what is a component: has cardiac pacemakers put 35...

383

WHAT IS A COMPONENT: HAS CARDIAC

PACEMAKERS PUT 35 U.S.C. § 271(F)‘S

APPLICABILITY TO PROCESS PATENTS

ON LIFE SUPPORT?

Ernest J. Hanson*

TABLE OF CONTENTS

I. Introduction ................................................................................................. 383 II. Background ................................................................................................. 386

A. Patent Infringement ................................................................................. 386 B. Extraterritoriality..................................................................................... 387 C. Deepsouth Packing Co. v. Laitram Corp. ............................................... 388 D. Congress‘ Clear and Certain Signal ........................................................ 389

III. Analysis....................................................................................................... 390 A. The Recent Process Claim Cases ............................................................ 391

1. Pellegrini v. Analog Devices, Inc. ...................................................... 391 2. Eolas Technologies Inc. v. Microsoft Corp. ....................................... 392 3. AT&T Corp. v. Microsoft Corp. (AT&T I) ........................................ 393 4. Union Carbide v. Shell Oil Co. ........................................................... 394 5. AT&T Corp. v. Microsoft Corp. (AT&T II) ....................................... 395 6. Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. ............................ 397

B. 35 U.S.C. § 271(f) and Process Patents .................................................. 399 IV. Recommendation ........................................................................................ 400

A. What Does the Statutory Language Tell Us About §271(f) .................... 401 1. Patented Invention .............................................................................. 401 2. Supplied .............................................................................................. 403 3. Component ......................................................................................... 406

V. Conclusion .................................................................................................. 407

I. INTRODUCTION

An independent engineer of computer software has just made a

tremendously important breakthrough. Her discovery will completely

revolutionize the way people use computers in this country. She has worked

relentlessly for the last several years on her software, and has additionally

*

J.D. Candidate, University of Illinois College of Law, 2011; B.S., magna cum laude, Biological

Sciences, Marquette University, 2006; Registered Patent Agent 2008.

384 JOURNAL OF LAW, TECHNOLOGY & POLICY [Vol. 2010

invested her entire life savings into the project. She has wisely retained the

services of a reputable patent attorney, who has diligently and competently

filed her application for patent. Everything is finally going right for this young

inventor, or so it would seem.

Unbeknownst to her, two rather disreputable young men have each

pilfered a copy of her revolutionary software. The first man burns one million

copies of the software onto individual compact discs and ships these discs

overseas. Once these copies reach their destination, they are installed onto

laptop computers which will be sold throughout the world, exclusive of the

United States. The second man, for no other reason than being in a rush to

quickly bring the software to market, electronically transmits a copy of the

software overseas. Upon receipt, the software is then copied onto a master

disk, which is likewise used to install the software onto laptop computers.

Both of these men reap rich financial rewards for their unethical behavior, but

while the former is liable under current U.S. patent law, the latter is not.1

It would seem to be common sense to the casual observer that what these

two men did was basically the same thing, and that they quite obviously

committed the same crime. Similarly, it would be logical to suppose that our

young software engineer should be able to recover against both men.

Unfortunately, logic has little to do with the current judicial interpretation of

the patent laws that govern infringement.2

It has been over twenty-five years since Congress amended 35 U.S.C. §

271, adding sub-section (f), to ―close a loophole‖ in the patent laws governing

infringement when a party attempts to avoid a U.S. patent by supplying the

components of a patented product for assembly in a foreign country.3 Whether

or not this loophole has actually been closed is a matter of opinion, and

depends heavily upon one‘s interpretation of the statute itself. The relevant

statute reads as follows:

(1) 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, where such components are uncombined in whole or in part, 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.

(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and

1. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 442 (2007) (AT&T II) (holding that when a

company does not export from the United States the actual copies of a software program that is installed, it is

not liable under § 271(f) as currently written).

2. 35 U.S.C. § 271 (a)-(i) (2006).

3. 1984 U.S.C.C.A.N. 5827, 5828.

No. 2] WHAT IS A COMPONENT 385

intending that such component will be combined 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.

4

Since Congress‘ adoption of sub-section (f),5 the courts have struggled in

interpreting the language of the statute, especially as it pertains to what

qualifies as a ―component.‖ Much of the problem stems from the fact that the

term ―component‖ is not defined anywhere in the infringement statute.6

Consequently, this lack of guidance has led to vastly different outcomes for

similarly situated parties.7

A return to our earlier scenario of the software engineer and the two

disreputable young men further illustrates this point. Under one interpretation

of 35 U.S.C. § 271(f),8 both of the young men would be liable for

infringement. This interpretation would not limit ―components‖ to being

physical objects.9 Instead, because both of the young men sent the patented

computer software from the United States and caused the software to be

installed on the foreign computers, they would both be liable. Here, the

emphasis is on the core of the invention, which is the software code, and not on

the compact disc delivery device.

Under an alternate interpretation of § 271(f), although both of the young

men sent the patented computer software from the United States and did cause

this software to be installed on the foreign computers, only the first young man

is liable for infringement.10

Here, the emphasis is on whether the component is

physical.11

As it pertains to computer software, the Supreme Court has held

that only a copy of the software, not the software in the abstract sense,

qualifies as a component under § 271(f).12

This difference in interpretations has apparently been resolved and

clarified in the Federal Circuit‘s recent decision in Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.,

13 which explicitly overruled previous holdings that

would have made both of our disreputable young men liable. However, the

question still exists whether this interpretation is the one that was intended by

Congress.

This Note will consider the rationale and implications of the different

interpretations considered by the courts in resolving the application of 35

U.S.C. § 271(f) over the years. In undertaking this endeavor, this note focuses

on an attempt to decipher what comprises a ―component‖ as it pertains to

patent infringement. Part II provides a brief history of Congress‘ authority in

4. 35 U.S.C. § 271(f) (2006).

5. Id.

6. 35 U.S.C. § 271(a)-(i)(2006).

7. See infra Part III.A.

8. See Union Carbide Chems.& Plastics Tech. Corp. v. Shell Oil Co., 425 F.3d 1366, 1378–79 (Fed.

Cir. 2005) (holding that every component of every form of invention deserves the protection of 35 U.S.C. §

271(f) and that ―components‖ under § 271(f) are not limited to physical machines).

9. Id.

10. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 442 (2007) (AT&T II).

11. Id. at 451–52.

12. Id.

13. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1365 (Fed. Cir. 2009).


legislating patent law and an insight into the history of § 271(f), including the

events that led to the enactment of the statute. Part III dissects the Court‘s

wavering conviction in its interpretation of the language in § 271(f) by visiting

upon the decisions in the major cases that have lead us to the Federal Circuit‘s

opinion in Cardiac Pacemakers. This includes a critical examination of the

logical implications of these cases in an attempt to gather clues in determining

the true intent of Congress. Finally, Part IV will recommend a logical

interpretation of the term ―component‖ and discuss the relevant implications

and how we should proceed.

II. BACKGROUND

With the ratification of the United States Constitution, Congress was

given the power ―to promote the Progress of Science and useful Arts, by

securing for limited Times to Authors and Inventors the exclusive Right to

their respective Writings and Discoveries.‖14

Additionally, Congress was

given the power ―[t]o make all Laws which shall be necessary and proper for

carrying into Execution the foregoing Powers.‖15

These Article I clauses have

been held to provide the legislative branch of the federal government exclusive

domain in the granting of patent rights and the ability to legislate laws relating

to the enforcement and extension of these rights.16

While Congress does have exclusive jurisdiction over the grant of patent,

this power does have limits.17

For example, it is well settled that Congress

may not create patent monopolies of unlimited duration, nor whose effects

would be to remove existent knowledge from the public domain, or to restrict

free access to materials already available.18

The Patent Clause itself reflects

this necessary balance between the need to encourage innovation and the

avoidance of monopolies which may stifle competition.19

However, though it is Congress that enacts the laws, it is the judicial

branch that interprets these laws. It is within the context of patent

infringement where the current interpretational dilemma exists.

A. Patent Infringement

Using the powers granted to it by the Constitution,20

Congress acted to

define the scope of patent infringement. The general act of patent infringement

has been codified in 35 U.S.C. § 271(a), which states: ―Except as otherwise

provided in this title, whoever without authority makes, uses, offers to sell, or

sells any patented invention, within the United States or imports into the

14. U.S. CONST. art.I, § 8, cl. 8.

15. U.S. CONST. art.I, § 8, cl. 18.

16. See Bonito Boats v. Thunder Craft Boats, 489 U.S. 141, 168 (1989) (holding that the grant of patent

protection is exclusively the jurisdiction of the federal government).

17. Id. at 146 (noting that long-standing interpretations of the clause contain both a grant of power and

certain limitations upon the exercise of that power).

18. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 6 (1966).

19. Bonito Boats, 489 U.S. at 168.

20. U.S. CONST. art.I, § 8, cl. 8, 18.


United States any patented invention during the term of the patent therefore,

infringes the patent.‖21

As a plain language interpretation of the statute would

indicate,22

the act of infringement, and United States patent laws in general,

have not traditionally applied to conduct that occurred outside the jurisdiction

of the United States and its territories.23

B. Extraterritoriality

Congress‘ written intent to limit the territorial scope of patent laws can be

found as far back as the Patent Act of 1870.24

These limitations were echoed

more recently in the Patent Act of 1952, which stated that patents gave the

patentee an exclusionary right to keep others from ―making, using, or selling

the invention throughout the United States.‖25

The Supreme Court has

traditionally harbored similar interpretations and has declined to apply U.S.

patent laws to extraterritorial conduct.26

Over 150 years ago, in Brown v. Duchesne,27

the Supreme Court stated

that acts of Congress, as they pertained to patent law, ―do not, and were not

intended to, operate beyond the limits of the United States. . . [because] they

cannot extend beyond the limits to which the law itself is confined.‖28

More

recently, the Supreme Court reiterated this belief stating that any ambiguity in

the interpretation of statutory language should be ―resolved by the presumption

against extraterritoriality.‖29

Additionally, the Supreme Court held that this

presumption against extraterritoriality applies when interpreting ambiguities in

statutes, even when the statute itself specifically extends the reach of U.S.

patent law in some limited manner.30

When the Court finds the plain language of a statute to be unambiguous,

then all other factors become superfluous.31

However, when the Court finds

21. 35 U.S.C. § 271(a) (2006).

22. Zuni Pub. Sch. Dist. No. 89 v. Dep‘t of Educ., 550 U.S. 81, 93–94 (2007) (noting that when the

plain text of a statute is clear and unambiguous, the Court need not go any further than that text in determining

congressional intent).

23. Alan M. Fisch & Brent H. Allen, The Application of Domestic Patent Law to Exported Software: 35

U.S.C. § 271(f), 25 U. PA. J. INT‘L ECON. L. 557, 559 (2004).

24. See Act of July 8, 1870, ch. 230, § 22, 16 Stat. 198, 201 (revised 1874) (giving the holder of a patent

exclusivity rights only ―throughout the United States and the Territories thereof‖).

25. Act of July 19, 1952, ch. 950, § 154, 66 Stat. 792, 804 (current version at 35 U.S.C. § 154(a)(1)

(2006)).

26. See Brown v. Duchesne, 60 U.S. 183, 195 (1857) (stating that the power granted to Congress in

Article I, § 8, cl. 8 of the United States Constitution ―is domestic in its character, and necessarily confined

within the limits of the United States‖).

27. Id.

28. Id. at 195.

29. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1365 (Fed. Cir. 2009) (citing

Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 454–56 (2007) (AT&T II).

30. AT&T II, 550 U.S. at 454–56 (resolving any ambiguity as to the Congressional intent in enacting 35

U.S.C. § 271(f) with a presumption against extraterritoriality). In this case, even though § 271(f) did

obviously extend protection to physical components, the question of whether the statute could be interpreted to

extend these protections to intangibles was determined to be ambiguous and at least partially resolved with a

presumption against extraterritoriality.

31. Conn. Nat‘l Bank v. Germain, 503 U.S. 249, 253–54 (1991) (noting this to be the ―cardinal canon.‖

―We have stated time and again that courts must presume that a legislature says in a statute what it means and


the language of the statute to be ambiguous, then other factors may be

considered in divining legislative intent.32

Extraterritoriality is just one of

these factors to be considered, however, the Supreme Court has long held its

presumption against extending patent law beyond the confines of the United

States.33

This presumption played a pivotal role in the Supreme Court‘s

decision when it decided the historic 1972 case of Deepsouth Packing Co. v. Laitram Corp.

34

C. Deepsouth Packing Co. v. Laitram Corp.

In this case, the Laitram Corporation held two combination patents for

machinery used in the deveining of shrimp and the Deepsouth Packing

Company was previously enjoined by the District Court from using, producing,

or selling of the deveining machines in the United States.35

In a calculated

move to avoid U.S. patent law, the Deepsouth Packing Company sought

judicial approval to domestically manufacture the parts of Laitram

Corporation‘s patented machines and sell the parts to foreign buyers with the

full knowledge and expectation that these buyers would be able to easily

assemble the parts and use the machines abroad.36

The District Court, in finding for the Deepsouth Packing Company, held

that based on precedent from three different circuits, the injunction should not

be interpreted as prohibiting the export of the elements of a combination

patent, despite the fact ―that those elements could and predictably would be

combined to form the whole.‖37

The Fifth Circuit reversed, noting that

means in a statute what it says there. When the words of a statute are unambiguous, then, this first canon is

also the last: ‗judicial inquiry is complete.‘‖).

32. See generally Germain, 503 U.S. at 253–54 (noting that the canons of construction are rules of

thumb that are used to help the courts in their determination of a statute‘s legislative meaning. Among these

canons, the cardinal canon is that ―when the words of a statute are unambiguous, then, this first canon is also

the last: ‗judicial inquiry is complete.‘‖).

33. See Duchesne, 60 U.S. at 195 (stating that the power granted to Congress in Article I, § 8, cl. 8 of

the United States Constitution ―is domestic in its character, and necessarily confined within the limits of the

United States‖).

34. Deepsouth Packing Co., Inc. v. Laitram Corp., 406 U.S. 518, 531 (1971) (stating ―[o]ur patent

system makes no claim to extraterritorial effect‖).

35. A combination patent is the combination of parts that are not new, into an arrangement that is an

improvement over the existing art, and as such, nothing less than the combination as a whole can be claimed as

new. Deepsouth, 406 U.S. at 520–21.

36. Id. Deepsouth Packing Company‘s president actually wrote a letter to a foreign customer stating the

situation as follows: We are handicapped by a decision against us in the United States. This was a very technical decision and we can manufacture the entire machine without any complication in the United States, with the exception that there are two parts that must not be assembled in the United States, but assembled after the machine arrives in Brazil.

Id. at 524 n.5 (quoting Laitram Corp. v. Deepsouth Packing Co., 443 F.2d 936, 938 (5th Cir. 1971)).

37. Deepsouth, 406 U.S. at 524–25. See Hewitt-Robins, Inc. v. Link-Belt Co., 371 F.2d 225, 229 (7th

Cir. 1966) (finding that unassembled elements of a combination patent do not constitute the ―patented

invention‖ and their manufacture and sale in this country for assembly ―outside the territorial limits of the

United States does not infringe a combination patent‖); Cold Metal Process Co. v. United Engineering &

Foundry Co., 235 F.2d 224, 230 (3d Cir. 1956) (holding there was no direct or contributory infringement

where mills were sold disassembled to customers outside the territorial limits of the United States); and Radio

Corp. of America v. Andrea, 79 F.2d 626 (2d Cir. 1935) (stating that contributory infringement allows for the

elements of a combination patent ―to be sold in this country with the intent that the purchaser shall make and


allowing such an intrusion would subvert the Constitution‘s intention to

promote the arts and sciences.38

The Supreme Court, in reversing the Fifth Circuit, rejected the view that

substantial manufacture of the constituent parts of a machine constituted direct

infringement.39

Additionally, as there was no direct infringement, the Court

held that there could be no contributory infringement because contributory

infringement requires that a party contribute to an act of direct infringement

under 35 U.S.C. § 271(c).40

The Supreme Court held to the previous precedent

of the Second, Third, and Seventh Circuits, stating that it would not expand

patent rights premised on an argument based on no more than ―mere inference

from ambiguous statutory language.‖41

Perhaps in anticipation of the perceived unfairness of their ruling, the

Court claimed it ―would require a clear and certain signal from Congress

before approving the position of a litigant who, as respondent here, argues that

the beachhead of privilege is wider, and the area of public use narrower, than

courts had previously thought.‖42

D. Congress’ Clear and Certain Signal

Although it took some time, twelve years to be exact, Congress responded

to the call of the Deepsouth Court.43

With the addition of 35 U.S.C § 271(f),

Congress boldly took patent infringement into the realm of extraterritoriality

by adding the following provision:

(1) 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, where such components are uncombined in whole or in part, 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.

(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is

use the invention abroad‖).

38. Deepsouth, 406 U.S. at 525.

39. Id. at 528 (holding that a combination patent protected only against the operable assembly of the

whole and not the manufacture of the parts).

40. Id. at 526–27. The statute used in this interpretation reads as follows: Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

35 U.S.C. § 271(c) (2006).

41. Deepsouth, 406 U.S. at 531.

42. Id. This call for legislative action is similarly echoed in AT&T II. Microsoft Corp. v. AT&T Corp.,

550 U.S. 437, 459 (2007) (AT&T II) (noting that any alteration to § 271(f) should be made ―after focused

legislative consideration, and not by the Judiciary forecasting Congress‘ likely disposition.‖).

43. Patent Law Amendments Act of 1984, Pub. L. No. 98-622, 98 Stat. 3383.


especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined 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.

44

Just in case the Supreme Court missed the ―clear and certain signal‖ of

the amendment itself, Congress made a point to state that the amendment was

indeed intended to close a ―loophole‖ and was in response to ―the United

States Supreme Court decision in Deepsouth Packing Co. v. Laitram Corp.,

406 U.S. 518 (1972), concerning the need for a legislative solution.‖45

Congress intended that the addition of subsection (f) would ―prevent copiers

from avoiding U.S. patents by supplying components of a patented product in

this country so that the assembly of the components may be completed

abroad.‖46

III. ANALYSIS

With the addition of sub-section (f) to 35 U.S.C. § 271, it would seem

that Congress had sent the ―clear and certain signal‖ that the Supreme Court

had requested.47

However, at least as the statute pertains to process patents,

the Courts have not found Congress‘ signal to be quite so clear and certain.48

Predictably, early applications of 35 U.S.C. § 271(f) arose in cases where

the patented invention was a physical object.49

However, the more interesting

question of whether 35 U.S.C. § 271(f) applies to method patents began in the

early 1990‘s with the Federal Circuit finding that method patents were not

―implicated‖ in the statute.50

Simply stated, a process or method claim in a

patent is defined as ―a mode of treatment of certain materials to produce a

given result.‖51

―It is an act, or a series of acts, performed upon the subject-

matter to be transformed and reduced to a different state or thing.‖52

Taking

this cue from the Federal Circuit, the Eastern District of Virginia, concluded

that 35 U.S.C. § 271(f) did not apply to method patents because these types of

patents, while necessarily incorporating the use of ―physical objects,‖ had no

―components.‖53

44. 35 U.S.C. § 271(f) (2006).

45. 1984 U.S.C.C.A.N. 5827, 5828.

46. Id.

47. Id.

48. See infra Part III.A.

49. See, e.g., Windsurfing Int‘l, Inc. v. Fred Ostermann GmbH, 668 F. Supp. 812, 820–821 (S.D.N.Y.

1987) (applying 35 U.S.C. § 271(f) to exported components of sailboards).

50. Standard Haven‘s Products, Inc. v. Gencor Industries, Inc., 953 F.2d 1360, 1374 (Fed. Cir. 1991)

(finding 35 U.S.C. § 271(f) was not ―implicated‖ in the activities of a method patent infringer when these

activities occurred outside of the United States).

51. Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (quoting Cochrane v. Deener, 94 U.S. 780, 787–88

(1877)).

52. Cochrane v. Deener, 94 U.S. 780, 787–88 (1877).

53. Enpat, Inc. v. Microsoft Corp., 6 F. Supp. 2d 537, 539 (E.D. Va. 1998).


Perhaps unwittingly, the Eastern District of Virginia sparked a debate

over not only the applicability of 35 U.S.C. § 271(f) to method patents, but

more specifically, what constitutes a ―component.‖54

While superficially the

definition of the term ―component‖ may seem innocuous enough, the financial

ramifications for American companies could be staggering.55

With so much on

the line, how the Court defines the term ―component‖ determines whether or

not § 271(f) protects process patents against companies that would escape

patent infringement simply by sending the infringing material in a non-tangible

form.

In order to determine the definition of a ―component,‖ this note will look

at the relevant case law in which the Courts have discussed the applicability of

35 U.S.C. § 271(f) to process patents. This will not only demonstrate the

difficulty the Courts have had with deciding this issue, but will also allow

some additional insight into the definition of other key terms in the statute that

will help provide us with an acceptable definition of ―component.‖

A. The Recent Process Claim Cases

In recent years, both the Federal Circuit and the Supreme Court have

rendered conflicting opinions as to whether process claims are covered under

35 U.S.C. § 271(f). A brief analysis of the major cases, beginning in 2004 and

culminating in the Federal Circuit‘s 2009 decision in Cardiac Pacemakers,

will provide not only a basis for the rationale used by the courts, but will also

be helpful in providing the clues necessary to decipher the meaning of the term

―component‖ as it pertains to the statute.56

1. Pellegrini v. Analog Devices, Inc.

The Pellegrini Court considered whether components, manufactured

outside the United States while never physically shipped to or from the United

States, may nonetheless be ―‗supplie[d] or cause[d] to be supplied in or from

the United States,‘ within the meaning of 35 U.S.C. § 271(f)(1) if those

components are designed within the United States and the instructions for their

manufacture and disposition are transmitted from within the United States.‖57

The Federal Circuit, in deciding that Analog Devices, Inc. had not infringed

under § 271(f), held that the statute applied only if the components of the

patented invention are ―physically present‖ in a territory of the United States

and are subsequently sold or exported.58

54. Id.

55. For example, a definition of the term ―component‖ that did not encompass process claims in a patent

would leave these claims unprotected from the type of infringement that Congress unquestionably afforded

machine patents. As a point of comparison, sales of PC gaming software alone was a $13.1 billion dollar

industry in 2009. TechSpot.com, Jose Vilches, PCGA: PC software sales totaled $13.1 billion in 2009,

available at: http://www.techspot.com/news/38179-pcga-pc-software-sales-totaled-131-billion-in-2009.html

(last visited Oct 5, 2010).

56. 35 U.S.C. § 271(f) (2006).

57. Pellegrini v. Analog Devices, Inc., 375 F.3d 1113, 1115 (Fed. Cir. 2004).

58. Id. at 1117 (―[35 U.S.C. § 271(f)] applies only where components of a patent invention are


While not directly defining the concept of what a ―component‖ is, the

Pellegrini Court did state that it did not consider the steps in a method patent to

be a ―component‖ due to a perceived requirement of tangibility for the term

―supplies.‖59

The Federal Circuit seemed to be of the opinion that non-tangible

things could not be supplied.

2. Eolas Technologies Inc. v. Microsoft Corp.

In Eolas Technologies Inc., the Federal Circuit took a decidedly different

view of the applicability of 35 U.S.C. § 271(f) to method patents than it had

fourteen years earlier in Standard Havens Products, Inc.60

and just a year

earlier in Pellegrini.61

Microsoft exported, from the United States, a limited

number of ―golden master disks‖ that contained the allegedly infringing

software to foreign manufacturers, who then copied the software onto the hard

drives of new computers.62

The Court disagreed with Microsoft‘s assertion

that a ―component‖ was limited to a physical machine or device, stating

unequivocally that neither the statute nor the legislative history contains any

limitations to ―components of machines and other structural combinations.‖63

In interpreting the plain statutory language of 35 U.S.C. § 271(f), the

Federal Circuit made several important insights into what exactly constitutes a

―component.‖ First, they found no evidence of an imposed requirement of

―tangibility‖ on any component of a patented invention in either the language

of the statute or in the legislative history. 64

Second, they held that anything

eligible for patenting falls within the protection of § 271(f), this protection is in

no way limited solely to ―machines‖ or patented ―physical structures.‖65

Third,

§ 271(f) covers every component of every type of invention; this includes

method or process patents.66

Finally, if Congress had intended to limit the

scope of 35 U.S.C. § 271(f) to physical inventions, it could have and would

have included express language narrowing the scope to that extent.67

physically present in the United States and then either sold or exported ‗in such a manner as to actively induce

the combination of such components outside the United States in a manner that would infringe the patent if

such combination occurred within the United States.‘‖).

59. The Court held the term ―supplies‖ requires that what is supplied is something physical, thus if a

step in a method patent cannot be physically supplied it could not be a component under 35 U.S.C. § 271(f)(1).

Id. at 1118.

60. Compare Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325, 1339 (Fed. Cir. 2005) (holding that

every component of every form of invention deserves the protection of 35 U.S.C. § 271(f)),with Standard

Havens Prods., Inc. v. Gencor Indus., 953 F.2d 1360, 1374 (Fed. Cir. 1991) (finding 35 U.S.C. § 271(f) was

not ―implicated‖ in the activities of a method patent infringer that occurred outside of the United States).

61. See Pellegrini, 375 F.3d at 1118 (holding the term ―supplies‖ requires that what is supplied is

something physical).

62. Eolas, 399 F.3d at 1331.

63. Id. at 1340.

64. Id.

65. Id. at 1339.

66. Id. (noting that both method and machine patents have components. ―A ‗component‘ of a process

invention would encompass method steps or acts.‖ ―A ‗component‘ of an article of manufacture invention

would encompass a part of that construct.‖).

67. Id. at 1340 (responding to Microsoft‘s contention that ―components‖ designate only physical

embodiments by stating ―[t]he statute simply does not include the limitation that Microsoft advocates.‖).


3. AT&T Corp. v. Microsoft Corp. (AT&T I)

It was not long before the Federal Circuit was once again was faced with

the question of whether or not computer software qualified as a ―component‖

under 35 U.S.C. § 271(f).68

Here the Court reaffirmed the holding in Eolas,

and stated that even when standing alone, software code was an invention that

was eligible for patenting, which qualified as a ―component‖ as it pertains to

35 U.S.C. § 271(f).69

In this case, Microsoft had exported a master disc from the United States,

with the intent that it would be replicated outside the U.S., which is exactly

what happened.70

Having decided that the software coded was indeed a

―component,‖ the Court next proceeded to decide the question of whether or

not the actions of Microsoft could be deemed as ―supplying‖ the component of

a patented invention.71

In accomplishing this task, the Court stated that absent

evidence that Congress had intended otherwise, they would utilize the

―ordinary, contemporary, common meaning‖ of the word ―supplied,‖ but noted

that since there was not a specific definition that the meaning must necessarily

be context-dependent.72

In the context of software distribution, the Court found little difficulty in

determining that Microsoft had ―supplied or caused to be supplied‖ the

software code in question.73

Due to the nature of the technology, it would not

be a wise decision to make a physical copy of the software in the United States

and ship it abroad.74

Consequently, the Court held when deciding between

competing interpretations of a statute imposing liability for certain acts, ―an

interpretation that allows liability to attach only when a party acts in an

unrealistic manner is unlikely to be correct.‖75

Finally, Microsoft pleaded that a finding of infringement in this case

would be devastating for the software industry in the United States; resulting in

the loss of jobs due to the inevitable relocation of manufacturing facilities to

overseas locations.76

In dismissing Microsoft‘s policy argument, the Court

noted that the same argument could be made against the addition of § 271(f) in

general, but that Congress had enacted the statute anyway.77

Furthermore, the

Court professed that the ―possible loss of jobs in this country is not

68. AT&T Corp. v. Microsoft Corp., (AT&T I) 414 F.3d 1366, 1369 (Fed. Cir. 2005).

69. Id. at 1369 (noting that the ―statutory language did not limit section 271(f) to patented ‗machines‘ or

patented ‗physical structures‘‖).

70. Id.

71. Id.

72. Id. (―In the present case, § 271(f) is being invoked in the context of software distribution.‖).

73. See id. at1370 (noting that, as a technology, the nature of software code would commonly involve

the generation of a copy. ―Uploading a single copy to the server is sufficient to allow any number of exact

copies to be downloaded, and hence ‗supplied.‘ Copying, therefore, is part and parcel of software

distribution.‖).

74. See id. at 1370 (noting that due to the inherent nature of software code a company would save

material, shipping, and storage costs by just exporting the master disk).

75. AT&T I, 414 F.3d at 1370; see Haggar Co. v. Helvering, 308 U.S. 389, 394 (1940) (―A literal

reading of [a statute] which would lead to absurd results is to be avoided. . . ―).

76. AT&T I, 414 F.3d at 1372.

77. Id.


justification for misinterpreting a statute to permit patent infringement.‖78

In AT&T I, the Court made several findings that have relevance in the

goal of advancing an understanding of the term ―component.‖ Perhaps the

most important observation was the Federal Circuit‘s understanding of the

term ―supplied‖ as being context specific.79

Since there is no express

definition of the term ―supplied‖ in the statute the Court reasoned that it should

utilize the ―ordinary, contemporary, common meaning‖ of the word.80

When

taken in context, the word supplied could be construed to apply to process

patents. Additionally, the Court resisted the temptation to legislate from the

bench by finding that public policy arguments cannot overcome the express

intent of Congress.81

4. Union Carbide v. Shell Oil Co.

In Union Carbide, the Federal Circuit again reaffirmed Eolas, and

definitively held that 35 U.S.C. § 271(f) applied to method/process patents.82

The Court noted the factual similarities between this case and Eolas, further

stating that this case presented an even stronger case for applying § 271(f)

because Shell directly supplied its foreign affiliates with a catalyst.83

The case

was also differentiated from another recent case where 35 U.S.C. § 271(f) was

found not to apply to a method patent.84

Barely two months earlier in NTP, Inc. v. Research in Motion, Ltd.,85

Research In Motion (RIM), which sold wireless handheld devices in the United

States, was found to have infringed under § 271(a).86

However, the Court

refused to find infringement under § 271(f).87

The NTP Court noted that a

method patent was not tangible and nothing more than a series of steps which

the Court found ―difficult to conceive of how one might supply or cause to be

supplied all or a substantial portion of the steps of a patented method in the

sense contemplated by the phrase ‗components of a patented invention‘ in

section 271(f).‖88

In NTP, RIM never directly supplied the wireless hand held

devices to foreign affiliates, and because of this, § 271(f) could only have

applied when the owners of those devices traveled abroad and used their

devices outside the United States.89

The Union Carbide Court found this

78. Id.

79. See id. at 1369 (describing how courts interpret statutes).

80. Id.

81. Id. at 1372.

82. See Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 425 F.3d 1366, 1380–81 (Fed.

Cir. 2005) (holding that the district court abused its discretion in excluding Shell‘s exportation of catalysts as

part of its damages award because § 271(f) governs method/process inventions).

83. Id. at 1379 (noting that the catalyst was not copied by Shell‘s foreign affiliates, as the software was

in Eolas, but was instead sent directly from the United States and used directly by these affiliates).

84. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1321–22 (Fed. Cir. 2005).

85. Id. at 1282.

86. Id. at 1316–17.

87. Id. at 1316–18, 1322.

88. Id.

89. Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 425 F.3d 1366, 1379 (Fed. Cir.

2005).


difference to be an important distinction and used it as a basis to distinguish

the two cases.90

If Eolas had left any doubt as to whether method patents were covered

under 35 U.S.C. § 271(f), the Union Carbide Court definitively answered the

question.91

The Court, in remanding the portion of the case dealing with §

271(f), found that the lower court had abused its discretion and committed

reversible error in ruling that § 271(f) does not apply to process claims.92

While the rationale used in this case was mostly a reiteration of Eolas,

this case is significant in that it represents the high water mark for the view that

process claims should be protected under § 271(f). It was not long before this

view disclaimed by the courts.

5. AT&T Corp. v. Microsoft Corp. (AT&T II)

After the Federal Circuit‘s definitive affirmation in Union Carbide, it

seemed settled that method patents were covered under 35 U.S.C. § 271(f),93

but all of this changed when the Supreme Court granted certiorari and reversed

the Federal Circuit‘s decision in AT&T Corp. v. Microsoft Corp. (AT&T I).94

The Supreme Court decided that the manner in which Microsoft sent the

computer software and the fact that the software was never installed directly

from this transmission mattered.95

It reasoned that because Microsoft did not

export from the United States the copies of the software that were actually

installed, it did not ―suppl[y] . . . from the United States‖ ―components‖ of the

relevant computers, and was not liable under the current language of 35 U.S.C

§ 271(f).96

In attacking the Federal Circuit‘s holding in AT&T I, the Court first

characterized the software sent by Microsoft as an abstract idea without

physical embodiment, and concluded that because of this, it did not fall within

the statutory framework of ―components‖ amenable to ―combination.‖97

The

Court used a blueprint analogy to explain its rationale:

Windows abstracted from a tangible copy no doubt is information—a detailed set of instructions—and thus might be compared to a blueprint (or anything containing design information, e.g., a schematic, template, or prototype). A blueprint may contain precise

90. Id. at 1379–80.

91. Id. at 1378–79 (―In other words, does this phrase apply to components used in the performance of

patented process/method inventions? Eolas. . . answered this question in the affirmative, holding that every

component of every form of invention deserves the protection of 35 U.S.C. § 271(f); i.e., that ‗components‘

and ‗patented inventions‘ under § 271(f) are not limited to physical machines.‖) (emphasis in original).

92. Id. at 1381 (stating ―the district court erred in concluding § 271(f) does not apply to process claims,

this court finds it abused its discretion in excluding Shell‘s exported catalysts as part of its damages

calculation. The case is remanded to the district court for a new determination of damages.‖).

93. See id. (stating ―the district court erred in concluding § 271(f) does not apply to process claims‖).


95. Id. at 442 (―[T]he master disk or electronic transmission Microsoft sends from the United States is

never installed on any of the foreign-made computers in question. Instead, copies made abroad are used for

installation‖).

96. Id.

97. Id. at 449–50.


instructions for the construction and combination of the components of a patented device, but it is not itself a combinable component of that device.

98

Additionally, the majority claimed that Congress could have included

within § 271(f)‘s ―compass‖ language that would have covered ―components‖

comprised of ―information, instructions, or tools from which those components

readily may be generated,‖ but had failed to do so.99

While not going as far as

deciding that software in the abstract, or intangibles in general, could never be

a component under § 271(f), it decided that the invention in question, AT&T‘s

speech-processing computer, was tangible.100

Next, the Court noted that the language of § 271(f) does not contain any

instructions that it could use to gauge when duplication is easy and cheap

enough to deem a copy, which was in fact made abroad, was nevertheless

―supplie[d] . . . from the United States.‖101

The majority felt that the complete

absence of any language in the statutory text mentioning ―copying‖ weighed

against a judicial determination that such activity was intended by Congress to

be covered by the amendment that added § 271(f).102

The Court did not make tangibility a requirement for qualification as a

―component‖ under 35 U.S.C. § 271(f).103

Claiming to be expressing no

opinion on the matter and presumptively leaving the door open for at least the

possibility that an intangible could qualify as a component; the Court noted:

We need not address whether software in the abstract, or any other intangible, can ever be a component under § 271(f). If an intangible method or process, for instance, qualifies as a ―patented invention‖ under § 271(f) (a question as to which we express no opinion), the combinable components of that invention might be intangible as well. The invention before us, however, AT&T‘s speech-processing computer, is a tangible thing.

104

Finally, the Court claimed that § 271(f) was an exception to the general

rule that United States patent law does not apply to extraterritorial conduct, and

as such, decided against broad interpretation of the statute‘s language.105

Once

again, as they had over thirty-five years before in Deepsouth, the Court

challenged Congress to amend the language of the statute if it found the

Court‘s ruling had too narrowly construed the statute.106

98. Id.

99. Id. at 451–52 (surmising that ―a copy of Windows, not Windows in the abstract, qualifies as a

‗component‘ under § 271(f)‖).

100. Id. at 452 n.13 (stating that ―[i]f an intangible method or process, for instance, qualifies as a

‗patented invention‘ under § 271(f) (a question as to which we express no opinion), the combinable

components of that invention might be intangible as well‖).

101. Id. at 454.

102. Id.

103. See id. at 452 n.13 (stating that the Court expresses no opinion on this matter of tangibility as a

requirement).

104. Id.

105. Id. at 442.

106. Id. (―Our decision leaves to Congress‘ informed judgment any adjustment of § 271(f) it deems

necessary or proper.‖).


While AT&T II did not expressly overrule Union Carbide,107

the writing

was on the wall. In deciding this case, the Supreme Court seemingly put

policy considerations ahead of the plain language of the statute. This is

apparent in the Court‘s resurrection of the extraterritoriality argument from

Deepsouth. Additionally, the Court abandoned the context specific approach

of the Federal Circuit.108

In doing so, the Court opined that if Congress

intended ―copying‖ in the manner in which it occurred in this case to be

prohibited, then they would have expressly included such language in the text

of the statute.109

Here the Court, similar to the example given in the

Introduction of this note, is basically saying that had Microsoft made copies in

the United States and shipped them overseas to be installed on the computers,

they would have been liable.110

Despite the fact that Microsoft‘s actions

accomplished essentially this same end, and the Court‘s proclamation not to

express an opinion as to whether an intangible process could qualify as a

patented invention under § 271(f),111

the Court all but said that the intellectual

property known as computer code is worthless, but somehow when it is written

on a cheap, generic, inexpensive compact disc, it gains the some value that

allows it the protection of § 271(f).

6. Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.

In the latest chapter of the 35 U.S.C. § 271(f) saga, the Federal Circuit,

sitting en banc, reversed the District Court‘s determination that § 271(f)

applies to method claims.112

In coming to this conclusion, the Court gave

considerable weight to the AT&T II Court‘s extraterritoriality argument

opining that ―[t]he Court sent a clear message that the territorial limits of

patents should not be lightly breached.‖113

Conceding that the term ―invention‖ is defined in the U.S. Code to

include ―any new and useful process, machine, manufacture or composition of

matter,‖114

the Court cautioned that while the isolated ―patented invention‖

language in § 271(f) by itself might seem to extend to all inventions within the

definition, the other language of the section clearly does not extend to method

patents.115

Other factors, such as the context of the statute and its legislative

history, were also to be considered.116

These considerations led the Court to

the conclusion that § 271(f) does not apply to method patents,117

even though

107. Id. at 452 n.13.

108. Id. at 451–52 (surmising that ―a copy of Windows, not Windows in the abstract, qualifies as a

‗component‘ under § 271(f).‖).

109. Id. at 454.

110. See id. (stating that Congress did not provide language allowing the Court to gauge when

duplication is easy and cheap enough to deem a copy in fact made abroad was nevertheless ―supplie[d] . . .

from the United States‖).

111. Id. at 452 n.13.

112. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1351 (Fed. Cir. 2009).

113. Id. at 1362.

114. 35 U.S.C. § 101 (2006).

115. Cardiac Pacemakers, 576 F.3d at1362.

116. Id.

117. Id.


the Supreme Court in AT&T II had left open the possibility that § 271(f) could

apply to method patents.118

The Court found that the fundamental distinction between product claims,

which have tangible components, and method claims, whose component‘s

consist of steps in that method or process, doomed any argument that § 271(f)

applies to method claims.119

―Our precedents draw a clear distinction between

method and apparatus claims for purposes of infringement liability, which is

what Section 271 is directed to.‖120

The Federal Circuit proceeded to use a

dictionary in an attempt to define the term ―component‖ as ―a constituent

part,‖―element,‖ or ―ingredient.‖121

In finding that method patents meet the

definitional requirement of § 271(f), the Court additionally noted that the steps

―are not the physical components used in performance of the method.‖122

As evidence that Congress saw tangible physical inventions as being

different than method inventions within the meaning of the term ―component,‖

the Court found § 271(c) illustrative.123

Section 271(c) contrasts ―a component

of a patented machine, manufacture, combination, or composition‖ with a

―material or apparatus for use in practicing a patented process.‖124

Surmising

that Congress clearly believed the two to be separate and distinct, the Court

concluded ―a material or apparatus for use in practicing a patented process is

not a component of that process. . . [t]he components of the process are the

steps of the process.‖125

In the end, the Court held that 35 U.S.C. § 271(f) did

not apply to method claims because the step of a method could not be

supplied.126

It further noted that any ambiguity as to Congress‘s intent is

further supported by a presumption against extraterritoriality.‖127

By acknowledging the presumption against extraterritoriality, the Federal

Circuit gave its ―wink, wink, nod, nod‖ to the Supreme Court who had just

reversed their holding in AT&T I. In Cardiac Pacemakers, the Court did

expressly overrule the holding in Union Carbide, and any implication from any

other case that 35 U.S.C. § 271(f) applies to method patents.128

If Union

118. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 452 n. 13 (2007) (AT&T II) .

119. Cardiac Pacemakers, 576 F.3d at1362.

120. Id. at 1363 (citing Joy Tech. v. Flakt, Inc., 6 F.3d 770, 773–75 (1993) (stating that method claims

are infringed only by practicing the steps of the method)); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d

1282, 1321–22 (Fed. Cir. 2005) .(―[A] patent for a method or process is not infringed unless all steps or stages

of the claimed process are utilized.‖).

121. Cardiac Pacemakers, 576 F.3d at 1363 (citing Webster‘s Third New International Dictionary of the

English Language 466 (1981)).

122. Cardiac Pacemakers, 576 F.3d at 1363.

123. Id. at 1363–64. The text of § 271(c) is as follows: Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

35 U.S.C. § 271(c) (2006).

124. 35 U.S.C. § 271(c) (2006).


126. Id. at 1364.

127. Id. at 1365.

128. Id.


Carbide was the high water mark for the view that process claims should be

protected under § 271(f), then Cardiac Pacemakers is the definitive low water

mark.

The Federal Circuit advanced two new arguments in its quest to eliminate

method patents from the purview of § 271(f). The first was a dictionary

definition of the term ―component.‖ The credence that should be given to this

type of evidence is marginal at best, especially when the purpose of the statute

is clear from the plain meaning of the statute and express intent of Congress.129

Secondly, the Court looked to the language used in § 271(c) and its distinction

between ―a component of a patented machine, manufacture, combination, or

composition‖ and a ―material or apparatus for use in practicing a patented

process.‖130

In distinguishing the two, the Federal Circuit basically decides

that a material or apparatus cannot be a component, which in turn means that

the steps of a process patent are the components, and since they cannot, in their

estimation, be supplied, they could not be included under the coverage of §

271(f).131

B. 35 U.S.C. § 271(f) and Process Patents

While a history of the recent case law will give us hints as to the meaning

of several undefined key words used in the language of 35 U.S.C. § 271(f), at

least one of the major terms is expressly defined.132

A ―patentable invention‖

as defined by Title 35 of the United States Code:

§ 101. Inventions patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

133

The term ―process‖ was not added to the above statute until 1952;

although, it has historically been considered patentable as a ―useful art.‖134

The express inclusion of processes as patentable inventions demonstrates

that when Congress uses the term ―patentable invention‖ in a statute, they do

so with full knowledge that this term encompasses process patents as well as

machine patents.135

The language of § 101 further demonstrates that processes

and machines must be different in some cognizable way that they are listed

separately as parts that comprise the whole of the term ―patented

129. Cabell v. Markham, 148 F.2d 737, 739 (2d Cir. 1945). Of course it is true that the words used, even in their literal sense, are the primary, and ordinarily the most reliable, source of interpreting the meaning of any writing: be it a statute, a contract, or anything else. But it is one of the surest indexes of a mature and developed jurisprudence not to make a fortress out of the dictionary; but to remember that statutes always have some purpose or object to accomplish, whose sympathetic and imaginative discovery is the surest guide to their meaning.

130. 35 U.S.C. § 271(c) (2006).

131. Cardiac Pacemakers, 576 F.3d 1348,1364.

132. See supra Part III.A.

133. 35 U.S.C. § 101 (2006).

134. Diamond v. Diehr, 450 U.S. 175, 182 (1981) (citing Corning v. Burden, 56 U.S. 252, 267–68

(1854)).

135. Cardiac Pacemakers, 576 F.3d at 1366–67 (Newman, J., dissenting).


inventions.‖136

This leads to the logical conclusion that when Congress wants

to specify a machine patent, it can do so by using the term ―patented machines‖

and conversely the same may be said for patented processes.137

But when

Congress wants a term that encompasses both patented machines and patented

processes, it can use the statutorily defined term ―patented inventions.‖138

IV. RECOMMENDATION

With the Federal Circuit‘s recent holding in Cardiac Pacemakers, it

seems the Courts have come full circle back to the non-applicable rationale

originally used in Pellegrini, but this may just be the next chapter in the

ongoing saga of 35 U.S.C. § 271(f).139

The vastly different holdings and

rationales for the cases that have led to the ruling in Cardiac Pacemakers

provide us with the insight to correctly decipher the mystery of the term

―component.‖

In order to make the determination as to the proper interpretation of the

term component in § 271(f), the starting point must necessarily begin with an

examination of the plain text of the statute.140

In doing so, there are several

terms that need defining. Much of the disagreement pertaining to § 271(f)‘s

applicability to process patents has been centered on the meaning of the terms

―patented invention,‖141

―supplied,‖142

and ―component.‖143

First, we will

determine the congressionally intended meaning of the term ―patented

invention,‖ as it pertains to § 271(f), and as we shall see, Title 35 in general.

Secondly, we will determine the most logical meaning of the term ―supplied‖

based upon what we have learned about the term ―patented invention.‖

Finally, with the resolution of the terms ―patented invention‖ and ―supplied,‖

136. Id.

137. Id.

138. Id.

139. See generally supra Part III. Both cases held that 35 U.S.C. § 271(f) does not apply to process

patents.

140. Conn. Nat‘l Bank v. Germain, 503 U.S. 249, 253–54 (1991); see United States v. Goldenberg, 168

U.S. 95, 102–03 (1897) (―The primary and general rule of statutory construction is that the intent of the

lawmaker is to be found in the language that he has used. He is presumed to know the meaning of words and

the rules of grammar.‖).

141. Compare Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1361 (Fed. Cir. 2009)

(cautioning that while the isolated ―patented invention‖ language in § 271(f) by itself might seem to extend to

all inventions within the definition, the other language of the section clearly does not extend to method

patents) with Cardiac Pacemakers, 576 F.3d 1348, 1368 (Newman, J., dissenting) (finding ―the statutory use

of ‗patented invention‘ as the umbrella term for the forms of invention subject to the Patent Act, with narrower

terminology used in those provisions that have narrower application.‖).

142. Compare Pellegrini v. Analog Devices, Inc., 375 F.3d 1113, 1118 (Fed. Cir. 2004).(holding that the

term ―supplies‖ requires that what is supplied is something physical, thus if a step in a method patent cannot be

physically supplied it could not be a component under 35 U.S.C. § 271(f)(1)) with Eolas Techs. Inc. v.

Microsoft Corp., 399 F.3d 1325, 1340 (Fed. Cir. 2005) (responding to Microsoft‘s contention that

―components‖ designate only physical embodiments to be supplied by stating ―[t]he statute simply does not

include the limitation that Microsoft advocates.‖).

143. Compare Union Carbide, 425 F.3d at 1378–79 (holding that every component of every form of

invention deserves the protection of 35 U.S.C. § 271(f) and that ―components‖ under § 271(f) are not limited

to physical machines) with Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 438 (2007) (AT&T II) (surmising

that ―a copy of Windows, not Windows in the abstract, qualifies as a ‗component‘ under § 271(f)‖).


we will achieve the ultimate goal of defining the ever illusive term

―component‖ as it pertains to 35 U.S.C. § 271(f).

A. What Does the Statutory Language Tell Us About §271(f)

When a statute is unambiguous, the court interpreting the statute should

make the presumption that the legislature ―says in a statute what it means and

means in a statute what it says there.‖144

This presumption has been followed

by the Supreme Court for nearly 200 years.145

The task of the judiciary is not

to legislate from the bench, but to ―simply seek to ascertain the will of the

legislator.‖146

This is not to say that there are no exceptions to the rule, but

barring an absurd result, deference to the separation of powers between the

Judiciary and Legislative branches of the government warrants a plain text

interpretation of the statute.147

As such, a thorough analysis of the text of 35

U.S.C. § 271(f) is the necessary starting point.

1. Patented Invention

Despite the plain text of the statute, the decision in Cardiac Pacemakers

holds that both parts of 35 U.S.C §271(f) exclude all process inventions from

the term ―patented invention‖ of the statutory text.148

This is contrary to a

plain text reading of the statute because the term ―patented invention‖ is used

consistently throughout Title 35 and is defined within the Title as follows:

§ 101. Inventions patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

149

Section 101 clearly defines a ―process‖ as a patentable invention. As the

term pertains to infringement in § 271, ―[t]he relationships and balance of the

several provisions in subsections of this section demonstrate the statutory use

of ‗patented invention‘ as the umbrella term for the forms of invention subject

to the Patent Act, with narrower terminology used in those provisions that have

narrower application.‖150

Conceding that the term ―invention‖ is defined in the U.S. Code to

include ―any new and useful process, machine, manufacture, or composition of

matter,‖151

the majority in Cardiac Pacemakers cautioned that while the

144. Germain, 503 U.S. at 253–54; see Goldenberg, 168 U.S. at 102–03 (―The primary and general rule

of statutory construction is that the intent of the lawmaker is to be found in the language that he has used. He is

presumed to know the meaning of words and the rules of grammar.‖).

145. See Oneale v. Thornton, 10 U.S. 53, 68 (1810) (noting that ―[m]en use a language calculated to

express the idea they mean to convey,‖ when talking about the language used in a statute).

146. Goldenberg, 168 U.S. at 103.

147. Fla. Dep‘t of Revenue v. Piccadilly Cafeterias, Inc., 128 S. Ct. 2326, 2339 (2008).

148. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1366–67 (Fed. Cir. 2009)(Newman,

J., dissenting).

149. 35 U.S.C. § 101 (2006).

150. Cardiac Pacemakers, 576 F.3d at 1368 (Newman, J., dissenting).

151. 35 U.S.C. § 101 (2006).


isolated ―patented invention‖ language in § 271(f) by itself might seem to

extend to all inventions within the definition, the other language of the section

clearly does not extend to method patents.152

Additionally, the majority in

Cardiac Pacemakers looks to the statutory language of § 271(c)153

as its

statutory basis for excluding process patents from inclusion in § 271(f).154

―Where Congress includes particular language in one section of a statute

but omits it in another section of the same Act, it is generally presumed that

Congress acts intentionally and purposefully in the disparate inclusion or

exclusion.‖155

If Congress had really wanted to limit § 271(f) in a way similar

to § 271(c), should Congress not have contemplated a different term, other

than one so clearly defined in § 101, in wording § 271(f)? The differentiation

of method and machine patents for the purposes of § 271(c) shows that a

differentiation of the two types of patents is the exception and not the rule as

the majority in Cardiac Pacemakers would have us believe.

Interestingly enough, the original language of §271(f) used the term

―patented machines‖ instead of term ―patented inventions.‖156

This language

would definitely have excluded process patents, but the final term codified in

the statute used the umbrella term ―patented inventions.‖157

―Where Congress

includes limiting language in an earlier version of a bill but deletes it prior to

enactment, it may be presumed that the limitation was not intended.‖158

Additionally, by seemingly ignoring the §101 definition of ―patentable

inventions,‖ the Court goes against its own cautioning that such a statutory

interpretation can arise only in ―rare and exceptional circumstances.‖159

The term ―patented inventions,‖ as defined by 35 U.S.C. § 101,160

has

expressly included process patents for nearly 50 years, and has impliedly

included them for over 200 years.161

Congress knowingly switched the

terminology in the original language of the statute from the exclusionary term

―patented machines‖ and substituted it with the inclusionary term ―patented

inventions.‖162

The inclusion of this term indicates that Congress intended 35

U.S.C. § 271(f) to apply to process patents.


153. 35 U.S.C. § 271(c) (2006) reads: Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

154. Cardiac Pacemakers, 576 F.3d at 1363–64.

155. Russello v. United States, 464 U.S. 16, 23 (1983).


157. Id.

158. Russello, 464 U.S. at 23–24 (citing Arizona v. California, 373 U.S. 546, 580–81 (1963)).

159. See Crooks v. Harrelson, 282 U.S. 55, 58 (1930) (rejecting an argument to ignore literal meaning of

a statute stating that a court may ―override the literal terms of a statute only under rare and exceptional

circumstances‖).

160. 35 U.S.C. § 101 (2006).

161. Diamond v. Diehr, 450 U.S. 175, 182 n.7 (1981) (citing Corning v. Burden, 15 How. 252, 267–68

(1854)).



2. Supplied

The word ―supplied‖ in 35 U.S.C. § 271(f) has been the focus of much of

the controversy over whether § 271(f) applies to process patents.163

The

question has consistently arisen as to whether the term ―supplied‖ carries an

implication of tangibility164

and additionally, whether the term should be

context-dependent; applying differently on a case-by-case basis.165

In Pellegrini, the Federal Circuit held that the statute applied only if the

components of the patented invention are ―physically present‖ in a territory of

the United States and are subsequently sold or exported.166

Here, the Court

surmised that process patent‘s lack of tangible components made them unable

to be supplied.167

Similarly, the NTP Court noted that a process patent was not

tangible and nothing more than a series of steps.168

The Court further explained

that they found it ―difficult to conceive of how one might supply or cause to be

supplied all or a substantial portion of the steps of a patented method in the

sense contemplated by the phrase ‗components of a patented invention‘ in

section 271(f).‖169

It would be equally difficult to conceive how one might read a

requirement of tangibility into 35 U.S.C. § 271(f). Nowhere in the text of the

statute are any words that would imply that the component to be ―supplied‖

must be a physical object.170

Even the Supreme Court in AT&T II, while

claiming to express no opinion on the matter, stated that ―[i]f an intangible

method or process, for instance, qualifies as a ―patented invention‖ under §

271(f) . . . the combinable components of that invention might be intangible as

well.‖171

As we have shown above, the term ―patented inventions‖ was used

purposefully by the drafters of the statute and this term was clearly defined in §

101 to include process patents.172

The purposeful change in the terminology of the statute from ―patented

machines‖ to ―patented inventions‖ demonstrates a conscious effort to include

163. See Section III.A.5.

164. See supra text accompanying note 100.

165. Compare AT&T Corp. v. Microsoft Corp., (AT&T I) 414 F.3d 1366, 1369–70 (Fed.Cir. 2005).

(stating that in ―[i]n the present case, § 271(f) is being invoked in the context of software distribution‖ and

explaining that in this context, ―[u]ploading a single copy to the server is sufficient to allow any number of

exact copies to be downloaded, and hence ‗supplied.‘ Copying, therefore, is part and parcel of software

distribution‖),with Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 454 (2007) (AT&T II) (deciding against a

context-dependent interpretation; noting the complete absence of any language in the statutory text mentioning

copying weighed against a judicial determination that such activity was intended by Congress to be covered by

the amendment that added § 271(f)).

166. Pellegrini v. Analog Devices, Inc., 375 F.3d 1113, 1117 (Fed. Cir. 2004).(―It [35 U.S.C. § 271(f)]

applies only where components of a patent invention are physically present in the United States and then either

sold or exported ‗in such a manner as to actively induce the combination of such components outside the

United States in a manner that would infringe the patent if such combination occurred within the United

States.‘‖).

167. Id.

168. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1322 (Fed. Cir. 2005).

169. Id.

170. 35 U.S.C. § 271(f) (2006).

171. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 452 n. 13 (2007) (AT&T II) .

172. See supra Part IV.A.1.


process patents within the context of § 271(f).173

―[C]ourts should disfavor

interpretations of statutes that render language superfluous . . . .‖174

An

interpretation of § 271(f) that required tangible components, effectively

excluding process patents, would render the language ―patented inventions‖

superfluous and effectively giving the statute the same meaning it would have

had before the rejection of the term ―patented machines.‖ Since we know that

Congress explicitly changed the language in the statute from the more

exclusive term, ―patented machines,‖ to the more inclusive term, ―patented

inventions,‖175

an interpretation of the term ―supplied‖ that would have a

requirement of tangibility, which is mentioned nowhere in the language of the

statute, would effectively negate Congress‘ explicit change in terminology.

Therefore, an interpretation of the term ―supplied‖ that would have the pre-

requisite of tangibility is an untenable solution.

A decidedly different approach was used in AT&T I.176

In this case, the

Federal Circuit stated that absent evidence that Congress had intended

otherwise, they would utilize the ―ordinary, contemporary, common meaning‖

of the word ―supplied.‖177

However, noting that because there was not a

specific definition of the term ―supplied,‖ the meaning must necessarily be

context-dependent.178

In the context of software distribution, the Court found

little difficulty in determining that Microsoft had ―supplied or caused to be

supplied‖ the software code in question.179

The Court decided that due to the

nature of the technology, it would not be a wise decision to make a physical

copy of the software in the United States and ship it abroad.180

This is a matter

of simple logistics. Finding no liability when the digital media is transmitted

once on a master disc and then copied abroad, as opposed to liability for

sending millions of copies on compact disc, would fail the commonsense test.

It was the software code, not the transmission media that was the valuable

asset to be protected.

When this case reached the Supreme Court,181

the Court noted that the

language of § 271(f) does not contain any instructions the Court could use to

gauge when duplication is easy and cheap enough to deem a copy in fact made

abroad was nevertheless ―supplie[d] . . . from the United States.‖182

The

majority felt that the complete absence of any language in the statutory text

173. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1368–69 (Fed. Cir. 2009) (Newman,

J., dissenting).

174. Conn. Nat‘l Bank v. Germain, 503 U.S. 249, 253 (1991).

175. Cardiac Pacemakers, 576 F.3d at 1368–1369 (Newman, J., dissenting).

176. AT&T Corp. v. Microsoft Corp., (AT&T I) 414 F.3d 1366, 1369 (Fed. Cir. 2005).

177. Id. at 1369.

178. See id. (stating that in ―[i]n the present case, § 271(f) is being invoked in the context of software

distribution‖).

179. See id. at 1370 (noting that, as a technology, the nature of software code would commonly involve

the generation of a copy. ―Uploading a single copy to the server is sufficient to allow any number of exact

copies to be downloaded, and hence ‗supplied.‘ Copying, therefore, is part and parcel of software

distribution.‖).

180. See id. (noting that due to the inherent nature of software code a company would save material,

shipping, and storage costs by just exporting the master disk).


182. Id. at 454.


mentioning ―copying‖ weighed against a judicial determination that such

activity was intended by Congress to be covered by the amendment that added

§ 271(f).183

However, this rationale goes against the Court‘s own reasoning in

interpreting previous patent statutes.184

When drafting patent statutes, Congress often must use broad and

inclusive language and ―[b]road general language is not necessarily ambiguous

when congressional objectives require broad terms.‖185

The nature of statutes

in promoting ―the Progress of Science and the useful Arts‖ necessarily includes

some degree of unforeseeability.186

It is the very nature of science and

technology that things will change. The lack of statutory language mentioning

―copying‖ as it pertains to computer software should have no bearing on the

judicial determination of Congress‘ intent because the technology in dispute in

the AT&T cases was not in existence at the time the statute was written.

The term ―supplied‖ is not defined in Title 35, and as such, absent

evidence that Congress had intended otherwise, the ―ordinary, contemporary

common meaning‖ of the word should be used.187

Evidence of the intent of

Congress comes in the form of the purposeful inclusion of the term ―patented

invention.‖ The deliberate use of this well-defined term is evidence that

Congress intended 35 U.S.C § 271(f) to cover process patents.188

As such, a

definition of the term ―supplied‖ that would undermine the deliberate use of

―patented inventions‖ cannot be the intent of Congress. In attempting to

determine what the ―ordinary, contemporary, common meaning‖ of the term is,

we must necessarily look to the context of its application. This is the approach

that was correctly taken by the AT&T I Court.

It would be commonsense to even the most casual observer that the logic

behind assigning liability to a company that sends a million copies of patented

software on compact discs overseas to be installed on foreign computers while

finding no liability for sending a single master disc overseas to be replicated

and installed on the same computers is flawed. Assigning a requirement of

tangibility to components to be ―supplied‖ under § 271(f) creates this illogical

result. As the Federal Circuit wisely noted in AT&T I, when deciding between

competing interpretations of a statute imposing liability for certain acts, ―an

interpretation that allows liability to attach only when a party acts in an

unrealistic manner is unlikely to be correct.‖189

The Federal Circuit had it right

in Eolas, where in responding to Microsoft‘s contention that components to be

―supplied‖ designate only physical embodiments by stating ―[t]he statute

183. Id.

184. See Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (construing patent laws as having a wide

scope).

185. Id. at 315.

186. Id. at 315–16 (noting that ―Congress employed broad general language in drafting [patent statutes]

precisely because such inventions are often unforeseeable‖).

187. Id. at 308 (quoting Perrin v. United States, 444 U.S. 37, 42 (1979)).

188. See 35 U.S.C. § 101 (2006) (defining processes among other things, such as machines, to be

patentable inventions).

189. AT&T Corp. v. Microsoft Corp., (AT&T I) 414 F.3d 1370, 1369 (Fed. Cir. 2005).See Haggar Co. v.

Helvering, 308 U.S. 389, 394 (1940) (―A literal reading of a statute which would lead to absurd results is to be

avoided.‖).


simply does not include the limitation that Microsoft advocates.‖190

The term ―supplied‖ as it pertains to 35 U.S.C. § 271(f) contains no

requirement of tangibility. A contrary interpretation has no support in any of

the text of Title 35 and would go against the express intent of Congress.

Therefore, the term ―supplied‖ should be given its ―ordinary, contemporary,

common meaning‖ within the context of the facts on a case-by-case basis.

3. Component

Having decided that a ―patentable invention‖ includes process patents and

that the term ―supplied‖ as used in 35 U.S.C. § 271(f) has no express or

implied requirement of tangibility, the meaning of the term ―component‖

becomes quite clear. First, a component is supplied or caused to be supplied

―in or from the United States.‖191

Given its ―ordinary, contemporary, common

meaning‖ within the context of the facts on a case-by-case basis, ―supplied‖

would just mean that one party provided or facilitated another party in

acquiring something that they did not have previously. Just how this

something was supplied would necessarily be context-dependent. The manner

of transmission is not important; it is the fact that the transmission took place

that evokes an image of supplying something.

Second, a component for the purposes of §271(f) must be a component of

a patented invention. The definition of a patented invention is made very clear

by § 101 to include process patents.192

The provision has historically included

process patents under the guise of useful arts, and the term ―process patents‖

was specifically added to the statute in 1952.193

A process (method) claim in a

patent is ―a mode of treatment of certain materials to produce a given

result.‖194

―It is an act, or a series of acts, performed upon the subject-matter

to be transformed and reduced to a different state or thing.‖195

The term ―component‖ is not defined anywhere in the statute or in Title

35 either. As such, much like our earlier interpretation of the term ―supplied,‖

the term should be given its ―ordinary, contemporary, common meaning‖

within the context of the facts on a case-by-case basis.196

As it pertains to a

process patent, which is a patentable invention, the components could simply

be the steps in the process.

Thus, in its application to process patents, 35 U.S.C. § 271(f) would make

liable as an infringer, whoever without authority provided or facilitated another

party in acquiring, in or from the United States, all or a substantial portion of

the components of a process patent, where such components are uncombined

190. Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325, 1340 (Fed. Cir. 2005).

191. 35 U.S.C. § 271(f) (2006).

192. 35 U.S.C. § 101 (2006).

193. Diamond v. Diehr, 450 U.S. 175, 182 (1981) (citing Corning v. Burden, 15 How. 252, 267–68

(1854)).

194. Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (quoting Cochrane v. Deener, 94 U.S. 780, 787–

88(1876)).

195. Cochrane v. Deener, 94 U.S. 780, 788 (1876).

196. AT&T Corp. v. Microsoft Corp., (AT&T I) 414 F.3d 1366, 1369 (Fed. Cir. 2005) (quoting Williams

v. Taylor, 529 U.S. 420, 431 (2000)).


in whole or in part, 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. In short, if

one, while in the United States, gives someone outside the United States, the

things necessary to otherwise infringe the patent, if they were in fact within the

United States, that supplier is liable for infringement.

V. CONCLUSION

The amendment to 35 U.S.C. § 271 was meant to fill a judicially created

loophole in United States patent law created by the Supreme Court‘s ruling in

Deepsouth.197

For all intents and purposes, the actions by the defendant in

Cardiac Pacemakers is identical to that of the defendant in Deepsouth and the

Federal Circuit‘s decision in Cardiac Pacemakers has created a new loophole

for essentially the same situation.

This loophole was created by the Court legislating from the bench and

creating policy decisions when a simple interpretation of the statutory language

would suffice. The statutory language of 35 U.S.C § 271(f) is unambiguous.

By determining the meaning of the terms ―patented invention‖ and ―supplied,‖

the meaning of ―component‖ as intended by Congress becomes apparent.

The term ―patented invention‖ is clearly defined in § 101 and includes

process patents.198

This term was specifically chosen to be used by Congress

and replaced the original term ―patented machines‖ which would clearly have

excluded process patents.199

Thus, for the purposes of § 271(f) a patentable

invention includes process patents.

The term ―supplied‖ given its ―ordinary, contemporary, common

meaning‖ means simply to provide or facilitate another party in acquiring

something that they did not have previously.200

There is no requirement of

tangibility either expressly stated or implied in a plain language interpretation

of the statute.201

An implication of tangibility would undermine Congress‘

express substitution of ―patentable machines‖ for ―patentable inventions‖ by

making the change meaningless in excluding process patents.

When the terms ―patented invention‖ and ―supplied‖ are logically defined

using the proper tools of statutory interpretation, the ultimate goal of this note

and the question that has perplexed the judicial system for the last thirty-eight

years becomes clear. The term ―component‖ means exactly what one would

expect it to mean. It very simply means ―a part of‖ a patented invention.

Since a ―patented invention‖ covers process patents, which have steps, and

―supplied‖ simply means to give someone something, whether it be tangible or

intangible, a ―component‖ in this context can clearly be a step in a process

197. 1984 U.S.C.C.A.N. 5827, 5828.

198. 35 U.S.C. § 101 (2006).

199. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1368 (Fed. Cir. 2009) (Newman, J.,

dissenting).

200. In a commonsense manner it merely means to give something to someone else.

201. Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325, 1340 (Fed. Cir. 2005).


patent. When viewed in this way it becomes apparent that the ―loophole‖

Congress intended to fill with the enactment of 35 U.S.C. § 271(f) is the same

―loophole‖ that the Federal Circuit reopened in Cardiac Pacemakers. Thus,

Congress, as it has in the past, must step up and amend Title 35, in a

meaningful way, to close the loophole that the Federal Circuit has reopened in

Cardiac Pacemakers by expressly defining the term ―component‖ as it was

intended to be used, which encompasses process patents.

what is a component: has cardiac pacemakers put 35...

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