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IP Alert: Federal Circuit Decides Issue of First Impression Under Section 271(g)

December 19, 2019

Yesterday, in Syngenta Crop Protection v. Willowood LLC et al., the Federal Circuit addressed an issue of first impression under 35 U.S.C. 271(g), stating “the focus is only on acts with respect to products resulting from the patented process” for purposes of section 271(g), and practice or direction of all the patented process steps by a single entity is not required under that statute.

Syngenta, a manufacturer of fungicides, holds patents drawn to a process for preparation of a chemical component used in fungicide production. Willowood, a competitor, imported the chemical component, and Syngenta sued Willowood and related foreign Willowood entities for patent infringement. Under section 271(g) of the Patent Act, an importer of “a product which is made by a process patented in the United States” is liable for patent infringement. Willowood defended on the ground that no single entity had itself practiced the steps of the patented process or had controlled the practice of these steps, as would generally be necessary to hold an infringer liable for practice of a process patent within the U.S. The district court agreed and granted judgment in favor of Willowood.

On appeal, Syngenta contended that the district court’s interpretation of section 271(g) was “contrary to the plain language of the statute and Congress’s intent expressed in the legislative history.” The Federal Circuit held that this was an issue of first impression and concluded that the district court erred by imposing a single-entity requirement under section 271(g).

The Federal Circuit reasoned that the resolution of this issue turns on the nature of the infringing acts covered by section 271(g), which provides that “[w]hoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer.” The court stated,

This language makes clear that the acts that give rise to liability under § 271(g) are the importation, offer for sale, sale, or use within this country of a product that was made by a process patented in the United States. Nothing in this statutory language suggests that liability arises from practicing the patented process abroad. Rather, the focus is only on acts with respect to products resulting from the patented process. Thus, because the statutory language as a whole is clear that practicing a patented process abroad cannot create liability under § 271(g), whether that process is practiced by a single entity is immaterial to the infringement analysis under that section.

In light of the Federal Circuit’s conclusion as stated above, exporters of products made outside the U.S., importers of such products, and U.S. customers for such products would be well-advised to give close attention to the Syngenta decision and its interpretation of 35 U.S.C. 271(g).

If you have questions regarding this decision, please contact Kendrew H. Colton, author of this alert.

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