BASICS: “Whoever 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, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after: (1) it is materially changed by subsequent processes; or (2) it becomes a trivial and nonessential component of another product.” 35 U.S.C. § 271(g); seealsoid. § 154(a)(1); Zoltek II (Fed. Cir. 03/14/12) (explaining purpose and legislative history). Must compare imported product to product that would be produced by claimed processes, and look to patent to measure whether differences are material. Amgen (Fed. Cir. 09/15/09) (aff’g jury verdict that changes not material).
Title 19 (ITC) Has Similar Provision: Barring “importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee of articles that . . . are made, produced, processed, or mined under, or by means of, a process covered by the claims of a valid and enforceable United States patent.” 19 U.S.C. § 1337(a)(1)(B)(ii). Exceptions do not apply to ITC proceedings. Kinik (Fed. Cir. 05/13/04) (but not considering impact of GATT treaty 1998 national treatment rules). The safe harbor provided by Sec. 271(e)(1) does apply in ITC to import of products made by patented process. Amgen (Fed. Cir. 04/30/09).
a) “a product”
Information Is Not A Product Under Sec. 271(g). Bayer (Fed. Cir. 08/22/03) (“in order for a product to have been ‘made by a process patented in the United States’ it must have been a physical article that was ‘manufactured’ and … the production of information is not covered.”); cf. Clearcorrect (Fed. Cir. 11/10/15) (2-1) (citing Bayer with approval as consistent with holding that “articles” in ITC Sec. 337 statute is limited to tangible, material things, not intangibles), rehearing en banc denied (Fed. Cir. 03/31/16) (Newman, J. dissenting).
b) “made by a patented process”
Testing And Quality Control Is Not Making A Product: “Make” in Sec. 271(g) has its ordinary meaning, namely, like “manufacture,” the “creation or bringing into existence of something” and “extends to the creation or transformation of a product, such as by synthesizing, combining components, or giving raw materials new properties.” But, does not extend “to methods of testing a final product or intermediate substance to ensure that the intended product or substance has in fact been made” or has certain qualities. Momenta Pharm II (Fed. Cir. 11/10/15) (2-1) (aff’g Summ. J. of no Sec. 271(g) infringement; patented method generates information about products that have already been made without transforming them).
c) sec. 295 shifting burden of proof
Burden May Shift To Accused To Prove Non-Infringement: When infringement alleged under Sec. 271(g), if court “finds-(1) that a substantial likelihood exists that the product was made by the patented process, and (2) that the plaintiff has made a reasonable effort to determine the process actually used in the production of the product and was unable so to determine, the product shall be presumed to have been so made, and the burden of establishing that the product was not made by the process shall be on the party asserting that it was not so made.” 35 U.S.C. § 295; seeCreative Compounds (Fed. Cir. 06/24/11) (aff’g Summ. J. of infringement where defendant failed to provide documentation on its foreign supplier’s manufacturing process).
d) sec. 287(b) restriction on damages
Special Restrictions on Damages: Infringer accused under Sec. 271(g), may be exempt from pre-suit damages unless that infringer “(A) practiced the patented process; (B) owns or controls, or is owned or controlled by, the person who practiced the patented process; or (C) had knowledge before the infringement that a patented process was used to make the product . . . .” 35 U.S.C. § 287(b).