Patent Law

Loop in the Lasso

By Gary Odom and Jordan Kuhn

35 U.S.C. § 271 defines "infringement of patent." ¶ (f) closed a dodge: foreign assembly that would be infringing if done domestically. The Supreme Court, in Microsoft v. AT&T, declared software an exception to that - one could skirt process infringement by shipping a software disc out of the country. Did that leave the 2005 CAFC ruling in Union Carbide b. Shell Oil standing, where "Section 271(f) applies to components used in the performance of patented methods and processes"? For now, in another highlight of the illogical incongruities in U.S. patent law.

Cardiac Pacemakers v. St. Jude Medical and Pacesetter (CAFC 2007-1296, -1347) nonprecedential

Cardiac Pacemakers sued St. Jude Medical and Pacesetter for infringing patents for implantable cardioverter defibrillators (ICDs). On the fourth round of appeals, one of the issues was damages.

[[T]he [district] court rejected St. Jude's motion to limit damages to U.S. sales of ICDs. The court held that, according to Federal Circuit case law on 35 U.S.C. § 271(f), Cardiac was not limited in its potential damages award to infringing devices that were sold in the United States. Id. at 1042-44.

Judge Lourie, for a panel including Judges Newman and Mayer, ground his teeth writing:

St. Jude urges us to hold that the Supreme Court's decision in Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) overturns this court's prior precedents that have held that § 271(f) applies to method claims. We do not agree. As St. Jude admits, the Supreme Court "left open the question of whether Section 271(f) applies to method claims." Appellees' Brief at 62. St. Jude would have us extend the reasoning behind the Supreme Court's decision in AT&T to overturn this court's decision in Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005) (holding that Section 271(f) applies to components used in the performance of patented methods and processes). We decline to do so. While this court was not unanimous in its approval of the holding in Union Carbide, see Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 434 F.3d 1357, 1358-59 (Fed. Cir. 2006) (Lourie, J., Michel, J., and Linn, J., dissenting from order denying rehearing en banc), the Supreme Court's decision does not alter that holding. 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.

Full post as published by The Patent Prospector on December 20, 2008 (boomark / email).