Directing Method Step to Be Performed Outside U.S. Negates Joint Infringement

Ormco Corporation v. Align Technology Inc., C.D. Ca. (8-03-cv-00016), February 23, 2009

Ormco sued Align, and its "Invisalign" process, over patents relating to orthodontic appliances designed and manufactured using "digital shape data."

Specifically, Align's accused process involved the following: impressions of teeth are scanned to produce a 3D image, and are saved as an "ADF" file. The ADF file is then stored on servers in the US and in Costa Rica. Using Align's "Tootshaper" software, operators in Cost Rica create representations of the patient's teeth to fit the aligners. After further processing by the toothshaper software, the data is saved as a new ADF file and transmitted back to the US.

Ormco argued that Align “is liable under § 271(a) under a joint infringement theory when it performs one step of the claims and directs it [sic] Costa Rican subsidiary to perform the remaining steps on its behalf.” Acknowledging that joint infringement was a viable option, the district court negated infringement of one of the claims, due to the steps being performed in Cost Rica:

Theories of joint infringement are cognizable under § 271(a) where multiple actors are involved, and the patentee can show that one party “control[s] or direct[s] each step of the patented process,” even if some steps are “performed” by others. BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1380 (Fed. Cir. 2007), rehear’g en banc denied (2008). However, the “joint” aspect does not eliminate the need to show all steps or stages of the claimed process are performed in the United States. The theory of joint infringement concerns who performed the steps of a claim, not where the steps were performed.

In addition, Align argued indirect infringement under 35 U.S.C. § 271(f), which creates liability for anyone who supplies from the United States one or more components of a patented invention

“where such components are uncombined in whole or in part, in such manner as to
actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.”

Infringement can be established via showing either “all or a substantial portion of the components of a patented invention” were supplied, or “any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use” was supplied.

The parties disputed whether 35 U.S.C. § 271(f) applied to method claims. Align pointed to dicta from Microsoft Corp v. AT & T Corp., which did not concern a method claim, as leaving the question “expressly unresolved.” There, the Court commented,

“If an intangible method or process, for instance, qualifies as a ‘patented
invention’ under § 271(f) (a question as to which we express no opinion), the
combinable components of that invention might be intangible as well.”

However, the district court noted the Federal Circuit's unpublished opinion in Union Carbide Chemicals and Cardiac Pacemakers, where the court held that Microsoft did not “overturn[] this court's prior precedents that have held that § 271(f) applies to method claims.” The district court then stated:

While Cardiac Pacemakers is nonprecedential, the Court finds it persuasive, and
declines to read Microsoft’s dicta as overruling Union Carbide’s clear holding.

Also, the court added in the footnote that "Cardiac Pacemakers makes clear that Union Carbide remains the law until an en banc Federal Circuit or the Supreme Court says otherwise."

There is also a very detailed and interesting analysis by the court regarding software "components", and whether or not they are "combined" or "substantial parts" of patented components for the purposes of § 271(f).

You can read/download a copy of the opinion here (link)