## Facts

- Cardiac Pacemakers, Inc. and related entities owned patents covering implantable cardiac defibrillators (ICDs).
- U.S. Patent No. 4,407,288 claimed a method for detecting arrhythmias and delivering therapeutic shocks.
- St. Jude manufactured and sold ICDs that Cardiac alleged infringed, including infringement of the ’288 method claims.
- In the Southern District of Indiana, a jury found the ’288 patent valid and infringed and awarded damages that included amounts tied to St. Jude’s overseas sales.
- The foreign-sales portion of the damages was awarded under 35 U.S.C. § 271(f), based on the theory that St. Jude supplied components from the United States for combination abroad in devices practicing the patented method.

## Issues

1. Whether 35 U.S.C. § 271(f), which imposes liability for supplying components of a patented invention from the United States for combination abroad, applies to method (process) claims.
2. Whether damages may include foreign sales and use where the asserted patent claims a method and the accused products are supplied for use abroad.

## Decision

- The Federal Circuit, sitting en banc, held that § 271(f) does not apply to method claims.
- The court reversed the portion of the judgment awarding damages for foreign activities premised on § 271(f).
- The case was remanded for recalculation of damages limited to legally cognizable domestic infringement.

## Legal Principles

- Section 271(f) applies to supplying “components of a patented invention” from the United States for overseas combination; “components” refers to physical parts capable of being supplied and combined.
- A method claim is comprised of steps, not physical components, and method steps are not “supplied” or “combined” within the meaning of § 271(f).
- Absent clear congressional direction, U.S. patent law is construed against extraterritorial application; § 271(f) is not expanded beyond its text to reach foreign performance of patented methods based on export of hardware.
- Exporting a device that can perform a patented method does not convert the device’s parts into “components” of the method for § 271(f) purposes.

## Conclusion

The en banc Federal Circuit limited § 271(f) to inventions with physical components and held it cannot be used to recover damages for foreign sales or foreign performance of a patented method based solely on supplying devices from the United States.


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