## United States Court of Appeals for the Federal Circuit

04-1475, -1512

UNION CARBIDE CHEMICALS & PLASTI CS TECHNOLOGY CORPORATION and UNION CARBIDE CORPORATION, Plaintiffs-Cross Appellants,

v. SHELL OIL COMPANY, SHE LL CHEMICAL COMPANY, and CRI CATALYST COMPANY, Defendants-Appellants.

Harry J. Roper , Jenner & Block LLP, of Chicago, Illinois, argued for plaintiffscross appellants. With him on the brief were David R. Bennett , Aaron A. Barlow , and Raymond N. Nimrod ; Paul M. Smith and Marc A. Goldman , of Washington, DC. Of counsel on the brief was Bruce M. Kanuch , The Dow Chemical Company, of Midland, Michigan.

William C. Slusser , Slusser Wilson & Partridge LLP, of Houston, Texas, argued for defendants-appellants. Wi th him on the brief were Jayme Partridge and Jayne Piana . Of counsel on the brief were John D. Norris and Richard L. Stanley , Howrey LLP, of Houston, Texas. Of counsel were Laura F. Jones , Keith Jaasma and Michael E. Wilson , Slusser Wilson & Patridge LLP, of Houston, Texas. Appealed from: United States District Court for the District of Delaware Chief Judge Sue L. Robinson

## United States Court of Appeals for the Federal Circuit

04-1475, -1512

UNION CARBIDE CHEMICALS & PLASTI CS TECHNOLOGY CORPORATION and UNION CARBIDE CORPORATION, Plaintiffs-Cross Appellants,

v. SHELL OIL COMPANY, SHE LL CHEMICAL COMPANY, and CRI CATALYST COMPANY, Defendants-Appellants.

ON PETITION FOR PANEL REHEARING AND REHEARING EN BANC Before MICHEL, Chief Judge , NEWMAN, MAYER, LOURIE, CLEVENGER, RADER, SCHALL, BRYSON, LINN, DYK, and PROST, Circuit Judges

. O R D E R A combined petition for panel rehear ing and rehearing en banc was filed by the Appellants 1 , and a response thereto was invi ted by the court and filed by the Cross Appellants. The petition for rehearing was re ferred to the panel that heard the appeal, and t hereafter the petition for rehear ing en banc, amici curiae briefs and response were referred to the circuit judges who are authorized to request a poll whether to r ehear the appeal en banc. A poll was requested, taken, and failed. Upon consideration thereof,

1 Amicus Curiae briefs were filed by: 1- The American Intellectual Proper ty Law Association and Federal Circuit Bar Association. 2- M-1 L.L.C. 3- Microsoft Corporation. 4- Fédération Internationale des C onseils en Propriété Industrielle.IT IS ORDERED THAT: (1) The petition for panel rehearing is denied. (2) The petition for re hearing en banc is denied. (3) The mandate of the c ourt will issue on January 17, 2006. LOURIE, Circuit Jud g e , with whom MICHEL, Chief Judge , and LINN,

Circuit Jud g e , join, dissents in a separate opinion. DYK, Circuit Judge , dissents. GAJARSA, Circuit Judge , did not participate in the vote.

F O R T H E C O U R T

_ January 10, 2006__

_ s/Jan Horbaly

___ Date Jan Horbaly C l e r k

cc: Harry J. Ro per, Esq. William C. Slusser, Esq. Constantine L. Tr ela, Jr., Esq. Maxim H. Waldbaum, Esq. Edward R. Rein es, Esq. Jeffrey D. Mills, Esq.

04-1475,-1512 2

## United States Court of Appeals for the Federal Circuit

04-1475, -1512

UNION CARBIDE CHEMICALS & PLAS TICS TECHNOLOGY CORPORATION and UNION CARBIDE CORPORATION, Plaintiffs-Cross Appellants,

v. SHELL OIL COMPANY, SH ELL CHEMICAL COMPANY, and CRI CATALYST COMPANY, Defendants-Appellants.

LOURIE, Circuit Judge , with whom MICHEL, Chief Judge , and LINN, Circuit Judge , join, dissenting from the order denying rehearing en banc

.

I hereby dissent from the decision of the court not to hear this case en banc to consider whether § 271(f) applies to process inventions. The panel opinion held that ”§ 271(f) governs method/process inventions.” Union Carbide Chemicals & Plastics Tech. Corp. v. Shell Oil Co. , 425 F.3d 1366, 1380. However, I believe that conclusion is contrary to the statutory schem e and to recent case law. The statute itself speaks of supplyi ng “components of a patented invention, where such components are uncombined . . . in such manner as to actively induce the combination of such components outside of the United States.” 35 U.S.C. § 271(f). The whole tenor of that provision relates to physical inventions, i.e. , apparatus or compositions, not methods. We recent ly extended the meaning of “component” to include what traditionally wo uld be physical compone nts, but which, in an electronicworld, supplied electronically, ar e the equivalent of physi cal components. See Eo la s Techs. V. Microsoft. , 399 F.3d 1325, 133 8 (Fed. Cir. 2005); AT &T Corp. v. Microsoft Corp. , 414 F.3d 1366, 1368 (Fed. Cir. 2005). But t he invention s in those cases were apparatus or systems, not met hods or process. And in RIM, we distinguis hed method claims, holding that, while a sy stem clai m could be infringed ev en though one of its component s was outs i de of the Un ited States, that was not true for the method claim. NTP, Inc. v

. Research in Motion, Ltd. , 418 F

. 3d 1282, 1322 (Fed. Cir. 2005) (declining to find infringement under § 271(f) with regard to a method claim). A component of a process is a st ep in the process; it is not the physical material to be used in the process. What the panel opinion here holds is that supplying a component to be used in one of the process st eps can create infringement. That is, in my view, an incorrect an extens io n of the statutory language. Moreover, § 271(c), which is a kind of re verse provision to 271(f), expressly recites “a component of a patented machine, manufacture, combination or c o mposition, or a material . . . for use in practicing a patented process.” 35 U.S.C. § 271(c). The separate recitation of a component of a ma chine, etc., and a material for use in practicing a process indicates Congress's re cognition of the distinction between the two

situations t hat the panel op inion here has c onfused. Supp lying a component for use in practicing a patented process or method is not what Congress had in mind in enacting § 271(f). A material for use in practicing a proc ess is not a component of that process. The present holding is also c ontrary to our holding in Standard Havens , where we held that “we do not find the provisions of 35 U.S. C. §271(f) (1988) to be implic ated”

in a s i tuation wher e an apparatus for use in a pat ented process was sent abroad.

04-1475,-1512 2Standard Havens Pr ods., Inc. v. Gencor Indus. Inc. , 953 F.2d 1360, 1374 (Fed. Cir. 1991). I therefore respectfully dissent from the decision of the court not to rehear this

case en banc.

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