Patent Law

Cardiac Pacemakers v. St. Jude Medical (en banc 2009)

Patent law is ordinarily considered territorial. Infringement of a US patent normally requires practicing an entire patent claim within the US. 35 U.S.C. § 271(f) details an exception to the rule that creates a cause of action for patent infringement for the action of supplying components of a patented invention to be assembled abroad. The Court of Appeals for the Federal Circuit has announced that it will hear a 271(f) case en banc to determine whether "35 U.S.C. § 271(f) appl[ies] to method claims, as well as product claims."

The case is set for the Court to provide a resounding answer: "No, Section 271(f) does not apply to method claims."

The statute in question reads as follows:

271(f)(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

In the 2005 Union Carbide decision, the Federal Circuit interpreted 271(f) to encompass method claims. Thus, in that case, Shell was properly held liable for exporting a catalyst to be used abroad to practice the method in a foreign facility Union Carbide is the specific precedent followed by the three member Cardiac Pacemaker panel. Then, in the 2007 Microsoft v. AT&T decision, the Supreme Court found that 271(f) does not extend to cover foreign duplicated software - i.e., that the software in the abstract is not a "component." Part of the Supreme Court?s justification for its narrow interpretation of 271(f) was based on the traditional presumption against extraterritorial application of US laws.

The court welcomes Amicus briefs on the subject.