The U.S. patent that reached around the world (patent infringement)

Abstract

The article presents the case filed before the Court of Appeals for the Federal Circuit (CAFC) in the recent case of Union Carbide v. Shell regarding US patent infringement by activities in a foreign country. The case involved a patented method for making the industrial chemical ethylene oxide using silver-based catalysts. The seven-year patent infringement suit that ensued saw the victory of Union Carbide after two jury trials. However, the trial judge had said that Union Carbide was not entitled to any damages for Shell's sales of catalysts to its foreign customers. Union Carbide felt that such damages were proper because the only use for Shell's catalysts was to practice Union Carbide's patented method. Both at trial and on appeal, Union Carbide based its claim on a section of the Patent Laws [Section 271(f)], which Congress had enacted in 1984 in response to another court fight about offshore infringement. This section, in relevant part, i.e., 271(f)(2), provides that it is an act of infringement to supply "any component of a patented invention" from the United States with the intent that the component will be employed (combined) outside the United States in a manner that would infringe if done in the United States, if the component is 1) especially adapted for use in the invention and 2) not a staple article or commodity of commerce suitable for a substantial noninfringing use. Before the Union Carbide case, Section 271(f)(2) had been limited to apparatus and composition patents. Union Carbide wanted to extend its scope to method patents. The Union Carbide case is another example of the shrinking size of the world. Courts respond to changing realities, and with the global marketplace and outsourcing, one can expect that offshore infringement will become an increasingly common issue faced by patent owners and the infringers they sue.