Background
McKesson Technologies held U.S. Patent No. 6,820,235 covering methods for electronically communicating between healthcare providers and their patients — including methods for patients to initiate communications, receive responses, and access their own health information through an online portal connected to a healthcare provider’s electronic health record (EHR) system. The patented method claimed steps performed by both the healthcare provider (configuring the portal, responding to messages) and the patient (initiating messages, accessing records).
Epic Systems Corporation developed the MyChart patient portal, one of the most widely used patient-facing healthcare communication systems in the United States. McKesson sued, arguing that healthcare providers who used MyChart practiced all steps of the patented method — with providers performing the provider-side steps and their patients performing the patient-side steps under the healthcare providers’ direction. The district court granted summary judgment for Epic based on the divided infringement doctrine.
The Court’s Holding
The Federal Circuit affirmed, applying the BMC Resources direction-or-control test for divided infringement. To hold a single party liable as a direct infringer when multiple parties perform different steps of a method claim, the defendant must “direct or control” the performance of the remaining steps. In this case, while Epic’s healthcare provider customers might configure and manage the MyChart system, the patients who performed the patient-side steps were not agents of the providers and were not subject to provider direction or control in any meaningful sense — patients independently chose to use the portal and performed their steps for their own benefit, not at the direction of the provider.
Without a finding that healthcare providers directed or controlled their patients’ use of the portal system, no single party performed all steps of the claimed method, and no direct infringement existed. Judge Gajarsa dissented, arguing that the direction-or-control standard was too narrow and resulted in a legal regime where patent protection was easily circumvented by designing systems that require end-user participation.
Key Takeaways
- When a method patent claim requires steps performed by both a service provider and its end users, neither party is a direct infringer if the provider does not direct or control the users’ performance of the user-side steps in an agency or legally meaningful control relationship.
- Patients using a healthcare portal are not agents of the healthcare provider deploying the portal — they act for their own benefit and are not subject to provider direction, defeating direct infringement where patient steps are required.
- Software and healthcare IT patent claims that include steps performed by end users (patients, customers, subscribers) are structurally vulnerable to divided infringement defenses, unless a party can be shown to direct or control the user’s performance.
- This decision, along with Akamai v. Limelight and related cases, contributed to the Federal Circuit’s en banc Akamai decision (2012) which broadened induced infringement liability in multi-actor method claim contexts.
Why It Matters
McKesson v. Epic was a landmark case for healthcare IT patent law at a time when electronic health records, patient portals, and digital patient-provider communication were rapidly transforming healthcare delivery. The Federal Circuit’s holding that the divided infringement doctrine protected Epic — and by extension all EHR vendors who deploy patient portals — from direct infringement claims based on patient-performed steps had major commercial significance for the rapidly growing health IT industry.
The case also illustrated the limits of patent protection for interactive service systems: patent holders who designed claims requiring user participation to complete the method found those claims unenforceable against the most commercially accessible defendants (the platform operators). The decision became an important driver for the Federal Circuit’s subsequent broader analysis of divided infringement in the Akamai en banc case, where the court reconsidered and ultimately expanded the circumstances under which multi-party method infringement can be attributed to a single defendant through an inducement theory.