. 539, 549 (1852); see also Crown Die & 

Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 36 

(1923). The present statute codifies this right: 

35 U.S.C. §271(a) Except as otherwise provided in 

this title, whoever without authority makes, uses or 

sells any patented invention, within the United 

States during the term of the patent therefor, infringes the patent. 

35 U.S.C. §271(a) (2006). A patent that can never be infringed is not a patent in the definition of the law, for a 

patent that cannot be infringed does not have the “right to 

exclude.” This court’s elimination of infringement, by 

creating a new but far-reaching restriction, is inappropriate. 

 “[C]ourts ‘should not read into the patent laws limitations 

or conditions which the legislature has not expressed.’” 

Bilski v. Kappos, 130 S.Ct. 3218, 3226 (2010) (quoting 

Diamond v. Diehr, 450 U.S. 175, 182 (1981)). 

These fundamental principles have not changed; they 

are the foundation of the patent system. 

As technology advanced, the variety of invention and 

modes of infringement has been accommodated by statute, 

by precedent, and if needed by legislation, in fidelity to the 
7 MCKESSON TECH v. EPIC SYSTEMS

purposes and policy of patent law. For example, the liability 

of “participants” in infringement was summarized by Professor Robinson: 

 The nature of the act of infringement is indicated by that of the exclusive right which it invades. 

. . . [E]very method by which the invention can be 

made available for the benefit of the infringer, and 

any person who participates in any wrongful appropriation of the invention becomes thereby a violator 

of the rights protected by the patent. 

3 William C. Robinson, The Law of Patents for Useful Inventions §897 (1890) (reprint 1972). This foundation is violated 

by the introduction of an absolute bar to enforcement of 

patents that are directed to information-age electronic 

methods, simply because more than one entity is involved. 

Neither statute nor precedent supports this court’s pronouncement that the patentee’s right to exclude is limited to 

situations in which a single entity performs or controls or 

directs every step of the claimed method, whatever the 

method and whatever the relationship among the participants. Precedent elaborating on direct and indirect infringement had evolved to accommodate, not to limit, the 

patentee’s right to exclude. 

The district court deemed itself bound by this court’s 

aberrant “single entity” decisions, although not without 

remarking on the flaws: 

[T]he single entity rule and BMC’s interpretation 

thereof severely limits the protection provided for 

patents which would otherwise be valid and enforceable. . . . As long as the sale of a product constitutes an arms length transaction between the 

customer and the infringing company, which is insufficient to create vicarious liability, the patent 
MCKESSON TECH v. EPIC SYSTEMS 8

holder would likely have no redress against the infringer. This result weakens the policy of providing 

protection to those who devote the time and resources to develop otherwise novel and patentable 

methods. 

McKesson Info. Solutions LLC v. Epic Sys. Corp., No. 06-cv2965, 2009 WL 2915778, at *7 (N.D. Ga. Sept. 8, 2009). The 

district court referred to BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007), Muniauction, Inc. 

v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2007), and 

Global Patent Holdings, LLC v. Panthers BRHC LLC, 586 F. 

Supp. 2d 1331 (S.D. Fla. 2008), aff’d, 318 F. App’x 908 (Fed. 

Cir. 2009) (Table), and stated that these cases “compel” its 

flawed decision. 

In BMC Resources the defendant was one of three independent entities needed to perform the claim steps of debit 

network, financial institution, and payment services provider; the court observed that the defendant payment services provider did not control or direct either the debit 

networks or the financial institutions that performed the 

other steps. In Muniauction this court held that the defendant, who controlled access to its auction system and instructed bidders on its use, was not liable for direct 

infringement, but did not hold that indirect infringement 

was barred. In Global Patent a district court applied the 

evolving “single-entity rule” and held that the patentee 

could not state a claim for either direct or indirect infringement although the defendant “puts Javascript programs on 

the remote user’s computer to allow the process to begin.” 

586 F. Supp. 2d at 1335. Although the BMC Resources

decision is supportable on its facts, the enlargement of its 

holding is not. 
9 MCKESSON TECH v. EPIC SYSTEMS

Applying these decisions to the ‘898 patent, the district 

court held that because the patient independently initiates 

the interaction with the physician’s records, there can be no 

joint infringement and thus no direct infringement of the 

claim. Applying the rule that there must be direct infringement before there can be indirect infringement, see

Aro Mfg. Co. v. Convertible Top Replacement Co., Inc., 377 

U.S. 476, 483 (1964) (referring to “the fundamental precept 

that there can be no contributory infringement in the absence of a direct infringement.”), the court held that McKesson could not enforce its patent against anyone. This court 

agrees, although it is not disputed every major step of the 

patented process is practiced by a single entity, with authorized initiation by the patient. 

This court’s error is the pronouncement of the “singleentity rule” as an absolute rule of law—for the multiple 

independent entities required to carry out the claimed 

method in BMC Resources could have led to a fact-based 

decision of non-liability on application of the ordinary rules 

of tort liability. Instead, the “control or direction” requirement is announced as extending to all interactive situations, 

whatever the relationship of the participants and whatever 

their participation. Here, for example, the “uncontrolled” 

entity, the patient, initiates the process by accessing the 

physician’s system using the access code provided by the 

physician; the physician’s office then performs the other 

steps of the method. The court today holds that such a 

claim cannot be infringed, whether on a theory of joint or 

collaborative or induced infringement. However, no rule of 

law, no precedent, prohibits patenting and enforcing a 

method that is performed by interacting entities. The cases 

from which the court created this theory do not require 

otherwise. 
MCKESSON TECH v. EPIC SYSTEMS 10

Indeed, the cases cited for support in BMC Resources

and Muniauction do not deal with the form of interactive 

situation to which they are now being applied. These cases 

include Canton Bio-Med., Inc. v. Integrated Liner Technologies., Inc., 216 F.3d 1367, 1370 (Fed. Cir. 2000) (explaining 

that the “all-elements rule” of the doctrine of equivalents 

applies to method claims); General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1274 (Fed. Cir. 

1992) (explaining that “each claim is an entity which must 

be considered as a whole,” and reversing invalidity of 

method claims for double patenting (emphases omitted)); 

Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. 

Cir. 1993) (“[T]he sale of equipment to perform a process is 

not a sale of the process within the meaning of section 

271(a)”); Dynacore Holdings Corp. v. U.S. Philips Corp., 363 

F.3d 1263, 1272 (Fed. Cir. 2004) (“Indirect infringement, 

whether inducement to infringe or contributory infringement, can only arise in the presence of direct infringement, 

though the direct infringer is typically someone other than 

the defendant accused of indirect infringement”); NTP, Inc. 

v. Research in Motion, 418 F.3d 1282, 1318 (Fed. Cir. 2005) 

(“[A] process cannot be used ‘within’ the United States as 

required by section 271(a) unless each of the steps is performed within this country”). I am surprised at my colleagues’ holding that these cases require an absolute 

“single-entity rule” of infringement, for none of these cases 

turned on whether different entities independently or 

interactively perform different steps of a method claim. 

My colleagues mention the Aro cases on contributory infringement as requiring that there can never be joint or 

collaborative infringement. That interpretation is inapt. 

In Aro Manufacturing Co. v. Convertible Top Replacement 

Co., Inc., 365 U.S. 336 (1961) the Court held that car owners 

did not directly infringe claims directed to a convertible top 

when the car owners replaced the fabric. In Aro Manufac-
11 MCKESSON TECH v. EPIC SYSTEMS

turing Co. v. Convertible Top Replacement Co., Inc., 377 U.S. 

476 (1964), the Court drew upon common-law principles, not 

a new “rule of law,” in stating that “a contributory infringer 

is a species of joint-tortfeasor, who is held liable because he 

has contributed with another to the causing of a single harm 

to the plaintiff.” Id. at 500. There was no issue of single 

entities or of control or direction. Earlier cases recognized 

the tortious nature of infringement, and the foundation of 

tort remedy. See, e.g., Carbice Corp. of Am. v. Am. Patents 

Dev. Corp., 283 U.S. 27, 33 (1931) (“Infringement, whether 

direct or contributory, is essentially a tort, and implies 

invasion of some right of the patentee.”); Dowagiac Mfg. Co. 

v. Minnesota Moline Plow Co., 235 U.S. 641, 648 (1915) 

(“[T]he exclusive right conferred by the patent was property, 

and the infringement was a tortious taking of a part of that 

property.”). 

The complainant here is not attempting to sue all patients and physicians who use the patented system, but is 

seeking to enforce the patent against the purveyor of the 

system, on a theory of inducement to infringe. The patentee’s position is that the patent is directly infringed 

jointly, and that the purveyor of the claimed method thereby 

induces direct infringement. The common-law concept of 

joint tortfeasor has long been established in the patent 

arena and in its application the cases have turned on their 

particular facts, not on some indefeasible “single entity” bar 

created as a new rule of law. Questions of joint liability 

turned on participation, collaboration, or other relevant 

facts, as courts applied the experience of the common law in 

a variety of factual situations. The state of the law of joint 

infringement was summarized in a jury instruction in On 

Demand Machine Co. v. Ingram Industries, Inc., 442 F.3d 

1331 (Fed. Cir. 2006), as follows: 
MCKESSON TECH v. EPIC SYSTEMS 12

It is not necessary for the acts that constitute infringement to be performed by one person or entity. 

 When infringement results from the participation 

and combined action(s) of more than one person or 

entity, they are all joint infringers and jointly liable 

for patent infringement. Infringement of a patented 

process or method cannot be avoided by having another perform one step of the process or method. 

Where the infringement is the result of the participation and combined action(s) of one or more persons or entities, they are joint infringers and are 

jointly liable for the infringement. 

442 F.3d at 1344-45. This court stated that “[w]e discern no 

flaw in this instruction as a statement of law,” although the 

court concluded as to that case that “no reasonable jury 

could find infringement, on the correct claim construction.” 

Id. at 1345. 

The present disregard of precedent is reflected in another recent decision, where the court held that when the 

two entities “formed a strategic partnership, enabled [nonetheless] their two programs to work together, and collaborated to sell the two programs as a unit,” there could be no 

infringement of the asserted method claims, as a matter of 

law. Golden Hour Data Sys., Inc. v. emCharts, Inc., 614 

F.3d 1367, 1371 (Fed. Cir. 2010). The court, reversing the 

jury verdict, found that “the evidence of control or direction 

was insufficient as a matter of law to uphold a finding of 

joint infringement.” Id. at 1380. 

Other recent rulings of this court are inconsistent. In 

Cross Medical Products v. Medtronic Sofamor Danek, 424 

F.3d 1293 (Fed. Cir. 2005) the apparatus claim required 

that an orthopedic implant is in contact with bone inside the 

body; the court held that the implant before installation did 
13 MCKESSON TECH v. EPIC SYSTEMS

not directly infringe the apparatus claim, and that the 

implant provider’s liability for direct infringement could not 

turn on the act of a surgeon installing the implant as directed, because the surgeon was not an agent of the provider; nonetheless, this court remanded for determination of 

whether the provider was liable for indirect infringement. 

In Fantasy Sports Properties v. Sportsline.com, Inc., 287 

F.3d 1108 (Fed. Cir. 2002) the claim was for a computersimulated football game with certain features; the district 

court held that a defendant-vendor of the software/game 

could not be liable for contributory infringement because the 

plaintiff-patentee did not prove that any users operated the 

software in an infringing manner. However, in contrast 

with the present holding, the court left open the possibility 

that the vendor was liable for direct infringement, rejecting 

the vendor’s argument that it could not be liable for direct 

infringement because the software was operated by users on 

their own computers, outside of the control and direction of 

the vendor. The court held that “[t]he users of the [accused] 

product therefore access the necessary software to play 

fantasy football at [the vendor’s] server on the Internet, and 

thus that software is maintained and controlled by [the 

vendor].” Id. at 1119. 

Again in contrast with these principles, in Akamai 

Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 

(Fed. Cir. 2010), a panel of the court proposed to promote a 

version of these aberrant holdings to “Federal Circuit law,” 

stating: 

This court therefore holds as a matter of Federal 

Circuit law that there can only be joint infringement 

when there is an agency relationship between the 

parties who perform the method steps or when one 

party is contractually obligated to the other to perform the steps. 
MCKESSON TECH v. EPIC SYSTEMS 14

629 F.3d at 1320. However, if this change of law is to be “a 

matter of Federal Circuit law,” conflicting holdings must be 

overturned en banc, not by a three-judge panel. In confusing contrast, in Centillion Data Systems, LLC v. Qwest 

Communications International, Inc., 631 F.3d 1279 (Fed. 

Cir. 2011), a panel of this court, citing NTP, Inc. v. Research 

in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), held that, 

unlike a claim to an interactive “method,” direct infringement of a claim to an interactive “system,” wherein elements of the system are physically controlled by different 

entities such as an independent “user,” is not subject to a 

“single-entity rule”: 

By causing the system as a whole to perform this 

processing and obtaining the benefit of the result, 

the customer has ‘used’ the system under §271(a). 

It makes no difference that the back-end processing 

is physically possessed by [the defendant]. The customer is a single ‘user’ of the system and because 

there is a single user, there is no need for the vicarious liability analysis from BMC or Cross Medical. 

631 F.3d at 1285. And in Uniloc USA, Inc. v. Microsoft 

Corp., 632 F.3d 1292 (Fed. Cir. 2011) this court wrote “[t]hat 

other parties are necessary to complete the environment in 

which the claimed element functions does not necessarily 

divide the infringement between the necessary parties.” 632 

F.3d at 1309. The panel majority’s ruling today further 

adds to the confusion of “use” of interactive inventions, as 

the panel majority holds that an interactive “method” is 

only used when a single entity performs or controls or 

directs every step of the claimed method, even if, as here, a 

single entity “cause[s] the [process] as a whole to perform ... 

and obtain[s] the benefit of the result.” Centillion, 631 F.3d 

at 1285. As “Congress did not use technical or occult 
15 MCKESSON TECH v. EPIC SYSTEMS

phrases” in “defining the extent of the rights and privileges 

secured to the patentee,” Bauer & Cie v. O’Donnell, 229 U.S. 

1, 11 (1913), we too should avoid “technical or occult” interpretations of §271(a). Panels of this court distinguishing 

between practice of an element of a system, and practice of 

an element of a method, does not add clarity or predictability to patent law. 

Earlier cases applied the law of infringement as a 

straightforward matter of tortious responsibility. For 

example, in Fromson v. Advance Offset Plate, Inc., 720 F.2d 

1565 (Fed. Cir. 1985), the court held that contributory 

infringement was possible when a step of a method claim 

was practiced by the customer, and explained that “because 

[the manufacturer’s] customers, not [the manufacturer], 

applied the diazo coating, [the manufacturer] cannot be 

liable for direct infringement with respect to those plates 

but could be liable for contributory infringement.” Id. at 

1568. This has been the law. It has never had en banc 

reversal. 

II 

THE MCKESSON CLAIMS 

McKesson argues that there is joint infringement even 

on the “control or direction” theory, stating that the healthcare provider does exercise control or direction of the use of 

the MyChart system by patients. McKesson states that: 

Before patients can even use MyChart, healthcare 

providers enter into a broader doctor-patient relationship, enroll patients in the program, and create 

personalized webpages for the patients, in order to 

facilitate the healthcare providers’ provision of services to patients. Only enrolled patients with usernames and passwords may access their personalized 

webpages created by the healthcare providers, 
MCKESSON TECH v. EPIC SYSTEMS 16

which are linked to medical records created by providers for each patient. Patients enter into a contractual agreement covering their use of MyChart. 

The healthcare providers provide instructions on 

every aspect of using the webpages. They can end a 

patient’s use of the system at any time. And they 

even formulate some communications for patients. 

McKesson Br. 16-17 (internal citations omitted). My colleagues deem this relationship irrelevant, ruling that it is 

the patient’s choice whether to initiate a communication, 

and use of the system is not required by the physician. 

McKesson argues that the doctor-patient relationship is 

far from the “arms-length cooperation” that was held inadequate to provide joint infringement in Muniauction or in 

BMC Resources, and that the control-or-direction test must 

be read in light of general principles of tort liability, citing 

Restatement Second of Torts §875 (“Each of two or more 

persons whose tortious conduct is a legal cause of a single 

and indivisible harm to the injured party is subject to liability to the injured party for the entire harm.”); §876(a) (“For 

harm resulting to a third person from the tortious conduct of 

another, one is subject to liability if he does a tortious act in 

concert with the other or pursuant to a common design with 

him”); §877(c) (“For harm resulting to a third person from 

the tortious conduct of another, one is subject to liability if 

he permits the other to act upon his premises or with his 

instrumentalities, knowing or having reason to know that 

the other is acting or will act tortuously”). 

No patent principle or public policy, and no statutory 

requirement, warrants departure from these common law 

principles. See PharmaStem Therapeutics, Inc. v. ViaCell, 

Inc., 491 F.3d 1342, 1358 (Fed. Cir. 2007) (“The 1952 Act did 

not make a substantive change in the law of contributory 
17 MCKESSON TECH v. EPIC SYSTEMS

infringement, but it divided the judicially created category 

of contributory infringement into two statutory subsections.”). The question is that “of identifying the circumstances in which it is just to hold one individual accountable 

for the actions of another.” Sony Corp. Am. v. Universal 

City Studios, Inc., 464 U.S. 417, 435 (1984) (discussing 

copyright infringement). To the extent that recent panel 

rulings including BMC Resources, Muniauction, Golden 

Hour, and Akamai appear to stand for an absolute requirement that there must be direct infringement by a single 

entity who performs or controls or directs every step of the 

claimed method before there can be indirect infringement, 

these rulings are contravened by precedent. 

This case does not raise the specter of a patentee 

“impermissibly broaden[ing] the physical or temporal scope 

of the patent . . . in a manner that has anticompetitive 

effects,” in the words of Princo Corp. v. ITC, 616 F.3d 1318, 

1328 (Fed. Cir. 2010) (en banc). To the contrary, this is a 

case of new technology adapted to public benefit—an advance supported by patent policy. Today’s holding, and the 

few recent cases on which it builds, have the curious effect 

of removing from patent eligibility the burgeoning body of 

interactive computer-managed advances. 

A patent that cannot be enforced on any theory of infringement, is not a statutory patent right. It is a cynical, 

and expensive, delusion to encourage innovators to develop 

new interactive procedures, only to find that the courts will 

not recognize the patent because the participants are independent entities. From the error, confusion, and unfairness 

of this ruling, I respectfully dissent.