Akamai

Professor Mann provides insightful comments on the Akamai oral arguments here: http://www.scotusblog.com/2014/05/argument-review-justices-frustrated-with-posture-of-case-on-joint-infringement/. I will note that there was a good chance that the Supreme Court would significantly alter that case today by either granting the cross-petition to determine joint infringement issues under 271(a) or dismiss the case with instructions for the Federal Circuit to determine the case under Section 271(a). Neither of those happened, although they still may.

91 thoughts on “Akamai

  1. Ned, this is to continue a discussion from below.

    1) Assume a patented method includes steps A, B, and C. If I understand you correctly, then if party X runs a server that performs steps A and B of a patented method and party Y receives the output of steps A and B and performs step C on his home computer, X and Y are joint tortfeasors, and thus jointly and severally liable under 271(a), whether or not X is even aware of Y’s activity? Is that correct?

    2) Now assume a patented apparatus includes components D, E, and F, each of which alone has substantial non-infringing uses. Party Z sells components D and E to party Y, who builds component F all by himself and assembles the patented apparatus. Are Z and Y joint tortfeasors under 271(a)? If not, why not – together they “made” the invention, didn’t they?

    It seems to me that if 271(a) is read to cover “split infringement” of the type described in (1) above, then it must also cover (2). Since I don’t think it covers (2), that leads met to conclude that it doesn’t cover (1) either. Now, I think it’s a different situation if the parties are actually acting together or have a master-agent relationship, but that’s not a joint tortfeasing situation, that’s infringement by a joint enterprise (partnership) or infringement by the master. (This latter point is completely consistent with your 1871 case, incidentally.)

    Your thoughts?

    1. Now, I think it’s a different situation if the parties are actually acting together or have a master-agent relationship, but that’s not a joint tortfeasing situation, that’s infringement by a joint enterprise (partnership) or infringement by the master

      One way of thinking of this is to question where on the spectrum “working together” creates liability, especially in connection to what exactly does “substantial non-infringing uses” means (there is a bit of circularity inherent in that term).

      Master-Slave and fully recognized business relationships seem to be unnecessarily stringent, as legal mechanisms are already afforded for a patentee to obtain justice. On the other end (as you properly note) those with items falling into the realm of “substantial non-infringing uses” must be more carefully analyzed. Some – but surely not all – combinations in that realm will be outside the realm of the patent keep-out zone (and may even raise obviousness issues if such uses already exist in substantial uses).

      The phrase “substantial non-infringing uses” is the only thing offered so far with a tie to the statute – but as noted, that is not perfectly clear and defined.

    2. DanH, 1) Assume a patented method includes steps A, B, and C. If I understand you correctly, then if party X runs a server that performs steps A and B of a patented method and party Y receives the output of steps A and B and performs step C on his home computer, X and Y are joint tortfeasors, and thus jointly and severally liable under 271(a), whether or not X is even aware of Y’s activity? Is that correct?

      Dan, I would say there’s infringement by Y. Whether, X is liable would depend on whether the product they produced with the partial steps was a staple items of commerce.

      2) Now assume a patented apparatus includes components D, E, and F, each of which alone has substantial non-infringing uses. Party Z sells components D and E to party Y, who builds component F all by himself and assembles the patented apparatus. Are Z and Y joint tortfeasors under 271(a)? If not, why not – together they “made” the invention, didn’t they?

      No. Why, because D, E and F are staples.

      You take a look at the Wallace v. Holmes case, it is critical to the liability of the burner and chimney makers that each product was specially adapted for the infringement and was not a staple.

      Thus where there is an infringement because all the steps of a process are performed, there may no be liability for some parties because their actions are otherwise innocent.

      1. Whether, X is liable would depend on whether the product they produced with the partial steps was a staple items of commerce. … No. Why, because D, E and F are staples.

        Huh? Where do you find a reference to staple items of commerce in 271(a)?

        1. Dan H, you have got to be joking. I am of course referring to the case law decided by the courts primarily prior to 1952.

          Mary refer you to the Mercoid case as just one example of a case where the sale of staple items of commerce is not an infringement. In the “toilet paper” case, the rolled toilet paper, itself not subject to a separate patent, was deemed to be a supply such that combination was with the toilet paper holder was not an infringement.

          I could go on and on and on. I do not have to align the statute for this.

          I also refer you to Wallace v. Holmes where the burner and the chimney were non-staples precisely because they were specially adapted for use with each other and had no substantial noninfringing use.

          1. I could go on and on and on. I do not have to align the statute for this.

            It seems to me that you’re trying to have it both ways, Ned. You can’t argue that the use of the word “whoever” in the statute compels a particular meaning and also say that the statute doesn’t mean anything.

            In any case, the discussion is about “split” infringement of method claims. I don’t think any of your cases address that situation.

  2. What happened?

    The Federal Circuit vacated, link to cafc.uscourts.gov, its April 4, 2014 opinion in MICROSOFT CORPORATION v. DATATERN, INC., and reissued it today. link to cafc.uscourts.gov

    I do not have a copy of the first opinion, so I don’t know what changed. However I was struck by the discussion of “indemnity.” The court said that an indemnitor must support its indemnitee in the court in which the latter was sued. He cannot bring a DJ action elsewhere.

    Huh?

    What about Codex v. Milgo?

    In the end, DJ jurisdiction to bring actions in NY where customers were sued in the ED Tex was found based upon implied accusations of inducement infringement by Microsoft and SAP because the customers were provided software and instructions that together caused infringement. In one case however, DJ jurisdiction was denied Microsoft because the customers were not accused solely because of use of Microsoft software, but because of third-party instructions.

  3. Perhaps, I’m alone, but I think the SCOTUS could decide (and might do quite quickly) the (b) issue by simply reversing the Fed. Cir.: sorry, there’s no inducement to infringe without proof of an underlying infringement induced.

    This case, then, would go back down to the Fed. Cir. Once there, they could decide whether to take up the (a) question as it relates to whether it is an infringement for the non-infringing acts two or more actors not under a common control to be summed up into an infringement. In that case, my guess is that the Fed. Cir. would just leave the single actor requirement for strict liability infringement.

    1. mmm, I think they might add that the definition statute applies to “Whoever” such that the single-entity requirement is not commanded by the statute. This implicit assumption has driven the Federal Circuit into a corner, and they seem unable to agree that their original BMC Resources case, relying as it did on Lemley’s article and amicus brief, was wrongly decided.

      Lemley might even be singled out as the source of the error. This would be a public service to the patent system as a whole.

      1. Whatever “corner” you think they were in, Ned, the Fed Cir worked itself out of it pretty much immediately in the BMC case itself by recognizing that multi-actor conduct was included in 271(a) under certain circumstances (e.g., the “mastermind” or “control or direction” tests).

        In other words, there is no “single actor requirement” in 271(a). There is a requirement for an “infringer”, however, and the “infringer” can include multiple actors.

        Lemley might even be singled out as the source of the error.

        Exactly what “error” are you referrring to?

        Is it anything like the error relied on by the Federal Circuit when it wrote its soon-to-be-obliterated decision in Therasense?

        1. MM, it was Lemley who in his article made the flat out statement that a 271(a) requires that single person perform all the steps. Of course, by this he meant that 271(a) did not embrace no joint tortfeasors.

          Lemley stated the following:

          “Liability for infringement is governed by the text of the patent statute. [Citing North American Philips Corp. v. American Vending Sales Inc., 35 F.ed 1576, 1579, 32 U.S.P.Q.2d (BNA) 1203, 1205 (Fed Cir. 1994 (“[T]he cause of action for patent infringement is created and defined by statute.”)]

          Where one person does not perform each and every step of the claimed process, no person directly infringes the claim. Section 271(a) imposes liability on “whoever without authority makes, uses, offers to sell or sells any patented invention …. ” (emphasis in original)

          Lemley, Mark, et al., “Divided Infringement Claims,” AIPLA quarterly journal, line 33, number 3, Summer 2005, 255-284,256-257.

          By this sleight-of-hand, and a citation to a case that honestly did not know its A$$ from a hole in the ground because 271(a) was not intended to alter the law of infringement, Lemley was able to convince the Federal Circuit to adopt his construction of the statute while ignoring all the cases prior to ’52 that were adverse to his position.

          What we need with guys like Lemley, is peer review before he can publish.

          1. If you have a “master-agent” or “acting in concert” situation, there is only one entity or “person” infringing. In the former case it’s the master, in the latter it’s the partnership/joint enterprise. That’s different than a situation where there are two distinct parties that each carry out part of the method.

            Incidentally, a customer is neither a “master” or “agent” of a retailer or service provider. Thus, BMC doesn’t reach cases where a customer or end user of a service carries out part of the method.

            1. §271(a) does not require by its own terms a single person to have conducted all steps of a patented method in order to infringe. Rather, the term “whoever,” by definition in 1 USC §1, includes one or more persons.

              That is the statutory construction issue that is raised by judge Newman in her dissent, and by Seth Waxman before the Supreme Court.

            2. DanH, in other words, §271(a) embraces joint tortfeasors.

              The problem comes in when one layers in the interpretation given §271(c) by the Supreme Court in the Aro cases that the statute requires knowledge of the patent in order for there to be liability. Thus when one compares liability under §271(a) with liability under §271(c), the one is a strict liability tort while the other one requires knowledge of the patent. And yet, in the joint tortfeasor situation, the joint tortfeasor can be both a direct infringer and a contributory infringer.

              Lemley’s solution was to limit to §271(a) to single-entities so that when more than one entity was involved so that their actions combined to produce an infringement, either §271(b) or §271(c) exclusively applied so as to impose on joint-action liability a requirement of knowledge of the patent.

              Slick. But wrong – and it illustrates that the Supreme Court in the Aro case was wrong, as suggested by the Supreme Court in the recent case on the inducement to infringe, when they suggested that it was wrongly decided but they were forced to follow the decision because no one asked it to be reversed.

              So we are going to have the absurdity if one makes part of a patented combination and has another makes the other part, he will be a direct infringer under §271(a) and strictly liable, but if he does the same thing, but is sued under 271(c) he will have to have knowledge of the patent to be liable.

              What a joke, and this illustrates that Aro was wrongly decided just as the Supreme Court suggested.

            3. Rather, the term “whoever,” by definition in 1 USC §1, includes one or more persons. That is the statutory construction issue that is raised by judge Newman in her dissent

              That’s fine. But that doesn’t address the inevitable question about whether any relationship between those two or more people is necessary before they can be declared “infringers” of the patent.

              Think about it. What evidence do you have supporting your view that if Ann, Bob, Charles and Dave each independently carry out a separate step of a four step claim, without knowledge of a patent and/or without knowledge of the existence of the other people or what those others are doing, that they are “infringers” of that method claim?

              For even more fun, try to fit that incredibly broad interpretation of 271(a) into the same scheme with some of the toothless views of 101 out there, where every process is eligible for patenting, just as long as it’s claimed as “a process.” You see where we end up then?

              It seems easier to simply conclude that, like most of the 1952 patent act, the drafters were sorta clueless about what they were doing. If the Supreme Court doesn’t figure it out for Congress, then Congress can “fix the statute.” The question, of course, is: how do you “fix it”? Specifically, exactly what is required in order to be dragged into court as an “infringer” of one of the millions of pending claims out there.

            4. But that doesn’t address the inevitable question about whether any relationship between those two or more people is necessary before they can be declared “infringers” of the patent.

              So,….

              … is this an admission that the words of the statute do not support a “single entity” reading? (rhetorical question)

              …and if the notion of ‘single entity’ cannot be located in the statutory text, under what authority is any law being written to create such a notion?

              Reading a map is not he same thing as writing the map.

            5. Malcolm, That’s fine. But that doesn’t address the inevitable question about whether any relationship between those two or more people is necessary before they can be declared “infringers” of the patent.

              Well, first of all Malcolm, the independent actions have to add up to infringement of the patent. This is similar to a tort involving damage caused by the actions a multiple parties who might be independent of each other. Modern tort law does not excuse independent tortfeasors because each individually might not be entirely liable for the full damage.

              The patent law should not remain in the dark age. One multiple actors combine to produce an infringement, they are all liable to one degree or another.

              Congress had no intention of displacing the law of infringement in passing §271(a) as had been developed in the courts prior to 1952. The Supreme Court has said this in the past, and so I assume you know that the law of infringement is not statutory, but as developed by the courts. In other words, the cases prior to 1952 on infringement are good law. And in particular, Federal Circuit law is unreliable to the extent that it does not consider cases prior to 1952, which it did not to in the case of BMC Resources, relying instead upon Lemley’s article.

            6. Well, first of all Malcolm, the independent actions have to add up to infringement of the patent.

              I’m pretty sure you’re making a circular argument here.

              Again, if I have a patent with four steps and Anne, Bob, Charles and Dave carry out each of those steps independently of each other without knowledge of the patent and without knowledge of the others actions, does that “add up to infringement”? I don’t think so. It’s just 4 people performing acts that they are each free to perform. The effort to turn those acts into “infringement” seems just like another attempt by the usual suspects to create more liability for everyone. You know what I’m talking about: more patents, all the time, easier to enforce.

              This is similar to a tort involving damage caused by the actions a multiple parties who might be independent of each other.

              I don’t think there’s much similarity at all. Can you provide an example of such a tort where four independent parties, each acting perfectly legally and responsibly, are nevertheless jointly liable?

            7. seems just like another attempt by the usual suspects to create more liability for everyone. You know what I’m talking about: more patents, all the time, easier to enforce.

              LOL – so anti-patent of you.

          2. Well, Malcolm, why do we extend the 4 to 24 just to keep it simple?

            And just because I can’t think of a tort involving 24 separate actions doesn’t mean that it is not possible, particular in the situation of two independent actors.

            Again I reference the case I was personally involved in and also I reference the Univis Lens case. We were like the finishers in Univis Lens, where we purchased lens blanks that embodied the novel feature of the process. While we may not have asked that the manufacturer of the lens blanks to perform the initial steps to create the partial infringement, we certainly knew that they had done so and purchased their product because they had done so.

            I think Univis Lens is an actual example where infringement is not avoided by simply having another perform one or more of the steps.

        2. “Single actor” rule is a misnomer in a sense. Corporate entities aren’t individuals. Agency rules ascribe the actions of two or more individuals to one person (or entity). I don’t think that there’s anyone saying that 271(a) doesn’t reach them.

          But it useful to view the “actors” to determine whether there’s any freedom. In the sister case, McKesson v. Epic, the people acting in concert were a doctor and a patient. No contractual or legal relationship between them that would require one or the other to perform the steps. In many ways, the McKesson case would have been much, much more interesting since it highlights the absurdity of the current rule: a software developer who has no control over either actor performing the steps could be liable for the otherwise non-infringing steps taken by two other unrelated entities.

          1. mmm, the problem all started with Aro II that held that the new 271(c) required knowledge of the patent. This led Lemley to insist that 271(a) did not cover joint infringement, because direct infringement is strict liability. But in many divided infringement cases where two or more people cooperate, there is no single person that does all the steps or who is the mastermind. This leads to no direct infringement and to no contributory infringement or inducement because there is not direct infringer.

            The result is an absurdity. Clearly the rule that 271(a) does not embrace joint torfeasors is wrong. But then, so are Aro II and Global-Tech on the issue of knowledge of the patent. A joint tortfeasor often is both a direct infringer and a contributory infringer.

            1. in many divided infringement cases where two or more people cooperate, there is no single person that does all the steps or who is the mastermind. This leads to no direct infringement and to no contributory infringement or inducement because there is not direct infringer.

              How many such cases are there, in fact? And do such cases tend to be concentrated in certain art units? What is the nature of these claims that can be so easily “worked around”?

              Maybe if we just focus on not coddling the computer-implementers they’ll eventually figure out how to write claims to inventions that merit patent protection.

            2. More of the same old mewling QQ from Malcolm, with the attempted spin to portray one particular art field as somehow being “the problem,” and calling for the wrong branch of the government to twist the nose of wax in comment above (5.1.1.1.1.3), Malcolm would do well to have one of his suckpuppet army from over at Patent Docs note the following quote:

              However, it is extremely rare for patents to be challenged for lack of usefulness or utility. This is because patents are typically challenged by those who wish to revoke the patent and market the product themselves. If an invention is not useful, it makes little business sense to bear the costs of challenging the patent. Conversely, if the product is actually in production and being used by customers, it should be difficult to demonstrate that the invention is not useful and never should have been patented.

              See link to patentdocs.org

              This explains why 112 has become the new battleground, as even though the nuclear bomb of 101 is still highly desired, more and more people are realizing how banal the attempted use of 101 really is – that arguing that these “computer-implemented” inventions don’t fall into one of the statutory categories continues to strain the bounds of reasonableness (a machine no longer a machine, a manufacture no longer a manufacture), and utility is quite obviously present (and yes, that utility well within the utility of the Useful Arts, which still in this country is recognized by all three branches of the government as covering more than just the technical arts).

              Malcolm shows his Red Queen nature with the choices of such words as “coddling” and “merit,” while running away from actually defining those words. It becomes abundantly clear that in Malcolm’s world, patents are “meant to be awarded” only very much more restricted grounds, such as “but-for” or “it takes a genius” – grounds expressly rejected by the branch of the government that has been allocated authority to write patent law.

            3. Malcolm, How many such cases are there, in fact? And do such cases tend to be concentrated in certain art units? What is the nature of these claims that can be so easily “worked around”?

              Well, we were once a defendant in the case involving a process where we did part of the process and somebody else did another part of the process and we were two independent companies. We finished the product, and were sued for infringement. But the novel feature of the claims was done by the third-party. Nevertheless, we purchased from him the partially completed product precisely because he incorporated into the partially completed product the novel feature.

              Technically, we may not have done part of the process, but we certainly took advantage of the invention.

              I can tell you that the Supreme Court in the oral argument was simply unimpressed with the argument that claim drafting can avoid all these issues. The Supreme Court appeared to be unanimous in this view. The suggestion of Lemley, adopted by the Federal Circuit, that this was the solution to the problem was openly ridiculed by the Supreme Court.

            4. Technically, we may not have done part of the process, but we certainly took advantage of the invention.

              People “take advantage of the invention” all the time. That’s always going to be the case, especially where the claims are poorly drafted.

              This isn’t a “problem” with the patent system. It’s part of the design. Of course patentees (some of them, anyway) always want everything to be made as easily as possible for them to sue people, anyway, anyhow, all the time.

              But if 271(a) gets opened up in the manner you are suggesting, get ready for more blowback.

            5. Here’s my problem: what the heck is the limiting principle of your rule? You end up with joint and several liability for a strict liability offense when the only steps you take are non-infringing.

              I wonder how many other areas have unintentional, joint and several liability for strict liability claims. That’s probably the minority of cases.

            6. mmm, may I politely ask you whether you have even read Univis Lens and Quanta?

              It is completely irrelevant that one or more steps by themselves do not infringe. Clearly there is cooperation among the multiple parties to infringe. Though there might not be a contract between the two, they certainly are cooperating. Innocent parties may be involved as dupes to others who know, for example, that when they are given a partially completed product that the innocent party will perform one of the necessary steps. Likewise, others to complete the process may by partially completed components from others who have done preliminary steps. There are many combinations, and the hard and fast rule that only one party must perform all the steps is not the law, and never has been the law until BMC Resources.

            7. It is completely irrelevant that one or more steps by themselves do not infringe.

              Once again Ned, a statement of yours would fuel our debate.

              Take the converse of the statement, and turn it into a question: Is it relevant that one or more steps by themselves are not present?

              In the Univis Lens case, this question was directly asked for the concept of exhaustion.

              In that case, exhaustion was held to have occurred without all the steps having taken place.

              I still am puzzled why you always seem to fight this understanding of that case.

            8. anon, as always I have no idea what you talking about. When referring to the Univis Lens case in terms of infringement, the assumption is always stated that the patent owner or is licensee is not involved. In such a situation there can be no exhaustion. Exhaustion is completely irrelevant to the conversation. Completely.

            9. anon, as always I have no idea what you talking about. When referring to the Univis Lens case in terms of infringement, the assumption is always stated that the patent owner or is licensee is not involved. In such a situation there can be no exhaustion. Exhaustion is completely irrelevant to the conversation. Completely.

              Ned, you cannot take a case about exhaustion and not recognize what the case was about.

              You need to first recognize what the case was about before you can attempt to use the case for any analogy to a concept outside of what that case was about.

              Let me see if I can “hold your hand.”

              1) The case was about exhaustion.
              2) The last step in the process doer was cleared because the item was declared to have been exhausted prior to that doer’s actions.
              3) The doer’s actions were considered “substantial non-infringing work.” [lens blanks, no matter the configuration are ground to final form by grinders – that is what grinders do.
              4) Once you accept and understand the first three points, then exchange the concept of infringement. Tracing the steps backwards, the doer’s actions could not be considered infringement, because there can be no infringement on an exhausted item. Not only is the point of exhaustion NOT irrelevant – it is completely relevant to disabusing you of your notion of “last step.” In the fact pattern of the Univis Lens case, it was the last step that was irrelevant.

            10. anon, take a look Supreme Court’s description of the government’s brief in Quanta.

              Regardless, anon, the court described the activity engaged in by Univis Lens as infringement if engaged in by other than the patentee or patentees licensee. It makes no difference what you think the case is about, because that is what I am talking about in the context of multiple actors performing steps of a patented process, out of context of actions by the patentee or by his licensee.

            11. from Quanta:

              Held: Because the doctrine of patent exhaustion applies to method patents, and because the License Agreement authorizes the sale of components that substantially embody the patents in suit, the exhaustion doctrine prevents LGE from further asserting its patent rights with respect to the patents substantially embodied by those products.” (emphasis added)

              This looks like what I am saying.
              This does not look like what you are saying.

            12. “mmm, the problem all started with Aro II that held that the new 271(c) required knowledge of the patent.”

              Why is that wrong? The text of 271(c) says precisely that: “knowing the same to be especially made or especially adapted for use in an infringement of such patent.”

              Also, the rule that if you’re going to be responsible for another person’s activities, I would hope that there is some rule that isn’t just strict liability.

          2. mmm, “Why is that wrong?” Because it is inconsistent with prior law, it fails to recognize that infringement is and was strict liability, it places the innocent direct infringer on the hook for full damages regardless of knowledge of the patent, and excuses the person responsible for the infringement from liability because he did not know of the patent.

            The ethics and morality of this are backwards. The guilty are coddled. The innocent punished.

    2. You are certainly not alone in that prognostication, despite the oral argument questions [which are often not good “tea leaf tips” anyway].
      As noted in other comments here, the other alternatives would be messy to implement, and there was no actual prior case law support for the novel joint infringement decision of Fed. Cir. below.

      1. …still have not seen a decent tie into the statutory language….

        (and no, “it makes things tidy” just is not a tie to the language, all that is is a hoped-for result)

      2. Paul, saying there’s no support for the Federal Circuit decisions in BMC Resources and Muniauction is putting it mildly. Those decisions are contrary to well-established law including Federal Circuit law even as noted by the briefs in the Supreme Court case. There was a Federal Circuit case just one year prior to BMC Resources that approved of a jury instruction that involved a theory of direct infringement based upon the joint actions of multiple parties.

        This is one more example of a decision by Judge Rader that simply ignored and refused to follow prior panel decisions that he disagreed with. As a result, Judge Rader as thrown the law of infringement in a chaos.

  4. It would have been wise for the Supreme Court to punt Myriad back down to the Federal Circuit as well to construe the term “isolated” before writing its incomprehensible “landmark” decision in that case.

    Maybe they are learning.

    1. incomprehensible

      Lol – your seeming lack of ability to comprehend does not mean that you can use the word “incomprehensible.”

    2. MM, I think the Myriad decision was abundantly clear.

      Claim structure, my boy. Do not claim function.

      1. I think the Myriad decision was abundantly clear.

        Claim structure, my boy.

        If you think that it was Myriad’s failure to describe their molecules in structural terms that resulted in their tanked claims, then you have no idea what you’re talking about.

        1. OK, Malcolm, instead of saying that I am wrong, please explain. Otherwise, you adopt the mode of argument of anon.

          I quote the relevant passages from Myriad. What they said seemed clear to me.

          1. You’re completely wrong about the criticality of “structure” because the Myriad decision is crystal clear that it is the relationship of the sequence of the claimed polynucleotide (i.e., its structure) to naturally occuring sequences that determines ineligibility or not.

            That’s why we know that some claims to so-called “cDNA” molecules are ineligible, regardless of how they were obtained or what those molecules encode or whether they are claimed in terms of the proteins they encode (objectively structural to any skilled artisan) or whether they are claimed by reference to a specific nucleotide sequence.

            It’s still perfectly acceptable to claim a novel DNA molecule in terms of the amino acid sequence encoded by that DNA. It’s not ineligible, even if that sort of “functional” claim language disturbs you (and it’s unclear why it would given that the genetic code relating the structure to the function is easy enough for the average middle school student to understand). All that matters for the purpose of the Myriad test is that none of the DNA sequences covered by that claim can be identical to contiguous DNA sequences found in nature.

            1. MM, your take is close to my take. Had Myriad claimed DNA structure that differed even one molecule from that found in nature they would have passed 101 and moved on to 102/103.

              The Supreme Court construed the claim to be to the sequence, found in nature, because of the functional requirement that it encode for a specific molecule where the functional requirement was true of both naturally occurring DNA and the isolated composition.

              That is why I suggested that had the DNA been claimed as a composition, structurally, as construed by Lourie, where that structure was different than naturally occurring DNA, Myrial would have prevailed.

            2. claimed DNA structure that differed even one molecule from that found in nature

              You kind of missed those closed ends that differed by more than just a molecule Ned.

            3. Anon, You kind of missed those closed ends that differed by more than just a molecule Ned

              I don’t know exactly why you said this, but you must realize that the Myriad court construed the claim to cover only the sequence, the same sequence that was found in nature, such that the end bonds were not included.

              Anon, You kind of missed those closed ends that differed by more than just a molecule Ned

              I don’t know exactly why you said this, but you must realize that the Myriad court construed the claim to cover only the sequence, the same sequence that was found in nature, such that the and bonds were not included.

            4. You need to recognize that the Court rejected the argument that the molecule was structurally different because of the snipped ends – your position here can only be reached if the Court has accepted that argument.

              They did not.

            5. where that structure was different than naturally occurring DNA, Myriad would have prevailed

              And they did “prevail” with respect to their narrowest claims to such molecules.

              But if the recited structure of the “isolated” molecule was identical to the structure of a naturally occurring DNA (regardless of whether the naturally occurring DNA happened to be longer), then the isolated molecule is ineligible for patenting. And that’s true regardless of whether the claim describes the structure of the molecule directly (“isolated DNA consisting of polynucleotide with SEQ ID NO:5″) or indirectly (“isolated DNA encoding the amino acid of SEQ ID NO: 8″).

              This is a hugely important point to understand, at least if you are in the business of engineering and claiming isolated DNA polynucleotides.

            6. And they did “prevail” with respect to their narrowest claims to such molecules.

              That would be false.

              It is true that some of their cDNA ‘prevailed’ – but importantly the Court made clear that not all cDNA would so prevail.

              The statement is in clear error for the reason posted at 4.2.1.1.1.5.

              Malcolm, it appears that (once again) you are misplacing your understanding of what “effectively” means. “But if the recited structure of the “isolated” molecule was identical” – identical-ness is EXPLICITLY not required.

  5. 271(a) “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

    Seems straightforward to limit 271(a) to cases where a single entity performs all the steps or where multiple entities are acting concertedly to perform all the steps (also includes the case where one entity or multiple entities are causing some of the steps to be performed by a non-infringing party). It doesn’t seem reasonable to include as “infringers” a group of wholly unrelated people who separately practice different steps of the patent without knowledge of what the others are doing.

    Whoever actively induces infringement of a patent shall be liable as an infringer.

    This covers the situation where an entity knowingly causes a patent to be infringed by another (or others) but is not practicing any steps itself (e.g., the drug company who sells the off-patent drug with instructions for use, where the particular use infringes a method patent). That entity is liable as an infringer (presumably in addition to the customer).

    Computer-implementers need to learn how to write claims that describe the technology they are “inventing”. A claim that requires a customer or some other third party to engage in optional information-sharing behavior is most likely ineligible junk that fails to describe any progress worth promoting with patents.

    1. Tell me again (actually for the first time) the precise statutory basis for this notion of single-actor infringer.

      1. Does one need to perform all the steps in an offer to sell?

        I assume you are asking about an offer of a service that does not infringe a patent claim but shares some steps with a patent claim.

        By itself, that’s not infringement under 271(a) as I read the statute.

        Tell me again (actually for the first time) the precise statutory basis for this notion of single-actor infringer.

        You don’t believe that a single actor can infringe a patent? That’s a new one. As I indicated, 271(a) is not limited to that case under my reading. It would also cover cases “where multiple entities are acting concertedly to perform all the steps (also includes the case where one entity or multiple entities are causing some of the steps to be performed by a non-infringing party).”

          1. it would absolutely kill you to say that I am right.

            I’m supposed to say “you’re right” when you ask me questions? What?

            1. For someone so vaunted in “English as a first language,” you really have trouble with rhetorical questions and other aspects of expression, don’t you?

        1. The point of the question regarding patent infringement by mere offer to sell was that mere offer – on its face – may involve NO actual construction or practice of the patented invention at all.

          Consider the following hypothetical:

          Company A invents Widget X. Widget X is a “properly” claimed item of manufacture and a machine component (the quotes indicate that the claim can even be presumed to satisfy the heightened Red Queen standards of claim construction).

          Company B, a competitor realizes that it knows how to make Widget X.

          Large Customer C does not like Company A, because Company A “charges too much,” and thinks that Widget X is too simple of an invention and should not have been granted a patent in the first place (but Large Customer C realizes that it could not win in any challenge of the patent, in any forum).

          Company B – without ever making a single Widget X – offers to sell Large Customer C a substantial quantity of Widget X.

          Company A sues Company B for patent infringement under the “offer for sale” prong of 35 USC 271.

          Discuss.

          1. Anon, I’ve actually been in a very similar situation in real life, and posted on that below in a reply to Malcolm. We had a process that used a component, having a novel feature, we purchased from a third-party. After we practiced the remaining steps of the patented process, the article was finished. Think of us as the finishers in the Univis Lens. But rather than being a part of a plan hatched by the lens blank manufacturers, we simply purchased the partially finished lens blanks from their manufacturer precisely because of the patented feature incorporated into those lens blanks, and then we finished the lenses.

            I would think that under any theory of infringement I can think of that we should have been held liable for infringement because even though we did not practice ourselves each and every step of the patent process, we certainly took advantage of the invention. There was an infringement in my view.

            1. Except for the point that you and I often debate from the Univis Lens case: as exemplified by exactly at which point exhaustion was held to have taken place (prior to all acts).

              If you as an entity are doing something akin to the “staple article or commodity of commerce suitable for substantial noninfringing use” aspect, and the invention is ‘embodied’ already in the step prior to your actions, then, just like in Univis Lens, the fact that the ‘item’ is exhausted before it gets to you, provides a parallel reasoning that removes that ‘last-step-is-the-only-guilty-one thinking.

              The point that Malcolm appears to be trying to make is that with method claims, the chances that any single particular step of a method claim is much more likely to have that flavor of “suitable for non-infringing use.”

              Of course, if we circle back to the digital item thread, we both know that any particular step that involves the digital manufacture would most likely NOT have this avenue of escape.

              (in your particular case, I am not aware of whether or not you could claim this “suitable for substantial noninfringing use” aspect)

            2. Further, the point of the hypothetical is also distinct from your experience.

              The point being that NO parts of the invention at all need to be put into play for patent infringement to occur in the “offer for sale” mode.

              None.

    2. Malcolm, you make the same mistake Lemley did in his article entitled “Divided Infringement.” “Whoever,” by statute, includes the plural.

      1 USC §1, reads, in material part, as follows:

      words importing the singular include and apply to several persons, parties, or things;

      words importing the plural include the singular;

      words importing the masculine gender include the feminine as well;

      words used in the present tense include the future as well as the present;

      the words “person” and “whoever” include corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals;

      ….”

      1. Malcolm, you make the same mistake Lemley did in his article entitled “Divided Infringement.” “Whoever,” by statute, includes the plural.

        I never said that it didn’t.

        In fact, I indicated the opposite in two separate comments in this very thread, including the comment you seem to be responding to.

        What the heck, Ned.

        1. MM, my bad.

          The AIPLA brief cited to the famous lamp case, Wallace v. Holmes, 29 Fed. Cas. 74, 80 (No. 17,100) (C. C. D. Conn. 1871); where the burner and chimney were sold separately but were combined by end users.

          The seller of the burner and chimney were cooperating. The purchasers may or may not have been innocent.

          Court there held,

          “It cannot be, that, where a useful machine is patented as a combination of parts, two or more can engage in its construction and sale, and protect themselves by showing, that, though united in an effort to produce the same machine, and sell it, and bring it into extensive use, each makes and sells one part only, which is useless without the
          others, and still another person, in precise conformity with the purpose in view, puts them together for use. If it were so, such patents would, indeed, be of little value. In such case, all are tortfeasors, engaged in a common purpose to infringe the patent, and actually, by their concerted action, producing that result.”

          Thus the where one or more do parts of the process and give it to still another knowing that he will complete the process, ALL are liable as joint tortfeasors.

          However, modern tort law as developed particularly in California, recognizes contribution among joint tortfeasors according to fault. It appears that none of the judges of the Federal Circuit are familiar with modern tort law, as they go out of their way to protect innocent actors when such is not necessary at all.

          1. Ned, that’s a nice case, but it’s awfully old. I’m pretty sure the statutory basis for contributory infringement postdates your 1871 case. I don’t think the case is very helpful, as a result.

            1. DanH: Ned, that’s a nice case, but it’s awfully old. I’m pretty sure the statutory basis for contributory infringement postdates your 1871 case. I don’t think the case is very helpful, as a result.

              Well there is an issue in the case as to whether the inclusion of statutes on contributory infringement and inducement acted to restrict direct infringement under 271. The case was not cited as an example of contributory infringement but as an example of direct infringement by joint tortfeasors.

              The point has also been made that there is a blur between direct infringement and contributory infringement. The two categories are not mutually exclusive. For there to be direct infringement, the infringer must participate in the infringement. That does not mean that he cannot also be a contributory infringer or and inducer.

            2. Ned’s post highlights perhaps a critical area of focus:

              35 USC 271(a) has been stated as being merely a declaratory section of the law. See the historical and revision notes tab at link to law.cornell.edu

              There does not appear to be any limitation as to type of infringer – one may very well fall into multiple categories, and per the words of the statute as written by Congress, may be a joint tortfeasor as well as a contributor and as well as an inducer.

              Is it up to the courts to re-write the words of Congress and eliminate multiple penalties based solely on the courts mere thinking that such is how the law should have been written (as opposed to how the law was actually written)?

      2. Malcolm, you make the same mistake Lemley did in his article entitled “Divided Infringement.” “Whoever,” by statute, includes the plural.

        I don’t think that proves anything, Ned. Sure, “whoever” includes the plural. All that establishes is that 271(a) doesn’t rule out the possibility that several individual entities can each separately and independently infringe. Indeed, that frequently happens when different parties make, sell, and use a patented device.

        If the term “whoever” resolved the issue of split infringement all by itself, then there would be no need for the specific provisions for contributory infringement.

        1. Thanks DanH, that seems to me to be two particularly astute 271(a) observations that can avoid adding a new, costly, and time consuming litigation burden of trying to figure out how much to collect in infringement damages from unrelated parties independently performing different parts of a claim. [Tort damages apportionments are not even consistent between different states. What would it be between respective “partial infringers?”]

          1. Paul, I must complement your logic that it one can avoid the difficulties of apportioning damages among joint tortfeasors by simply denying the patent owner any remedy at all.

            As to what law applies, may I suggest, we look to the Restatement of Law Third, Torts: Apportionment of Liability.
            link to ali.org

          2. …although, the mere want of “making it easy” is no substitute for writing law (or who has authority to write law).

            …and as you pointed out Ned, DanH is simply not correct in his view that “If the term “whoever” resolved the issue of split infringement all by itself, then there would be no need for the specific provisions for contributory infringement.” It is not a matter that split infringement all by itself would or would not impact the specific provisions for contributory infringement, as you point out that one may (or may not) fall into more than one category.

        2. <All that establishes is that 271(a) doesn’t rule out the possibility that several individual entities can each separately and independently infringe.

          Great point, DanH. I hadn’t seen this mentioned before but it’s a reaosnable interpretation of the statute.

          Paul Morgan: avoid adding a new, costly, and time consuming litigation burden of trying to figure out how much to collect in infringement damages from unrelated parties independently performing different parts of a claim.

          Another angle that strongly suggests putting reasonable (common law-derived) limits on the scope of 271(a). It also draws into focus an important underlying question: is social interaction a “useful art” that patents were intended to promote? Assuming the answer is “no”, why would we needlessly stretch the interpretation of 271(a) so far as to include unrelated parties acting independently of each other?

          1. but it’s a reasonable interpretation of the statute

            Except for the fact that it is not – it is a writing of the map, rather than a reading of the map.

            …unless of course you have some information that you have not yet shared along the lines that I have asked for…

        3. DanH,

          So where is the statutory basis for the single entity rule?

          Putting aside Malcolm’s childish “well nothing says it cannot be a single entity” type of response to this question (of course, silly rabbit, a single entity could always be an infringer), where in the statute is the language indicating that a single entity must be an infringer?

          As I pointed out previously, there is a symmetry between what it takes to create the right and what may happen to transgress that right. Lemley pushed hard in the AIA to recognize that modern inventing is largely done by teams. Those teams do NOT have to actually work together. So while the parallel does not stray far from today’s more formal Mastermind pinnings, the point of the matter is that the rule that there must be a single entity infringer is simply not strongly linked to the words that Congress used.

          At least, no one yet has shown that.

        4. DanH, we all know why contributory infringement was added: Mercoid.

          §271(a) states that whoever makes, uses or sells… Infringes a patent. §271(c), however, is limited to selling into importing.

          By its terms, §271(c) does not apply to making and using, which is equivalent to practicing a process. That is exclusively covered by §271(a).

          Therefore, is simply not true that the contributory infringement statute displaces the direct infringement statute except possibly in the case of sales and importing.

          1. Therefore, is simply not true that the contributory infringement statute displaces the direct infringement statute except possibly in the case of sales and importing.

            I didn’t say that the contributory infringement statute displaces the direct infringement statute.

            My point is this – if 271(a) covers a situation where separate individuals (with no contractual or control relationship between them) can jointly infringe a method by performing separate steps of that method, then because it doesn’t distinguish between methods and apparatus it must also cover the situation where separate individuals (with no contractual or control relationship between them) supply components that are ultimately assembled into a patented apparatus, even where there are substantial non-infringing uses for those components (and perhaps even without any mens rea, given the patent maximalists’ frequent reminders that 271(a) is a strict liability provision). But we know that is not true , right? One of the reasons we know that is not true is the mere existence of 271(c), which for quite some time has been the way that we reach the supplier of specially designed components.

            anon asked me elsewhere where the statutory basis for the single-infringer rule is. My answer is that it is the most natural reading of 271(a). Any other reading creates conceptual problems like the one I just summarized.

            1. I reject your “most natural reading.”

              Clearly – others do not share that “well, it appears so to me” thinking.

              Your view boils down to a forced ‘it would be easier” view. That holds no water.

            2. the fact that the words are there regarding the possible ‘out’ defeats your argument.

              Sorry, I don’t know what that means.

            3. LOL – I understand how you feel and sympathize with your pain.

              But notwithstanding that, your legal position remains a vastly inferior one.

            4. DanH, §271(c) was specifically intended to overrule Mercoid. It was not intended to displace the law of infringement otherwise.

              If one alleges infringement by the seller of a component of a patented a combination, and that’s all you prove other than that the component was assembled into a final product by someone else, then certainly §271(c) controls. The by its terms, this statute does not apply to making and using. That is covered by §271(a).

  6. My guess is a very narrow 271(b) decision with a GVR on the cross-petition re 271(a). Punting the messy latter issue back to the Federal Circuit is all the more tempting given how time is running short in this 2013-14 term.

  7. Dennis, I might add that Akamai litigated this case based upon direct infringement and gave up its claim for inducement. I am not sure exactly what is going to happen if this gets remanded back to the District Court given that Akamai seems to have waived inducement infringement liability.

    The Supreme Court should have granted both petitions rather than just the one. That was their mistake. Now they have to grant Akamai’s petition and reschedule this case for rehearing in the fall simply because of their own error.

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