Patent Law Center: Insights & Analysis: Method Patent: Bensen on Cardiac Pacemakers v. St. Jude Med., 576 F.3d 1348 (Fed. Cir. 2009)

Method Patent

11/3/2009 11:33:28 AM EST

Bensen on Cardiac Pacemakers v. St. Jude Med., 576 F.3d 1348 (Fed. Cir. 2009)

Co-author of Milgrim on Licensing and Milgrim on Trade Secrets and a Visiting Assistant Professor of Law at Hofstra University School of Law

In Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348 (Fed. Cir. 2009), the Federal Circuit overturned Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005) and held that 35 U.S.C.S. § 271(f) does not extend to method patents. It ruled that the components of a method patent are its steps and due to its intangible nature, the components of a method patent cannot be supplied from the United States for the purposes § 271(f). In this Analysis, Eric Bensen, co-author of Milgrim on Trade Secrets, discusses the implications of Cardiac Pacemakers’ important ruling. He writes:

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).

In light of its holding, the Federal Circuit overruled Union Carbide. It also overruled any implication in Eolas [v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005)] or its "others decisions" that § 271(f) applies to method patents.

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