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Statutory Construction of 35 U.S.C. § 271(f)(2) “Recharges” Battery Monitoring Patent

April 06, 2001
Gutowski, Anthony M.

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Last Month at the Federal Circuit - May 2001

Judges: Rader (author), Plager, and Dyk

In Waymark Corp. v. Porta Systems Corp., No. 00-1327 (Fed. Cir. Apr. 6, 2001), the Federal Circuit affirmed a district court’s decision granting SJ of noninfringement under 35 U.S.C. § 271(a), but reversed-in-part the decision because the district court had incorrectly interpreted 35 U.S.C. § 271(f)(2) to require proof of an actual combination abroad of the shipped components.

Waymark Corporation (“Waymark”) is the exclusive licensee of U.S. Patent No. 5,505,929 (“the ‘929 patent”) directed to a system including a plurality of different components for monitoring the capacity of batteries. Waymark filed suit against Porta Systems Corporation (‘Porta”), alleging infringement of the ‘929 patent under 35 U.S.C. § 271(a). The district court granted Porta’s motion for SJ of noninfringement because Porta only tested certain individual components of a battery monitoring system and exported these components to
Mexico without ever constructing an entire claimed system.

In a petition for reconsideration, Waymark asserted that Porta infringed the ‘929 patent under 35 U.S.C. § 271(f)(2). The district court denied Waymark’s petition and concluded that Waymark’s § 271(f)(2) argument lacked merit because Waymark did not produce evidence showing a direct infringement abroad.

The Federal Circuit initially considered the district court’s determination of noninfringement under 35 U.S.C. § 271(a) and concluded that Porta had not infringed under § 271(a) because Porta had only tested unpatented battery system components in the U.S. without ever using them in the claimed combination.

Turning to the issue of infringement under 35 U.S.C. § 271(f)(2), the Court determined that the district court had misconstrued this statutory section to require actual assembly of shipped components to form an infringing product.

The Federal Circuit contrasted infringement under § 271(f)(2) with contributory infringement under § 271(c) and noted that the plain language of § 271(f)(2) does not require any act of direct infringement, nor does it speak of contributory infringement. The Court also determined that the legislative history of § 271(f)(2) does not provide any indication that this statutory provision requires an actual combination of shipped components.

The Court noted that the language of § 271(f)(2) specifies that the infringer only “intend” that a “component” will be combined without ever requiring that the infringer actually combine or assemble components. According to the Court, such intent could occur even if the patented combination is never formed from shipped components.

In rejecting Porta’s argument that § 271(f)(2) impermissibly creates liability for attempted patent infringement, the Federal Circuit reasoned that shipping components of an invention abroad without combining them is no more an “attempt” than infringement under § 271(a) involving an offer to sell an invention without any actual sale. The Court
explained that a requirement of actual assembly abroad would force patentees to overcome a substantial hurdle of proving infringement in foreign countries, as well as providing the appearance of giving extraterritorial effect to U.S. patent protection. Thus, the Court vacated the SJ under § 271(f)(2) and remanded for further proceedings.