Post Microsoft v. AT&T: 271(f) ExtraTerritorial Infringement Still Applies to Process Claims

Cardiac Pacemakers v. St. Jude Medical (Fed. Cir. 2008) (non-precedential)

35 U.S.C. § 271(f) defines a special cause of action for supplying components of a patented invention to be assembled abroad. 

In the 2005 Union Carbide case, the Federal Circuit seemingly expanded 271(f) to cover components used in a claimed method. Then, in the 2007 Microsoft v. AT&T decision, the Supreme Court found that 271(f) does not extend to cover foreign duplicated software.  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.

In this case, the asserted claims are method claims, and the accused infringer (St. Jude) argued that Union Carbide v. Shell Oil is so “flatly inconsistent” with the reasoning of Microsoft, that it too should be overturned

“The three decisions that the district court felt constrained to follow - Eolas, AT&T, and Shell Oil - have been overturned or disapproved by the Supreme Court.”

On appeal, however, the Federal Circuit simply found that “the Supreme Court’s decision does not alter [the] holding” that “271(f) applies to components used in the performance of patented methods and processes.”

As a panel, we cannot reverse the holding of another panel of this court. We thus affirm the district court’s decisions relating to damages.

Comments

[anon-y-mouse]

If attempts to get this case en banc don't go far,
The Federal Circuit might soon see a GVR.

[christianovitch]

I'm very confused--I was under the impression that the Federal Circuit (as do most Circuits) resolved intra-circuit splits by adhering to the earlier precedent case (absent an en banc decision or a Supreme Court resolution). In this case, I had thought that Lourie was firmly in the Standard Havens camp based on his earlier dissent from the denial of an en banc hearing for Union Carbide. Wouldn't Standard Havens be the guiding panel decision to be followed in this case? Why is there no mention of Standard Havens at all in this opinion?

[Paul F. Morgan]

This [non-precident] decision correctly holds that IN THE U.S. "Cardiac can only receive infringement damages on those devices that actually performed the patented method during the relevant infringement period." [Not just because sold devices MIGHT be used to infringe.]
But does this §271(f)decision mean that Cardiac can recover damages for FOREIGN infringment under 35 U.S.C. §271(f)for ALL EXPORTED devices even if NOT proven actually used to infringe the method? If so, does that make sense?