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In June 2016, AmSurg Corp. and Envision Healthcare Holdings, Inc. (Envision) announced they have signed a definitive merger agreement pursuant to which the companies will combine in an all-stock transaction. Upon completion of the merger, which is expected to be tax-free to the shareholders of both organizations, the combined company will be named Envision Healthcare Corporation and co-headquartered in Nashville, Tennessee and Greenwood Village, Colorado. The company's common stock is expected to trade on the New York Stock Exchange under the ticker symbol: EVHC. Bass, Berry & Sims served as lead counsel on the transaction, led by Jim Jenkins. Read more.

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Inside the FCA blogInside the FCA blog features ongoing updates related to the False Claims Act (FCA), including insight on the latest legal decisions, regulatory developments and FCA settlements. The blog provides timely updates for corporate boards, directors, compliance managers, general counsel and other parties interested in the organizational impact and legal developments stemming from issues potentially giving rise to FCA liability.

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Federal Circuit Changes Standard for Proving Inducement of Patent Infringement

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September 5, 2012

On Friday, August 31, 2012, the U.S. Court of Appeals for the Federal Circuit issued its long-awaited en banc decision in Akamai Technologies, Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corp., dramatically changing the law of patent infringement in a 6-5 decision.1

The en banc opinion holds that an accused infringer can be held liable for inducement to infringe a claimed method if (1) the accused infringer knew of the patent; (2) the accused infringer induced performance of the steps of the method claimed in the patent, and (3) those steps were performed, even if the patent owner cannot prove direct infringement. In so holding, the Federal Circuit expressly overturned prior precedent 2 requiring proof of direct infringement by a single entity as an element of an inducement claim. Under the new rule, "all the steps of a claimed method must be performed in order to find induced infringement, but . . . it is not necessary to prove that all the steps were committed by a single entity."

As Judge Newman writes in a dissenting opinion, "the court adopts a new theory of patent infringement, based on criminal law, whereby an entity that 'advises, encourages, or otherwise induces,' [o]r 'causes, urges, encourages, or aids the infringing conduct,' is liable for the infringing conduct."

The Akamai decision raises some immediate concerns. First, will the decision give rise to new inducement-only patent infringement litigation where the patent owner cannot prove direct infringement? Second, what remedies are available to address inducement when the ultimate conduct is not actionable? Third, as noted by Judge Newman, "[s]ince the inducer is liable when he breaches the 'duty' not to induce, is the inducer subject to multiplication of damages?" Finally, when or how, does a potential inducer fulfill his or her "duty to exercise due care to determine whether or not he is infringing" 3 owners and users in navigating the complex new landscape carved by the Akamai decision. 

Update: On June 2, 2014, the U.S. Supreme Court reversed the Federal Circuit's decision in this case.  You can read more about the Supreme Court's decision in our June 5, 2014 Alert. On August 13, 2015, the Federal Circuit expanded the test for direct infringement of method claims by multiple actors, and we analyzed that decision in our August 14, 2015 Alert.

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1 The Federal Circuit's 103-page decision is no longer available on their website.
2 BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007). 
3 Newman, J., dissenting, quoting Underwater Devices Inc. v. Morrison-Knudsen Co., Inc., 717 F.2d 1380, 1389 (Fed. Cir. 1983).


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