LifeTech v. Promega Oral Arguments: What is a ‘Substantial Portion’ of the Components

by Dennis Crouch

Life Technologies Corp. v. Promega Corp. (Supreme Court 2016) [LifeTechTranscript]

Today the Supreme Court heard oral arguments in LifeTech v. Promega. The case focuses on the statutory interpretation of 35 U.S.C. § 271(f)(1) (export of components of patented invention).  The ordinary rule of U.S. patent law is that patent rights are territorial – a U.S. patent covers only infringement within the US territorial lines.  As they say, if you want to sue someone for infringing acts in the UK, then get a UK patent (or perhaps soon an EPO patent).  Section 271(f) of the US patent act pushes a bit against the extra-territorial limitation by creating liability for unauthorized supply or export from the US of “all or a substantial portion of the components of a patented invention . . . in such manner as to actively induce the combination of such components outside of the US in a manner that would infringe the patent if such combination occurred within the US.”

The case at hand involves a patented genetic test being performed in the UK. The accused infringer had exported from the US a commodity enzyme (Taq polymerase) necessary for the test.  LifeTech argues: “the only contact that any of this has with the United States is the fact that a single, commodity product is shipped to England as part of the process for the fabrication of these particular kits.”  As a point of fact, there was some debate at oral arguments about whether, at the time when infringement began, quality Taq was available from non-US sources.

The question before the Supreme Court is whether this single commodity component can satisfy the statutory test of “all or a substantial portion of the components” of the patented invention.

Issue: Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.

Because the Federal Circuit sided with the patentee (finding infringement) oral arguments began with petitioner (adjudged infringer) represented by Carter Phillips.  The Obama Administration (DOJ brief not signed by PTO) sided with the petitioner and was represented by Zachary Tripp; and Seth Waxman represented the patentee-resondent.

Although I see this is a statutory interpretation question Carter Phillips began the discussion with a statement that this is “largely an international trade case.”  The purpose of that focus is to remind the court of its prior international trade jurisprudence, including Microsoft v. AT&T, where it tends to interpret US law in order to limit extraterritorial application.

On the actual statutory interpretation, Justice Alito asked “Does ‘substantial portion’ mean a majority?”  Phillips replied: “I think it means substantially more than a majority. I would say that it has to be approximating or very close or tantamount to all. [In the case at hand] I would have thought at least four [of the five components] would have to be [exported]. But you know, in many instances, my guess is the right answer may well be five [out of five].”  The US Gov’t largely agreed with this – arguing that there should never be 271(f)(1) liability for exporting a single component but instead the export must reach “all or something tantamount to all of the components.”

Returning to the “substantial portion” language, Justice Kagan offered the following hypothetical:

JUSTICE KAGAN: If I said to you, Mr. Tripp, a substantial portion of my former clerks have gone into government work, how many would I mean?

MR. TRIPP: I think with any of these things, the interpretation of substantial depends entirely on its context and its purpose, and — and — and so this term is used in just, like, a countless array of ways in the law.

JUSTICE KAGAN: So you’re not pinning this on the — on the language here, the substantial portion means almost all?

MR. TRIPP: Well, no —

Essentially, the Goverment’s response here matches with LifeTech’s argument that “substantial portion” is rather ambiguous and so the court must supply a meaning while keeping in mind the principle against extra-territorial application.

Carter Phillips interpretation that a “substantial portion” means “approximately all” comes from the background behind the enactment of 271(f) — that is the overruling of Deepsouth where all the components were being exported but in an unassembled fashion.

JUSTICE KAGAN: Where — where do you get that from? What’s the principle there?

MR. PHILLIPS: Because all Congress wanted to do was to close a loophole [created by Deepsouth] where you’re essentially doing nothing but violating U.S. patent law and avoiding it by simply offloading it at the last second.

JUSTICE KAGAN: Well, how do we know that that’s all Congress wanted to do?

MR. PHILLIPS: [Changing the subject] the presumption against extraterritoriality would drive you in the opposite direction. Even if you could reasonably read the language either way.

MR. TRIPP: [answering the same question] So we’re trying to give a gloss on substantiality in light of the context and purpose of this statue as — as we understand all of 271(f) is designed to shore up the basic restrictioning and is actually making a patented invention in the United States and then shipping it abroad. Both of the provisions get at that. We think (f)(1) [should be limmited to] situations that resemble the Deepsouth paradigm.

Mr. Waxman rejected this analysis and instead argued that the statute “can be read in a commonsense way.” In addition, Mr. Waxman noted that 271(f)(2) itself overturns Deepsouth. 

LifeTech has also argued for a “quantitative” approach to finding “substantial portion” of the components — counting the number of components — rather than a qualitative approach. Pushing-back, Chief Justice Roberts noted “It seems to me that the significance of the component would be the most important consideration.”  Mr. Tripp responded that the “significance” question would be a “black hole that’s not going to get you anywhere.”  Of course, the Court has entered into this black hole on several occasions. Consider, for instance Quanta, where the court focused on the inventive or core aspects of the claims.

Regarding the quantitative approach, Mr. Waxman interjected here with a pharmaceutical example:

MR. WAXMAN: Let’s assume that you have a patented pharmaceutical, a tablet that, you know, remediates a disease. As is commonplace in these combinations, it has one active ingredient, and it has five inert ingredients that are as easy to pick up as you can imagine. The thing that is exported the factory overseas, which by the way is never liable under the statute because the statute only applies to conduct in the United States, they they’re happy to go down to their local warehouse and get the the five inert ingredients. But the molecule that does all the work, they import from the United States.

Under the approaches proposed by Lifetech and the US Gov’t, the exporter here would not be liable (perhaps rightly so).  One thing that Mr. Waxman failed to argue was an actual positive test for what counts as a “substantial portion.”  His approach instead would be to simply give the case to the jury to decide whether a substantial portion had been supplied or exported.  As a back-up, perhaps instruct the jury that “‘substantial’ means considerable in importance and/or amount.”

In Microsoft, the Supreme Court suggested that “components” for 271(f) purposes are the elements of a claimed invention.  Focusing on that point, Justice Sotomayor astutely asked “When a [patent] claim is [issued], how is the determination made of what the elements are? Do the elements’ determinations sort out the common from the uncommon in a patent claim?”  My answer here is that there is no specific definition by the patent office of what counts as an element or component and what is simply a limitation associated with a component. Responding, the US Gov’t simply said that “in most cases it actually won’t be that difficult.”  For the case-at-hand, the parties apparently agreed that the patent lists five components.

Perhaps channeling the Samsung v. Apple decision also released on December 6, 2016, Justice Breyer challenged the US Gov’t approach as too complex:

JUSTICE BREYER: But why do we have to go into the details here? I mean, it did strike me as an instance where maybe the less said by us the better. I mean, would you be happy if we say ‘it means what it says?’

‘All or substantially all’ means a whole lot. Or what you said, tantamount to all.

Of course, as is his wont, Justice Breyer here confused the language. The statute does not require “all or substantially all” but instead “all or a substantial portion.”   Mr. Tripp did not correct Justice Breyer on this even though he had full opportunity.  Mr. Waxman did offer the correction “And, Justice Breyer, I do want to correct one thing. You — you inadvertently kept saying this is all or substantially all. It’s not ‘all or substantially all’ – It’s ‘all or a substantial portion.'”  As a point of interpretation, Mr. Waxman indicated that many statutes do use the term “substantially all” and that should be seen as more rigorous of a standard than “a substantial portion.”

As with all Federal Circuit patent cases before the Supreme Court, reversal is likely.  However, I expect the reversal to be primarily a rejection of a hard-line interpretation of the Federal Circuit opinion.  I do not expect the Supreme Court to impose a quantitative limit on “substantial” but instead leave that question as one that must be proven to a jury as an element of infringement under Section 271(f).

 

179 thoughts on “LifeTech v. Promega Oral Arguments: What is a ‘Substantial Portion’ of the Components

  1. 16

    I think the Court should teach themselves patent law if they are going to be deciding patent law cases. The below is quite scary.

    JUSTICE SOTOMAYOR: I don’t know enough
    patent law to have the answer to this. When a — a
    claim is made, what — how is the determination made of
    what the elements are? Do the elements’ determinations
    sort out the common from the uncommon in a patent claim?

    1. 16.1

      Mike – How do you know which are “elements” as compared with mere limitations?

      Do the elements’ determinations sort out the common from the uncommon in a patent claim? — We used to do this in patent law and I believe it is ridiculous that we no longer do so. Innovators talk about standing on the shoulders of giants, but then patent attorneys intentionally obscure the pathway to innovation.

      1. 16.1.1

        then patent attorneys intentionally obscure the pathway to innovation.

        That’s a bit of a heavy handed emotional characterization, eh Prof. Crouch.

        Seeing as Congress could have – but did not – mandate a Jepson claim format, the idea that not using such a format must be equivalent to “intentional obscuring” is out of place.

        It appears that you want a “nicety” that never was an actual requirement (under the law).

      2. 16.1.2

        Dennis, 100% agree, and this problem of deliberately injecting ambiguity into the claims, and not distinguishing old from new, has been with us since claims were first required. Walker, in the 1800’s, denounced the practice.

        Imagine that claims, and perhaps an abstract and drawing, are alone published; and it was based upon the claims in this state that we must determine not only what the claim language means, but what is new versus what is known.

        But does not 35 USC § 102(b) actually require that claims both particularly point out and distinctly claim the invention?

        Now one might object that the use of functional language has been authorized by Congress and that the construction of the functional language covers the corresponding structure, materials and acts, etc. but until Donaldson, nobody considered § 112(f) as overruling the requirements of § 112(b). Prior to Donaldson, the novelty of the claim could not be expressed in the functional language of a the means-plus-function clause because the claim itself would not describe the novel structure, etc. One could not determine from the claim itself what it covered. Rather means-plus-function were reserved for old and well-known structures so that one reading the means-plus-function clause would know exactly what kind structure was covered.

        I think it is about time that the patent office challenged the Federal Circuit on Donaldson and called for an en banc reversal, or took the matter up to the Supreme Court.

        Practitioner should be aware that a reversal might be in order down the road so dated the craft claims where the novel structure being claimed is set forth in at least some dependent claims.

        1. 16.1.2.1

          Your view on this matter remains most odd, Ned.

          I really think that you still have not learned your lesson from when you paired with the gentlemen that also promoted the incorrect view that resulted in the scourge of Benson.

    2. 16.2

      I’m not even sure what you two are talking about. But I do think that Sotomayor is using the term “elements” differently than “limitations”, because of the specifics of the case and the law under discussion, whereas most patent attorneys use the terms as being interchangeable in everyday parlance.

      1. 16.2.1

        How do you know how many elements are in claim, 6? If you and I look at a claim, are you 100% sure that we’ll come up with the same number?

        1. 16.2.1.1

          No I don’t. That’s why the term is imprecise and often people use it interchangeably. But in this context I think they’re talking about major “elements” that are all different physical things probably.

    3. 16.3

      Mike, at least she is asking the right questions. Frankly, the statute seems clear that the claim must particularly point out the invention, but of course, we all know, with combination claiming, they do not.

      1. 16.3.1

        Again, most odd Ned – and most incorrect to state that what Congress permits through the Act of 1952 is somehow not in accord with the statute.

  2. 15

    Professor Crouch,

    I was wondering whether it would turn to the jury to determine what substantially portion means… but should it? It seems like a question of statutory intent to me.

    1. 15.1

      J,

      How do you feel about the (possible) parallel to Copyright law as to the meaning of “substantial”…?

      (Most definitely NOT a pure quantitative meaning)

      1. 15.1.1

        Yeah, not really relevant in my view. Same word across different titles shouldn’t per se be interpreted the same.

        My view of the case is that 271(f)(1) was specifically to modify parts of Deepsouth. However, Congress didn’t not adopt the language of 271(c). 271(f) is narrower.

        The language “where such components are uncombined in whole or in part,” suggests some quantitative meaning.

        1. 15.1.1.2

          Actually, that language seems to dismiss the quantative view (being rather inclusive of all combinations – you only have the options of “uncombined in whole” and “unconvinced in part.” How else are you going to have something “unconvinced”…? Down to the protons, neutrons, and electrons…?

          😉

      2. 15.1.2

        I’ll also add that a quantitative analysis is problematic, much like the same way the all elements rule is problematic. Exactly how many components are there? For example, in this case, the Taq polymerase is not the common polymerase, and may have no other commercial uses other than to induce infringement.

        Finally, let me add that 271(f) is not really about foreign use of the patent. Competitors of patentees were basically competing against the patent owner overseas FROM the United States.

        1. 15.1.2.1

          The additional post by you here (as well as the patent notion of “comprising”) also speaks as to why the Copyright view of “substantial” needs to be evaluated in the patent sphere.

  3. 14

    My guess, with the current Court – is a whittling away of the statute that specifically reversed the holding in DeepSouth – This is a very anti-patent, anti-property Court. Waxman is getting a good feel for the IP bent of this Court, my guess vacate and remand for specific findings.

    1. 14.1

      My guess, with the current Court – is a whittling away of the statute that specifically reversed the holding in DeepSouth

      DeepSouth had nothing to do with shipping single commodity items out of the country. Congress never intended such an act to create infringement liability. That’s why they wrote 271(f)(2).

      1. 14.1.1

        And yet, neither the court nor the parties are talking about that different section of law…

        Why are they not doing so?

        😉

  4. 13

    US company makes a staple commodity and sells it around the world. Jobs! Yay!

    Patent maximalist proposes a bizarre interpretation of US patent law such that a foreign company can’t buy the staple commodity and have it shipped to itself to be combined overseas where there is no US patent. US company loses its foreign customers and is forced to close. Bye bye jobs!

    But great work for patent tr0lls. See how it works, folks? This is the world that the patent maximalists want us to live in. And, yes, they are mostly Republicans. And yes they think they are being persecuted. And yes they voted for Trump.

    But it’s so … uncivil … to bring these facts up.

    1. 13.1

      Except for the fact that you are blaming the wrong people Malcolm, you would almost have a basis for your feelings.

      As it is, you should be mad at the Supreme Court for creating a loophole that Congress closed with the law as they have written it.

      Getting mad at people on this board whose only fault is portraying the law accurately is more than a bit asinine.

      1. 13.1.1

        you should be mad at the Supreme Court for creating a loophole that Congress closed

        Sure, that makes a whole ton of sense.

        1. 13.1.1.1

          It does – and you would understand that if you were to ever find a way to deal with the cognitive dissonance from your l0ath1ng of patents.

          1. 13.1.1.1.1

            I don’t loathe patents. I believe patents are useful tools for promoting progress. But that assumes a system that isn’t run by (and for benefit of) the most short-sighted and greedy att0rneys who ever walked the earth.

              1. 13.1.1.1.1.2.1

                Which Bar, what particular influence and for what particular ends, and over whom exactly, Ned?

                1. That is about Google and lobbying (and definitely in line with what Night Writer posts)

                  There is nothing there about the Bar.

    2. 13.2

      As to the rest of your rant, NO – none or that is even close to being pertinent to patent law.

      Do you need to be reminded again that this is supposed to be a patent law blog?

      1. 13.2.1

        none or that is even close to being pertinent to patent law.

        Rest assured, “anon”, the ridiculousness and mind-numbing hypocricy of you and your patent maximalist c0h0rts is always pertinent to patent law.

        Until you disappear. I won’t hold my breath waiting for that to happen. There’s never been a shortage of wealthy entitled whiners, after all, and there’s never been a shortage of lawyers willing to service them.

        1. 13.2.1.2

          You injecting your off-patent political feelings is simply not pertinent to patent law.

          No matter how “special” you may feel that your feelings are.

          Try to remember that this is not a gen eral law blog, but a patent law blog.

    3. 13.3

      MM, I can tell you for a fact that the Republican Party historically supported free trade. When Bush imposed tariffs on imported steel to save jobs early in his presidency, he was heavily criticized by his own party, not by the Democrats, who praised his decision.

      Trump clearly was an outsider, a Democrat, who decided to run as a Republican. He won, then won again. It remains to be seen if the Republicans change their views on trade. I noted that Schumer has welcomed Trump’s message and has said that it was the traditional Democratic Party message.

      Time will tell how this all shakes out.

      1. 13.3.1

        “MM, I can tell you for a fact that the Republican Party historically supported free trade. ”

        That is true Ned, because throughout the 80’s all the economists thought it would bring everlasting prosperity to the everywheres (no matter the differences in working conditions, regulations, wages etc.). Indeed, many still do. This just shows that the pointy hatted economists aren’t always the most genioos.

        “It remains to be seen if the Republicans change their views on trade.”

        I think they’ve always been willing to “change their views” on trade, but they’ve historically focused their efforts on trying to bring down the regulations and taxes so that Mericans can compete without having to screw over the benes (and make no mistake there are benes from free trade) from free trade.

        1. 13.3.1.1

          Yeah, MM. The its all about the use of government to rig the system that the few can make a lot of money so that they can contribute to (read bribe) those in power who rig the system.

          1. 13.3.1.1.1

            Indeed prominent right wing person Newt just now was on my news talking about a republican plan for some sort of a tax system implemented “tarriff” where you pay more taxes on things you (I guess the importing company) bring in from out of the country and less taxes on things that are made here. So it’s sort of a tariff and sort of not a tariff and instead a tax adjustment.

            So I do think they’re willing to change their stance on the issue.

    4. 13.4

      “the patent maximalists … are mostly Republicans… voted for Trump.”

      I wonder where you get this notion. Most of the trolls (er, `scuze me, “NPEs”) I’ve dealt with have been fairly prototypical plaintiff’s bar types.

      Standard issue Secretary Clinton voters, in other words.

      So to the extent the patent maximalists are or can be associated with NPEs suing/threatening to on junk patents, they don’t seem too familiar with many Trump voters.

      Who in the House has been pushing the anti-NPE bills, despite the rhetoric of them having “STRONG bipartisan support”?

      Of course, none of the above matters if by patent maximalist you don’t mean those associated with the NPEs suing on junky patents.

      1. 13.4.1

        “the patent maximalists … are mostly Republicans… voted for Trump.”

        I wonder where you get this notion.

        Well, first there’s the absolute and consistent reliance on b.s. and the habitual labeling of critics as commies, leftists, socialists, “Unamerican”, etc. Then of course there’s the transparently hypocritical and ridiculous attempts to equate patent maximalization with “freedom.” Then there’s the endless stream of patent attorneys popping up here who gleefully recite whatever myth the rightwing fever swamp is peddling that week. And of course the denial. Always the denial.

        Most of the trolls (er, `scuze me, “NPEs”) I’ve dealt with have been fairly prototypical plaintiff’s bar types

        That’s nice. Common sense would tell everyone that you needn’t look much further than the location in which most trolls are concentrated to figure out where their politics lies. IP Watchdog — the Internet’s most popular bastion of unhinged patent maximalism — is crawling with rightwingers and it’s run by one. Is East Texas a bastion of liberalism? Not the last time I checked.

        Who in the House has been pushing the anti-NPE bills

        Just because most Republican voters aren’t patent tr0lls and don’t like them doesn’t mean that most patent tr0lls and their ap0logists aren’t Republican. C’mon, man. Please try harder.

        Who in the house is one of the biggest critics of the AIA? Dana Rohrabacher. He’s about as rightwing as you can get.

        There really isn’t any serious debate about this and there never has been. The only question is whether it’s worth bringing up. And the answer is that it’s worth bringing up because of the patent maximalists reliance on the myth of “helping little guys.” The patent maximalists don’t give a cr@p about “little guys” in a meaningful sense of the term “little guys.” What they care about is preserving a way of life — their own — that’s mostly similar to that enjoyed by leeches and other parasites.

        1. 13.4.1.2

          Seems an awful lot of pixels expended to communicate, “I got my own anecdotes to counter your anectodes”.

          As someone here admonished someone else, Please try harder?

          1. 13.4.1.2.1

            Seems an awful lot of pixels expended to communicate, “I got my own anecdotes to counter your anectodes”.

            Quite a bit more than that was communicated. I didn’t “counter your anecdotes”. I showed you that your conjecture was based on cr@p assumptions.

            Again: this isn’t a controversial proposition I’m making, nor should it be. A major ideological plank of the Republican Party is the private ownership of everything. Why would that not include the private ownership of information and abstract ideas? If our maniac elect had his way, he’d be building a casino right next to Yosemite Falls tomorrow.

            1. 13.4.1.2.1.1

              And yet again your rant runs off the rails.

              “O n0es” – something out of the “commons,” that does not belong to the commune….

              Please get into a career that matches your feelings and does not cause such obvious cognitive dissonance.

      2. 13.4.2

        Where does he get it?

        Anyone that does not believe (or feel) as he does is lumped into one bucket.

        It really does not matter that there are a multitude of different views each of which will not agree with Malcolm’s feelings, anything not aligned with Malcolm is “they.”

        And yes, that is a bit of the tinfoil hat variety of thinking. But that’s how he rolls. He has a script and if it is not in the script, “they” must all have that item.

        1. 13.4.2.1

          Anyone that does not believe (or feel) as he does is lumped into one bucket.

          No. I recognize that there are, e.g., software patent luvvers who aren’t Republicans.

          This is a statistical reality I’m talking about.

          1. 13.4.2.1.1

            Except your memes don’t bear out your asssertion here as you are far too sloppy in your comments off of your tires and trite script.

    5. 13.5

      MM comes in with his “anti-republican” (dog whistle for anti-whyte mail) “anti-troll” (dog whistle for upper class, generally whyte mail) and everyone in the thread actually thinks MM gives two shts about what party people are affiliated with, or anything other than the dread whyte mail/his muh victims and his classism. And then ironically MM doesn’t understand that his (and his buddy’s) classism is precisely why people call him comrade even though he himself is upper class.

      Spoiler alert, you guys are attacking his positions on straw issues/subjects. Look below the surface of what he’s talking about.

      The guy is literally just indoctrinated in leftiness, nothing about what he’s talking about has anything to do with his “patent positions”, just as he’s said, he isn’t “anti-patent”, he’s anti-whyte mail and anti-Bourgeoisie. That just bleeds into the patent realm a bit on the edges.

      This is why he’s the most rabid “anti patent”, as some people call it, person on your interbuts.

      1. 13.5.1

        Look below the surface of what he’s talking about.

        That’s why I point out that his rants have nothing to do with patent law.

        That’s why I suggested that Prof. Crouch change the byline to this blog (or move Malcolm’s rants to a different section so that patent law could be discussed).

        1. 13.5.1.1

          “That’s why I point out that his rants have nothing to do with patent law.”

          Well he does at least bring them around tangentially to patent lawl anon.

            1. 13.5.1.1.1.1

              You’re right that it is largely based on his feelings, like all modern lefty thought is. But I would say that this is “how his feelings pertain to the area of patent lawl”.

              1. 13.5.1.1.1.1.1

                His “feelings pertaining to” MISS the actual patent law.

                And that is why his perpetual reliance on the table pounding of “muh feelings” instead of pounding the law or pounding the facts is such a blight.

              2. 13.5.1.1.1.1.2

                Well I mean anon bro he’s entitled to his own opinion, just like you state your “illegal” opinions on occasion. Just like with the title 9 debacle where the administration magically came up with their own opinion based on their feels and missed the actual lawl. Just like the judiciary did in Roe most likely. Just like the judiciary did in the recent anti-DOMA case. Just like the judiciary does quite often.

                1. he’s entitled to his own opinion

                  No one is saying that he is not entitled to his opinion.

                  I am saying he pounds his opinion (feelings/philosophy) instead of pounding law or pounding facts.

                  You seem to be thinking that each of these are perfectly exchangeable with each other, and that such thinking remains absolutely in error.

                2. “I am saying he pounds his opinion (feelings/philosophy) instead of pounding law or pounding facts.”

                  Yes I know that’s what you’re saying, and I’m saying that such is ok by me.

                  “You seem to be thinking that each of these are perfectly exchangeable with each other, and that such thinking remains absolutely in error.”

                  I’m not even sure what you’re saying above.

      2. 13.5.2

        The guy is literally just indoctrinated in leftiness,

        LOL

        Because you can’t arrive at “liberal” views about the human condition without being “indoctrinated.”

        Totally different from the w-ngnuts, of course! They operate on instinct or something.

          1. 13.5.2.1.1

            …and what is particularly funny (in the sad and demented way), is that you are the Trump of the left with your antics and “swagger” here making you the person most reflective of Trump’s “swagger.”

        1. 13.5.2.2

          I had written up a big huge response to you MM, but it got caught in the filter. However, in the mean time I had seen a few things on my interbuts and I decided that I was likely too harsh on you in that comment anyway.

          “Because you can’t arrive at “liberal” views about the human condition without being “indoctrinated.””

          Your “views” aren’t “liberal” at all brosefulous. Lefties jettisoned “liberal” views when they won one a lot of classical liberal issues and “liberal views” weren’t doing enough for their “muh victims”. And you jettisoned your “liberal views” along with the majority of lefties around today. This is what some are calling “the new left”, you’re not “liberal” anymore, and neither are your views, by any stretch of the imagination. Though you do still support most of the old school liberal policies and some policies that can be somewhat considered “liberal”. This was accomplished for the modern left through slow indoctrination in the “new left” thinking. I could go on at length about the recent and past history of your own “party” and “ideology” of “liberalism” if you’d like so that you might learn a bit about what you missed out on and can consider explicitly what’s been going on without you taking conscious notice thereof.

          And whether or not you could, theoretically, come to “liberal” views “by yourself” without huge heaping helpings of narrative served up to you by your media, family and friends, I will not say as I have no data on that. But in fact we do know that the vast majority of modern lefties came to what they think of as being “liberal” views as a result of their media, fam, friends etc. and an entire lifetime of indoctrination thereby.

          “Totally different from the w-ngnuts, of course! They operate on instinct or something.”

          Nobody said that right wing people are “less indoctrinated” than left wingers are. Indeed, they are likewise quite indoctrinated. We all are. That doesn’t excuse your not taking the time out of your day to take a step back, learn about what it is that you’re being indoctinated in, who is doing that indoctrination, why, and what their goal actually is for having gone through the trouble to indoctrinate you. And then consider whether or not you’re really on board with those folk’s plans to indoctrinate you. You may want to take some time out of your day a few days out of your lifetime to make inquiry into those things MM. You may not like your “muh victim” ideology quite so much when you do that, even if you are hugely pro-“muh victim”.

          To be clear, I’m not “against you” for being indoctrinated. I’m against your being unwittingly indoctrinated. And then as a result getting on here telling us all about how this and that patent owner is just the worst, while carefully not even mentioning that the whole point to your comment is “muh classism”, “muh ideology” or “muh victims”. You could just post those words instead of droning on and on essentially trolling people into responding to your posts on patent lawl, then everyone can just understand what your issue really is, and discuss that issue with you if they so choose instead of having fruitless non-stop never ending discussions about stuff that isn’t even your actual focus.

          Also MM, I wonder if you could help me out here. You’re big into the “muh victim” lefty ideology, we both know you are, but how do you square that up with being in pharma? Isn’t even your branch of pharma like one of the “worst offenders” of “fleecing muh victims/poors”? I mean, just objectively. Do you just see yourself as helping your muh poors through the job you do (even at outsized rates)?

          1. 13.5.2.2.1

            Hence the massive cognitive dissonance that drives Malcolm’s over the top anti-patent, anti-attorney screeds.

  5. 12

    Duffy opines on the arguments over at SCOTUSblog:

    link to scotusblog.com

    Waxman went out of his way during argument to assert that the Taq polymerase supplied as a component in this case was “very particular Taq polymerase … not your Amazon.com Taq that’s now available.”

    Two thoughts on that. First, Life Technologies described Taq polymerase as a commodity in their question presented and throughout their opening brief. If the Taq polymerase needed for the patented invention were truly “very particular,” then Promega should have made that point somewhere in its brief, rather than waiting until oral argument. Second, even if this invention requires better than “your Amazon.com Taq that’s now available,” that point does not help Promega if the higher-quality Taq is also a commodity. Some cars need high-octane gas to run properly, but both regular and high-octane gas are commodities.

    Remember folks: you read this here first, within an hour of the transcript being posted. Good work by Duffy to point this dust-kicking out to the readers at SCOTUSblog.

  6. 11

    Speaking of oral arguments, the ineligible junk asserted in PERSONALIZED MEDIA v. AMAZON.COM INC. was tanked via Rule 36, two days after the oral argument, as predicted. Write up here: link to patentlyo.com

    I expect the Rule 36 decision in Voxathon to follow shortly.

  7. 10

    Just as a refresher, here are the claims at issue:

    35. A kit for performing analysis of polymorphism in simple or cryptically simple sequences, comprising:

    a) at least one vessel containing a mixture of primers constituting 1 to 50 primer parts; wherein each of said primer pairs is composed of a first primer complementary to a nucleotide sequence flanking said simple or cryptically simple DNA sequence on the 5′ side of said simple or cryptically simple DNA sequence and a second primer complementary to a nucleotide sequence flanking the simple or cryptically simple DNA sequence on the 3′ side of said simple or cryptically simple DNA sequence; wherein said first and second primers each anneal to a single site in said DNA template and wherein the annealing sites are separated by 50 to 500 nucleotides of template DNA;

    b) a vessel containing a template DNA that has a nucleotide sequence including a simple or cryptically simple sequence for assaying positive performance of the method.

    Oh but wait! That’s s different claim from the same patent. Notice what’s missing? It’s that s00per d00per special modified Taq polymerase that Seth Waxman was carrying on about in oral argument that was deemed so critical to making a “commercially salable product.” How shocking to see it absent from the claims. Here’s the claim at issue:

    42. A kit for analyzing polymorphism in at least one locus in an DNA sample, comprising:

    a) at least one vessel containing a mixture of primers constituting between 1 and 50 of said primer pairs;

    b) a vessel containing a polymerizing enzyme suitable for performing a primer-directed polymerase chain reaction;

    c) a vessel containing the deoxynucleotide triphosphates adenosine, guanine, cytosine and thymidine;

    d) a vessel containing a buffer solution for performing a polymerase chain reaction;

    e) a vessel containing a template DNA comprising i) a simple or cryptically simple nucleotide sequence having a repeat motif length of 3 to 10 nucleotides and ii) nucleotide sequences flanking said simple or cryptically simple nucleotide sequence that are effective for annealing at least one pair of said primers, for assaying positive performance of the method.

    That’s about a generic a description of a Taq polymerase as you can possibly get.

    Just in case anybody has taken their eye off the ball here, Promega is arguing that anybody who ships any one of the commodity components recited above overseas is potentially liable for patent infringement if the components end up — in another country, not the US! — in a kit that falls within the scope of this claim. They have no evidence at all that Congress intended this bizarre result. All they have is dust and Waxman gleefully kicked into everybody’s face yesterday. Gross.

    1. 10.1

      Key words: “potentially liable”

      And yes, that is what the plain words of Congress are.

      As to “intent,” Just in case anybody has taken their eye off the ball here, these words of Congress were a direct result of the Supreme Court opening up a loophole for infringers.

      1. 10.1.1

        Key words: “potentially liable”

        Oh, that changes everything! Just relax, everyone. Nothing to see here.

        LOL

        1. 10.1.1.1

          You rather miss the point Malcolm.

          As I have put to you previously, what else has to happen to find actual liability?

          Maybe you can pause in your own dust-kicking and “0h-n0es” and see the complete picture of what Congress wrote – and remember why Congress wrote it).

          1. 10.1.1.1.1

            what else has to happen to find actual liability?

            Go ahead and tell everyone the minimum that “has to happen”, “anon.”

            C’mon, “anon.” You’re a very serious person! Just spit it out. Use your amazing command of the English language. Surprise everybody. You’re the expert on this statute, after all. So go ahead. Let’s see what you got. We’re all waiting to be impressed.

            Or you can just soil yourself as usual.

            1. 10.1.1.1.1.1

              We’re all waiting to be impressed.

              Let’s be even more impressed and have you first recognize the validity of what I post at 10.1.1.1.

              Of course for that to happen you would have to be inte11ectually honest and admit that you are just kicking up a lot of dust because your feelings don’t match what the law as written by Congress actually says.

              (the “soiled yourself” is quite obviously just more of your own number one meme)

              1. 10.1.1.1.1.1.1

                you first recognize the validity of what I post

                And so “anon”, the biggest most sensitive crybaby in the history of patent law, fills his massive diaper again. You’re very special, “anon”! We should never expect anything from you because we are all sooooooo inferi0r. Bow down everybody! The pacifier has fallen from “anon”s lips just long enough for him to issue another scolding. So impressive!

              2. 10.1.1.1.1.1.2

                What seems to not be penetrating your incredibly thick skull, “anon”, is that “your point” about “inducement” was already recognized. It’s just that — as usual — it’s a rather silly “point” for all the reasons that 99% of your “points” are very silly. Mainly it’s silly because you offer it up in the form of innuendo without any substance.

                And then when you’re asked for the substance, you fill your diaper and slink away under your rock, spewing insults. It’s one of your major malfunctions, but far from the only one.

                The bottom line here is that you’re going to be a b0atload of crow here — again — and your reaction to that is that you whine about “the scoreboard being br0ken” or some other such nonsense. Nobody here is as wrong about so much, so often, as you. Nobody. That’s your legacy. Own it.

                1. It is dulicitous to try to have – at the same time – the notion that my point has been recognized and that there is no substance.

                  How do you recognize a substantial legal point if you call that substantial legal point something of no substance?

                  Point in fact, here you do NOT recognize the point and you attempt to merely use ad hominem to avoid dealing with the substantive legal point that what you rant about just is not all that is necessary to go from a “potential” to actual liability.

                2. avoid dealing with

                  Again: tell everyone the minimum acts that “have to happen” to find “actual liability.”

                  This is hugely important point for you! You insist on this point being recognized! Now show everyone why it’s sooooo important. Just answer the question. It’s a simple question with a simple answer, right? Simple for you, anyway, right? Because you’re the expert.

                  So go ahead. The floor is all yours. Just answer the question and stop soiling yourself with self-pity.

                3. No self pity and the onus is still on you.

                  Another little “trick” of yours is to always (and I do mean always) try to slough off substantive items onto everyone else.

  8. 9

    Just curious, do any readers think there’s more than a scintilla of a chance the CAFC will be upheld?

    1. 9.1

      The deeply serious statutory construction expert “anon” found his true love in Judge Chen on the day this decision was released. He hasn’t let up with his usual “I’m-not-saying-anything-but-you’re-wrong-because-you-aren’t-giving-me-enough-love” gameplaying since.

          1. 9.1.1.1.1

            Be my guest and make a cogent statement – use those short declarative sentences that you are always on about.

  9. 8

    I think the substantial portion must include the articles that together embody the novel subject matter of the patent such that the sale would exhaust the patent.

    If one element embodies the novel subject matter, then its sale could violate both 271(f)(1) and (2).

    I think it irrelevant that the novel element or elements are off-patent outside the US. The question is whether their sale in the US would be an infringement.

    In this case, I am not sure the sale of Taq Polymerase for use with the other elements would infringe either as inducement or contributory infringement. The evidence suggests that Taq is a staple.

    Waxman argued,

    “Second of all, Taq polymerase, notwithstanding my friend’s reference to what he found on the Internet, the testimony at trial is that the Taq polymerase that is necessary to make these STR kits sufficiently reliable to be commercially salable was -and there was testimony about this at trial –was a form of very particular Taq polymerase made by Roche called AmpliGold Plus, which is a particular form, and was required, and the testimony at trial was, was manufactured by Roche, Promega, and Life only in the United States. This is not your Amazon.com Taq that’s now available.”

    But this does not go to whether of this form of Taq contained the patented novelty where others did not.

    I think LifeTech gets a reversal, but also gets a remand to determine whether this Taq is substantial from the novelty point of view.

    1. 8.1

      Your attempts at tying in exhaustion beg a different question Ned.

      I am a little surprised that you of all people have not chimed into the discussion concerning the fact that exhaustion is at its foundation dealing with the property aspect of patents. As you may well ponder your denial of cert, and what that may mean as to patents being public rights instead of property, you might want to chime in on what that would portend for those doctrines (such as exhaustion) that are tied to patents as property at their foundation.

      1. 8.1.1

        what that would portend for those doctrines (such as exhaustion) that are tied to patents as property at their foundation.

        Spit it out, “anon.” What does it “portend” and why?

        Try to remember that while patent rights are public rights, patent claims may “read on” items that are, in fact, actual personal property.

        1. 8.1.1.1

          I have made clear (already) my views Malcolm. Maybe you should attempt the same…

          (Of course, I mean by doing so with inte11ectual honesty)

          1. 8.1.1.1.1

            I have made clear (already) my views

            No, you haven’t made anything clear. You just spewed some meaningless innuendo.

            Tell everyone what’s “portended” by this old news that just reached your ears, apparently, and why. Go ahead. You seem really concerned about it. So let’s hear it. It’s really deep and nuanced, right? Share it with everyone.

            1. 8.1.1.1.1.1

              Try to read to understand instead of trying to read to just use your short script of ad hominem.

                1. lol – your reply above fits that which you accuse me of here.

                  Your number one meme in action yet again.

        2. 8.1.1.2

          spit it out

          Like the last time you wanted me to do that while you wallowed in your pretending that the president elect somehow won’t have a majority in Congress…?

          You are doing my that accusing others thing again.

          I know – shockers, right?

          (Holding up the (S)arcsm sign)…

          1. 8.1.1.2.1

            your pretending that the president elect somehow won’t have a majority in Congress…

            LOL. Wut?

            1. 8.1.1.2.1.1

              Yup – exactly my point.

              You really should try something else – this isn’t working for you.

              1. 8.1.1.2.1.1.1

                You didn’t make a “point”, “anon.” You just spewed out a l i e. I’m not “pretending” anything.

                1. What did I say that you were “pretending,” and what does that have to do with the president elect and having a majority in Congress?

                2. You made a vapid statement and I asked you to be particular – and you then accuse me of tr011ing…

                  Your number one meme is getting quite the workout today.

    2. 8.2

      Waxman: the testimony at trial is that the Taq polymerase that is necessary to make these STR kits sufficiently reliable to be commercially salable was -and there was testimony about this at trial –was a form of very particular Taq polymerase made by Roche called AmpliGold Plus, which is a particular form, and was required

      This is an utterly irrelevant sideshow and beside the point. Even if we assume Waxman’s facts, AmpliGold Plus was still a commodity item that anybody could purchase. LifeTech purchased it. And it has — and had — a zillion substantial non-infringing uses.

      “Sufficiently reliable to be commercially salable.” <— where did Waxman dig this language up? I guarantee you it's not in Promega's patent.

      1. 8.2.1

        MM, you might be right, and I think you are. Still, I suggest there will likely be a remand not a straight reversal to consider whether the novelty of the combination requires this Taq.

        1. 8.2.1.1

          whether the novelty of the combination requires this Taq.

          Easy question to answer, Ned.

          There are parallel kit claims that don’t recite any polymerase at all. So much for that argument.

          And the claim at issue here? It recites only ” a polymerizing enzyme suitable for performing a primer-directed polymerase chain reaction.” Any Taq polymerase can do that. Yes, including the ones you buy on Amazon. You live by functional language, you die by functional language.

          Waxman needs to take a shower. This was an appalling oral argument.

          1. 8.2.1.1.1

            Different claim…?

            Talk about kicking up dust.

            You do realize that claims only rise and fall together if so stipulated (and that’s evidently not the case here), eh?

            1. 8.2.1.1.1.1

              You do realize that claims only rise and fall together if so stipulated

              LOL What on earth does this have to do with anything?

                1. I didn’t “move any goalposts”, you habitually dissembling and very silly b0y.

                  I used facts to demonstrate that Waxman is completely full of shxt.

                  You should try it sometime. Hint: you don’t get to make up imaginary facts. Good luck, “anon”! You’ll need it.

                2. Hint: you don’t get to make up imaginary facts.

                  Like presenting sections of law not on the table in the case at hand?

                  Like that?

                  What a putz.

          2. 8.2.1.1.2

            MM, thanks for this.

            So what do we learn about Waxman from this case? He takes on any client for the right price?

            1. 8.2.1.1.2.2

              what do we learn about Waxman from this case?

              He’ll kick up irrelevant dust into the Supreme Court’s faces in exchange for money.

              Now, “anon” will sit here and try to tell everyone “That’s what lawyers do!”

              But “anon” is projecting his own ethical shortcomings onto the entire profession. And he’s been doing that for years. And he’ll keep doing it because that’s the kind of “lawyer” that “anon” is. He’s the kind of lawyer that makes people h@te lawyers.

              1. 8.2.1.1.2.2.1

                But “anon” is projecting his own ethical shortcomings onto the entire profession. And he’s been doing that for years.

                It’s literally never ending: AccuseOthersOfThatWhichMalcolmDoes.

                He’s the kind of lawyer that makes people h@te lawyers

                The question Malcolm, is why you just do not go into a profession in which you can believe in the work product produced.

            2. 8.2.1.1.2.3

              Even David Boise had to pull the plug with Theranos. There does come a point for most of us, usually when we have to sleep at night.

    3. 8.3

      Ned,

      Your “I think the substantial portion must include the articles that together embody the novel subject matter of the patent such that the sale would exhaust the patent.

      reverts to the state before Congress expressly rebuked the Supreme Court and that’s Court’s loophole creating decision with this very section of law.

      As such, I would think he he what you think has to be off the table.

      1. 8.4.2

        For someone who was so gung-ho about the property aspect of patents, Ned sure is quiet when it comes to other patent doctrines that are also based on the property aspect of patents.

    4. 8.5

      I think the substantial portion must include the articles that together embody the novel subject matter of the patent such that the sale would exhaust the patent.

      That test has the advantage of being relatively easy to understand and comparatively simply to apply, but I am afraid that I cannot believe that this is the correct test.

      (1) Where in the statute are you getting this “point of novelty” approach to defining “substantial”?

      (2) Think of Deepsouth. The components being exported were gears and springs and blades and such. The novelty did not inhere in the components, but in the structure once assembled. In other words, you are contriving a test that mean that Deepsouth would be decided exactly the same way after the addition of paragraph (f) as it was before the addition of (f). Given that Congress added paragraph (f) to reverse Deepsouth, it seems strange to propose a test that reads (f) as preserving the Deepsouth outcome.

      1. 8.5.1

        Greg, do not confuse “novel subject matter of the patent” with “point of novelty.” The novel subject matter can be, and often is, multiple elements that together cooperate in a novel fashion. PON, as I have often said, is peculiar to claims where only one element is new, and it is claimed functionally or as a result, such that the new structure, materials or acts are not set forth in the claim, but in the specification.

        Exhaustion, as recognized in both Univis Lens and Quanta, requires that the novel subject matter be embodied in what is sold. That recognizes that a claim can include elements and subject matter completely old and commonplace, and are there to provide background and clarity.

        1. 8.5.1.1

          The novel subject matter can be, and often is, multiple elements that together cooperate in a novel fashion.

          Ok, but at the time that Deepsouth’s kits left the U.S. port, they were just boxes of parts. None of the parts were novel. It was only the assembled machine (the arrangement of those old parts) that was novel (and therefore patentable).

          This brings me back to the earlier point that if we were to use the test you propose, we would end up with Deepsouth escaping liability even under the 271(f)(1) analysis. It seems strange to compose a test for infringement under 271(f)(1) that leads to an outcome where Deepsouth still wins.

          1. 8.5.1.1.1

            Greg, where the invention is the arrangement of old parts, the shipment of nearly all the parts should be required.

            But where less than that is shipped, but what is ship embodies the novel subject matter, well there still might be infringement.

            1. 8.5.1.1.1.1

              His point still sails way over your head, Ned.

              Congress reacted against the Court – you have a serious problem with recognizing what this means (see your animus against the Act of 1952).

            2. 8.5.1.1.1.2

              Ned, I gather from your response that we agree about outcomes. To the extent that we disagree (maybe we do not, really), I gather that it is only about the reason for the outcome. I agree that “where less… is shipped,… there still might be infringement.” It seems to me, however, that this is because of (f)(2). Paragraph (f)(2) requires that the infringing article be “not a staple article or commodity,” and this language lends itself very well to your assertion that the article must embody the novel features of the invention.

              When we are talking about (f)(1), however, then there is no requirement of “not a staple… .” Instead (f)(1) requires that the infringing article constitute “a substantial portion” of the claimed invention. I do not see any sense in interpreting “substantial” (the part of (f)(1) that is at stake in this case) to mean “embodying the novel features.” If Congress meant “embodying novel features,” why would they write “substantial”? When I see the word “substantial” I think “big” or “major,” not “novel.”

              I am totally on board, however, with your (implicit) suggestion in 8.5.1.1.1 that “substantial” should mean “nearly all.” In other words, (f)(1) is really there to capture the situation where the novelty inheres in the assembled arrangement of old parts, not the situation where the novelty inheres in just one or a few parts (the latter would be the domain of (f)(2)).

              Of course, to say that “substantial” means “nearly all” does not really answer the question in this case. It merely moves the question over one step. What does “nearly” of “nearly all” mean? As noted above, I consider that one has shipped “nearly all” the part of the claimed invention when the missing parts require only a trivial effort to obtain or assemble. As I suggested above, if Deepsouth shipped all of Laitram’s machine, except for ten screws, that would be “nearly” all of the parts of the machine, because those ten screws would take only a trivial extra effort to acquire.

              Here, Life Tech has omitted the oligos. Those oligos will not require months to acquire, but they will not take only minutes either. Back when I worked in the lab, we had a one day turn around on rush-order custom oligos, and a three day turn around on non-rush orders. A full day strikes me as a long enough time and a great enough effort that I cannot say that Life Tech shipped “nearly all” of the components of Promega’s kits, so I think that the CAFC should be reversed here.

    5. 8.6

      For whatever little my opinion on this is worth, I believe three beliefs about what the test should be (in other words, these are not predictions of what the SCotUS will hold, but merely an expression of what it should hold):

      (1) “Substantial” should not be defined based on the number of components, but rather based on the monetary value of the components, mostly because monetary value is usually a good proxy for human effort required. In other words, if a machine has 100 parts, but five of those parts are each worth $20 and the remaining 95 parts are all screws and staples and what-not, each worth ~20¢ apiece, then the shipment of the five valuable parts should qualify as a “substantial portion” of the components, even thought these five are only 5% of the number of components.

      (2) Any consideration of “staple” articles or commodities is a red-herring in this case. This case is about (f)(1). “Staple article or commodity” appears in (f)(2), not (f)(1). It is just dust-kicking to raise the issue of whether the Taq enzyme was a “staple” Taq or a “special” Taq in this case.

      (3) I think that Life Tech should win on appeal because “substantial” should mean “enough to function or almost function.” If I shipped Laitram’s shrimp de-veining machine, but left out 10 screws, that is a “substantial portion” of the machine components because you could go to the hardware store and buy the missing pieces and be on your way to assembling the machine in less than an hour. By contrast, if one had only the Life Tech Taq, without the probes, primers, buffers, etc in the Promega kits, it would take days of effort to assemble the missing pieces necessary for the claimed kits. In other words, it seems to me that what is “substantial” depends on the amount of human effort necessary to make up for the missing parts.

      I confess that I cannot contrive a number (much as I might like such a bright-line standard) below which is little enough but above which is too much still-needed human effort. Nevertheless, wherever the cut-off between little-enough and too-much might be, I feel certain that this case falls on the too-much-human-effort-needed side of the line.

      1. 8.6.1

        Greg: (2) Any consideration of “staple” articles or commodities is a red-herring in this case. This case is about (f)(1). “Staple article or commodity” appears in (f)(2), not (f)(1). It is just dust-kicking to raise the issue of whether the Taq enzyme was a “staple” Taq or a “special” Taq in this case

        Nope. You couldn’t be more wrong.

        Answer the question, Greg: do you interpret closely related sections of a statute in a vacuum? If 271(f)(1) applies to the shipping of a single staple commodity item, then what is the point of 271(f)(2)?

        Congress may not always excel at statute drafting but give them a little bit of credit here. They knew how to use the words “one or more”. Why would they use the term “all or a substantial portion of the [uncombined] components” if what they really meant was “at least one substantial component”?

        1. 8.6.1.1

          You forgot to mention here as well that portion is singular.

          If I take one piece of a pie, have I not taken a portion of that pie?

          The word substantial cannot be limited to a quantity sense (cf copyright law).

      2. 8.6.2

        Greg: By contrast, if one had only the Life Tech Taq, without the probes, primers, buffers, etc in the Promega kits, it would take days of effort to assemble the missing pieces necessary for the claimed kits.

        More like half an hour.

  10. 7

    As with all Federal Circuit patent cases before the Supreme Court, reversal is likely. However, I expect the reversal to be primarily a rejection of a hard-line interpretation of the Federal Circuit opinion. I do not expect the Supreme Court to impose a quantitative limit on “substantial”… .

    Of course there will be no quantitative definition of “substantial.” Such a bright-line test would bring clarity to patent law, and our SCotUS does not want the patent law to be clear.

    They will vacate and remand to the CAFC to come up with a new standard for “substantial” (just as they did with ‘exceptional’ in Octane or ‘reasonable certainty’ in Nautilus). Then they will wait for approximately 10 years, so that a certain measure of reliance interest can build up around the CAFC standard (just like in Myriad) before they knock it down and send everyone scrambling.

    This is just what they do.

    1. 7.1

      Of course there will be no quantitative definition of “substantial.” Such a bright-line test would bring clarity to patent law, and our SCotUS does not want the patent law to be clear.

      That’s not the reason for the lack of a “quantitative definition” of “substantial” in this case.

      For starters, the question presented was not “what is the quantitative definition of the term ‘substantial'”. The answer to that question was not even properly briefed by the parties.

      Secondly, if any term needs to be construed in the future, it’s not “substantial” but the term that actually appears in the statute, i.e., “all or a substantial portion of the components [of a claimed invention]”.

      Thirdly, resolution of this case doesn’t require the answering of those questions. This case presents a far simpler question.

      Lastly, it was the Federal Circuit (propelled by Promega’s greed) which created the uncertainty here. I’m not aware of anyone suggesting prior to this dispute that a single staple item of commerce could be captured under 271(f)(1) because “it did all the work in the combination.” I’m happy to be wrong about that but there is no disputing the fact that it was a minority view.

      How many US patent lawyers were out there advising their US clients not to ship single staple items of commerce overseas because of US patent liability? Answer: one. (<– I'm assuming that's you, Greg)

  11. 6

    For the record, here’s the complete text of 271(f)(1):

    (1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such componentS are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

    Note the plural on the uncombined componentS that are imported. It’s the plurality of the uncombined components that distinguishes facts falling within 271(f)(1) from those falling within 271(f)(2) (which deals with single components). Now remember the question that was presented to the Supremes:

    Issue: Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.

    This is about as straighforward a question as can possibly be addressed.

    If, in the future, some situation arises when a US patentee finds a company shipping 8 out of 10 off-patent staple components of an invention overseas with, e.g., instructions to combine them overseas to make patented combination X then the Supreme Court can dive in and address this “substantial portion” question. But they have no business doing so here. That’s not the question for which cert was granted.

    1. 6.1

      Note the previous aforementioned (and directly to you) and exactly on point statutory interpretation matter of singular and plural terms.

      Unless of course you have some ulterior motive for getting this black letter principle completely wrong.

      Again.

      1. 6.1.1

        Whatever you’re referring to, it gets you nowhere because the statute uses the plural when it refers to the shipping of uncombined componentS.

        Is there some statutory interpretation “doctrine” that says “ignore the plural when ‘anon’ says so”? I don’t recall that one but perhaps you can point us to the treatise.

        On the other hand, you probably could point us to the doctrine that says “Don’t interpret one part of a statute in such a manner that it nullifies another part of the same statute that immediately follows it.” But I bet you won’t bother doing that.

        1. 6.1.1.2

          There is no such nullification, as the different parts of the statute adddress different things (that’s why they are different parts of the statute).

        2. 6.1.1.3

          Whatever you’re referring to, it gets you nowhere

          It’s not “whatever” and it only gets YOU nowhere.

          You have had the cite for what seems like years now. Maybe it is about time you actually learn what that plural/singular statutory construction basic means.

          Try that and come back when you want to be inte11ectually honest about this topic.

          1. 6.1.1.3.1

            it only gets YOU nowhere.

            LOL

            Actually it got me to the Supreme Court and I’m still 100% sure that I win.

            You’re an incredibly silly person.

            1. 6.1.1.3.1.1

              It got “you” to the Supreme Court?

              Hardly at all.

              Funny then how this point is still salient:

              Your friends at PatentDocs already have a post on the Lifetech matter.

              I note that they have picked up on my lesson to you on the proper statutory construction of “singular/plural” as provided by the court:

              “Moreover, the Court pointed out that the Dictionary Act, at 1 U.S.C. § 1, instructs that “words importing the plural [can] include the singular.”

              Try pounding law, or even pounding facts instead of your usual pounding tables.

                1. In case you missed it – it was PatDocs reporting what the court stated.

                  Your comment then translates to the typical Malcolm bucketing of what Malcolm feels and everyone else.

                  “Go figure Folks”

  12. 5

    If you own a construction site and the bricks for the building are delivered Friday afternoon… and on Monday morning you arrive to discover that 10% of the bricks have been stolen, would you say that a substantial portion of your bricks are missing? I think you would.

    Without more, one cannot say that substantial means almost all.

    1. 5.1

      How about if you were 10,000 feet tall and your head was one foot tall and someone chopped off your head?

      Pretty substantial, right?

      All this is super deep and extremely important stuff to discuss but, sadly, of zero relevance to the question presented in this case about how to construe a patent statute.

      1. 5.1.1

        Actually your “chop off the head” offers a rather importent point to the statutory interpretation.

        It’s also the one that you don’t want.

        (but you will just go ahead and clench tight your eyes to that, as usual)

        1. 5.1.1.1

          your “chop off the head” offers a rather importent point to the statutory interpretation.

          Alfredo Garcia is rolling over in his grave.

    2. 5.2

      This is one of those oral arguments which makes me wonder if Clarence Thomas isn’t sitting there the whole time thinking, “Please just k-ll me now.”

      Maybe he’ll end up writing the opinion. Should be a two pager. Probably it’s already written.

  13. 4

    MR. WAXMAN: Let’s assume that you have a patented pharmaceutical, a tablet that, you know, remediates a disease. As is commonplace in these combinations, it has one active ingredient, and it has five inert ingredients that are as easy to pick up as you can imagine. The thing that is exported the factory overseas, which by the way is never liable under the statute because the statute only applies to conduct in the United States, they they’re happy to go down to their local warehouse and get the the five inert ingredients. But the molecule that does all the work, they import from the United States.

    DC: Under the approaches proposed by Lifetech and the US Gov’t, the exporter here would not be liable (perhaps rightly so).

    Of course it’s “rightly so” if the active ingredient is a staple item of commerce. That’s the exception built into 271(f). It’s right there in 271(f)(2). It says in the plainest possible language that I can ship, e.g., ibuprofen, out of the US for someone else to combine with inert ingredients into a tablet. It doesn’t matter one whit if the table formulation is patented in the US. It doesn’t matter at all for 271(f)(2) if the ibuprofen “does all the work”.* All that matters is that it’s a staple commodity without a substantial non-infringing use.

    271(f)(2): Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

    *once again, we see where the alleged commandment to read claims “as a whole” just isn’t as all-encompassing and meaningful as some would have us believe

      1. 4.1.1

        There you go again – mixing up which statute is under discussion…

        Because closely related sections of a statute should be read in a vacuum? In what treatise do you find that doctrine?

        1. 4.1.1.1

          The only “closely related” is your attempts to kick up dust while at the same time accusing others of that which you do.

          Of course, that is your number one meme, and has been for a decade now (no matter how may updates to the “terms of service” have come and gone.

          1. 4.1.1.1.1

            Where is your support for the view that closely related sections of a statute are to be read in a vacuum as if the other sections don’t exist?

            Tell everyone, “anon.” After all, you’re the expert on this topic. Right?

            1. 4.1.1.1.1.1

              Move the goal posts back please.

              The section that you want to interpose just is not on the table here.

              1. 4.1.1.1.1.1.1

                The section that you want to interpose

                I don’t want to “interpose” anything. Keep m0lesting your strawman if you like, “anon.” Your avoidance of a very simple question is in plain sight, and the reason for your avoidance is transparent to everyone.

                This is going to turn out badly for you.

                1. You are the one with the straw man – and yet again your reply employs your number one meme of accusing others of that which Malcolm does…

                  “Go figure Folks”

                2. News flash, “anon”: you are projecting so hard that it hurts to watch.

                  We can all see what you’re doing. We’re not all as dense as you. And I know this, too, will fly right over your dense skull.

                3. News flash, “anon”: you are projecting so hard that it hurts to watch.

                  Says the guy with the favorite meme of AccuseOthersOfThatWhich MalcolmDoes

                  Naturally.

    1. 4.2

      Correction to comment 4. Should read: All that matters is that it’s a staple commodity with a substantial non-infringing use.

  14. 3

    DC As a point of interpretation, Mr. Waxman indicated that many statutes do use the term “substantially all” and that should be seen as more rigorous of a standard than “a substantial portion.”

    Except the statute doesn’t just say “a substantial portion.” The statute says “all or a substantial portion of the components”. There is absolutely no reason to believe that such language is “less rigorous” than “substantially all.”

    And it’s utterly beside the point because there is no dispute that the polymerase being shipped here was a staple item of commerce. That question was not appealed, and the Supreme Court did not grant cert on that question.

    1. 3.1

      Just keep on kicking up that dust Malcolm (and don’t forget to accuse others of that which you are doing – happy Decade of doing that).

      1. 3.1.1

        Just keep on kicking up that dust

        What “dust” would that be? Go ahead and rebut if you can manage to string together a couple complete sentences on point. I dare you.

        It’s Promega that’s kicking up the dust. The issue on appeal is not whether Taq polymerase was, in fact, a staple commodity item with substantial non-infringing uses. There isn’t any dispute about that. All that Waxman is doing is kicking dust in the Justice’s faces because his arguments stink.

        1. 3.1.1.1

          You are referring to the wrong part of the statute.

          The part you want to refer to is not at issue here.

          You have been informed of this several times previously.

          You ignore foundational aspects of statutory construction because you “feel” like it.

          All of this is quite clear to anyone not clenching tight their eyes.

          1. 3.1.1.1.1

            You are referring to the wrong part of the statute. The part you want to refer to is not at issue here.

            Keep pounding that sand, “anon.” It’ll be a diamond in a zillion years! You’ll show everybody!

            Meanwhile, even 1st year law students at cr@ppy law schools know that terms in statutes aren’t read in a vacuum. Context is everything. Heck, the Supremes were referring to language in non-patent statutes in the oral arguments.

            Here we have a situation analogous to the following.

            Statute 1.a. Infringement occurs when a ball is substantially bouncy.

            Statute 1.b. Infringement occurs when a single ball bounces three or more times, unless it’s a rubberized ball that bounces three or more times in which case no infringement.

            Your argument is that my rubberized ball is substantially bouncy because it bounces four times. I’m saying “No, because I fall into the exception set forth in statute 1.b.” You say “but it’s substantially bouncy and you’re interposing a different statute!”

            What happens in a rational world? You lose. I win. It really is that simple.

            1. 3.1.1.1.1.1

              Except what you are actually doing is talking about the wrong statute and attempting to kick up dust by talking about that wrong statute.

              The parties and the court are fully able to bring in other parts of the statute if they want to.

              None of them have.

  15. 2

    JUSTICE KAGAN: If I said to you, Mr. Tripp, a substantial portion of my former clerks have gone into government work, how many would I mean?

    This reads like parody but it actually happened. Could the discussion have gotten further away from an intelligent, informed discussion of the issue? 271(f)(1) wasn’t written in a vacuum. Law clerks aren’t importable “components” of eligible inventions. Literally thousands of dollars are being paid per minute for these highly educated humans to answer a simple question and this is what we get?

  16. 1

    I do not expect the Supreme Court to impose a quantitative limit on “substantial” but instead leave that question as one that must be proven to a jury as an element of infringement under Section 271(f).

    The Supremes shouldn’t impose a “quantitative limit” because the facts here don’t compel the answering of that question. The only question that the Court has to answer is the question for which cert was granted: i.e., whether a single staple item of commerce(e.g., a polymerase) can fall within the definition of “substantial.”

    The answer to that question has to be “no” for a variety of common sensical policy reasons, in addition to the fact that the opposite answer renders 271(f)(2) meaningless.

    There was a ridiculous amount of dust kicked up during oral argument. Disappointing.

    1. 1.1

      The Court is the wrong branch of the government to be (re)setting – as in re-writing – statutory law for “policy reasons.”

      But you already knew that, right?

Comments are closed.