Divided Infringement in Patent Law and the Doctor-Patient Relationship

By Rachel Sachs

Regular readers of this blog (hi, Mom) will recall that I often think and write about the interaction between the divided infringement doctrine in patent law and medical method patents of various kinds.  In previous posts, I’ve written about the Federal Circuit’s efforts to assign liability for divided infringement of method patents and considered the potential impact on medical method patents (here and here) and I’ve more recently examined a district court opinion applying the Federal Circuit’s analysis to a method-of-treatment claim (here).

I’ve just posted a new essay on SSRN (here, forthcoming in IP Theory) specifically considering the role of the doctor-patient relationship in the Federal Circuit’s analysis.  Would the Federal Circuit see the doctor-patient relationship as fitting within the scope of its divided infringement analysis?  Should it?  These questions are timely, as the Federal Circuit is due to take up these issues very soon.  Briefing before the court in the Eli Lilly case I considered in my last blog post has just been completed, and the case will likely be scheduled for argument later this summer.

The essay begins by reviewing recent developments in the case law of divided infringement.  Most of the cases to have considered the question of divided infringement thus far have involved method patents relating to business methods or software.  As such, it is unclear whether the courts will apply an identical analysis in the life sciences context.  However, there are important differences between the corporation-consumer relationship implicated in cases like Akamai and the doctor-patient relationship implicated in cases like Eli Lilly.

The main point of the essay is thus to consider the role of the doctor-patient relationship within the divided infringement paradigm.  I apply key points from the bioethical literature about the character of the doctor-patient relationship to argue that the doctor-patient relationship really isn’t one that should satisfy the Federal Circuit’s demanding doctrinal “direction or control” test for divided infringement.  I then go on, though, to consider whether this makes sense as a policy matter.  I suggest that scholars who are concerned with the recent § 101 developments may indeed hope that the Federal Circuit enables liability to be assigned for method claims implicating the joint actions of a physician and her patient, while those who are agnostic about the impact of the § 101 developments on their own may be concerned by the combination of the two doctrines.

Comments on the draft are welcome!

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