Cardiac Pacemakers v. St. Jude Medical

The en banc portion of this opinion holds that section 271(f) does not apply to method claims, overruling Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005). The court relied on the presumption against extraterritoriality, Congressional intent reflected in the legislative history, the language of Section 271(f), the overall statutory scheme, the fact that a clear majority of the amicus briefs agreed, and the general awkwardness of the notion of supplying steps to reach its conclusion, (p. 26 (“it is difficult to conceive how one might supply or cause to be supplied all or a substantial portion of the steps in a patented method in the sense contemplated by section 271(f)”).) The court also distinguished how the Supreme Court drew on similarities between method and apparatus claims in Quanta Computer, Inc. v. LG Electronics, Inc., 128 S. Ct. 2109 (2008), in the context of patent exhaustion from how the Federal Circuit has drawn “a clear distinction between method and apparatus claims for purposes of infringement liability, which is what Section 271 is directed to.” (p. 23-24.)

The other aspects of the opinion were decided by the panel only. One issue was whether a change in claim construction of one term was enough to raise new issues regarding validity. “While it is true that a changed claim construction may permit new anticipation arguments, that cannot be the case here because the ‘determining’ limitation never served as a basis for distinguishing the prior art from the ’288 patent and is therefore not a ‘directly related new issue.’” (p. 11.)

Concerning damages, the court found that damages should be limited to only those devices that can be shown to have actually performed the method since only a method claimed remained. The fact that the defendant did not raise this argument at the time of trial did not result in a waiver because at that time an apparatus claim was still at issue. “St. Jude cannot have been expected to raise at trial an argument that would not have reduced damages until after Cardiac abandoned its apparatus claim on remand.” (p. 16.)