Patent Law

Cardiac Pacemaker v. St. Jude __ F.3d ___ (Fed. Cir. 2009) (En Banc)

In an en banc decision, the Federal Circuit has ruled that 35 U.S.C. § 271(f) "does not cover method claims." This decision overturns the controversial 2005 decision in Union Carbide v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005). The ruling was widely expected based on the Supreme Court's 2007 decision in Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) (holding that "master disks" were not a 271(f) "component" when abroad to be copied and then installed to form a would-be infringing system). In reading Microsoft v. AT&T, the Federal Circuit found "a clear message that the territorial limits of patents should not be lightly breached."

The holding is based in the logic that a process is a series of steps and, therefore, does not have any physical components amenable to export.

[M]ethod patents do have "components," viz., the steps that comprise the method, and thus they meet that definitional requirement of Section 271(f), but the steps are not the physical components used in performance of the method.

The result in this case is that Cardiac's process claim (Claim 4) cannot be infringed under Section 271(f).

Claim 4 of the '288 patent is comprised of the steps of determining a heart condition, selecting cardioversion as the appropriate therapy, and executing a cardioverting shock. Cardiac does not allege that all of those steps are carried out in the United States with respect to certain of the ICDs. Moreover, it cannot allege that the steps of the method are supplied, a contradiction in terms. Rather, Cardiac alleges that St. Jude's shipment of a device that is capable of performing the method is sufficient to fall within the scope of Section 271(f). Although the ICD that St. Jude produces can be used to perform the steps of the method, as we have demonstrated, Section 271(f) does not apply to method or process patents. As Section 271(f) does not encompass devices that may be used to practice a patented method, St. Jude is therefore not liable for infringement ... for IDCs exported abroad.

Reversed (on this issue)

Notes

• Judge Newman dissented from the opinion ? arguing that the language of 271(f) applies to any "patented invention."
• This case was only partially decided en banc. Part (c)(2) is en banc while the rest of the decision is decided by the panel of Judges Newman, Mayer, and Lourie. Judge Lourie signed the entire majority opinion, and Judge Newman only dissented as to Part (c)(2).
• Cardiac Pacemaker v. Jude: Challenging 271(f) Liability for Components of a Method (Discussing briefs)