Title 35 U.S.C. § 271(f) was enacted by the U.S. Congress to close a loophole that would otherwise allow an infringer to avoid infringement by exporting “components” of a patented invention from the United States to a foreign country for later assembly. The language of § 271(f) provides the following:
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...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.
At issue before the Court of Appeals for the Federal Circuit (Federal Circuit) in Cardiac Pacemakers, Inc., et al. v. St. Jude Medical, Inc., et al.1 was whether § 271(f) applied to method claims. In an en banc decision on August 19, 2009, the Federal Circuit held that § 271(f) does not apply to method or process patents, thereby overruling earlier precedent set by the Federal Circuit in Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co.2
In reaching this decision that § 271(f) does not apply to method or process patents, the Federal Circuit analyzed the distinction between a claim to a product, device or apparatus, all of which are tangible items, and a claim to a method or process, which consists of a series of acts or steps. In particular, the Federal Circuit noted that a material or apparatus for use in practicing a patented method or process is not a component of that method or process. Instead, the components of the method or process are the intangible steps of that method or process.
While acknowledging that patented methods have components—that is, the intangible steps—the Federal Circuit analyzed the § 271(f) requirement that those components are “supplied.” Under the ordinary meaning of “supply,” the Federal Circuit reasoned that a transfer of a physical object is implied. However, the Federal Circuit indicated that “[s]upplying an intangible step is...a physical impossibility.” Indeed, the Federal Circuit noted that “ ‘it is difficult to conceive how one might supply or cause to be supplied all or a substantial portion of the steps in a patented method in the sense contemplated by’ [§] 271(f).”3
In conclusion, the Federal Circuit held that § 271(f) does not forbid the supplying of products that are the results of steps of the patented method; rather it forbids the supply of the components themselves. Thus, because one cannot supply the step of a method or process, § 271(f) cannot apply to method or process patents.