December 18, 2019

It is Importation that Infringes under 35 USC § 271(g), Not Manufacture

In Syngenta Crop Protection, LLC v. Willowood, LLC, [2018-1614, 2018-2044] (December 18, 2019), the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the district court’s judgment in favor of all defendants on infringement of one patent at issue; and against Willowood LLC and Willowood USA on infringement of the remaining three patents.

In addition to a patent infringement charge, the dispute also involves a charge of copyright infringement. When Willowood sought to register a generic version of Syngenta’s fungicidal chemical, the latter filed a suit alleging that Willowood had infringed four of its patents as well as the copyright on its product label. The dispute named three affiliates in connection to the infringing product: Willowood China, Willowood USA, and Willowood LLC.

In regard to the copyright claim, the Federal Circuit remanded the dismissal of Syngenta’s argument for a more detailed determination of whether the Federal Insecticide, Fungicide, and Rodenticide Act (FIFRA) required defendants to copy portions of Syngenta’s labels.

Turning to the patent dispute, in a case of first impression, the Federal Circuit reversed the district court’s requirement that all steps of a patented process be performed by or at the direction or control of a single entity before infringement liability under 35 USC 271(g) can attach. The reversal affected on a single patent, however, U.S Patent No. 5,847,138.  

The court relied on Section 271(g) of the Patent Act while analyzing the infringement claims. Section 271(g) 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 Federal Circuit said that 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. The Federal Circuit said that nothing in the 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. The Federal Circuit concluded that 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.

The Federal Circuit otherwise affirmed the infringement determinations, finding that, because Willowood China did not import the chemical product back into the U.S., the affiliate was able to skirt infringement rulings on the remaining three patents.