Change in Method Patent Protection Scope - Cardiac Pacemakers
The Federal Circuit's recent decision in Cardiac Pacemakers represents a shift in method patent protection scope. Generally, activities outside the U.S. do not trigger U.S. patent liability. But 35 U.S.C. Section 271(f) creates patent liability for certain import and export activities, such as exporting components of a patented invention and actively inducing the combination of the components outside of the US, if such combination would infringe within the US.
Under previous case law, the Federal Circuit found that 271(f) applied to method claims, and a defendant's export of a catalyst needed to perform a patented method could result in liability. Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co. (Fed. Cir. 2005).
In Cardiac Pacemakers, the Federal Circuit reversed its previous position and ruled that the section does not apply to method patents. Cardiac Pacemakers had sued over a patent claiming a method of using an implantable stimulator that detects heart arrhythmias. The Federal Circuit held that the defendant's implantable cardioverter defibrillators practicing the method of Cardiac’s patent outside the U.S. cannot constitute infringement under that statute. Because method or process patents do not include the required "physical components" of a patented invention and because one cannot "supply the step of a method," the statute cannot apply to method or process patents.
It is now more important than ever to ensure your patent portfolio protects not only the methods of producing semiconductor products, but also the products themselves if at all possible.
