Posts Tagged: "35 U.S.C. § 271"

McDonald’s Payment Devices Do Not Infringe Digital Rights Management Patents

The Federal Circuit panel of Circuit Judges Timothy Dyk, Jimmie Reyna and Richard Taranto noted that “the matter at hand reveals a gap in our jurisprudence on what constitutes ‘use’ under § 271(a).” The Federal Circuit found no controlling precedent on the definition of “use” of a claimed system when the accused infringer must act to put the claimed system into service but does not appear to possess any element of the claimed system. Further, the panel felt that McDonald’s had overstated the Federal Circuit’s holding in Uniloc as the appellate court concluded that a single party can still use a system and directly infringe a patent even when that system requires multiple parties to function. “Therefore, Uniloc only broadened the scope of potential direct infringers under § 271(a),” the Federal Circuit found.

Examining CAFC Application of §271(g)(1)’s ‘Materially Changed’ Exception to Infringement Liability

35 U.S.C. § 271(g) was enacted in 1988 as part of the Process Patents Amendments Act to address instances where would-be infringers were avoiding infringement liability by using a process, patented in the U.S., outside of the country and then importing the product of the patented process into the U.S. Eli Lilly and Co. v. American Cyanamid Co., 82 F.3d 1568, 1571 (Fed. Cir. 1996). Under Section 271(g), such activity constitutes infringement. 35 U.S.C. § 271(g). The statute, however, carves out two exceptions: (1) where the product of the patented process that was made outside the U.S. is “materially changed” prior to importation; and (2) where the product of the patented process becomes a “trivial and nonessential component” of the product being imported. This article examines Federal Circuit case law addressing the circumstances that will (and will not) give rise to application of the “material change” carve out to infringement liability under Section 271(g).