The Federal Circuit has granted a petition for rehearing en banc in Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. to decide the question:
Does 35 U.S.C. § 271(f) apply to method claims, as well as product claims?
Section 271(f) states as follows:
(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.
(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 uncombined in whole or in part, knowing that 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.
Thus, the question to be decided in this case is whether the export of subject matter to be used in a patented process could constitute a “component” for infringement purposes within the meaning of § 271(f).
St. Jude argues that the Supreme Court decision in Microsoft Corp. v. AT&T Corp. (2007) requires the Federal Circuit to hold that § 271(f) only applies to apparatus claims and not to process claims. The original panel decision in Cardiac Pacemakers declined to do so, holding that it was bound by earlier Federal Circuit precedent and that Microsoft expressly left open the question of whether § 271(f) applies to method claims.
In 2005, the Federal Circuit held that § 271(f) does apply to method claims in Union Carbide v. Shell Oil Co. In that case, however, at least three judges dissented from the court’s denial to rehear the case en banc. This dissent, plus the intervening Supreme Court decision in Microsoft, would seem to signal that the court is ready to overturn Union Carbide and hold the § 271(f) does not apply to method claims.
Cardiac Pacemakers is a complex case that has involved many patents and has been litigated for many years. The case has been up and down to the Federal Circuit on various issues at least four times. Along the way, various issues and claims have arisen and been dropped.
One lesson to learn from the case is that patents should include a number of different claims of varying scope to encompass various theories of infringement and various infringers. If appropriate, patents should include both apparatus and method claims.
The court has invited amicus briefs in this case. Argument before the entire court will be held on June 1.
