Thursday, October 13, 2016

Is Trivial and Incidental Domestic Use of a Patented Intermediate Infringing?

Bayer Inc v Fresenius Kabi Canada Ltd 2016 FC 581 Brown J motion for reconsideration dismissed 2016 FC 970
            2,192,418 / moxifloxacin hydrochloride for injection / AVELOX IV / NOC

In Bayer v Fresenius Brown J granted Bayer’s application for an order of prohibition on the basis that the NOA was insufficient, even though the application would otherwise have been dismissed on the basis that Bayer had not established infringement [7]. Brown J held that the transient and insignificant use of the claimed invention in making Fresenius product which was then imported, was not an infringement. On this point he was on firm legal ground. But the implications of this legal rule, in light of the SCC decision in Monsanto 2004 SCC 34, has implications that go beyond the context of importation. It suggests that trivial and incidental use of a patented intermediate is not infringing, even if the use is entirely domestic.

[Update: On re-reading the decision, I believe I had previously misread a key passage from Brown J's decision. I am adding this note, and the explanatory footnote ** below, but it is my policy not to amend my posts to correct errors. When I'm wrong, I'm wrong.]

Under the Saccharin doctrine (so-called after Saccharin Corporation Ltd v Anglo-Continental Chemical Works Ltd (1900), 17 RPC 307, and also referred to as “infringement by importation”), the importation and use in Canada of products made abroad by a process that is patented in Canada is an infringement of the process patent even though the product itself is unpatented. The Saccharin doctrine is now well-established as part of Canadian law: see Gauthier J’s decision in Cefaclor 2009 FC 991, [270]-[329] aff’d 2010 FCA 240, [17]-[20], for an authoritative review of the cases. The Saccharin doctrine applies not only when the product is directly produced by an infringing process, but also when a patented machine is used to make the end product (Elmslie v Boursier (1869), LR 9 Eq 217), when an intermediate in the making of the imported end-product is produced by a patented process (Saccharin itself), and when an intermediate is covered by a compound patent (Pfizer-Atorvastatin 2007 FC 898, [88]). For convenience, I will refer to all of these situations as involving “patented intermediates.”

There is a limitation on the Saccharin doctrine, however, which is that the patented intermediate must have played an important part in the manufacture of the imported article. This limitation was first introduced in Wilderman v. F.W. Berk & Co. Ltd. (1925) 42 RPC 79 (Ch D) and accepted by Lord Diplock in Beecham Group Ltd v. Bristol Laboratories Ltd [1978] RPC 153, 201 (HL). The Wilderman limitation has also been recognized in various Canadian cases, notably including Pfizer-Atorvastatin 2007 FC 898, in which Snider J reviewed the cases and provided a list of five factors to be considered. She summarized by saying that there must be a “strong link” between the patented process and the product sold into Canada [91]. Conversely, uses that are “incidental, non-essential, or could readily be substituted” are not likely to be considered infringing [90]. Snider J’s list was also quoted with approval by Gauthier J in Cefaclor [326]. For convenience, I will refer to the principle that the patented intermediate must be important to the final product as the “Wilderman limitation,” while recognizing that Wilderman itself is not the authoritative statement of the law.

Turning to the case at hand, the 418 patent claims the monohydrate form of moxifloxacin hydrochloride [8]. There are two other forms, namely an anhydrous form and a hydrate [144]. Fresenius’s proposed new drug is moxifloxacin hydrochloride for injection [1]. Fresenius did not challenge the validity of the 418 patent [6]. It alleged in its NOA that it would not infringe, on the basis that its product was in solution and therefore would not contain moxifloxacin hydrochloride in any crystalline form [11], [18]. It was conceded by Bayer that neither the end product nor the API contained the patented monohydrate, and that therefore the end product itself did not infringe [20], [170], [174]. Rather, Bayer alleged that infringement occurs at an intermediate stage during the manufacturing process [5]. After Bayer commenced the NOC proceedings and the parties entered into a confidentiality agreement, Fresenius disclosed that its proposed new drug was to be manufactured, processed and packaged offshore and imported into Canada. This was not disclosed in the NOA itself [14], [45].

Brown J held that Fresenius’ NOA was defective because it failed to state “whether non-infringement will take place in Canada, or offshore where it will be made for importation into Canada” [18]. Nor did the NOA state that Fresenius “relies on the legal principles surrounding non-infringement by importation as developed in the Saccharin Doctrine” [45]. This was important because “[t]here is no dispute that offshore manufacture and importation of Fresenius’ drug gives rise to different legal and factual tests relating to non-infringement by importation as per the Saccharin Doctrine, as opposed to the tests for non-infringement in Canada” [26]. Brown J consequently held that in order to satisfy the requirement to set out “a detailed statement of the legal and factual basis for the allegation” as required by s 5(3)(b)(ii), Fresenius was obliged to set out in its NOA “that the new drug is manufactured outside and imported into Canada. Fresenius should also have set out the legal basis of non-infringement by importation” [52]. The NOA was consequently defective [54], and for this reason alone Brown J granted the order of prohibition sought by Bayer [76].

He went on to say that if the NOA had not been defective, he would have refused to grant the order of prohibition, because Bayer had not established that the allegation of non-infringement was unjustified [7]. This was for two reasons. First, Brown J found on the facts that Bayer had not established that the monohydrate appears in the manufacturing of the Fresenius-moxifloxacin [160]. This would have been enough to dispose of the infringement point, as the Saccharin doctrine can apply only when the foreign intermediate would have infringed if the product had been made entirely in Canada. Brown J nonetheless went on to consider the Saccharin doctrine. He applied the Wilderman limitation, as articulated by Snider J in Pfizer-Atorvastatin 2007 FC 898, and held that even if he had held that the patented monohydrate was present in the manufacturing process, that use would be insufficient to establish infringement by importation [168]. He found on uncontradicted evidence that if the monohydrate was present at all, it was only transiently present, and “trivial and merely incidental” in the manufacture of the Fresenius-moxifloxacin product sold into Canada [171], [182].

Returning to the sufficiency of the NOA, it appears, therefore, that the difference between the legal test for infringement by importation and infringement within Canada was crucial to Brown J’s decision to grant the order of prohibition. Brown’s J’s analysis of the sufficiency of the NOA did not specify exactly the legal difference (which, as noted, were conceded by both parties). However, as Brown J subsequently noted in his discussion of infringement:

[164] Generally, infringement occurs where a patented substance is produced at an intermediate stage, even if the intermediate is not in the final drug product [citations omitted]. However, a different test is set out when the infringing act occurs abroad. In this case, the alleged patented intermediate is produced offshore.

And then, just below:

[166] In determining whether offshore use of a patented product produced at an intermediate stage of manufacturing the final product to be imported into Canada, and its subsequent importation constitutes infringement, this Court in Pfizer-Atorvastatin said it must have regard to such factors as [quoting factors set out in Pfizer-Atorvastatin ]

(And see similarly [124].)

Thus, if I understand correctly, it is on the basis of the Wilderman limitation that infringement under the Saccharin doctrine is said to be distinct from purely domestic infringement. The implication is that the Wilderman limitation does not apply to purely domestic use of a patented intermediate in making an unpatented end-product.**

I doubt that is correct. To start with the basics, it is now clear that the Saccharin doctrine applies to domestic use, or more precisely, the product of a patented intermediate infringes the patent for the intermediate if the intermediate is used in Canada. The original impetus for the Saccharin doctrine is that otherwise “an imitator would only have had to establish his factory on the other side of the border,”in order to evade the effect of the English patent: Von Heyden v Neustadt (1880), 14 Ch D 230, 233 (CA). So it might be said that the Saccharin doctrine was a special rule applicable to imports for that pragmatic reason, and it would be inapplicable to domestic use where the patentee could, and normally does, bring an action for infringement for use of the intermediate patent itself. Nor have I been able to find any cases actually applying this rule on the facts when the use is domestic. And while in his treatise on Intellectual Property Law, 1st ed 152, Professor Vaver stated “‘Use’ applies both to patented products and processes, and also to their output,” he cited only importation cases.* However, in interpreting the meaning of the word “using” in s 42 of the Act in Monsanto 2004 SCC 34 [41], the SCC approved this statement by Professor Vaver, without any restriction to where the process was used. The SCC also cited Saccharin itself with approval, quoting in particular the passage that “By the sale of Saccharin, in the course of the production of which the patented process is used, the Patentee is deprived of some part of the whole profit and advantage of the invention, and the importer is indirectly making use of the invention” [44]. This rationale makes no reference to importation, and the SCC treated it along with other examples of purely domestic infringement [45]-[47], as standing on the principle that the relevant question is “did the defendant, by his acts or conduct, deprive the inventor, in whole or in part, directly or indirectly, of the advantage of the patented invention?” [44]. Thus, on the authority of Monsanto, sale or use in Canada of the unpatented product of a patented intermediate infringes that patent for the intermediate because its sale or use deprives the inventors of the advantage of the patented intermediate, and because of a pragmatic need to protect the patentee in the special circumstances of importation. Indeed, in Hoffmann-La Roche [1955] SCR 414, 417, in holding that the end-product itself could not be claimed via a product-by-process claim, Rand J rejected a similar pragmatic argument, saying “the mere need for means of protecting the monopoly cannot justify the extension of the statutory language beyond what it can fairly bear.”

The next question is whether the Wilderman limitation also applies when the use of the intermediate is domestic. It is understandable that the parties might have thought that it does not. The court (and presumably also the parties) relied heavily on Snider J’s decision in Pfizer-Atorvastatin 2007 FC 898 [74]-[96]. The factual issue in Pfizer-Atorvastatin related to importation, and Snider J’s discussion focused on importation; a key question she addressed was whether the Saccharin doctrine exceeded the territorial limits of patent law [87]. After concluding it does not, Snider J went on to remark that “it is obvious that a Court must proceed cautiously when either off-shore products or processes are concerned” [88] (quoted by Brown J [165]). She then quoted Wilderman, before enunciating a list of factors encapsulating the Wilderman limitation, saying the Court must have regard to these factors “when faced with a situation where the question must be addressed” [90]. It is clear enough from the context that the “situation” she was referring to was off-shore products or processes. Similarly, Gauthier J in Cefaclor described Snider J’s list as “a very useful summary of factors that a Court should consider to determine whether or not the patented process plays an important part in the manufacture of the imported products” [326, my emphasis]. The implication in both decisions is that the Wilderman limitation applies only in the case of infringement by importation. But that is only an implication, not a holding. Neither decision is inconsistent with the view that the Wilderman limitation also applies in the case of domestic use of the patented intermediates. Both cases concerned importation, and it is not evident that either judge ever turned her mind to the question of whether the factors would also apply domestically.

And on the authority of Monsanto, it is clear beyond doubt that the Wilderman limitation does apply when the use of the intermediate is domestic. In the first place, as discussed above, the basis for the rule that the product of patented intermediates infringes is that the use of the product deprives the inventor of the benefit of the patent; the rule itself does not turn on any special rationale related to importation. If that is so, then any limitations must also be general. That is amply confirmed in Monsanto. The SCC [41] also quoted with approval Professor Vaver’s caveat that “This expansive doctrine applies, however, only if the patent plays an important part in production.” This point was made by Professor Vaver and quoted by the SCC in the context of infringing use, and not infringing importation. Professor Vaver cited Wilderman itself: 1st ed 152, fn 162; 2nd ed 377, fn 574, directly implying that the same limitation applies to domestic use. Moreover, the SCC in Monsanto itself stated that “a defendant infringes a patent when the defendant manufactures, seeks to use, or uses a patented part that is contained within something that is not patented, provided the patented part is significant or important” [42, my emphasis]. This was a considered part of the reasoning, not a mere passing remark. The SCC went on to explain why the patented part was indeed significant on the facts of the case [42], and it also repeated the point that “It is no bar to a finding of infringement that the patented object or process is a part of or composes a broader unpatented structure or process, provided the patented invention is significant or important to the defendant's activities that involve the unpatented structure” [58.4, my emphasis].

Consider also the reasons for the Wilderman limitation. Gauthier J in Cefaclor noted that in Beecham v Bristol, as in Cefaclor itself, it was argued that the Saccharin doctrine “had the potential to yield extraordinary results and uncertainty, leaving competitors uncertain as to what they are entitled to do” [288]. In Beecham v Bristol the point made in argument was that “If the Saccharin case is good law, extraordinary results would follow. In order to be safe one would have to see whether any substance used in manufacture was patented. The patent ought to say what is protected, otherwise: it is against the whole trend of patent law. Competitors should know what they are entitled to do” (413, my emphasis). This was consistent with the thrust of the (rejected) argument in Beecham, that the Saccharin doctrine was outmoded in light of the requirement that the invention be distinctly defined by claims. This can be called the “uncertainty” argument. The uncertainty argument does not justify any difference between domestic and foreign use of the patented intermediate. If the product of an infringing process infringes even when the process is used domestically, then a purchaser or user of the product faces just as much uncertainty as when the product is imported. Moreover, the uncertainty argument is not an entirely satisfactory justification for the Wilderman limitation, as it applies with equal force regardless of how important the patented invention is to the product. For example, the invention might be a central step which allows substantially cheaper synthesis of the unpatented product, and so clearly “important” on the case law, and yet if the product itself is exactly the same, a purchaser cannot know the product is infringing, any more than if the process were a trivial part of the manufacture.

The second argument for the Wilderman limitation is what I will call the triviality argument. This was raised in Wilderman itself (88):

It is, urged on the Plaintiff's behalf that once I am satisfied that there has been used in connection with the manufacture of an imported article, in however an unimportant or trifling respect, some apparatus or material in respect of which there is a subsisting patent, the importation of the article manufactured is necessarily an infringement. I do not think that the cases to which I have been referred compel me to accept so wide a proposition, and I do not accept it. I cannot think, for example, that the employment of a patented cutting blow-pipe or a patented hammer in the manufacture of some part of a locomotive would necessarily render the importation of the locomotive an infringement.

The same example of a patented hammer was given in Cefaclor as an instance of an “extraordinary” result [288 fn 111], and a similar example was given in Pfizer-Atorvastatin, of the use of scissors patented in Canada to cut the cloth for an Italian-made suit sold in Canada [84] (though in neither of those cases was the limitation actually invoked on the facts).

The triviality argument directly justifies the Wilderman limitation. In Wilderman itself, the court held that the invention apparently related to a small mechanical detail in an otherwise unpatented apparatus, and refused therefore to find infringement on the basis of the Saccharin doctrine. The triviality argument does not justify any difference between domestic infringement and infringement by importation. If a patented hammer is used by a worker to manufacture a locomotive, is it any less shocking to hold the locomotive infringing if the hammer is used in Canada rather than abroad?

In summary, the rationales given by the courts for the Wilderman limitation apply equally to domestic and foreign use. This reinforces the conclusion from Monsanto.

More broadly, in my view, the Wilderman limitation is consistent with a purposive interpretation of infringement under the Act. The purpose of the patent Act is to provide an incentive for socially beneficial inventions: Free World Trust 2000 SCC 66, [42]; Harvard Mouse 2002 SCC 76, [40], [185]. It does so by providing a reward commensurate with the value of the invention to society. This implies that the patentee should not be able to leverage its patent right to capture value to which the invention has not contributed. The case at hand illustrates the problem of overly expansive patent rights. As Lord Hoffmann has said “An invention is a piece of information,” Merrell Dow [1996] RPC 76, 86 (HL), and that is why the disclosure of that information is the quid pro quo for the patent monopoly: Free World 2000 SCC 66, [13]; Whirlpool 2000 SCC 67 [42]; Consolboard [1981] 1 SCR 504, 518. The monohydrate was disclosed in the 418 patent as a more stable form of moxifloxacin, which provides manufacturing advantages. On the facts of this case, even if the monohydrate appeared transiently during the manufacturing process, Fresenius gained nothing at all from the information disclosed in the patent. Consequently, to allow the patent to block Fresenius’ manufacture would expand the scope of the patent beyond the consideration given by the patentee. This is in contrast to many of the other intermediates cases, such as Cefaclor [334], in which production of the end-product would have been much more expensive, or even impossible, without the use of the intermediate. The Wilderman limitation, by limiting infringement to those cases in which the patented intermediate was important to the end-product, serves to distinguish those cases in which the defendant gained no advantage from the teaching of patent, from those in which it did. Again, this rationale provides no reason to distinguish between domestic and foreign use of the intermediate.

If it is right to say that the Wilderman limitation applies to domestic as well as foreign use of a patented intermediate, what are the implications?

Most obviously, in the case at hand that conclusion would affect the analysis of whether Fresenius’ NOA was defective. That is not to say the outcome should necessarily have been different, as the requirement to set out the detailed factual basis for the allegation might nonetheless extend to disclosure of foreign manufacture even if the law on the issue is not different.

Perhaps more importantly, it suggests that in some cases an NOC should not be granted when a patented intermediate appears transiently in the domestic production of an end-product. As noted by Brown J, “Generally, infringement occurs where a patented substance is produced at an intermediate stage, even if the intermediate is not in the final drug product” [164]. This is entirely consistent with Monsanto and the Wilderman limitation, “provided the patented invention is significant or important” to the end product: Monsanto [58.4]. For this proposition, Brown J cited Pfizer-Atorvastatin 2007 FC 898 [37], Abbott Laboratories v Ratiopharm 2006 FCA 187 [15]-[17] (rev’g on this point 2005 FC 1093 [50]-[53]) and Abbott Laboratories v Pharmascience 2007 FCA 73 [4] (rev’g 2006 FC 120 [68]). There is no difficulty with Pfizer-Atorvastatin 2007 FC 898, an importation case, in which Snider J considered the Wilderman limitation explicitly and concluded that the use of the patented intermediates “is not insignificant or incidental” [92].

The two other cases, both dealing with Abbott’s 2,277,274 patent for Form 0 clarithromycin, are more problematic. Neither was an importation case (2005 FC 1093 [50]; 2006 FC 120 [61]). The invention lay in the use of Form 0 clarithromycin as an antibiotic (2005 FC 1093 [41]), though the claim itself was for the compound per se. In Ratiopharm 2006 FCA 187 [15] “The evidence is that Form 0 is created inevitably in the process of making the Form II that is contained in the Ratiopharm product.” Similarly, Pharmascience the allegation was that “Form 0 is created and disappears in intermediate steps in the manufacturing process” 2006 FC 120 [25]. These facts suggest that there is a real question as to whether the making of the claimed invention in the process of creating the defendants’ products was important to the final product, or rather merely “insignificant or incidental.” However, the point was not directly addressed.

Suppose that the use of the claimed invention was not important to the final product, so that the Wilderman limitation would apply. In that case, it would seem to follow that an order of prohibition should not be granted, for that reason alone. Strictly, the question under s 5(1)(b)(iv) of the NOC Regulations is whether a claim would be infringed “by the second person making, constructing, using or selling the drug for which the submission is filed.” In Monsanto the question was the meaning of “using the invention” under s 42 of the Act. It might be suggested that the Wilderman limitation does not apply to “using” under the NOC Regulations, but only to “using” under the Act. However, that argument is not consistent with a purposive interpretation of the Regulations. As described in the RIAS to the 2015 Amendments, the purpose of the Regulations is to balance timely market entry of generics again effective patent enforcement, by ensuring that an NOC is not issued to the generic until relevant patents have expired expiry or the court or innovator is satisfied “that no valid patent relating to the drug would be infringed.” See similarly Merck Frosst [1998] 2 SC.R 193, [30], noting that the purpose of the Regulations is to delay issuance of the NOC “until such time as their implementation would not result in such infringement.” Thus the purpose of the Regulations directly implies that the “using” under the Regulations has the same meaning as “using” under the Act. It might also be suggested that the Wilderman limitation applies only to “using” and not “making”. In Monsanto the SCC focused on “using” and did not express any decided opinion on the meaning of “making” [27]. In Ratiopharm the FCA held that “[i]n principle, a patent for a substance is infringed when someone makes that substance without the consent of the holder of the patent, 2006 FCA 187 [15], suggesting that its opinion turned on “making” rather than “using”. However, its holding turned on the phrase as a whole: “The phrase "making, constructing, using or selling" in subparagraph 5(1)(b)(iv) describes a range of activities that is broader than merely including a patented substance in the proposed new drug. In my view, that phrase is broad enough to include the use of the patented substance at an intermediate stage in the production of the proposed new drug” [16]. This suggests we should not parse the individual words too finely. As the SCC said in Monsanto:

[35] The guiding principle is that patent law ought to provide the inventor with “protection for that which he has actually in good faith invented”: Free World Trust, supra, at para. 43. Applied to “use”, the question becomes: did the defendant’s activity deprive the inventor in whole or in part, directly or indirectly, of full enjoyment of the monopoly conferred by law?

That guiding principle is applicable to infringement generally, and the question consequently identified by the SCC seems equally applicable to “making.”

Thus, on a purposive interpretation of the NOC Regulations, it appears that no claim is infringed within the meaning of s 5(1)(b)(iv) when an intermediate plays a merely insignificant or incidental role in the production of a drug for which an NOC is sought. This conclusion is not inconsistent with the central holding of the FCA in Ratiopharm and Pharmascience, which is that “[i]n principle, a patent for a substance is infringed when someone makes that substance without the consent of the holder of the patent” [15]. That is right, subject to the Wilderman limitation. While the facts suggest that there may have been a real issue as to whether the use of the claimed invention was important, the Wilderman limitation was not raised at either the FC or FCA level, and there was no specific finding on that point. While the FCA did not articulate the Wilderman limitation, it cannot be taken to have rejected it, given that the issue was not raised and there was no factual basis in the decision below on which it could have been applied.

Finally, consider purely domestic infringement actions. The issue is different from domestic NOC applications, because in an NOC application, the question is whether the generic would be using the invention in making “the drug for which the submission is filed.” On the rule that the end-product of an infringing intermediate infringes, the answer is yes, so long as the use of the intermediate is important. That is, the issue turns on whether the end-product infringes the patent for the intermediate, as in an importation case. But in a domestic infringement action, the question is not whether the end-product infringes, but whether the intermediate itself infringes. Does this make any difference?

As a matter of principle, I suggest it does not. In cases of importation, the effect of the Wilderman limitation is that the patentee cannot block the domestic sale of an imported product on the basis of foreign use of patented invention that made an insignificant contribution to the product. The Wilderman limitation is justified because otherwise the patentee could extend its monopoly beyond what was justified by the quid pro quo of the disclosure. If that is true for foreign use of the intermediate, it is also true for domestic use. This is the converse of the original justification for the Saccharin doctrine. As noted above, in Von Heyden v Neustadt the English Court of Appeal remarked that an imitator should not be able to avoid the effect of a patent merely by manufacturing “on the other side of the border.” But neither should a patentee be able to avoid a substantive limitation on the limits of the patent because of the location of the border. If, under the Saccharin doctrine, a generic would be entitled to produce abroad and sell the product in Canada, then it should equally be entitled to produce domestically. If holding such a use to be infringing would overreach the proper scope of the patent, then that is true regardless of where the invention is practiced.

This suggests a substantive rule that the use of the intermediate in such a case would not infringe. This is supported by the SCC’s statement in Monsanto, in the purely domestic context, that “[b]y analogy [with the Saccharin doctrine], the law holds that a defendant infringes a patent when the defendant manufactures, seeks to use, or uses a patented part that is contained within something that is not patented, provided the patented part is significant or important” [42]. In Monsanto the SCC applied this to hold that the use of the patented genes and cells did infringe, but this statement directly implies that there would have been no infringement if the patented genes were not significant or important to larger unpatented subject matter, notwithstanding that the patented genes were actually used in Canada. More broadly, trivial or incidental use of the invention would not infringe the patent. As a caveat, I would add that there is an interesting argument to be made for a remedial approach to this problem. That is, even if a trivial use were considered infringing, the problem of over-reaching might be addressed, perhaps more appropriately, in the assessment of monetary relief and the discretion to grant an injunction. I will not comment on this further, as this post is already too long, and the remedial analysis would not change the doctrinal infringement analysis discussed to this point.

In summary, Bayer v Fresenius is the first Canadian decision I am aware of that applies the Wilderman limitation to hold that the product of a transient use of an intermediate did not infringe. In so holding, Brown J was on firm legal ground. But in my view, it follows directly from Monsanto that the implications of the Wilderman limitation extend beyond the importation context.

* In his 2nd ed 377, Professor Vaver also cited Libbey-Owens-Ford [1970] SCR 83, Formea [1968] SCR 754 and Colonial Fastener [1937] SCR 36. Libbey-Owens-Ford held that in what is now s 56, the right of a party who purchased a patented machine before the claim date to “use” that machine extends to the right to sell the products of the machine. Similarly, Formea held that the right of the Crown to “use” the invention under s 19 extends to the right to sell the products of that machine, which were evidently themselves patented in any event. Neither of these cases directly holds that the product of an infringing intermediate itself infringes, though that proposition is implied, on the view that “use” and “using” have the same meaning throughout the Act. Colonial Fastener is weaker support. It says that lost profits from the sales of the product of an infringing machine are not too remote to be claimed as damages for infringement of the patent for the machine itself. That does not at all imply that the products themselves are infringing; for example, the loss of sales of convoyed goods may not be too remote to sustain damages, but that would not imply that the convoyed goods are in any sense infringing, as convoyed good may be neither patented themselves nor to the product of an infringing intermediate.

**UPDATE: On re-reading, I think that I had misunderstood Brown J's point at [164]-[166]. As I now understand it, he was saying is that the law related to infringement by use of a unpatented compound produced through the use of a patented intermediate is different from the law related to infringement by use of the unpatented intermediate itself (and I agree); he was not saying that the law related to infringement by use of an unpatented compound produced through the use of a patented intermediate is different depending on whether the use of the patented intermediate takes place domestically or abroad. 

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