Section 271(f) Does Not Apply to Method Patents

Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., Nos. 2007-1296, -1347 (Fed. Cir. Aug. 19, 2009) (en banc):

Holding:

“Section 271(f) does not apply to method patents.” Slip op. at 29.

Notes:

“In sum, the language of Section 271(f), its legislative history, and the provision’s place in the overall statutory scheme all support the conclusion that Section 271(f) does not apply to method patents.” Slip op. at 29.

Section 271(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 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.

Chief ALJ Luckern Issues Initial Determination Finding No Violation Of Section 337 In Certain 3G Mobile Handsets (337-TA-613)

On August 14, 2009, Chief ALJ Luckern issues Initial Determination finding no violation Of Section 337 In Certain 3G Mobile Handsets (337-TA-613). Specifically, InterDigital's asserted patents were found valid, but not infringed by Nokia. In addition, a domestic industry exists.

Click here for the notice.

DTV Patent War Watch (3)

On August 12, 2009, British Telecom, CIF Licensing, GE, Fujitsu, LG, Mitsubishi, Samsung, Thomson, Columbia University, Philips, and Victor Co. of Japan sued Haier America, Haier Group, and HAIM LLC in the United States District Court for the Southern District of New York, asserting 37 patents related to MPEG-2 and digital television technology.

Haier is one of the largest Chinese consumer electronics company.

Click here to view the complaint.

DTV Patent War Watch (2)

On August 12, 2009, LG Electronics, Inc. filed a new ITC complaint, requesting that the International Trade Commission conduct an investigation under section 337 of the Tariff Act of 1930, as amended regarding Certain Video Displays, Components Thereof, and Products Containing Same. The proposed respondents are: Funai Electric Company, Ltd., Osaka, Japan; Funai Corporation, Inc., Rutherford, New Jersey; and P & F USA, Inc., Alpharetta, Georgia.

Click here to view the complaint.

DTV Patent War Watch (1)

Patent disputes involving digital TV (DTV) have entered the center stage in the world of patent dispute and international trade in recent years. Because so many big players are involved in DTV patent disputes, the complexity of the simmering DTV patent war is unprecedented, and will get worse.

We have been tracking the DTV patent disputes for the last 2-3 years on behalf of some of our clients. Even in this blog, we have posted in two separate occasions regarding DTV patent disputes:

VIZIO Wins U.S. Customs Ruling (July 10, 2009)

US Customs Continues to Rule in favor of Redesigned Products in 337-TA-617 (DTV) (Aug. 11, 2009)

We at Mei & Mark LLP have decided to blog the DTV patent war and track the recent development in the DTV patent war, focusing on the public information. If you are interested in our confidential analysis, please contact Mr. Lei Mei, partner at Mei & Mark LLP, at mei@meimark.com.

US Customs Continues to Rule in favor of Redesigned Products in 337-TA-617 (DTV)

On August 5, 2009, US Customs and Board Protection (CBP) IPR Branch issued a ruling holding that three semiconductor chip samples submitted by Amtran Logistics, Inc., TPV International (USA), Inc., and Envision Peripherals, Inc., are not subject to Exclusion Order 337-TA-617. Therefore, DTVs that contain the above-referenced three semiconductor chips identified as Model BCM35243 (Broadcom), Model MT5382PTR (MediaTek), Model ZR39775HGCF-B (Zoran), and all functional equivalents of the aforementioned models, may be entered for consumption into the United States.

For a copy of the ruling, please click here.

This continues to the trend that CBP allows redesigned products to be imported into the US. See our earlier post regarding Vizio's win before CBP.

ITC Reversed ALJ's Finding of Violation of Section 337 by Sinochem (337-TA-623)

For detailed analysis, please visit ITC 337 Law Blog.

Filing a Patent Application at the USPTO Sufficient to Subject the Filling Attorney to Personal Jurisdiction in a Malpractice Claim

Touchcom, Inc. v. Bereskin & Parr, No. 2008-1229 (Fed. Cir. Aug. 3, 2009):

Holding:

“[T]he act of filing an application for a U.S. patent at the USPTO is sufficient to subject the filing attorney to personal jurisdiction in a malpractice claim that is based upon that filing and is brought in federal court.” Slip op. at 6.

Relevant Facts:

The patentee sued its patent attorney in a federal court in Virginia for malpractice because of missing source code in the PCT application and the resulting US patent. The patent attorney has no other contacts with Virginia other than filing the patent application at the USPTO. The Federal Circuit found that personal jurisdiction exists.

Comments:

The Federal Circuit recognizes that the patent attorney could avoid personal jurisdiction in Virginia by offering a suitable forum under Rule 4(k)(2):

“[I]n federal cases, the purposes of Rule 4(k)(2) are best achieved when the defendant is afforded the opportunity to avoid the application of the rule only when it designates a suitable forum in which the plaintiff could have brought suit.” Slip op. at 16.

Rule 4(k)(2), entitled “Federal Claim Outside State-Court Jurisdiction,” states, in relevant part: “For a claim that arises under federal law, serving a summons . . . establishes personal jurisdiction over a defendant if: (A) the defendant is not subject to jurisdiction in any state’s courts of general jurisdiction; and (B) exercising jurisdiction is consistent with the United States Constitution and laws.” Fed. R. Civ. P. 4(k)(2).