Assembly of Patented Inventions Abroad?

 35 USC 271 (f) seemingly could be used by a patent owner to acquire damages for the supply of components to a patented invention that was going to be assembled abroad.  However, after the Supreme Court’s restriction of 271 (f) based on the jurisdictional limiations of US Law it was thought to be of limited value.   

The Supreme Court found that presumption against extraterritorial appliction of US law prevented a US patent owner from asserting a 271 (f) claim against individuals duplicating software overseas.  Microsoft v. AT&T.  Despite this ruling, the Federal Circuit recently upheld the application of 271 (f) to components used in the performance of a patented method for stimulating the heart.  Cardiac Pacemakers v. St. Jude Medical (Fed. Cir. 2008). 

The Federal Circuit permitted Cardiac to recover damages for St. Jude’s ICD’s that were sold overseas and were said to infringe claim 4 of the ‘288 patent.   Consequently, it seems that 271 (f) still has some bite that can be used to prevent individuals from shipping components overseas and assembling or carrying out processes overseas to avoid a US patent owner’s infringement claim. 

It should be noted that the Federal Circuit’s opinion in Cardiac Pacemakers v. St. Jude Medical is non-precedential. 


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