ardiac Pace Makers v. St. Jude Medical 418 F.Supp.2d 1021 S.D. Indiana, decided March 1, 2006 Judge Hamilton Cardiac Pace Makers v. St. Jude Medical decision (154k PDF) Cardiac Pace Makers (CPI) sued St. Jude Medical (St. Jude), and alleged that St. Jude infringed one of its method patent claims. St. Jude was found to infringe the valid patent of CPI. The opinion is the ruling on St. JudeÃ¢â?¬â?¢s motion to limit damages to infringing devices sold only in the United States by citing Ã?Â§ 271(a). CPI countered with the argument that damages are appropriate under Ã?Â§ 271(f). CPI’s cited authority included the Microsoft v. ATT case, which the Supreme Court will rule on in the near future. Section 271(f) states:
(f)(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 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.
St. Jude focused on the fact that it was infringing a method claim when it argued:
use of the word “component” in reference to a method step would be inconsistent with the use of that term in other provisions of section 271, and that the notions of “combining” or “supply” make no sense in the context of method claims.
Judge Hamilton interpreted relevant case law as indicating the Federal Circuit wants Ã?Â§ 271(f) to be interpreted broadly. He correctly pointed out there is much dispute as to whether Ã?Â§ 271(f) was meant to apply to method claims (Ã¢â?¬Å?Several patent law associations and at least three Federal Circuit judges believe that section 271(f) was not intended to apply to method claims.Ã¢â?¬Â?). The court found that it could not find as a matter of law that the method claim should be exempt from Ã?Â§ 271(f). On the issue, Judge Hamilton smartly concludes:
The court denies St. Jude’s motion for summary judgment on the issue, but remains open to considering the issue again if addressed by subsequent case law. Also, if the question remains open at the time of trial, the court will attempt to use procedures that would require the jury to identify specifically any damages attributable to such foreign sales of devices that were capable of infringing use, so that it would be easy to correct any such error.
Good work Judge Hamilton. Preventative measures such as this save money for everyone.