Bayer AG v. Housey Pharmaceuticals, Inc.

Under 35 U.S.C. § 271(g), it is infringement for products made using a method patented in the United States to be imported into the United States. Congress enacted § 271(g) to supplement the infringement remedies provided to method-patent holders under another provision, 19 U.S.C. § 1337, which was directed solely at the importation of articles. Other provisions of the act that included § 271(g) associated the concept of making with manufacturing physical goods and did not contemplate producing intangible material. The legislative history of § 271(g) also lacked any indication that Congress wanted the provision to extend over the importation of intangible products. All previously proposed statutes that ultimately developed into § 271(g) were clearly directed at manufacturing and did not raise the issue of importing intangible information. Housey Pharmaceuticals, Inc. (Housey) (defendant) was assigned three method patents directed at applying substances to proteins to test for certain responses. This information was then used for creating and releasing drugs. Bayer AG (Bayer) (plaintiff) filed a motion in federal court seeking declaratory judgment that Housey’s patents were invalid and unenforceable, and that Bayer was not infringing Housey’s patents. Housey filed a counterclaim asserting that Bayer infringed Housey’s patents by the importation into the United States of information gathered by practicing the patented method abroad. Bayer filed a motion to dismiss the counterclaim. The district court dismissed Housey’s counterclaim for infringement. The district court found that § 271(g) only permitted a claim of infringement for the act of importing products created by a method of manufacturing and did not extend to importing intangible information, such as protein reactions, obtained through a method of gathering data. Housey appealed, arguing § 271(g) applied in these circumstances.