Whether a Single Entity Practices a Claimed Process Is Immaterial to Infringement Under 35 U.S.C. § 271(g)

In Syngenta Crop Prot., LLC v. Willowood, LLC, No. 2018-1614; -2044 (Fed. Cir. Dec. 18, 2019), the Federal Circuit vacated the district court’s non-infringement judgment regarding a claimed process and remanded for further proceedings. The Court held that infringement under 35 U.S.C. § 271(g), which prohibits importing, offering to sell, selling, or using within the US a product made by a process patented in the US, does not require a single entity to perform all of the steps of a patented process.

Syngenta sued several Willowood entities for patent and copyright infringement relating to Willowood’s azoxystrobin pesticide.  Certain asserted claims were directed to methods for producing the pesticide.   Denying Syngenta’s motion for summary judgment of infringement, the district court interpreted section 271(g) to require that all steps of a patented process be performed by or at the direction or control of a single entity before liability arises. 

On appeal, the Federal Circuit found that the district court erroneously read section 271(g), holding that section 271(g) does not require a single entity to perform all of the steps of a patented process.  Instead, infringement may arise from the importation into the US or offer to sell, sale, or use within the US of a product made by a process patented in the US, regardless of who performs the patented process. Accordingly, the Federal Circuit reversed the district court’s non-infringement judgment and remanded for further consideration of one Willowood entity’s role with respect to the imported azoxystrobin compound.

The Federal Circuit also vacated and remanded the district court’s grant of summary judgment on Syngenta’s copyright claims.  The Federal Circuit directed the district court to determine whether the Copyright Act would prohibit Willowood’s use of any portion of Syngenta’s label, before examining whether the Federal Insecticide, Fungicide, and Rodenticide Act precludes Syngenta’s copyright claims.