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).
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?
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.
“ 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).
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.
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.
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.
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?
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.
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.
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.
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.
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)
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.
I am not saying “per se,” but at the same token, one cannot merely dismiss it out of hand.
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…?
;-)
Why should substantial portion in copyright be incorporated into aren’t law?
Patent law*
Because the principle behind that meaning applies in both situations.
Ok, I appreciate you educating me on this anon.
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.
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.
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.
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).
And yet, neither the court nor the parties are talking about that different section of law…
Why are they not doing so?
;-)
Carter Phillips absolutely used f(2), and Justice Kagan asked him about it.
To distinguish as to its non-pertinence, eh J?
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.
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.
you should be mad at the Supreme Court for creating a loophole that Congress closed
Sure, that makes a whole ton of sense.
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.
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.
Lol – your feelings are noted.
MM, somewhat agree. The Bar has too much influence.
Which Bar, what particular influence and for what particular ends, and over whom exactly, Ned?
Check post 36 by jbavis. link to ipwatchdog.com
That is about Google and lobbying (and definitely in line with what Night Writer posts)
There is nothing there about the Bar.
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?
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.
Yet more of your number one meme.
Yay ecosystem.
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.
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.
“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.
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.
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.
“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.
“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.
MM, do you agree or disagree that a right without a remedy is no right at all?
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?
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.
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.
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.
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.
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.
“Tires” ==> “tired”
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.
“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).
“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.
That’s not a tangent, 6 – that’s a big and clear miss (totally based on his feelings).
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”.
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.
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.
“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.
“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.
Feelings do not have the same weight as law or facts.
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.
Nice false equivalency, Malcolm.
It is YOUR level that evidences the indoctrination.
…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.”