The U.S. Court of Appeals for the Federal Circuit has denied Shell Oil Company’s petition for an en banc hearing of the Court’s October 2005 holding that § 271(f) applies to all inventions, including those protected by method claims. Union Carbide Chemicals v. Shell Oil, Case Nos. 04-1475, -1512 (Fed. Cir. Jan. 10, 2006) (en banc) (Lourie, J., dissenting).
As reported in the October 2005 IP Update, Vol. 8, No. 10, a three-judge panel of the Court had overruled the district court’s holding that § 271(f) was not directed to process claims; therefore, Shell Oil’s supply of catalysts to its foreign affiliates, which use the catalysts in their allegedly infringing processes, did not create liability. Focusing on the words of the statute, the Federal Circuit rejected the lower court’s interpretation, emphasizing that the term "any component of a patented invention" as recited in the statute is broad and inclusive.
In response to the en banc petition, (with Judge Gajarsa not participating,) an 11-member en banc panel denied the petition for a rehearing in a 7 to 4 vote. In his dissent, Judge Lourie, joined by Chief Judge Michel and Judge Linn, urged that the "tenor of [§ 271(f)] relates to physical inventions, i.e., apparatus or compositions, not methods." The dissent added that "[A] component of a process is a step in the process; it is not the physical material to be used in the process."
Practice Note
Given the majority’s denial of the petition, and absent a review by the Supreme Court, it appears as settled law that § 271(f) covers all "inventions," whether presented as apparatus, method or process claims. U.S. companies need to remain mindful of § 271(f), even if only supplying components used for assembly or for other inclusion in products or processes abroad.
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