After deciding in March of this year the term "component" as used in 35 U.S.C. § 271(f) includes software (Eolas Technologies, Inc. v. Microsoft Corp.) and the term "supplied" in the same statute includes copies of the software made overseas from a single master disk shipped from the United States (AT&T Corp. v. Microsoft Corp.), the U.S. Court of Appeals for the Federal Circuit has now affirmatively ruled that § 271(f) applies to all inventions, including those protected by method claims. Union Carbide Chemicals v. Shell Oil, Case No. 04-1475-1512 (Fed. Cir. Oct. 3, 2005) (Rader, J.). Although the Court in both AT&T and Eolas cases refused to limit the application of the statute to apparatus claims, the Union Carbide decision expressly states the statute also governs method and process claims.
The relevant issue on appeal was the district court’s in limine ruling to prohibit Union Carbide from submitting evidence of Shell’s foreign sales for the purpose of recovering additional damages under § 271(f). According to the district court, § 271(f) is not directed to process claims, and, thus, Shell’s supply of catalysts to its foreign affiliates, who in turn use the catalysts in their processes, did not create liability. However, after examining its relevant precedent, including the AT&T and Eolas decisions, the Federal Circuit rejected the lower court’s statutory interpretation, reemphasizing the words of the statute (i.e., "any component of a patented invention") are broad and inclusive.
For a more in depth analysis of the history and judicial interpretation of § 271(f), please see From Deepsouth Shrimp to Microsoft Windows: Exporting Components of Patented Inventions under 35 USC §271(f) by clicking on 'next page' below.
Practice Note
U.S. companies need to remain mindful of § 271(f) even if only supplying components used for assembly or other inclusion in products or processes abroad.
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