On Friday, the Federal Circuit heard argument in Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. I reviewed the issues in this case in an earlier post. Basically, the Federal Circuit will decide whether § 271(f) applies to method claims. BNA (subscription service) has reported on the argument.
A major part of the argument was whether methods can have “components” as recited in § 271(f). St. Jude argued that indeed, methods have components. The components of methods are steps or acts, not devices, apparatus, machines, or material. Not surprisingly, Cardiac Pacemakers argued that components refers to any statutory category under § 101 of the Patent Act. Cardiac also tried to distinguish the Supreme Court’s Microsoft decision by arguing that the master disk in that case was not a “component” of the claimed method, but only a blueprint. The component was the computer program.
The other major part of the argument was the extra-territorial effect of the US patent laws. St. Jude argued that the Supreme Court had called the issue of § 271(f)’s effect a close question, but erred on the side of not extending the extra-territorial effect of the US patent laws. Cardiac Pacemakers argued that Congress enacted § 271(f) to close a loop-hole in US patent law that allowed an infringer to perform most of the infringement in the US and complete infringement overseas without liability.
The tone of the questions seems to indicate that the court is ready to overturn Union Carbide and hold that § 271(f) does not apply to method claims. A decision by the court should come later this year.
