Single-Entity Requirement for Infringement Under § 271(a) Does Not Apply to § 271(g)

SYNGENTA CROP PROTECTION, LLC v. WILLOWOOD, LLC

Before Reyna, Taranto, and Stoll.  Appeal from the U.S. District Court for the Middle District of North Carolina.

Summary: Infringement under § 271(g) 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 importation into the United States, or offer to sell, sale, or use within the United States of a product made by a process patented in the United States.

Syngenta filed a lawsuit against Willowood for infringement of patents covering a chemical compound, and a process for making the chemical compound.  Willowood claimed that it did not infringe the process patent, and moved for summary judgment with regard to this patent.  The district court, in interpreting 35 U.S.C. § 271(g), determined that, in order for infringement to occur, all steps of the claimed process must be performed by or attributable to a single entity. The district court determined that there was a genuine dispute of material fact as to whether Willowood’s supplier performed both steps of the process patent, and permitted the issue to proceed to trial.  At trial, the jury found that Syngenta did not prove both steps of the claimed process were performed by or attributable to a single entity.  Syngenta appealed the district court’s conclusion that § 271(g) requires every step of a claimed process to be performed by or attributable to a single entity.

The Federal Circuit reversed the district court’s judgment that Willowood did not infringe the process patent under § 271(g). The Federal Circuit concluded that the district court incorrectly used § 271(a) jurisprudence to impose a single-entity requirement on the performance of a patented process under § 271(g).  The Federal Circuit emphasized that liability under § 271(g), based on the language of the statute, is not predicated on practicing the claimed process, but instead is based on importing, offering for sale, selling, or using a product resulting from a patented process, and, therefore, the single-entity requirement does not apply to § 271(g).

Editor: Paul Stewart

Written by: Ashley C. Morales & Andrea Cheek