Change in Law Does Not Always Compel Remand

In Medgraph, Inc. v. Medtronic, Inc., No. 15-2019 (Fed. Cir. Dec. 13, 2016), the Federal Circuit affirmed the district court’s summary judgment of noninfringement despite recent changes in the law governing direct infringement. Direct infringement of a method claim requires that a single entity or group of entities perform each step of the method. The legal definition of what may be attributed to a “single entity,” however, changed during this case’s pendency. Before the district court granted summary judgment to accused infringer Medtronic, the law attributed third-party acts to an accused infringer if the third party acted as the accused’s agent or in a contractual relationship with the accused. After the grant of summary judgment, the Federal Circuit broadened this standard to include instances when an accused infringer “conditions participation in an activity or receipt of a benefit upon performance of a step or steps” of the method.

Although a change in law normally compels remand, the Court found that patent owner Medgraph produced no facts showing that it could meet the new standard in this case. More specifically, the Court found that—despite extensive discovery—Medgraph presented no facts showing that Medtronic conditioned participation or receipt of a benefit on performance of any of the claimed method’s steps. Additionally, Medgraph identified no potential avenue for discovering additional facts relevant to this inquiry.