MSTM, LLC et al v. AB Sciex LLC d/b/a SCIEX (D. Mass. 23-cv-11121).

MSTM accused Sciex of (among other things) infringing a patent relating to mass spectrometry ionization technology.  Sciex moved to dismiss MSTM’s claims that Sciex infringed under Section 271(f)(1), which prohibits supplying all or a substantial portion of the components of a patented invention from the U.S. in a way that actively induces their combination abroad into an infringing product, and under Section 271(f)(2), which prohibits providing even a single component of a patented invention from the United States if that component is especially made or adapted for use in the claimed invention with the intent that it be combined outside of the United States in an infringing manner.  This section allows a patent holder to obtain damages on foreign sales where the infringing product is shipped abroad in parts for final assembly elsewhere, although it does require an instance of domestic infringement to be viable.

Here, MSTM’s second amended complaint does not identify specific components alleged to be exported for assembly and does not identify the eventual customer(s) of any such exported components or products.  As a complaint need only stated a plausible case of infringement, as opposed to actual proof of such, Judge Guzman found that the facts alleged were sufficient to state a case for 271(f) infringement.  The SAC identified four countries to which components were alleged to be exported, and identified and attached instruction manuals for the accused (assembled) products that identified the exported components.  The SAC alleged that accused devices were exported by the defendant through manufacturing and distribution centers in the United States, which leads to a plausible inference that these centers could likewise distribute components of the accused devices for subsequent assembly.  Accordingly, at the motion to dismiss stage, the SAC presents enough factual allegations that, taken as true, are sufficient to state a claim (albeit narrowly).

Looking towards expected summary judgment motions and/or trial, Judge Guzman pointed out that MSTM cannot base a 271(f) claim on the export of fully assembled products, and that she expects MSTM to provide specific evidence as to the specific components (if any) that are being exported.  She also noted that method claims cannot be infringed under Section 271(f), as methods are intangible and thus not subject to exportation, and that each step of a method claim must be performed in the United States to infringe a U.S. Patent.

Judge Guzman also granted MSTM’s motion to compel discovery responses relating to global sales of accused products.  AB Sciex had argued that it should not be required to produce foreign sales information on products made and sold oversees (which appear to include a number of products made in Singapore and not sold in the United States) until MSTM had asserted sufficient facts to connect a domestic act of infringement to products asserted to infringe under 271(f).  Judge Guzman noted that, in addition to finding (at this stage) that MSTM’s 271(f) claims could proceed, there is Supreme Court and Federal Circuit caselaw that allows for damages on foreign activities resulting from domestic activities, which can include lost profits or a reasonable royalty, and also may be relevant for assessing the reasonable royalty rate and for assessing the secondary considerations relating to a non-obviousness determination.  Again, Judge Guzman noted that this information may ultimately not be relevant or admissible once summary judgment or trial takes place, at the early stage of the litigation such information is discoverable.