In a decision that must be characterized as predictable, the Federal Circuit held that section 271(f) does not apply to method claims. The issues in Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. are set forth here.
The court overruled Union Carbide v. Shell Oil Co. and relied on the Supreme Court’s admonition to exercise extreme care when interpreting a statute to have extra-territorial effect. In AT&T Corp. v. Microsoft Corp., the Court had reserved judgment on whether an intangible method or process could qualify as a patented invention under section 271(f), but sent a clear message that territorial limits should not be lightly breached.
In Cardiac Pacemakers, the Federal Circuit held that a “component” of a method claim is a step of that method. Section 271(f) requires that “components” of a patented invention be “supplied” by the infringer. The court found this term to be fatal to the argument that section 271(f) applies to method claims. “Supplying an intangible step is  a physical impossibility.” The court noted that only one of all of the amicus briefs filed in the case suported the position that section 271(f) applies to method claims and that the legislative history of section 271(f) is almost completely devoid of the mention of method claims.
Judge Newman issued the lone dissent, where she argued that the court’s holding “is contrary to the text of the statute, ignores the legislative history, is without support in precedent, and defeats the statutory purpose.” She argued that the term “patented invention” should have the same meaning in the entire Patent Act and includes method claims.
It is interesting to note that the court referred to amicus briefs several times in the en banc section of its opinion, even adding a footnote expressing appreciation to those who submitted them. This could be a signal that the court may be giving more credence to such briefs in the future.