No Deference for Misquoting your Sources

By Dennis Crouch

I already wrote about the holding in yesterday’s ClearCorrect decision – transmission of an electronic communication cannot be considered importation of an “article” and thus is not within the USITCs Section 337 jurisdiction. I wanted to focus here for a few minutes on Chief Judge Prost’s remarks regarding the USITC’s problematic citations ITC in its final decision. In particular, it appears that the commission altered the Senate Report in a way that supports the commission’s ultimate conclusion that non-good electronic transmission count as “articles” under the statute.

The Commission’s Opinion cites the Senate Report, S. Rep. 67-595, as authority for this conclusion and then quotes it as follows: “The provision relating to unfair methods of competition is broad enough to prevent every type and form of unfair practice and is, therefore, a more adequate protection to American industry than any antidumping statute the country ever had.”

However, the actual quote reads as follows: “The provision relating to unfair methods of competition in the importation of goods is broad enough to prevent every type and form of unfair practice and is, therefore, a more adequate protection to American industry than any antidumping statute the country ever had.”

As you can see, the actual quote from the senate report is tied to importation of goods, and that segment of the report was simply left-out when relied upon in the ITC Decision. The Chief Judge Prost writes:

The Commission’s omission of the phrase, “in the importation of goods” is highly misleading; not only was a key portion of the quote omitted, but it was omitted without any indication that there had been a deletion. Furthermore, while we may agree that the quote, as incorrectly stated by the Commission, would indicate a broad authority for the Commission, the phrase “in the importation of goods” clearly limits the Commission’s authority. And as we discussed above, it limits it in such a way as to exclude non-material things. Because the Commission uses this misquote as its main evidence that the purpose of the act was to cover all trade, independent of what form it takes, the Commission’s conclusion regarding the purpose of the Act is unreasonable.

Chief Judge Prost also highlights a second important citation problem in Footnote 21:

It is noteworthy that this is not the Commission’s only failure to cite evidence correctly. The Commission additionally states that “goods, commodities, and merchandise” have the same definition as “articles” as defined in the second edition of BLACK’S LAW DICTIONARY. Final Comm’n Op. at 43. However, BLACK’S LAW DICTIONARY does not provide the cited definition.

Taking this “in sum”, Chief Judge Prost writes that the Commission’s opinion “represents a systematic pattern of the Commission picking the wrong conclusion from the evidence.”

Although somewhat unclear, it looks like the patentee (who benefits from the misinterpretation) promoted the misinterpretation. In its Federal Circuit brief the patentee Align Tech repeated the misquotation. Align writes:

From its inception, section 337 has afforded U.S. holders of intellectual property rights broad protection against unfair trade practices, including *22 importation that infringes U.S. patents and copyrights. See, e.g., S. Rep. No. 67-595, at 3 (1922) (“[t]he provision relating to unfair methods of competition is broad enough to prevent every type and form of unfair practice”).

When the actual quote includes a particular limitation to the “importation of goods” and thus suggests that electronic transmissions are not included within the scope. I have not yet obtained the original briefing to the USITC on the issue to uncover the original source of the misquotes.

36 thoughts on “No Deference for Misquoting your Sources

  1. 9

    The incorrect textual reference is inexcusable. But this sort of thing
    goes on in (supposedly cite-checked) law reviews frequently.
    For example, from IPBiz in 2007:


    In the past, IPBiz noted errors in cites in law reviews including the University of Chicago Law Review (cited reference offering no support AND wrong page noted; editor declines to correct) and the Stanford Law Review (proclaiming Gary Boone the inventor of the integrated circuit, with Noyce and Kilby unmentioned). Now we have one in the Law Library Journal. IPBiz suggests that once the Law Library Journal screws up a cite, it’s time to recognize that one cannot assume the text in journals is correct. You are on your own.

    Perhaps, as Professor Dershowitz suggested as to unattributed copying in the law, it’s a culture thing.

    1. 9.1

      You should know better than to broach the “veil” of academia on the subject of proper citations.

      Besson anyone?

      (this also reminds me, Ron Katznelson’s piece in front of the Executive – the one still waiting an answer – is tied to the misrepresentations of an academic….)

    2. 9.2

      Good points.

      But what is better than mis-citing and misquoting, is the Federal Circuit’s practice of pulling things out of thin air without any support at all. I give you BMC Resources and FilmTec.

  2. 8

    Unfortunately, sanctions for misquotations [especially selective partial quotations leaving out key distinctions, as here] seems to be rare. Two common ones are misrepresenting the dismissed Fed. Cir. non-decision in In re Beauregard 53 F.3d 1583 (1995) as sustaining Beauregard claims, and leaving out the immediately following 101-scope-limiting sentence in Chakrebarty.

    1. 8.1

      I do not think your view of the dismissed In re Beaureagrd case is correct.

      I am not sure what your sentence in Chakrabarty is (you left it out).

      If you really want misquotes, see pretty much any (attempted – on my part) dialogue between Ned and I and dealing with any number of cases – his left out items in Benson, Flook, and Bilski, for example, or for another example, what he leaves out from Federico on the Act of 1952 and Congress allowing terms sounding in function (outside of 112(f)…).

      Or, take those items misquoted – and admitted to knowing better by Malcolm and the treatment of the exceptions to the judicial doctrine of printed matter (which, too, Ned insists on leaving out).

      No, Paul, there are far more immediate “common ones” right here.

      1. 8.1.1

        Why not for Beauregard claims/case? There was no case or controversy, so the court simply said so. That was the entire extent of the decision. It’s literally a page long:

        link to openjurist.org

        There certainly wasn’t a detailed analysis of whether such claims would be patentable (my guess — No way would they be patentable if some court would perform a detailed analysis under 35 USC 101; you can’t cover software instructions as that’s what copyright is supposed to cover).

        1. 8.1.1.1

          The manufacture of software has different aspects protected under the different IP laws.

          Copyright: expression
          Patent: utility

          This is basic stuff.

        2. 8.1.1.2

          Thanks for further explaining the common Beauregard decision misrepresentation.
          As for the Supreme Court decision in Diamond v. Chakrabarty, everyone likes to cite the words about “everything under the sun made by man” being patentable, while conveniently leaving out the following sentence of that decision specifically qualifying that statement as follows: “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853). “

          1. 8.1.1.2.1

            Compare Curtis (’67) at Section 25:

            § 25. III. A MANUFACTURE. It has been stated, in a former
            part of this chapter, that the term” manufacture” was used in
            the English statute 21 Jac. 1 to denote anything made by the
            hand of man; so that it embraces, in the English law, machinery,
            as well as substances or fabrics produced by art and industry.2

            2. In Boulton v. Bull, Heath, J., said: “The statute 21 Jac. 1 prohibits all monopolies, reserving to the king, by an express proviso, so much of his ancient prerogative as shall enable him to grant letters-patent, and grants of privilege, for the term of fourteen years and under, of the sole working or making of any
            manner of new manufactures within this realm, to the true and first inventor and invention of such manufactures. What, then, falls within the scope of the proviso?

            Such manufactures as are reducible to two classes. The first includes machinery, the second, substances (such as medicines) formed by chemical and other processes, where the vendible substance is the thing produced, and that which operates preserves no permanent form. In the first class the machine, and in the second the substance produced, is the subject of the patent. I approve of the term ‘manufacture’ in the statute, because it precludes all nice refinements; it gives us to understand the reason of the proviso, that it was introduced for the benefit of trade. That which is the subject of a patent ought to be specified, and it ought
            to be that which is vendible, otherwise it cannot be a manufacture.”

      2. 8.1.2

        anon, you jump up and down about misquotes without ever supplying the actual quote or whatever. How many time have I asked you to give me the holding in Alappat?

        1. 8.1.2.1

          I have given that to you repeatedly.

          You are aware of course that a case can have more than one holding, right?

          (And this by no means excuses your LACK as I posted)

    2. 8.2

      In passing, note RPC 3.3(a)(5), as enforced in New Jersey. Attorneys in New Jersey have been found to violate RPC 3.3(a)(5) when a failure to disclose material information misleads the court.

      – Link: link to caselaw.findlaw.com

  3. 7

    And on topic, man someone should get sanctioned for that nonsense. And maybe the ITC needs to look into a new leading man for their litigation.

    1. 7.1

      6, I don’t think it was the litigators from the ITC. It was the commission itself that was loose in its quotations — either that, or they were misled themselves by a party brief that they did not check.

      That is why Dennis is looking into the briefing.

      1. 7.1.1

        Oh, and I daresay, if it is a brief of a party and Dennis can identify it, I would think the ITC will have something to say about sanctions. This opinion from the Federal Circuit was an embarrassment to the ITC.

  4. 6

    D man I keep hearing stuff about your school on my interbuts. You and the lawl professors gotta get outside the classroom once and awhile and help establish order. How are you guy’s students learning in such an environ?

    1. 6.1

      I would be interested in hearing your opinion on the protests, Dennis.

      Also, interested in your opinion on your colleague Professor Barondes’ law suit on the campus gun ban. link to foxnews.com

  5. 5

    I was listening to a recent oral argument where the appellant “misquoted” a case by using an ellipsis to omit the portion of the quote that was inconsistent with the proposition for which it was cited. The court was obviously angry.

  6. 4

    Dennis,

    With that clarification on what Congress intended “articles” to mean, it’s hard to challenge the majority’s reasoning that there is no ITC jurisdiction to block importation. One of the few times I’ll disagree with Newman on statutory interpretation.

    Now whether the Respondent here could be held liable for direct infringement based on 271(a) under the most recent Akamai decision in federal district court is another matter . . . .

  7. 3

    I’ve been looking at the filings on EDIS. Evidently the selective quotation originated in Hardware Logic, Inv. No. 337-TA-383, 1998 WL
    307240, at *13 (1998) ( “section 337 is ‘broad enough to prevent every type and form of unfair practice.’”).

    Google filed a comment (Doc Id 527129) with the ITC in the ClearCorrect case pointing out the selective quotation, giving the full quotation, and making the point that

    The concern being addressed by Congress in the first version of what eventually resulted in Section 337, as discussed above, is unfair practices resulting from the importation of products or physical goods. Taken in context, this statement simply supports the concept that the scope of the statute relates to the importation of physical goods, not electronic transmissions.

    Align Technologies responded (Doc Id 528336) to Google’s comment, arguing that:

    This argument, however, assumes what it seeks to prove — that, at the time of the 1988 amendments, Section 337’s reach was limited solely to tangible items, and that Congress — while solicitous of U.S. intellectual property rights — sought to offer only a limited protection, and to enable patent- and copyright-infringers to evade Section 337 as long as they avail themselves of advances in technology. This is contrary to common sense.

    So it looks like this issue was raised by a third party to the ITC proceedings and addressed by the complainant. However, neither Hardware Logic nor Google nor the complainant appear to have used the exact quotation that the ITC used in its Final Opinion. It’s possible I’ve missed something, though.

    1. 3.1

      advances in technology

      Signals containing information were not “advances in technology” as of 1988.

      They weren’t advances in technology as of 1888, either.

      If courts continue to allow patent applicants and patentees with junk patents to pretend they were born yesterday, then those patent applicants and patentees will continue to do just that. Someday these people will grow up but after fifteen years of watching them practice and master the art of infantile regression in their pursuit of ever-more-absurd “patent rights” I’m not going to hold my breath.

    2. 3.2

      James,

      From the CAFC opinion, on page 9, FN 11: “Commissioner David S. Johanson dissented in the Commission’s findings.” It is not clear whether he dissented with respect to “ClearCorrect Pakistan contributed to that infringement,” or jurisdiction. If the later, perhaps he made some enlightening observations. EDIS requires registration. While not burdensome, for me it would be one time use. Could you look at the dissent?

      1. 3.2.1

        He appears to dissent regarding jurisdiction:

        The Commission majority broadly interprets the statute to allow it to exercise jurisdiction and find a violation by treating electronic transmission of data as an “article.” As this interpretation does not address Congress’s delegation of authority to the Commission, ignores Section 337’s remedial scheme, and contradicts the federal courts’ interpretation of “articles,” I respectfully dissent.

        The dissent does not specifically address the misquotation of the Senate report or provide the full quote.

  8. 2

    My guess: someone’s law clerk relied on citations provided by the patentee, mistakenly trusting those to be … accurate.

          1. 1.1.1.1.1

            DC: Mizzou has been in the news a bit.

            Overall the news sounds positive. It’s always great to see young people using the First Amendment to wake the people in charge to realities that have become intolerable. Also fascinating to hear presidential candidates suggest that such dissent is “childish” or worse. Big Daddy likes to keep things real quiet at home while he’s busy blowin’ up people on the other side of the world.

        1. 1.1.1.2

          Poor taste. I don’t always agree with the posts on here, but that seems like a cheap shot. You can do better. Cheers.

          1. 1.1.1.2.1

            You want to quibble over that JCD…?

            It was clearly a jest – so open your eyes to the utter C R P that malcolm drowns this blog in – pretty much no matter what the topic of the thread is, and remind me why you don’t speak up to the rampant poor taste there.

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