Cardiac Pacemakers, Inc., Guidant Sales Corporation, Mirowski Family Ventures, LLC, and Anna Mirowski (collectively, “Cardiac” or “appellants”) appeal from the decision of the United States District Court for the Southern District of Indiana granting summary judgment of invalidity of claim 4 of U.S. Patent 4,407,288 (“the ’288 patent”). See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 483 F. Supp. 2d 734 (S.D. Ind. 2007) (“Invalidity Decision”). Cardiac also appeals aspects of the district court’s decision concerning damages. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 418 F. Supp. 2d 1021, 1027-30 (S.D. Ind. 2006) (“Damages Decision”). Because the district court erred in concluding in light of our prior mandates that it could find the ’288 patent anticipated, we reverse on invalidity. In light of the fact that infringement has already been decided by the district court, we remand the case solely for a determination of damages. We affirm the court’s decision limiting damages to those devices that can be shown to have executed the steps of claim 4 of the ’288 patent.
St. Jude Medical, Inc. and Pacesetter, Inc. (collectively, “St. Jude”) cross-appeal from the district court’s decision permitting damages under 35 U.S.C. § 271(f). See Id. at 1027-30. The en banc court reverses the district court’s determination that 35 U.S.C. § 271(f) applies to method claims and hence permits damages in this case on devices exported where the claimed method is carried out in countries other than the United States (see Section C.2 of this opinion).
