For infringement under 35 U.S.C. § 271(g), must a single entity perform a claimed process?

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." In Syngenta Crop Protection, LLC v. Willowood LLC, et al (Fed. Cir. Dec. 18, 2019), the Federal Circuit considered whether 35 U.S.C. § 271(g) requires that every step of a claimed process be performed by a single entity.

On a motion for summary judgment, the US District Court for the Middle District of North Carolina determined that 35 U.S.C. § 271(g) requires that all steps of a claimed process be performed by or attributable to a single entity. The district court also determined that there was a dispute of material fact, and it permitted the issue to go to trial. The jury found that the plaintiff, Syngenta, did not prove that the claimed process was performed by or attributable to a single entity as required by the district court's interpretation of § 271(g).

The Federal Circuit reversed, finding that "[n]othing 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."

On appeal, Willowood argued that the single-entity requirement under §271(a), in which all steps of a claimed method are performed by or attributable to a single entity, should be applied to §271(g) as well since it is simply another form of direct infringement. The Federal Circuit disagreed, and in view of another subsection of the statute, namely §271(f), stated that if Congress intended to limit liability under §271(g) to instances where the infringing patented process was entirely practiced by a single entity, then Congress "kn[ew] precisely how to do so."

Willowood also argued that because direct infringement of a process patent under §271(a) requires the same entities to perform all of the claimed steps, the same must be true under §271(g) because, "Congress intended to provide patentees with 'the same protection against overse[a]s infringers as they already enjoyed against domestic entities.'" The Federal Circuit disagreed, finding that §271(a) covers all patented processes, whether the processes end up with a product or not.

On the other hand, §271(g) requires importation, sale, offer for sale, or use within the US of a product made by a patented process. "The different scope of protection offered under §271(a) and §271(g) demonstrates that there is no inconsistency between the two sections… Congress made clear that §271(g) 'is prompted by the use of patented processes in other countries followed by the importation of the resulting production into this country' and simply 'extend[s] protection to the products' made by such processes."

This case appears to demonstrably expand the range of foreign activities that may constitute infringement under 35 U.S.C. § 271(g), in that the section does not require a single entity to perform, direct, or control all of the steps of a patented process for infringement liability to arise from the importation or sale of products made by a process patented in the US.