35 USC 271 defines Patent infringement. Section 271(f) is meant to prevent parties from avoiding infringement by shipping a patented device in smaller components and then assembling the components overseas. Section 271(f) creates a cause of action for infringement for supplying components of a patented invention for assembly outside the US.
In the case, St. Jude shipped Implantable cardioverter defibillators overseas. The patentee Cardiac had a method claim to administer a particular shock sequence using the defibillator. The patentee Cardiac argued St. Jude infringed under 271(f) where St. Jude shipped defibillator overseas that then were used to perform the patentee’s method.
The Federal Circuit, en banc, held that Section 271(f) does not encompass devices, supplied outside the US, that may be used to perform a patented method.
Federal Circuit limited the subject matter reach of 35 U.S.C. § 271(f), holding that the
statute does not apply to methods or device that may be used to practice the claimed method outside of the US.
Section 271(f) provides in full as follows: (emphasis added)
(1) Whoever without authority supplies or causes to be supplied in or fromThe court found that “supplied” to mean the physical transfer of an object. Therefore, the court reasoned “because one cannot supply the step of a method, Section 271(f) cannot apply to method or process patents.”
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.
(2) Whoever without authority supplies or causes to be supplied in or from
the United States any component of a patented invention that is
especially made or especially adapted for use in the invention and not
a staple article or commodity of commerce suitable for substantial
noninfringing use, where such component is so made or adapted and
intending that such component will be combined 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.
For many patent holders, where both device claims and method claims can be included in issued patents, this case will not have much effect. However, for technologies where only method claims are available, this case can limit export damages (enforcement outside the US). Biotech companies who make products, such as diagnostic kits or assays that can only be claimed as methods will not be able to use section 271(f) for extraterritorial enforcement.
For software and internet companies, the Cardiac decision appears to be consistent with the NTP, Inc. V. Research in Motion, Ltd, 418 F.3d. 1282, (Fed. Cir. 2005). The NTP court held that Section 271(f) does not apply where RIM supplied BlackBerry handheld devices to customers in the United States, and use of those devices (in concert with a relay of the Blackberry network located in Canada) would infringe NTP’s patented method if all steps were performed in the United States. Id. at 1321.
Practice pointer – try to include many claim types (e.g,. device, method and manufacture) and write claims from the perspective a (one) potential infringer.
Opinion http://www.cafc.uscourts.gov/opinions/07-1296.pdf
