Federal Circuit to Take on Corporate Law Question of CEO Liability for False Submissions

By Dennis Crouch

US v. Trek Leather (Fed. Cir. 2014) (en banc rehearing)

The Federal Circuit today granted the US Government’s petition for en banc rehearing of a case stemming from the United States Court of International Trade. The USCIT is an Article III court formerly known as the US Customs Court that hears cases involving customs, duties, and anti-dumping rules. Appeals from the USCIT are heard by the Federal Circuit Court of Appeals – about fifty per year.

Although the meat of this case is the statutory interpretation of 19 U.S.C. § 1592, patent professionals (and corporate attorneys in general) will likely be interested in the veil piercing aspects of the case. The case is also an important reminder that someone’s status as a director or owner of a limited liability entity does not immunize that person from individual tort liability. See, e.g., Frances T. v. Village Green Owners Assn., 42 Cal.3d 490 (1986).

Briefly, Trek Leather’s president and majority owner, Mr. Harish Shadadpuri submitted false entry documents to Customs & Border Patrol (CPB) that undervalued the men’s suits being imported with the result being an under-collection of customs duties owed. The money-owed was later paid, but the US Government also filed suit under section 1592 – asking that Mr. Shadadpuri be personally fined for the misrepresentation. The USITC court awarded summary judgment to the US Government based upon a finding that Shadadpuri had been grossly negligent in his statements. On appeal, the Federal Circuit reversed – finding that the statute did not permit veil piercing of this sort. In particular, the appellate panel held that section 1592 penalties could not be imposed upon a person who was acting in his capacity as officer of a corporate “importer of record” for negligently filling out entry papers required of the corporation, absent a piercing of the corporate veil or a showing of fraud. (Opinion by Judge O’Malley). Judge Dyk dissented and argued that both the plain language of the statute and its legislative history would permit this action even absent veil piercing or fraud.

Here, the statute is fairly clear: “no person, by fraud, gross negligence, or negligence—(A) may enter, introduce, or attempt to enter or introduce any merchandise into the commerce of the United States by means of (i) any document … which is material and false.” 19 U.S.C. § 1592(a)(1). The statute seems to suggest that, since Shadadpuri is a person, then he would be liable for the submission. This result would also comply with the traditional notions of common law tort liability that would find the individual actor liable for negligence (even if someone else is also liable under an agency or joint tortfeaser doctrine). The majority opinion of the Federal Circuit recognized the section 1592 argument, but looked to other sections of Title 19 that discussed only the “importer of record” being the party who submits the entry documents – the result being that (by construction of law) the submission by Shadadpuri should be seen as coming only from his company Trek Leather and not from Shadadpuri personally.

The en banc rehearing will focus on the following set of questions:

A) 19 U.S.C. § 1592(a) imposes liability on any “person” who “enter[s], introduce[s], or attempt[s] to enter or introduce” merchandise into US commerce by means of fraud, gross negligence, or negligence by the means described in § 1592(a). What is the meaning of “person” within this statutory provision? How do other statutory provisions of Title 19 affect this inquiry?

B) If corporate officers or shareholders qualify as “persons” under § 1592(a), can they be held personally liable for duties and penalties imposed under § 1592(c)(2) and (3) when, while acting within the course and scope of their employment on behalf of the corporation by which they are employed, they provide inaccurate information relating to the entry or introduction of merchandise into the United States by their corporation? If so, under what circumstances?

C) What is the scope of “gross negligence” and “negligence” in 19 U.S.C. § 1592(a) and what is the relevant duty? How do other statutory provisions in Title 19 affect this inquiry?

Amicus briefs may be filed without leave in the case.

60 thoughts on “Federal Circuit to Take on Corporate Law Question of CEO Liability for False Submissions

  1. As a matter of constitutional law (not statutory), may Congress authorize the granting of valid patents on new and useful subject matter to anyone who is not an inventor, or an assignee of an inventor?

    1. Ned, can you restate your question? I am uncertain of the meaning regarding the assignee portion of it.

      1. Anon, assuming no assignment to make this simple.

        Can congress constitutionally grant patents to applicants who are not inventors?

        1. Sorry, Ned – I cannot fathom your simplifying assumption. The US patent system was built on the premise of fully alienable property. It is not an aspect that can be simplified out.

          As to the grant process, Congress has full authority to set that grant process, and if the final stages involve a folding in of the alienability aspect, a foundation of patent law, then I do not see a strict issue with granting a patent to a non-inventor per se.

          1. Anon, is it that you simply refuse to answer the question, or do you want to talk about something different. I simply asked you to answer the question assuming no assignments, at all, by anybody, ever.

            Can Congress authorize the granting of a patent to an applicant who is not an inventor?

            1. Night, while you jest, I hope you agree with me that so long as nobody has the right to challenge inventorship, we have a first-applicant-to-file system, not a first-inventor-to-file system. The applicant can be anybody, and it does not really matter whether they invented anything or how they came up with the technology. There is no concept remaining in US law of inventorship. That is in the Constitution, but no longer exists in point of fact in US law.

              It is almost laughable to listen to the oral argument in the Madstad case where the federal government was relying on a Supreme Court case involving two inventors, while totally ignoring the fact that inventorship for all practical purposes has been written out of the statute. Because anybody can get a patent regardless that they did not reduce to practice, regardless that they did not conceive, regardless that they are pirates or people who are trying to hide the true inventors are, we no longer have a race between two inventors, granting the first-to-file a patent. We simply have a first applicant-to-file system.

              How this protects inventors, or has anything to do with inventors is beyond me. How Congress has the power to pass such legislation is also beyond me.

            2. Ned,

              You seem to want to paint a nonsense situation (no change allowed in ownership) and have me comment on something that is at fundamental odds with the US patent system.

              Of what possible point would that be?

              Can you ask an intelligent question that does not eliminate this foundational aspect of US patent law?

          2. anon, I am glad we both agree that congress cannot constitutionally authorized a first applicant to file system.

            But, that is what we have. The “inventor” aspect only enters in the title of the bill. That was a fob to a fooled congress. Nothing in the text of the AIA actually requires that the named inventor be an inventor.

            1. Where is “inventor” defined. I missed that part.

              If the person filing the application declares himself to be the inventor, why is that not correct?

              Moreover, who can ever again challenge a patent on the basis that the named inventor was not in fact an inventor. You might tell congress that only inventors might file applications, but if no one has the legal right to question whether the applicant is an inventor, then the applicant is the inventor in point of fact.

              And just what did the movers and shakers say to congress about this? Did they ever discuss who inventors were and how we could tell whether they were legitimate or not.

              After all, congress repealed 102(f). Repealed it. It is gone, the only legal requirement that the named inventor must have actually invented the invention, and that was tested under the repealed 102(g).

              There no longer is a definition of inventorship in the statute. None.

  2. The Madstad case is now on appeal to the Federal Circuit. Here is a link to the oral argument: link to oralarguments.cafc.uscourts.gov

    Apparently the issues on appeal are both standing and the constitutional issue involving first-to-invent. The government agrees that the court has subject matter jurisdiction.

    The government relies almost exclusively on Gayler v. Wilder, 51 U.S. 477, 13 L. Ed. 504, 9 S. Ct. 139 (1851) that seem inapt. Madstad relies on the universal original interpretation by the founding fathers and the Supreme Court that “inventor” meant “first and true.”

    Does anyone have a link to the underlying district court opinion?

    1. One problem (and there is more than one) is that we have a long tradition of more than one runner at the patent race (to borrow an analogy).

      1. anon, but we do not have a long tradition of granting patents to a second inventor while the first is still in the field, nor have we ever considered it constitutional to grant trade patents to anyone who is not an inventor.

        1. Ned – your ‘still in the field’ comment does not address the failure of the Madstad position which requires there be one and only one racer.

          Whether or not Congress has set the rules of the race to clock racers one at a time or have multiple racers racing together is not germane to why Madstad will lose his argument of one and only one.

          You should be aware that this argument ties closely to our past discussions on the nature of inchoate rights. In essence, Madstad pushes for a ‘sanctity’ of the inchoate right that our country has never fully recognized. Our country has always required something more to perfect the right into a legal right. To embrace the Madstad position would in its own way eviscerate patent law, as the logical outcome would be that there could be NO independent invention whatsoever – it would not be a race to first to file, as the logic would mean that even non-filers as first true inventors would make ANY secondary inventor – even those still first to file – not a true one and only one first inventor. The ability of Congress to set the terms of the race would be mooted and the patent system would be swallowed whole by such a reading of the term. The Constitution will not be read so as to defeat the very desire of setting up a system to promote a race to share knowledge if only the too-pedantic very first inventor – without more, without even engaging the system – could defeat the purpose of the system.

          Thinly veiled here is the attempt to force a particular set of rules onto Congress – but that is not what the Constitution dictates.

          1. anon, you beg the question.

            Try it this way, are there any limits on who may file and obtain a patent? Is the applicant by definition the inventor? What does it mean to be an inventor?

            1. I do not understand your reference of “begging the question” Ned.

              Can you state why you think I am begging a question, and which question it is that you think that I am begging?

            2. And clearly no – there is no defining the applicant as inventor. I do not see the relevance of even offering that up as a thought here.

          2. anon, okay then. You will agree in principle that Congress cannot constitutionally grant patents to applicants who are not inventors.

            How do we distinguish applicants who are not inventors from applicants who are inventors?

            1. Inventors are inventors.

              Applicants are anyone who can trace the property right (inchoate until perfected) back to the inventor.

              I fail to see why you are having any issues here.

            2. Ned,

              Your question is nonsensical.

              An inventor is an inventor.

              An applicant may be an inventor – but importantly, may also validly may NOT be an inventor.

              An inventor may also wear the hat of being an applicant. After the AIA, this is no longer a requirement, and any attempt by you to make the conditions of one being the other (with perfect symmetry) is simply nonsense, as I have stated.

              Try to think of simple set theory. The set of inventors will all be inventors. The set of applicants will not all be inventors. A valid applicant can trace the ownership of the application (the inchoate rights) and any resulting patent granted on the application (the perfected legal rights) back to the inventor.

              Again, the only issue I see is one that you are trying so very hard to make an issue that does not exist. Both the perfected legal rights and any inchoate rights STILL must be traced back to a real inventor and an oath is still required. In your CEO Fu Yu example, you STILL need a valid oath, or you have a case of fraud.

              If you have a point, you probably should share it now.

            3. Anon, assuming that I Fu Yu is not an inventor, and that he commits fraud on filing his applications, are the patents issuing on his applications valid? Is it a defense under 282 to infringement? Can the lack of proper inventorship be raised in a post grant proceeding?

              No!

              And that is my point.

              The requirement that the applicant be the original discoverer is illusory.

            4. Ned,

              You do realize that you are moving the goalposts, right?

              But let me try to defuse your irrationality this way:
              1) For argument’s sake the patent under question is a valid patent granted on an application in which the true inventor is not known.
              2) Someone was an inventor.
              3) Given that the inventor is not known, no valid chain of title exists to anyone who could prove standing to enforce the valid (but inventor-unknown) patent.

              As to your “an the lack of proper inventorship be raised in a post grant proceeding? this again returns to our previous discussion (on pirates) and the fact that standing is always able to be questioned in a case – quite apart from any listing in the patent statutes.

              You really need to learn how to listen to me.

            5. Standing?

              Are you suggesting the court will look beyond the named inventor to say there is no standing?

              Standing is provided by ownership of the patent. The applicant owns the patent.

            6. Ned – Open your eyes and read my post again – you ASSume far too much with your statement of “Standing is provided by ownership of the patent. The applicant owns the patent.

              We just agreed that the applicant both has been shown to have engaged in fraud and cannot establish a chain of ownership back to an inventor as would be required to establish standing to enforce.

              You completely skipped over this important point. You may have physical possession of a ribbon copy, but that does not mean that you own the patent rights in the legal sense necessary to enforce those rights.

              Like our previous discussion, you are once again simply wrong.

            7. anon, you have it backwards. The party suing has to establish a chain of title to the applicant.

              Whether the applicant invented or not is irrelevant to ownership of the application or patent.

              Thus, if A invents and publicly uses. B then files on A’s invention, B’s application is invalid under 102(a). One does not defeat the patent based on a lack of assignment of B from A.

              If A invents and does not disclose. and B files on A’s invention, B’s title is good, the patent is valid and B can enforce.

              I don’t see how the above is changed in B was proven to have learned of the invention from A.

              Nor do I see how it might matter if instead of A, he learns it from C who independently invented.

            8. I am trying to see how you are getting this wrong and it is beyond simplicity Ned.

              A) Any party “owning” a patent must truly own the legal rights in order to have standing.

              b) It is a given that the party “owning” the patent has committed fraud – given.

              c) It is likewise given that the party “owning” the patent (but see b) and the fraud angle) CANNOT establish a chain of title to an inventor since no inventor is known.

              Tell me please how standing to enforce exists.

            9. Anon, there are no cases, anywhere, ever where standing has been successfully challenged on the basis that a named inventor of the patent in suit did not invent. You are making this up.

          1. anon, you do not get it. If no one can inquire as to whether the applicant is an inventor, then the applicant IS the inventor.

            We convert “first inventor to file” into the “first applicant to file.” In other words, there is no concept of inventor separate and apart from an applicant.

            1. anon, consider a company that files applications. They name their CEO, I Fu Yu, as the inventor on all applications.

              They get their inventions anonymously in exchange for cash. Obviously, the primary source for these inventions is piracy, but in a given case, one never knows.

              Now, just who is going to challenge this arrangement? A person whose application is rejected over an earlier-filed I Fu Yu application? An infringer. Who?

            2. Ned,

              I have explained this to you before. Why do you not pay attention?

              They name their CEO, I Fu Yu, as the inventor on all applications.

              You still have an oath of the inventor. Naming someone other than the inventor on that oath is Fraud.

              You have not disbanded this.

              Why do you think that you have?

            3. Anon, while I think your solution might be “creative,” I don’t think there’s a basis in the law for saying that a patent is not owned by the applicant but owned by somebody else under circumstances where the applicant is claiming the invention of a third-party. The patent or application as the case may be may be invalid, the affiant might be prosecuted for perjury, but there still is no question that whatever property rights exist in the patent or application are owned by the applicant.

            4. but there still is no question

              As I mentioned – you are now begging the question. You seek to dismiss the question without even reasoning your way through it.

              You are also not following the facts of the hypothetical. Follow the facts of the hypothetical and try AGAIN to establish standing.

              Part of the problem you are having is that you do not want to admit that the question of standing is quite outside your patent law constraints – and yet remains a perfectly valid mechanism for preventing enforcement of an otherwise valid patent.

              This takes us full circle back to our initial discussions on the AIA and the fact that pirates cannot use the AIA to enforce ‘rouge’ patent practice under the conditions that we set forth for our discussion.

              Again Ned – if you follow the facts and the reasoning, you can only conclude that I am correct.

              The logic is undeniable.

            5. Anon, I think the one thing we do agree on is that Congress cannot constitutionally authorized granting of patents that are valid to applicants who are not inventors.

              We simply disagree on whether the AIA did in fact do that. I think it did, in which case, it is unconstitutional.

            6. Ned, sorry, but no – we are not on the same page of “ I think the one thing we do agree on is that Congress cannot constitutionally authorized granting of patents that are valid to applicants who are not inventors.

              I will point out to you that as long as an applicant can properly trace back the property right to an inventor – that property right being either an inchoate or perfected patent property right – there does not appear to be any constitutional limitation on authority to the granting of a patent.

              Again – I will remind you that the basis of the patent system right from the start has the foundation of patents as fully alienable property and the setting of all processing rules given to Congress.

              Put simply, you are still chasing a ghost of an issue that does not exist. Applicant and Inventor are distinct concepts which may or may not involve set overlap. All that is constitutionally required is that the applicant can trace the property right to the inventor.

              Nothing more.

              You still have not shown any basis for a constitutional issue.

              So my concluding comment of post 6.1.1.1.2.3 stands.

            7. Anon, if you insist on changing the facts, adding an assignment from an inventor, then this is one more illustration that there is a problem.

            8. Ned,

              There has been NO change of facts as I have pointed out to you that alienability is a foundation of the US system and any attempt by you to disregard that concept cannot be entertained.

            9. Ned,

              You have a statement above that is simply false, due to its incompleteness: “If A invents and does not disclose. and B files on A’s invention, B’s title is good, the patent is valid and B can enforce.

              Where you seem to become confused is this notion that one can file on another’s invention without tracing good title. You seem to want to ignore this facet and then jump to a conclusion that NO chain of title may exist and standing is not affected. You start with an incomplete premise and state a conclusion that very much depends on what you leave out.

              Yes – if B can trace good title, B can file and enforce. And there is no issue here because of the concept of alienability of property. A can and did alienate her property (rightfully) to B. It simply does not matter that A alienated an inchoate right (perfected by B) or that A alienated a perfected right (and then alienated that perfected right). You almost seem stuck on the (implicit) idea that only perfected rights can be alienated. I do not understand why you are stuck on this notion.

              Likewise (and per the hypothetical), if B cannot trace good title, B cannot (rightfully) file on A’s invention, and cannot enforce. Any such patent application may turn the inventor’s inchoate rights into actual legal rights, but the predicate of standing does not disappear. Since B lacks good title (no matter if B prosecuted under the mistaken notion that it did have good title from A), B lacks standing. B cannot enforce.

              Let me repeat that: B may be operating under a mistake, falsely believing that it has good title to an inchoate property of A (this is actually very easy to happen still today, even though many employment agreements are written to adequately cover the notion of transferring property rights – many other situations may have faulty employment agreements or not agreement at all). In these types of faulty situations, B may not even be aware of the difficulty throughout its prosecution of the inchoate right of A into a legal right of a patent. Whether the patent does grant (and for argument’s sake) is granted to B – thus B “own’s” the patent – any error (actual error) that is then discovered (or later discovered during enforcement) and shows B to lack a true chain of title will remove standing from B to enforce. You seem stuck on “ownership” without recognizing that you are the one begging the question of what legal ownership means. Legal ownership requires the chain of title. B’s mistake in that chain cannot make up for a lack of standing later discovered.

              Standing is always a predicate – and as I have tried to educate you, the fact that standing is not listed in the 282 list does not mean that you cannot challenge standing at any time.

              You want to clench tight your eyes and then complain that you cannot see. The solution is obvious: open your eyes.

  3. “The statute seems to suggest that, since Shadadpuri is a person, then he would be liable for the submission.” That’s it, from now on I’m having my *dog* fill out those annoying customs forms on behalf of the corporation…

  4. Wegner links Limelight’s brief in his post here:

    link to laipla.net

    It is not yet linked on the SCOTUS blog.

    Just scanned the table of cases. No Univis Lens. No Quanta. Lot of Aro I, but just one cite to Aro II.

    I know I am not going to like this brief. But, in principle, I agree that one cannot have inducement without there being direct.

    I just think that there is direct when all the steps are performed. The person who did the last step, all others having been done on the intermediate product, is the direct infringer. To suggest otherwise would allow a party who conducted all but the last step to avoid infringement by giving it to another whom they know will conduct the last step. The person who did that last step may be innocent, but he or she got the full benefit of the invention.

    1. Ned: To suggest otherwise would allow a [first] party who conducted all but the last step to avoid infringement by giving it to another whom they know will conduct the last step.

      Sounds like the first party is inducing infringement. There is direct infringement but it’s not direct infringement by the second party. It’s direct infringement by the two parties working together (regardless of whether the second party is aware of what’s going on).

      The person who did that last step may be innocent, but he or she got the full benefit of the invention.

      If the second party is unaware of the first party’s activities and knowledge, then the second party is innocent. The second party has infringed no patent, assuming we’re talking about a method claim.

      Also, I’m not sure what you mean by “full benefit” of “the invention” in this context. It’s a method claim we’re talking about, correct? The “benefit of the invention” is presumably that you can make something more cheaply, or with less waste compared to other methods. The first party must be benefiting at least as well from “the invention” in this scenario, no? If not, why would they bother?

      1. Hey, Malcolm, consider Wallace v. Holmes, 29 F. Cas. 72 (1871) discussed in these two law review articles: Roberts, Odin B. “Contributory Infringement of Patent Rights.” Harv. L. Rev. 12 (1898): 35. available at link to archive.org and Adams, Charles W. “Brief History of Indirect Liability for Patent Infringement, A.” Santa Clara Computer & High Tech. LJ 22 (2005): 369. Available at link to digitalcommons.law.scu.edu

        A patent covers a novel lamp with a peculiar chimney. A rival makes a patented lamp with the novel components, sells the lamps sans chimney to others with the “certain knowledge that such burners are to be used, as they only can be used, by the addition of a chimney.” The chimney itself was provided by another in concert. But neither the lamp maker nor the chimney provider made the final assembly. The end user did. That end user, innocent as all get out, was a direct infringer under the law because he made the entire lamp.

        The court ruled that both the seller of the lamp and the seller of the chimney were infringers. But neither one directly infringed. The final assemblers, the end users, were the direct infringers.

        There is no distinction to be made here between practicing a process that produces an intermediate product and selling it to one whom one knows will perform the final step to produce the final product of the process, and making a patented combination patent by making the final assembly. Any such distinctions are artificial at best, intellectually dishonest at the worst.

        In point of fact, this rationale was the exact theory behind the Univis Lens case discussed in Quanta and followed. In Univis, a single method patent was involved. The patentee or his licensee practiced the critical steps to produce lens blanks that embodied the invention. These were sold to opticians who finished the lens blanks into bifocals according to a prescription. The theory of the Supreme Court was the practice of the final step was a direct infringement, and the practice of the earlier steps and selling the lens blanks for finishing was a contributory infringement. Thus a sale of the lens blanks was covered by the patent, and an authorized sale exhausted the patent.

        Quanta was a case decided just recently — after BMI. It throws the theory behind BMI into a cocked hat. BMI cannot be good law because of Quanta.

        1. Any such distinctions are artificial at best

          There is at least one well-recognized non-artificial, and non-intellectually dishonest distinction: the intermediate product has substantial non-infringing uses or is a product of common goods.

          1. Anon, the question on a table is not the liability of the seller of the partially completed product, but whether there is direct infringement.

            Thus, the question is whether the practicer of the final step does so with all the other steps having been performed such that the product after the final step has been performed embodies every step. Does he directly infringe? The answer clearly is yes. There are no cases to the contrary, except until BMI.

            Consider 271(g). A product is made having practiced on it every step of the patented process. Does it make any difference for infringement under this statute whether each process step was performed by the same party?

            Clearly the answer is no. The question is not who did the process steps, but whether they were performed.

      2. MM, I had a long post swallowed.

        Read this law review article. It was referenced by the SC in Mercoid. link to archive.org. It makes the point about the Wallace v. Holmes:

        1. Lamp patent covers unique lamp and unique chimney.
        2. A and B separately sold the lamps and chimneys.
        3. Innocent end uses bought the components and assembled them.
        4. Held, innocent end users directly infringed and A and B contributorily infringed.

        Next, read Quanta and its summary of Univis Lens:

        1. Method patent.
        2. Most steps practiced by patentee or licensee to create lens blanks.
        3. Sold to finishers, who made bifocals to prescription.
        4. Final patent step was conducted by finishers.

        Holding: Sale of lens blanks exhausted because they were covered by the patent as contributory infringement. The SC assumed the practice by the finishers of the final step was direct infringement.

        Quanta was decided after BMI. BMI is inconsistent with Quanta and with Univis Lens.

        1. The SC assumed the practice by the finishers of the final step was direct infringement.

          I would love a cite to that Ned – that’s a pretty important item to simply take your word for it.

          1. Quanta Computer, Inc. v. LG Electronics, Inc., 128 S. Ct. 2109, 553 U.S. 617, 170 L. Ed. 2d 996 (2008).

            “Similarly, as previously described, Univis held that the sale of optical lens blanks that partially practiced a patent exhausted the method patents that were not completely practiced until the blanks were ground into lenses.” Id. at 2117.

            “While the Court assumed that the finishing process was covered by the patents, Univis, supra, at 248-249, 62 S.Ct. 1088, and the District Court found that it was necessary to make a working lens, United States v. Univis Lens Co., 41 F.Supp. 258, 262-263 (S.D.N.Y.1941), the grinding process 2120*2120 was not central to the patents. That standard process was not included in detail in any of the patents and was not referred to at all in two of the patents. Those that did mention the finishing process treated it as incidental to the invention, noting, for example, that “[t]he blank is then ground in the usual manner,” U.S. Patent No. 1,876,497, p. 2, or simply that the blank is “then ground and polished,” U.S. Patent No. 1,632,208, p. 1, Tr. of Record in United States v. Univis Lens Co., O.T.1941, No. 855 et al., pp. 516, 498.

            Like the Univis lens blanks, the Intel Products constitute a material part of the patented invention and all but completely practice the patent. Here, as in Univis, the incomplete article substantially embodies the patent because the only step necessary to practice the patent is the application of common processes or the addition of standard parts. ” Id. at 2119-2120.

            United States v. Univis Lens Co., 316 US 241 (1942):

            “The court thought that without the granted license the final step in finishing the lens would infringe the patent and concluded that for this reason the Corporation could condition its licenses upon the maintenance by the licensee of the prescribed retail price.” Id. at 247.

            “[T]he invention of only a single lens patent is utilized in making each blank and finishing it as a lens.” … And we assume for present purposes, without deciding, that the patent is not fully practiced until the finishing licensee has ground and polished the blank so that it will 249*249 serve its purpose as a lens. ” Id. at 248-9.

            “We may assume also, as appellees contend, that sale of the blanks by an unlicensed manufacturer to an unlicensed finisher for their completion would constitute contributory infringement by the seller.” Id. at 249.

  5. Wouldn’t it be cool (not) if guys like Ollie North or Lois Lerner could claim immunity from prosecution for deliberately lying in their official capacity?

    What if they proved they were order to lie by their superiors? Is that a legal excuse?

  6. Man I’m super surprised this went en banc. Absolutely ridiculous they would take this one and not some of the others they’ve turned down in the patent context.

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