No Infringement of US Patent Where Method Step Occurs Outside US

Following the NTP and RIM saga, another recent US case has considered whether a patent claim for a method is infringed when part of the method has taken place outside the US. In Zoltek Corporation v United States, the US Court of Appeals for the Federal Circuit considered infringement of a patented method of manufacturing silicon carbide fibre sheets. The patent owner, Zoltek Corporation (Zoltek), alleged that the US Government had infringed Zoltek's patent through its contractor Lockheed Martin. The allegedly-infringing fibre sheets were to be included in the manufacture of F-22 fighter aircraft and part of the claimed manufacturing process took place in Japan. The majority of the Court held that, because of the offshore component of the process, the patents in suit were not infringed and the US Government was not liable. The Court held that a method claim is not infringed unless "each of the steps is performed within this country." Because the allegedly infringing activity was carried out by a government contractor, and thus covered by a specific provision of the US Code, there is some question whether the decision can be considered more broadly applicable to non-government actors. There is contrasting authority in the UK. In the 2002 English Court of Appeal decision of Menashe Business Mercantile v William Hill, the Court considered a gaming method, claimed as a "system". The benefit of the method was enjoyed by UK punters in the UK. As a result, the Court said the use of an offshore server to manage the play of the game from Antigua did not avoid the patent, and the defendant William Hill was found to have infringed. For the full text of the decision in Zoltek Corporation v United States (CAFC, March 31, 2006), visit: http://www.fedcir.gov/opinions/04-5100.pdf The decision in Menashe Business Mercantile v William Hill (Eng CA, November 28, 2002) is available at: http://makeashorterlink.com/?E6B72351D Summary by: Jennifer Jannuska