Federal Circuit Overturns Earlier Decision and Holds No Liability for Exporting Components of Method Patents
By Evan Kubota – Edited by Sarah Sorscher
Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 2007-1296, -1347 (Fed. Cir. Aug. 19, 2009)
On August 19, 2009, the Court of Appeals for the Federal Circuit, sitting en banc, held that 35 U.S.C. § 271(f), a statute providing for liability for exporting components of patented inventions, does not apply to method patents. The ruling overturned the Federal Circuit’s prior panel decision in Union Carbide Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2006). A Federal Circuit panel also reversed the District Court for the Southern District of Indiana’s grant of summary judgment on the issue of invalidity, restored the jury’s finding of infringement, and remanded the case for determination of damages.
Section 271(f) imposes infringement liability upon anyone who “supplies or causes to be supplied in or from the United States” components of a patented invention and induces their combination in a manner that would infringe the patent if it occurred within the United States. It was intended to close the loophole created by a Supreme Court decision, Deepsouth Packing Co., v. Laitram Corp., 406 U.S. 518 (1972), that had rejected infringement liability where unassembled parts of a patented shrimp deveining machine were shipped abroad. In 2007, the Supreme Court had expressly declined to answer the question of whether a method or process patent “qualifies as a patented invention” under section 271(f). Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007).
Patently-O, Patent Prospector, and Conflict of Laws.net summarize the decision. The AmLaw Litigation Daily provides an overview of the stakes for U.S. business interests, and a brief comment from a lawyer for one of the amici. (more…)