11/03/2009 11:33:28 AM EST
Bensen on Cardiac Pacemakers v. St. Jude Med., 576 F.3d 1348 (Fed. Cir. 2009)
The Federal Circuit's Decision
Cardiac argued that Congress evidenced its intent to extend § 271(f) to methods by referring in the statute simply to a patented "invention" and that "component" encompasses the apparatus used to execute a method.
"Invention," of course, is defined by 35 U.S.C. § 101 to include methods along with other forms of invention. The Federal Circuit, however, rejected the notion that the issue could be so easily resolved. "Critical," in the Federal Circuit's view, was the distinction between a patented method, on one hand, and a patented machine, manufacture or composition of matter, on the other. A claim to a device or product is a claim to a tangible item while a claim to a method or process is to a series of acts or steps. Accordingly, a "component" of a device or product is a tangible part of the invention while a "component" of a method or process is a step in the method or process. The Federal Circuit found support for this distinction in 35 U.S.C. § 271(c), which distinguishes a "component of a patented machine, manufacture, combination or composition" from "a material or apparatus for use in practicing a patented process." Thus, while a method has components, for the purposes of § 271(f) those components are the steps of the method, not the physical items used in the performance of the method.
The Federal Circuit then focused on the requirement in § 271(f) that the "component" be "supplied." Construing "supplied" according to its ordinary meaning, the Federal Circuit concluded that to be "supplied," the component must be provided or furnished. As it would be a physical impossibility to provide or furnish from the United States an intangible step, it would be impossible to supply the components of a patented method as contemplated by § 271(f). For this reason, the court held, method patents are not within the reach of § 271(f).
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