Life Technologies Corp. v. Promega Corp. (Supreme Court 2017)
In a largely-unanimous opinion, the Supreme Court has ruled that the “supply of a single component of a multicomponent invention for manufacture abroad does not give rise to §271(f)(1) liability.”
The case interprets the patent infringement statute 35 U.S.C. §271(f)(1) that creates liability for supplying from the US “all or a substantial portion of the components of a patented invention” to be combined abroad in a manner that would infringe the US patent (if it had been combined in the US). The patent covers a genetic testing kit that includes five different components. The accused infringement was shipping one component of the kit (Taq polymerase) to the UK for combination with the other components. The Federal Circuit had ruled that a single component could constitute a “substantial portion of the components” under the statute.
Writing for the court, Justice Sotomayor found that the “substantial portion” should be seen as a quantitative requirement and that a single component is not sufficient.
Although they joined with the bulk of the opinion, Justices Alito and Thomas did not join the portion suggesting that 271(f) was intended as a narrow provision enacted by congress only to fill the gap left by Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518 (1972). Rather, in a concurring opinion, justice Alito writes that congress intended “to go at least a little further.” The concurrence also includes its interpretative statement on the majority opinion:
I note, in addition, that while the Court holds that a single component cannot constitute a substantial portion of an invention’s components for §271(f)(1) purposes, I do not read the opinion to suggest that any number greater than one is sufficient. In other words, today’s opinion establishes that more than one component is necessary, but does not address how much more.
The perpetually tr0 lling Bobbsy Twins (Night Writer and “anon”) are really doing their best to kick up dust around this decision — probably the least controversial Supreme Court patent decision written in 20 years.
Gee, I wonder what their problem is?
LOLOLOLOLOLOLOLOLOL
Just kidding. We all know what their problem is.
Talking about kicking up dust and tr011ing….
What exactly was your point?
Did you address any point actually brought up?
The obvious answers are that you have no point, and no, all that you did was try your typical ad hominem.
“Go figure Folks”
This fits here as well:
It’s rather telling that Malcolm supplied the link to the Duffy article in the first place, but then turns around and refuses to even bother with a careful reading of that very link.
It’s not the first time that he has done this type of premature dance.
Perhaps Malcolm should take a moment to go beyond surface reading of something that he thinks may feels like an affirmation of his desired Ends and contemplate the Means by which those ends are achieved…
It is just ridiculous that MM posts an article and claims it supports his positions and then won’t engage in substantive debate.
Of course not – 11 years of that, but we are to believe that the good Prof. wants a healthy “ecosystem”…
While there may in fact be no tie between the two, this is exactly the type of thing that creates the perceptions of such.
And yes, that should pain you Prof. – but that is a pain that you control.
Pretty clear that this opinion is just another anti-patent opinion from the SCOTUS. Sotomayor fabricates some structure around f(1) and f(2) that was never intended and is against the plain meaning of the statute and says it makes it cool for one vs. more than one element. But, the statute was clearly talking about how valuable the element was not how many there are.
So, Sotomayer just said, gee, wouldn’t it be cool to weaken patents further and here is this neat trick where we can say the number of elements is relevant. Only a person who knows nothing about patent law would misread the statute as she has done. And, Duffy, has shown that he is nothing but a hack with his analysis.
To anyone that cares about this country, this opinion should be deeply disturbing. Again, we have the SCOTUS just rewriting a statute to fit their judicial activism goals. Just wrong and out of bounds.
And, at some level, insane. Anyone can look at a statute and generate this type of post hoc analysis and rewrite the statute or improve it (as it seems to be pretty clearly implied that she has improved the statute by her efforts.)
Just. Wrong.
Duffy is reflecting on what the Court has done.
I do think that he probably should have taken them to task for their re-writing of the words of Congress under the guise of “ambiguity.”
Just because a word may be broad, does not mean that it is ambiguous.
Truth be told – and as mentioned prior to the decision, the word “substantial portion” in IP law is meant to be broad and is meant to include both the quantitative and qualitative meanings.
By rewriting the statute to achieve their desired Ends (and to REPEAT the very reason why Congress acted in the first place to change one of their own decisions), the Court simply shows a LACK of understanding of patent law and the history of patent law.
At least one of the Justices recognized that the change by Congress was intended to do more than merely undo the single (bad) decision of the Court.
And at least lip service was given to 1 U.S. 1, so that naysayers could not claim that the lack of mention has to mean that THAT bastion of statutory interpretation (as opposed to the re-wrtitng here) remains controlling precedent.
Duffy didn’t “reflect” on what the court did. Duffy analyzed and approved of what the court did. Duffy has just lost all credibility.
Night Writer,
I did take another read at what Prof. Duffy did in his work, and if he were my student, he indeed would receive an “F” (or perhaps if I were in a generous mood, a “D”).
Whet he neglected to do in looking at 271(f)(1), was the very thing that Malcolm glommed onto here (and that I suggested previously, but that Malcolm refused to even acknowledge back then): there is more than just the “pieces” parts of 271(f)(1). This leads to his faulty and incomplete “extra-territorial” analysis. This if by itself is not damming, just incredibly sloppy.
What Prof. Duffy also plainly got wrong (mirroring the Court, by the way), is that “substantial” in other IP laws – most immediately, copyright law, which comes from the same Constitutional mooring – clearly uses both the quantitative and the qualitative meanings of the word – WITHOUT any hint of “ambiguity.”
So even though he does recognize that Congress reacted against the DeepSouth loophole, with MORE than just the strict item within DeepSouth, he lets his sloppiness from the first error above cascade into a deeper error with (as you put it, his approval):
“If only a small portion of components counted as a “substantial portion,” then U.S. patent law would have broader effects on what is largely foreign economic activity.
The Supreme Court’s ruling – that a single component never qualifies as a substantial portion of the components – tends to curb the extraterritorial effects of Section 271(f), and that result is sensible given that the baseline rule of U.S. patent law is still a principle of territoriality.”
He is simply wrong on the “curbing” portion, and is further wrong in NOT pointing out that it is simply NOT UP TO THE COURT to decide to “read” the statute to reach the End that the Court wanted to reach.
There is no “ambiguity” in a word that reflects – as in other sections of IP law – a desire for both quantitative as well as qualitative protection.
Breadth is not ambiguity.
Also, “portion” – the subject of the clause in question; and being a singular noun – would lead to a better structural argument, which Prof. Duffy did not see in his “drinking the Kool Aid” of the Supreme Court nose of wax treatment.
He also allows himself to be confused and conflated with 271(f)(2), which is a separate section, with a separate intent.
Lastly, as far as his last comment of “rigid rule versus flexible standard,” he too misses the obvious connection as to exactly when the Court has chosen one or the other: that underlying animus is when the patent holder is less well off.
As far as people not wanting to think that the Supreme Court could (dare?) have such an animus, one only has to look back to the 1930’3 and 1940’s when the (self) characterization of “the only valid patent is one that has not yet appeared before us” took shape.
Did anyone bother reading this?
LOL
Gee Malcolm, here is your chance to be a trend setter by reading and engaging in an inte11ectually honest dialogue on the points presented…
What are the odds of that happening?
It’s rather telling that Malcolm supplied the link to the Duffy article in the first place, but then turns around and refuses to even bother with a careful reading of that very link.
It’s not the first time that he has done this type of premature dance.
Perhaps Malcolm should take a moment to go beyond surface reading of something that he thinks may feels like an affirmation of his desired Ends and contemplate the Means by which those ends are achieved…
It appears from my email that Ned Heller attempted to post in response to my attempts to answer his question in 5.5.3.1.3. The attempt seems came through to my email over 9 hours ago, but have haven’t found it on the website (despite using ‘Find’ in the browser to search for keywords). Therefore I am posting Ned Heller’s comment below.
Distant Perspective, since it has been days since I requested that Dennis pass my long post through the filter with no response, I would just like to say that just having mental steps in a claim is not sufficient to declare it ineligible.
The historic analysis of “abstract” is set forth in cases such as Le Roy v. Tatham and O’Reilly v. Morse. All it stands for is that inventions cannot be claimed at the level of the idea, but must be claimed at the level of implementation. This has nothing to do with mental steps.
We learned in Diehr that the presence in the claim, even the only novel subject matter in the claim can be a mathematical algorithm provided that it is applied to a traditional process or machine to transform it into a new state or thing.
While it is true that contracts are abstract, claims may include contracts if the claim taken as a whole is directed to otherwise patentable subject matter – when there is novelty in the means or other statutory processes. Thus a novel way of displaying information about contracts is patentable subject matter.
If the Bilski claims are not ineligible for failing the MOT, are not categorically excluded because they are business methods, or not categorically excluded because they involve abstractions such as contracts, not categorically excluded because they include mathematics, and are not categorically excluded because they are not abstract in the sense of Le Roy v. Tatham and O’Reilly v. Morse, what is the reason they were held ineligible?
You simply have not given an explanation just as the Supreme Court did not in Bilski.
I think the short answer would be that the claims in Bilski would be excluded because they are directed do (and arguably contain nothing else than) abstract ideas in the sense of Benson.
Whether the concept of abstract in the sense of Benson coincides with or merely comprises “abstract in the sense of Le Roy v. Tatham and O’Reilly v. Morse”, as you have defined the latter, is an arguable question, and I believe that, if they could or would answer you, SCOTUS would say that their understanding of the meaning and scope of the term “abstract idea” doesn’t coincide with yours, subsuming yours perhaps, but being broader, as suggested by the fact that they are joined with “laws of nature” and “natural phenomena”.
If the Supreme Court construed “abstract” as you have, it is difficult to see how it could be argued that Benson and Tabbot had not reduced their invention to practice, or claimed at a level of “abstraction” (in the sense of the 19th century cases you mention) too far above the claimed invention described in the specification.
I put forward the hypothesis that the “judicial exceptions” and other common law doctrines arose largely because SCOTUS, then as now, considered them necessary in order to interpret 101 and its predecessors consistently with the constitutional requirement “to promote the progress of science and the useful arts”. The text and legislative history surely showed that the reach of “process” under 101 was no wider than the joint reach of “art” or “process” under 19th century acts. The mechanism for granting a monopoly described in a “utility patent” is through the issue of letters patent. Under English law, the issuance of letters patent is an exercise of the royal prerogative (in practice exercised by the government on behalf of the monarch), and provides a general mechanism for granting titles of nobility, royal charters and the like. In order to seek to revoke such a grant in the 18th century, the mechanism was to seek a writ of ‘scire facias’ from the Lord Chancellor. If my understanding is correct, the President of the US and the members of the executive do not have such wideranging power to issue letters patent, but Congress is authorized to make laws to permit designated members of the executive (originally the President) to issue letters patent to inventors, subject to the requirement to promote the progress of science and the useful arts, and subject to a time limitation. I looked at 18th century US patent acts. The 1793 act states that, if inventors allege that they have invented a new and useful … it shall be lawful (emphasis added) for the Secretary of State to cause letters patent to be made out and sealed by the teste of the President of the United States. I further suggest that 101 is the section of the current US patent act whose requirements are intended to ensure that letters patent comply with the constitutional requirements.
I would also add for Distant Perspective’s perspective, that the theory of Mental Steps arose – and d1ed – in the course of patent history, and that the zombie version of mental steps being tried to be trotted out today as some bulwark of 101 guidance suffers tremendously from the coined term of Anthropomorphication – or, trying to use the software and computer combination as merely some type of [Old Box] and mere proxy for human though.
Since my laying such a thing out in clear detail would not be accepted by the (sAme) naysayers, I have repeatedly inquired as to Prof. Crouch or one of his academic friends to set the record straight on the topic.
To this date, no takers for what obviously is a point of obfuscation in the 101 discussion.
As to “I put forward the hypothesis that the “judicial exceptions” and other common law doctrines arose largely because SCOTUS, then as now, considered them necessary in order to interpret 101 and its predecessors consistently with the constitutional requirement “to promote the progress of science and the useful arts”.”
I would remind you that the Act of 1952 removed the power of the Court to use that self same common law approach to set the meaning of the word “invention.” Yes, the Court had become addicted to that common law power that Congress had shared with the judicial branch, and the power addiction remains to this day.
Even to the point, that the Court would violate separation of powers as well as other Constitutional provisions. For example, the use of the Court with the speculative and future looking “may impede promotion” ventures into the advisory opinion realm, which is compounded by the Court not overturning the law itself that would cause the problem, but instead re-writes the law – where no ambiguity exists, mind you – and uses its desired version to rule on a specific case.
Distant, your understanding of the patent laws largely correct. Because our laws originated in England they largely subsumed English interpretations. Thus Art was comprised the techniques involved in making things – making manufactures. They involved transformations of physical things from one state to another.
Abstractions in the sense that you are speaking exist solely in the mind and do not involve physical phenomena. Thus I would agree that a series of steps all of which are abstractions do not involve the transformation of physical things from one state to another. Effectively, this is another way of saying that the claims in Bilski failed the MOT.
But what confuses is that the Supreme Court seems to link this newfound “exception” to the historical cases which are talking instead about an entirely different concept – claiming inventions at the level of the idea. The inventions themselves can involve physical transformations or new machines, they just are two broadly stated. Thus by calling the claims in Bilski “abstract,” and linking the justification for doing so to the historical cases, only confuses.
Perhaps the source of the problem originated in Benson because the claims in Bilski are indeed like the claims in Benson. Mathematics entirely involves abstractions.
So understood, we are in agreement with what is actually going on: the Supreme Court and the lower courts are following the MOT without saying they are doing so. There has been no case that I can think of that has been found eligible that does not involve a special machine or a transformation of something physical from one state to another.
Ned, Enfish, McRo, DDR ? No special machines or a transformation of something physical from one state to another.
Martin, those cases, Enfish, McRo, DDR, represent improvements to computers and computer systems — special machines. The M of the MOT.
MoT,
Love the love fest, gents, but remember, that albeit an important clue, MoT is JUST a clue.
Ned, cartoon mouths really have little to do with improving computing machines…..
Cartoon mouths? What are you talking about?
The one case that dealt with an improved system for lip synching…
At this stage can I just reply to say: Thanks!
Ned,
Further and once upon a time, you engaged in a discussion with the realization that Benson was wrong in at least claim 8.
Do you remember that?
As for your history lesson of “Arts,” Ned, it would be an (unethical) and critical omission to leave out how Congress changed that in 1952 with 35 U.S.C. 100(b), now wouldn’t it?
Given as you are discussing the actual law with a non-lawyer, you do have an obligation to NOT omit such a critical understanding – even (and especially) if the FACT of that matter is detrimental to your desired version of the law.
You may bend your oath, but such does more than bend it.
The MOT and examination of the claims for “abstract ideas” give the same result. This should be no surprise. SCOTUS said that MOT was an “important and useful clue”. I would imagine that SCOTUS’s (unstated) version would say something like “if no machine, then at least transformation”. But MOT as an absolute precondition for patent-eligibility was expressly excluded from the holding in Benson:
“It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a ‘different state or thing.’ We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.” Thus the Bilski majority saw no need to go beyond Benson in this regard. And, more importantly, SCOTUS provided no warrant for assuming that a claim that passes MOT must necessarily be patent-eligible.
The majority in Bilski expressly stated that they were ruling narrowly. Claims 1 and 4 were certainly drawn to abstract ideas, Why? Surely apparent from the face of the claims, and if one really cannot see this immediately, then note that “Indeed, all members of the Court agree that the patent application at issue here falls outside of § 101 because it claims an abstract idea.” Claim 1 is said to claim “hedging”, pure and simple, and if claim elements such as “historical averages” modify in any way the concept of hedging, they do not do so in any way that makes Claim 1 any less abstract. The mathematical formulae in Claim 4 are so banal, they could just as well have been stated in words. They add nothing meaningful to the claim, and, being no more than a rudimentary formula to calculate a bill, add nothing to make the claim less abstract. Pace Judge Rich, bills and prices are abstractions, irrespective of how specific the formula used to calculate them. The fact that Bilski’s claims could be deemed ineligible on the basis of governing precedent in Benson and Flook is possibly something the majority in Bilski wanted to emphasize. They saw no need to discuss at length why Bilski’s claims were drawn to “abstract intellectual concepts”.
Looking at other claims, note that 7(c) is the claim limitation of “assuming that the summed payoffs are normally distributed”. Only humans “assume”!
Justice Steven’s criticisms? Well SCOTUS addressed them in Mayo and Alice, with no dissents.
The real import of the majority holding is that all of Benson, Flook and Diehr are binding precedent (with dicta in Flook somewhat modified in Diehr). Nothing in Diehr impugns Benson. After all Diehr (as the Diehr court explained, and the Bilski court emphasized) was directed to an improvement in a traditional industrial process for curing rubber, which happened to involve a computer. There was surely nothing innovative with regard to the equation repeatedly calculated, or the programming of the computer. Whatever the claims in Benson were drawn to, they weren’t drawn to an improvement in such a traditional industrial process. And surely today, a claim to an improvement in (say) a freezer cabinet or a car should not be barred simply because the design includes a microchip. And a claim is surely eligible if it improves the microchip or car.
Surely, in Diehr, the final paragraph IV is intended to summarize the holding, and the most important parts of the reasoning.
Comparing Diehr’s characterization of the holding in Flook with Mayo/Alice, note that whatever else is in the claims besides the ineligible subject matter can fail to be “insignificant” (Diehr) if and only if there is “something more” (Mayo/Alice). So one way of reading the Mayo/Alice framework is that it generalizes aspects of Flook affirmed in Diehr. If “insignificant” postsolution activity fails to transform an unpatentable principle into a patentable process, then the claim elements, individually or in combination, fail to supply that “something more”. The term “insignificant” is no less vague than “something more”.
“But MOT as an absolute precondition for patent-eligibility was expressly excluded from the holding in Benson”
So was software qua software.
But that has never stopped the likes of Ned and Malcolm from proclaiming their feelings otherwise.
“The real import of the majority holding is that all of Benson, Flook and Diehr are binding precedent (with dicta in Flook somewhat modified in Diehr). Nothing in Diehr impugns Benson.”
Not quite correct – read again Bilski which plainly indicates that both Benson and Flook were cabined by Diehr.
Then for further measure, note that no such reciprocal language cabining Diehr can be found, and quite in fact, the Court lauds Diehr as the case “most on point” even as they do not follow their own writings in Diehr.
The Court has cherry-picked its way into a legal logic corner.
I would also recommend – since you do seem earnest in your attempt to gain a better understanding – that you note which Justices were on which sides of the series of patent eligibility decisions.
These decisions did not happen in a vacuum.
And further, the culmination in Bilski of Justice Stevens losing the role of writing the majority position cannot be overlooked as to the dynamics of the Court.
So here lacking a chancery, are you saying DP that the judicial exceptions are best seen as expressions of judicial equitable discretion? If so, I agree fully.
Night Writer, better that 10 innocent firms re destroyed rather than one infringer go free. It takes some kind of ideologue not to immediately understand the unfairness, unpredictability, and untold chaos potential of holding exporters of any single commodity liable for patent infringement when that commodity is used in a patented invention.
Congress would never have intended such a result. Indeed the “plain words” of the statue clearly recognize the case where the item exported is not a commodity in situ but a critical portion of the invention. Again, only an ideologue…..ahem anon….and CAFC…could fail to see the different purposes of the two sections.
Martin, I don’t think I am saying that judicial exceptions best seen as an expression of “judicial equitable discretion”.
Aside, with regard to state law, there is always Delaware’s Court of Chancery, if you are a corporation incorporated in Delaware, or come within its jurisdiction. Delaware has not merged common law and equity. But this is not relevant to federal law.
To come back to what I thought I was saying…
Under what circumstances does SCOTUS grants certiorari on a patent case, what prompts to do so? What are the basic principles that it seeks to follow in deciding the case? How are they grounded in the constitution?
What is the basis for the issuance of a patent? Is it an entitlement? Or is a grant that can be withdrawn, provided that due process observed?
Though of course IANAL, I am putting forward the position that the patents and copyrights clause of the US constitution, gives to congress, not the states, the authority develop patent laws, subject to the constraint that the operations of those laws must further the constitutional purpose of promoting the progress of “science and useful arts”. (The word “science” here of course has its eighteenth century meaning. I seem to recall that the word “scientist”, with its current meaning, was coined by T.H. Huxley in the latter part of the 19th century. What we now call “science” was referred to as “natural philosophy” up to at least the early part of the 19th century.) It follows that patent laws passed by Congress must be construed so that the operation of the patent laws is consistent with the constitutional purpose.
This presumably makes it highly unlikely that SCOTUS would step in to resolve, say, a claim construction dispute between battling pharmaceutical businesses. But they might be more inclined to grant certiorari in cases where it is pleaded that the patent law developed by CAFC does not respect the public interest, or if they want feel they ought to take a closer look at, for example, how the doctrine of patent exhaustion applies to self-replicating manufactures (as in Bowman v. Monsanto). So it is probably to be expected that, in the majority of cases where they grant certiorari SCOTUS will overturn the CAFC judgment, the SCOTUS judgment may overturn “settled” CAFC law and principles, and that some patent lawyers will generally say that SCOTUS does not understand patent law, and the Justices are fools. But of course they will only grant certiorari on case where they consider it appropriate to consider the case themselves, perhaps to balance CAFC jurisprudence against their reading of constitutional, public interest and general commercial law – or so it seems to me. Again IANAL.
In your efforts to understand law, Distant Perspective, you may want to focus on the proper application of the judicial power under the Constitution and realize that the Supreme Court itself is not above the Constitution.
Distant, I hope we all can agree that a lot of what is copyrighted has nothing to do with advancing science and the useful arts. The only requirement for copyright is that the author create some new work that he personally did not know about. Similarly, for inventions, the inventor must create something new that he personally did not know about any qualifies as an inventor.
There also limits in the Constitution about what Congress can do. They can create exclusive rights to secure to the authors and inventors their rights. They can create these exclusive rights only for limited times. But beyond that I do not know if the purpose clause operates as a constitutional limit. It certainly does not with respect to copyrights.
Ned,
This ties directly into the misconception of requiring a linear advance in the art.
That is simply not either required, or even possible to know a priori.
Innovation simply does not work that way.
Refer to my past analogies contrasting a grid of streets and a parking lot. What you see is people wanting the grid of streets.
Further, the Constitutional directive is also geared to another meaning of the word “promote” – as in, the advertising derivative of “promotion,” or merely spread of knowledge.
THIS meaning DOES tie into the way that innovation works.
“expressions of judicial equitable discretion?”
Two words:
Ultra vires
As to the Ends you seek, the Means employed really do matter.
Look up Sir Thomas More, and then realize that you are casting your lot to mow down the laws to get to the “devi1” in your own personal bias.
Distant Perspective, may I also recommend that the use of the term “granting a monopoly” contains within it a critical misunderstanding of the patent right.
Gene Quinn runs a patent blog and addresses this very item on a most recent thread.
Give it a read.
Ed the Ned will yap endless about these topics and not budge an inch from his anti-patent judicial activist position.
Also, the statement by Ginsburg that patents were not meant to for changing human behavior is perhaps one of the most ignorant vile statements ever made in a patent case.
Does she think that machines that perform physical labor for us do not change our behavior and are not meant to work with us and change our behavior to optimize the productivity (or improve.)
The information processing machines are merely doing this for information processing rather than the physical labor (although we know that information processing is physical labor too).
There are so many other levels why this statement by her and signed on by Sotomayor is wrong.
Night, as we discussed before your definition of anti-patent is anybody who does not agree with you on everything.
Ned, and as discussed, your Windmill Chases against software and business methods ARE anti-patent.
We see Ned once again struggle to have his version remain in place:
“If the Bilski claims are not ineligible for failing the MOT, are not categorically excluded because they are business methods,”
He cannot grasp that MoT is but a clue (albeit an important clue).
He cannot grasp that once again he slips back to his Windmill Chase of business methods being categorically excluded – when no such language exists – or has ever properly existed under the law as written by Congress.
He has been instructed many times by many people, but insists on playing his unethical game of advocating a change in law by misstating the law as it actually is.
If there is any lesson from this train crash, it is: don’t take weak and unmeritorious cases to court, and especially don’t pursue them to the Supreme Court.
If there is any lesson, it is that the SCOTUS will re-write any statute to get their ends met.
There is but one long term solution: Congress must employ jurisdiction stripping to remove the non-original jurisdiction of patent appeals from the Supreme Court coupled with creating a new (untainted) Article III patent court (to preserve the actual holding of Marbury).
Anything less just allows the Court to re-write the law, eventually.
There is a typo at the top of page 5 of the opinion correct? The opinion describes “271(f)(2)’s requirement of a ‘substantial portion’ . . .” Shouldn’t it be “271(f)(1)” and not “271(f)(2)”?
There’s a nice write up by John Duffy over at SCOTUSblog:
link to scotusblog.com
Key excerpts:
The court’s decision yesterday also highlights an important point about statutory interpretation: Paying careful attention to the entire structure of a statute is very much consistent with – indeed, really required by – a textualist approach to statutory interpretation. …
Yup. Fundamental stuff that every first year law student should know.
So what was helpful to the court in interpreting the phrase? It was all of the text surrounding the phrase “substantial portion” within Section 271(f). In considering that text, the court found a very important clue for interpreting the statute properly. The phrase “substantial portion” appears within paragraph (1) of Section 271(f), but the statute has a paragraph (2) that specifically addresses when infringement liability should be imposed where “any component” is supplied from the United States. Paragraph (2) requires that, if liability is to be imposed for supply “any component” of an invention, that component must be pretty special – it must be “especially made or especially adapted for use in the invention” and also “not a staple article or commodity of commerce.”
To the court, the statutory text in (f)(2) helped nail down the meaning of the phrase “substantial portion of the components” in (f)(1). The court reasoned that reading (f)(1)’s “substantial portion of the components” as referring to more than one component allows (f)(1) and (f)(2) “to work in tandem,” with (f)(1) controlling supply of components “plural” and (f)(2) controlling supply of “‘any component,’ singular.”
That reading makes sense given that supplying a single “commodity” component of an invention (which is all the petitioner in Life Technologies did) cannot generate liability under (f)(2). Under the court’s decision, the apparent meaning of the textual limitations in (f)(2) is not undermined by a broad interpretation of (f)(1).
I don’t know. I suspect the differences between f(1) and f(2) were there for the case when the component was particularly needed. So, (1) and (2) were to differentiate between essential components and the combination of less essential components.
I think Duffy is wrong. He has always been hit and miss. He has a giant ego and is always trying to score a big hit. But here, he misses.
“Yup. Fundamental stuff that every first year law student should know.”
As should 1U.S. 1 – which got the nose of wax treatment here.
The Bobbsy Twins! Together again. That’s sweet.
And your point is..?
Other than empty ad hominem, that is…
Oh, that’s right, nothing.
Yay 11 years of “swagger” – my the ecosystem is lovely today yet again with Malcolm’s swagger…
(The “S” sign is held up vigorously)
As I think many readers in the US will be aware, Taq polymerase was invented by Kary Mullis in the 1980s and is now available in the US from a number of suppliers. Effectively it has become a generic material in widespread use in biotechnology.
If it were argued under35 U.S.C. §271(f)(1) that the defendants were liable for supplying from the US “all or a substantial portion of the components of a patented invention”, the Taq polymerase was not one of the distinctive components of the patented combination with which inventive ingenuity would have been most associated, and it would be surprising, as I have said, if any court were willing to impose liability for the supply of that generic material.
The claim in issue reads:
A method for determining length polymorphisms in a simple or cryptically simple sequence in one or more DNA regions of one or more subjects, which comprises:
(a) providing at least one DNA sample, comprising a template DNA having a nucleotide sequence that includes a simple or cryptically simple sequence comprising trinucleotide repeats, from at least one subject;
(b) annealing at least one primer pair to the template DNA of each of said DNA samples, wherein said primer pair is composed of a first primer complementary to a nucleotide sequence flanking the 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 template DNA and the sequence of the template DNA between the sites where said primers anneal is 50 to 500 nucleotides in length;
(c) performing at least one primer-directed polymerase chain reaction upon said template DNA having said primers annealed thereto, so as to form at least one polymerase chain reaction product;
(d) separating the products of each polymerase chain reaction according to their lengths; and
(e) analyzing the lengths of the separated products to determine the length polymorphisms of the simple or cryptically simple sequences.
Taq polymerase is simply a material used in the polymerase chain reaction together with nucleotides which provide the raw material for the polymerization reaction to take place. The key materials in which inventive ingenuity mainly resides are the primers flanking the 5′ and 3′ side of the sequence of interest, and it is not apparent that these came from the US. It seems very plain that the Taq polymerase could not be regarded in all the circumstances as a substantial part of the components of the patented invention, even if we are looking simply at starting materials and not at the method features which are also important. There are further method and kit claims but they all require the flanking sequences. The insubstantial nature of the material being supplied in the context of the claimed methods and kits will be readily apparent and should have been sufficient in and of itself to dispose of the case.
I therefore stand by the view I expressed at 14.
Paul Cole: it would be surprising, as I have said, if any court were willing to impose liability for the supply of that generic material.
LOL
Except the CAFC did just that because, apparently, they were unable to understand the relationship between 271(f)(1) and 271(f)(2), in spite of the fact that they were walked through the “analysis” by the defense (I put the term in quote because it’s an “analysis” in the same way that pointing out that 2+2=4 is an “analysis” of how addition works).
It’s true that the Court didn’t need to get to the question of how to define when the number of uncombined components being exported is a “substantial portion” of the total number of components in the claimed invention. And at first reading I was uncomfortable with the “quantitative” construction the Court gave. In part, that’s because it leaves open the possibility that shipping, say, a Taq polymerase plus a buffer, could lead to liability when combined overseas with some non-obvious molecule (i.e., in the hypothetical case where the claim recites these two staple components plus the non-obvious molecule).
But then I realized that there is still a reasonable way to avoid this absurd result, even if the 2 out 3 situation described above meets the “substantial portion” standard. Specifically, the argument would be that this kind of export of two staple components doesn’t satisfy the “in such a manner as to actively induce infringement” requirement. I think that’s a winning argument. We’ll find out soon enough if the CAFC bends over backwards again to help an undeserving patentee.
“Specifically, the argument would be that this kind of export of two staple components doesn’t satisfy the “in such a manner as to actively induce infringement” requirement. I think that’s a winning argument. ”
Way too funny (and not in the ha ha way), as that was one of the things that I told you prior to Supreme Court decisison AND their is no reason why that same logic cannot work with a single component making up a substantial (in its full meaning) portion (yes, portion is a singular word, no matter how many items it may comprise).
Winning strategy you say?
I say thank you for agreeing with me at least to that point (something you refused to even understand previously).
“anon”, remember to never underestimate your narcissistic ability to self-delude yourself. You are the world champion and nobody can take that away from you.
You lost. 7-0. This was an easy case to predict. I predicted it. You didn’t.
And this happens all the time. Take a break for a while and lick your wounds. You’re b0 ring and you lack the intelligence and maturity to have a sustained conversation about anything.
You are doing that Accuse Others meme of yours again…
The claim in issue reads: A method…
No, that is not the claim in issue. The claim in issue was RE 37,984 Claim 42 (Promega Corp. v. Life Tech., 773 F.3d 1338, 1343 (Fed. Cir. 2014)). Claim 42 reads:
There really is no other way to do the §271(f)(1) analysis for this claim, except to count up the kit components (5 total), and then decide “is one out of five a ‘substantial’ portion of the kit components?”. That is what the SCotUS did, and I cannot find the fault in their approach.
They were slovenly adhering to a legislative plural use when 1US1 clearly states that such slovenly treatment is a clear mistake.
Their “but the rest of the text indicates ONLY a quantitative approach is bullocks.
There really is no other way to do the §271(f)(1) analysis for this claim, except to count up the kit components (5 total), and then decide “is one out of five a ‘substantial’ portion of the kit components?”.
Actually there is a way and it’s right there in the Supreme Court decision: 271(f)(1) does not apply to the export of single items, period. You never get to the question of whether item can be a “substantial portion” because (first) 271(f)(1) on its face requires a plurality of components (plural) to be exported, and (second) permitting 271(f)(1) to apply to single components nullifies 271(f)(2).
That’s the analysis.
the question of whether one item
Fixing my typo here.
Even in relation to the kit claim you don’t have a substantial portion without (a) or (e) because the rest is commonplace.
Paul,
You are trying to use the word substantial for its known common meaning and you are not torturing it to mean a limited subset in order to reach a desired Ends.
How dare you try to be normal here.
PM the rest is commonplace
Paul, characterizing the components as “commonplace” sounds like a qualitative analysis of the components. That kind of analysis, at least with regards to the question of whether a subset of uncombined components represent “a substantial portion” of all the components, is incorrect, per the Supreme Court.
You kind of missed the point that Paul was suggesting that the analysis by the Supreme Court to reach their desired Ends vis a vis “ONLY quantitative” is rubbish.
You kind of missed the point
In fact, I didn’t miss anything. Paul is free to articulate his own thoughts if he thinks he’s been misunderstood. Gob knows that you couldn’t articulate yourself out of a paper bag if it was soaking wet with Gene’s fl0p sweat.
What is is with your 0bsess10n with Mr. Quinn?
I’m not “obsessed”, O Super Serious Puppy Protector. That would be you.
Gene is a perfect example of the worst patent attorneys out there: an ign0rant, dishonest, self-serving entitled shill.
He exists to m0ck and as long as he presents himself as a bloviating punching bag, I’m going to punch. Because it’s easy and fun.
Note that he never had one intelligent thing to say about this case. Just like you.
You are the one 0bsessed as you are the one constantly making reference to him (and projecting se x ual connotations in those references).
Maybe you should be aware of how much (and just how) he is on your mind…
ou should be aware of how much (and just how) he is on your mind…
I’m very much aware of his steadily diminishing credibility.
Thank you.