Life Tech v. Promega: Inducing with Yourself

InducingYourselfIn Life Technologies Corp. v. Promega Corp., the Supreme Court has asked for the views of the Solicitor General — greatly raising the likelihood that the high court will take the case.  The kicker will be how the US Gov’t responds.

The case centers around Life Technologies’ international sales of genetic testing kits.  A portion of the kit included Taq polymerase that was manufactured in the US and sent to the UK where it was combined with additional components to produce the infringing kit.  Of course, the UK manufactured kit isn’t infringing under ordinary U.S. patent law because it is being manufactured, sold, and used outside of the US.  However, Section 271(f) of the Patent Act provides a cause of action for infringement based upon export of components of a patented invention to be combined abroad.

This case focuses on Section 271(f)(1) that provides:

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.

The elements of infringement under Section 271(f)(1) appear to be:

  • Supply or cause to supply in or from the US;
  • A substantial portion of the components of a patented invention in uncombined form; and
  • In a way that actively induces the combination outside of the US in a manner that would infringe the patent if it had been combined within the US.

In finding for the patentee, the Federal Circuit made two interesting decisions:

  1. The exporter can induce itself to combine the components abroad.
  2. A single component (here the Taq polymerase) can serve as “a substantial portion of the components.”

In his essay on the decision, Jason Rantanen wrote that these holdings are “probably erroneous—doctrinal developments.”

Now, in its petition for certiorari, the adjudged infringer has followed Prof. Rantanen’s lead and asks the following questions:

  1. Whether the Federal Circuit erred in holding that a single entity can “actively induce” itself to infringe a patent under 35 U.S.C. § 271(f)(1).
  2. 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.

 

The basic arguments here stem from the Supreme Court’s prior statements that 271(f) should be interpreted narrowly.  In his amicus brief supporting the petition, Dean Tim Holbrook argues that the Federal Circuit “consistently fails to consider the presumption against extraterritoriality” and that important interpretive doctrine leads to the conclusion that the court went too far here.

Next step in the case will be a brief submitted by the US Government staking out its position as to whether export should count as infringement. Although I am sympathetic to Holbrook’s position, the US administration is active enough in patent cases so that it can be the one making the argument if the case so warrants.

108 thoughts on “Life Tech v. Promega: Inducing with Yourself

  1. (Beg pardon; second try – having filter issue…)

    Gonna have to go with Jason on this one. I’m having trouble imagining a majority (or even small number) of the SC justices agreeing either on auto-induction or on the idea of a single component – a staple good like the polymerase – being “a substantial portion of the components” of the kit claimed below.

    A kit for analyzing polymorphism [the kit having these [numbered just for fun] components]…

    [1] at least one vessel containing
    [2] mixture of primers constituting between 1 and 50 of said primer pairs;
    [3] a vessel containing
    [4] a polymerizing enzyme suitable for performing a primer-directed polymerase chain reaction;
    [5] a vessel containing
    [6] the deoxynucleotide triphosphate adenosine,
    [7] [the deoxynucleotide triphosphate] guanine,
    [8] [the deoxynucleotide triphosphate] cytosine and
    [9] [the deoxynucleotide triphosphate] thymidine;
    [10] a vessel containing
    [11] a buffer solution for performing a polymerase chain reaction;
    [12] a vessel containing
    [13] 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.

    1. Mellow: I’m having trouble imagining a majority (or even small number) of the SC justices agreeing … on auto-induction

      I’m curious as to what you believe is the strongest argument against the “auto-induction” theory of infringement of 271(f)(1).

      Let’s change the facts of this case and say that every single one of the recited components is mailed in two separate packages (i.e., uncombined), from the US by company X to Life Tech, at Life Tech’s request (company X has no idea what Life Tech is using the various components before other than PCR generally). I think we would both agree that would prevent a closer case of infringement under 271(f)(1) by X. What about Life Tech? Liable?

      Let’s say X is liable under the above scenario. Can liability really be avoided by Life Tech buying company X and converting it into a wholly owned and controlled subsidiary? That seems like a pretty big loophole. If it’s so clear that “auto-inducement” of this sort isn’t included, it’s a bit odd that this question hasn’t come up earlier. Maybe one possible way out of the issue is to recognize (rightly or wrongly) that a subsidiary company, even a wholly controlled one, isn’t “self inducing” when it behaves in this manner. It’s inducing it’s parent company to infringe, period, and the statute doesn’t care about the relationship of the foreign “otherwise direct infringer” to the domestic entity.

      [Just as a side note: every item in the claim you presented, except for possibly the last one, is the sort of commonplace staple item you could expect to find in the chem lab of any well-funded high school]

      1. Gah. Another typo:

        “I think we would both agree that would present [<– not "prevent"!] a closer case of infringement under 271(f)(1) by X"

        Apologies for any confusion.

    2. Mellow – You may be right. Certainly the statute requires a “substantial” portion. How would that be defined? It seems that you are suggesting that it should matter whether the component is a ‘point of novelty’ for the invention or instead a staple-of-commerce. Should we tie-in the Alice-style claim analysis to consider which components are post-solution add-ons that do not add significantly to the invention? I don’t think that the calculation can be so simple to say that 1 component out of 13 can never be a substantial portion.

      1. DC: I don’t think that the calculation can be so simple to say that 1 component out of 13 can never be a substantial portion.

        Why not? That’s the sort of predictability that people are always seeking. 271(f)(1) concerns multi-component

        Let’s say “the single component” constitutes 88 assembled pieces of a claimed device with 100 elements, where the other 12 elements are staple items. In that scenario, “the single component” is almost surely going to be a non-staple item and 271(f)(2) will apply. No injustice there.

        Throw in one of the staple items along with that non-staple single component and you’ve got a good argument for infringement under 271(f)(1). Again: no injustice.

        Am I missing an easy hypothetical example that would prove the contrary?

        At the end of the day the problem for composition/device patentees is the same as ever: claim the valid innovation with the least number of moving parts so you can capture direct infringers. The claim at issue here is a bit of an oddity, to say the least. What the heck is all that old stuff doing in there? There’s no unexpected or “synergy” arising from providing separate reagents in a kit.

      2. Point of novelty….?

        One would hope a professor of patent law would not forget the fact that a valid invention can be composed entirely of items that are each in their own right not novel, and thus not have at all a “point of novelty.

        1. Perhaps the millionth time this is explained to you it will stick: the “point of novelty” in a combination claim is the point at which two (or possibly more) “old” elements which have never before been combined or which have never before been described as being combined/combinable are, in fact, described in the claim as being combined.

          Simple example for you:

          Claim: A medicinal tablet for relieving pain and constipation, comprising: aspirin, filler, and prune juice extract. Prior art ref A teaches aspirin and filler, and ref B teaches prune juice extract and filler. There’s no unexpected results. What’s the “point of novelty”? Aspirin plus prune juice.

          Will there be cases where the “point of novelty” is the entirety of the claim because, e.g., the claim has only two old elements that were never taught in combination? Sure. But that fact doesn’t mean that considerations of “point of novelty” are always out of the question or improper. Nor does it mean that those who fail to bring up this fact every time “point of novelty” is raised are ign 0rant of that fact.

          Your endless attempts to eliminate the concept of a “point of novelty” from discussion of patent law have failed miserably and that’s going to be the case forever. There’s a good reason for that. Maybe it’s time to think about hanging it up? Pretty much everybody would appreciate that. At the very least maybe think about holding off with the bizarre insults of “professors” who don’t share your clinical obsessions.

      1. Yes, Ned. A generic DNA polymerase, including a generic PCR-compatible polymerase, can be freely made by anyone and sold anywhere in the world. Happens every day. That’s been the case for a while.

      2. Also, Ned: I’m not sure it’s accurate to say that the dispute before the Supreme Court involves anything that was “bought” or “sold” from the US. Life Tech has a manufacturing plant in the US. It shipped the polymerase from it’s plant in the US to its other manufacturing plant in the UK where the kit was assembled.

  2. My take — what is the invention? Is the thing sold in the US the invention — with whatever that is done outside some final, but conventional step? I am thinking here, Quanta and Univis Lens, where a sale of a component substantially embodying the essential elements of the invention exhausts. It should also infringe. And if the sale is in the US to someone abroad, it should still infringe.

    The statute should be construed accordingly.

      1. Anon, If an element or sub-combination is the invention as described in the specification or as allowed during prosecution, that is what the Supreme Court requires, I think.

        1. I am glad that you added the “I think,” because as Alice shows, the Court does have a habit of disregarding actual claim elements when they want to “Gist” to whatever level they want to get to.

    1. FN 14 of Promega Corp. v. Life Technologies Corp., 773 F. 3d 1338 – Court of Appeals, Federal Circuit 2014 link to scholar.google.com.,+773+F.3d+1338+%28Fed.+Cir.+2014%29&hl=en&as_sdt=2006#r[17]

      “Promega does not assert infringement under § 271(f)(2) because Taq polymerase is “a staple article or commodity of commerce suitable for substantial non-infringing use.” See J.A. 6289.”

      That settles it for me.

      MM, it is not whether there was one component or two, or that the party in England was in the same corporate family, but that which was sold was a staple item of commerce. This changes my view of this case 100%.

      In an appropriate case, if only one component is sold, and it embodies the invention, there should be infringement. But apparently, it is infringement under 271(f)(2) anyway.

      1. Now, in principle, I agree with the Federal Circuit and the point made here in the Reply by Seth Waxman representing Promega:

        “More specifically, the panel rejected the rigid rule that
        “a single component supplied from the United States, no matter how important or central to the invention,
        can never constitute ‘a substantial portion of the components
        of a patented invention.”‘ !d. 34a (emphasis
        added). It is no surprise that not a single member of
        the Federal Circuit dissented from the denial of rehearing
        en bane on that limited holding.

        Then they go off the reservation here:

        In reality, the panel’s statement that the “Tautz patent would
        be inoperable” without Taq polymerase was immediately
        followed by the statement that “LifeTech’s own witness
        admitted that the Taq polymerase is one of the
        ‘main’ and ‘major’ components of the accused kits.” Pet.
        App. 34a. The panel also emphasized that its ruling
        was “based on the facts of this particular case.” I d. 28a.”

        “Central to the invention” is not the same thing as “major component” of the “kit.”

        I do not see HOW a commodity can be “central to the invention.”

        1. Seth Waxman: It is no surprise that not a single member of the Federal Circuit dissented from the denial of rehearing en bane on that limited holding.

          It was a surprise to me, given that 271(f)(1) on its face expressly refers to “components [plural] and given that 271(f)(2) is plainly intended to deal with single component exports.

          This business about a single component being “central” or “important” to the invention is a complete red herring. There’s nothing about that in any part of the statute or the Congressional testimony. That wasn’t what Deep South was about.

          271 refers to a component 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.” That’s quite a different concept from “important to the invention” (a worthlessly vague notion if there ever was one).

          If people believe that it’s necessary for 271(f)(1) to capture the export of single components, I’d like to know why they believe that. Is there some sort of undesirable activity that is going to take place if 271(f)(1) is construed construed otherwise (as it should be)?

          1. MM, I don’t think we need fuzzy logic here, or indistinct borders. If a single component is being sold it must, in my view, embody ALL the essential elements of the invention so that its sale would exhaust the patentee’s right to sue anybody downstream from infringing by completing the patented combination or by performing some of the remaining steps.

            This is why I think the Federal Circuit is way off the ranch in it recent ITC decision that importation of staples is an infringement. That cannot be. That too needs to be reversed.

            9-0
            9-0

            The Feds recent track record 0f unanimous reversals needs to be kept perfect. I must not draw even one dissent when the Supreme Court reverses.

            [Mein Gott is this court bad — seemingly always getting cases of first impression wrong.]

      2. Ned: it is not whether there was one component or two, or that the party in England was in the same corporate family, but that which was sold was a staple item of commerce

        Right. It should have been an easy slam dunk for Life Tech under the undisputed facts but the CAFC went out of its way to botch things up and create both additional uncertainty and waaaaaay more additional liability where previously there was little or none.

        But also recognize that if Life Tech had shipped, say, 12 staple elements (from the list of 13 elements in the claim) to itself then we’d be having a different discussion. In that event, 271(f)(2) wouldn’t apply and we could focus properly on what “substantial portion” and “actively induce” means in the context of, e.g., shipping half of the “components” in a claim, where the claim recites a combination of only staple “components”, or where the claim recites a mixture of staple and non-staple “components”.

  3. It’s a nice day for a right vetting
    It’s a nice day to start again

    There is nothing fair in this world
    There is nothing safe in this world
    And there is nothing sure in this world
    And there is nothing pure in this world
    If there’s something left in this world

    It’s a nice day for a right vetting

  4. I think the meaning of the word “induce” is in question here. Inducement usually means you persuade someone else to do something. However, it also means simply “to bring about or give rise to”. The obvious logical controversy is, if they are “inducing themselves”, why can’t you just go after the infringer for infringing. Well, because the infringement didn’t occur inside the US. The language of 271(f)(1) seems to pretty directly address this loophole and says nothing about inducing “others”, only about inducing the combination. The focus is on whether the invention is combined, and not on who does the combining. The facts still need to support “all or a substantial portion of the components”, which seems to be the critical point of question 2. Identifying a part as a commodity doesn’t inherently exclude a finding, but it does seem to suggest that that particular component shouldn’t be considered to be “substantial”.

    1. The facts still need to support “all or a substantial portion of the components”, which seems to be the critical point of question 2. Identifying a part as a commodity doesn’t inherently exclude a finding, but it does seem to suggest that that particular component shouldn’t be considered to be “substantial”.

      There’s also the fact that 271(f) refers to “such components [that are supplied] are uncombined”. Components is plural. Of course it’s plural. If it was singular, there would be no need to include all this business about “uncombined” components, which is the whole point of the statute (to capture folks who are trying to avoid infringement of a US patent by doing everything except final assembly of the patented device before shipping).

      If Congress wanted to make infringers out of foreigners who use US parts to practice US patents in their own countries, Congress could simply have written “Anybody in a foreign country who uses any US-manufactured part in a device that would infringe a US patent if it was made in the US is an infringer, regardless of whether that part is a staple item of commerce or not.” But that’s not what Congress wrote. They wrote the opposite.

      The folks around here who stop their analysis at “the definition of portion includes a single thing” are doing their analysis in a vacuum or in some kind of alternate universe where 271 has no other sections (most importantly 271(c)) and where Congress concocted 271(f) out of thin air without any rhyme or reason.

      1. No one is “stopping their analysis”

        Stop the dissembling.

        There is a HUGE difference between your spin and your own actions of simply not applying basic statutory construction and hanging your hat on the plural/singular form of the word in the statute.

        Get the statutory constructions correct first, then continue your “analysis.” Don’t “skip” that important point just to get to the “spin” that you want to get at.

        1. No one is “stopping their analysis”

          Interesting. Is there another part to your “analysis” beyond the “the definition of ‘portion’ includes a single thing” part? Some evidence of Congressional intent to include single staple items of commerce within the scope of 271(f)(1) perhaps? Please share.

          1. LOL – it is you that needs to “up” your analysis with a clear improvement to the foundation of the statutory reading.

            My posts on this have been clear and direct.

                1. Just let everyone know if there is another part to your analysis other than the simplistic “portion includes singular” part that we’ve all heard you beat to the ground already.

                  There isn’t another part, right? Step up, “anon.” This a real shining moment for you. Be proud.

                2. You keep on wanting to put this on my – take your own advice about learning to read and try (again) this short declarative sentence:

                  Once again – it is YOUR analysis that is at fault.

    2. edstirling: The focus is on whether the invention is combined, and not on who does the combining.

      In fact, on its face, meeting the terms of the statute does not clearly require that the supplied uncombined parts are ever actually combined by anyone (although such an event would seem to lend support to an otherwise speculative argument as to whether, e.g., the shipping of some uncombined parts constituted an “inducement”).

      1. Ah, Holbrook’s brief includes the reminder: the Federal Circuit has held that there is infringement under § 271(f) even if the device is never assembled outside of the United States. Waymark Corp. v. Porta Systems Corp., 245 F.3d 1364, 1368 (Fed. Cir. 2001). This interpretation expands the scope of this provision by ensnaring conduct abroad regardless of whether the device has been assembled.

        Holbrook also notes:

        Oddly the Federal Circuit suggested this interpretation avoided the appearance of providing extraterritorial reach to United States, id., yet the court’s decision actually expanded such reach.

        Just for the record, there is no dispute that, in the instant case, Life Tech used an exported item of commerce (Taq polymerase) to assemble an otherwise infringing kit overseas.

  5. Dennis: “in his amicus brief supporting the petition, Dean Tim Holbrook argues that the Federal Circuit ‘consistently fails to consider the presumption against extraterritoriality’ ”

    Huh? The statute is aimed at extraterritoriality. That is the very reason the statute was amended to include 271(f) – the presumption against extraterritoriality, as applied in deepsouth by SC [correctly, I believe], caused Congress to enact the section. Is he arguing that the statutory presumption should operate to limit congress’s plainly written words?

    I think inducing yourself is not far fetched in the current global supply chain; definitionally, it’s an artificial division. The definition of substantial is slippery – but any argument based on policy focusing staple article of commerce is beside the point. See 271(f)(2), which explicitly uses that phrase – if congress was worried about staple articles of commerce, they knew how to address it. It’s just a gap-filer begging courts to use smoke and mirrors.

    1. slaf I think inducing yourself is not far fetched in the current global supply chain; definitionally, it’s an artificial division.

      I’m not sure what “artificial” is supposed to mean in this context but the issue isn’t whether “inducing yourself” is “far fetched”. Multinational corporations were hardly unusual when this statute was drafted. On the country, multinational corporations were famously several centuries old (at least) when the statute was drafted.

      The statute is aimed at extraterritoriality.

      Nobody is disputing that. But there is zero evidence that Congress intended 271(f) to create US patent liability for foreign companies who import single staple items of commerce into their country from the US (or anywhere else).

      f congress was worried about staple articles of commerce, they knew how to address it.

      Indeed. And Congress was worried about creating liability for the import/export of single staple items of commerce which is why Congress expressly stated that such acts don’t fall within the scope of 271.

      The definition of substantial is slippery – but any argument based on policy focusing staple article of commerce is beside the point.

      No, it’s certainly not “beside the point.” It is the point. Congress was enacting policy when it wrote the law. Construing a “slippery” term requires understanding what policy Congress intended to promote when it wrote the law. Did the facts in Deep South concern the export out of the US of a single staple of commerce? Nope. Of course not. And Congress could have cared less about that scenario for the simple reason (but not the only one) that no US business would want to be found liable for infringement of a Mexican or Chinese or Japanese or Canadian or South African patent merely because they imported a single staple “fastening means” from one of those places and used it as a component in a device that’s off-patent in the US. But that’s the crazy scenario the CAFC endorsed with their bizarre decision.

      1. Once again, the statutory construction principles of singular/plural seem to escape your abilities to understand law.

        Basics, Malcolm – basics.

        1. See, for example, footnote 44 at link to fas.org

          The Dictionary Act provides that ‘unless the context indicates otherwise,’ ‘words importing the singular include and apply to several persons, parties, or things; words importing the plural include the singular.’ 1 U.S.C. § 1.

        2. “anon” the statutory construction principles of singular/plural seem to escape your abilities to understand law.

          I’ve addressed this nonsense of yours a hundred times already.

          1. Your “version” of “address” is itself sheer nonsense Malcolm.

            You have never properly accounted for this basic element of statutory construction.

            Ever.

            1. You have never properly accounted for this basic element of statutory construction.

              Your precious “basic element of construction” doesn’t matter for squat given all the other “basic elements of construction” in the construction kit, most importantly the “basic element” that says you don’t read a statute as if you were born yesterday or as if the statute was written in a sealed vacuum divorced from reason, logic and common sense.

              1. It is actually something that directly matters. For the very purpose that such a statutory construction canon exists in the first place.

                If in fact as you claim now (that it doesn’t matter for squat) then there would have been no need for you to engage in your claimed activity of “I’ve addressed this nonsense of yours a hundred times already.

                Your L I E spawns ever more L I E S.

                You are not very good at this.

                Try less spin and more substantive positions.

                1. no need for you to engage in your claimed activity of “I’ve addressed this nonsense of yours a hundred times already.”

                  Well, when some kinda crazee person keeps bringing up the same nonsense over and over and over and over again and ranting about how it’s never being “addressed” there might be a “need” to say something. That has nothing to do with the actual “importance” of the nonsense, however.

                  I apologize if that’s too nuanced for you.

                  LOL

                2. LOL – your not (actually) addressing a basic canon of statutory construction is not a matter of “nuance

                  It’s a pretty flagrant and obvious lack on your part.

                  Maybe try less spin and more actual statutory construction.

                3. your not (actually) addressing a basic canon of statutory construction

                  I’ve addressed the singular versus plural nature of terms in 271(f)(1) and 271(f)(2) *endlessly*.

                  Simply because I find your pet theory nonsensical (because it ignores the plain language of 271(f)(1), not to mention the statutory history and what your reading does to the other parts of the statute) doesn’t mean that I haven’t “addressed” it.

                  Your inability to grasp this is just another manifestation of your clinical narcissism. Get help.

                4. Once again, Malcolm, your “version” of “address” just does not cut it.

                  Your “version” is equivalent to “Wah, I don’t like it so I am going to pretend it does not exist – plural, plural, plural – wah”

                5. “anon” your “version” of “address” just does not cut it.

                  Please show everyone exactly what would “cut it” in your fantasy world where everybody needs to genuflect before your oh-so-serious beliefs.

                  Do I need to call you out by name and make particular note of your awesome contribution (which surely was unprecedented), with a supremely generous thank you, before I move on to explain why it makes no sense on its face, not to mention the enormous and ridiculous expansion of liability that results and the obvious extreme problems it creates for other sections of the statute? Is that what you’re looking for?

                  Maybe next time. Seems a little late now but at least you have something to look forward to.

      2. I agree with slaf that deciding this case on whether it is substantial component or not is a bad idea, but for a different reason.

        Say the patent owned by X consists of components (and limitations) A, B, C. A is the substantial component. Company Y ships component A to its subsidiary so as (among other things that A can be used for) to assemble A with B and C. Under this decision, which I agree is bizarre, Y has induced infringement. Practically, X has a patent on the shipment of A, even though the patent only covers A+B+C. That’s why this case needs to be decided under question 1.

        1. J: I agree with slaf that deciding this case on whether it is substantial component or not is a bad idea, but for a different reason.

          I think you misunderstand the facts of the case here, J.

          The question isn’t whether or not Taq polymerase is a “substantial component” of the kit. Under the Federal Circuit’s definition “substantial”, pretty much every necessary element of a device is itself a “substantial component.”

          The issue in this case is whether the term “substantial portion” of uncombined components as used in 271(f) can include a single staple item of commerce (like Taq polymerase) (in which case 271(f)(2) is completely swallowed up).

          The answer to that question resolves the case and, given that it’s an incredibly easy question to answer (the answer is “no, of course not”), it’s question 2 that needs to be addressed.

          If some foreign company thinks it can avoid infringing a US patent on the combination of A,B,C,D,E and F by having its US subsidiary export A,B,C,D,E plus uncombined F to its home country for final assembly, then it should take its chances. It might be a real money-saver! At least that way the Supremes will have a case with the appropriate facts.

          1. If some foreign company thinks it can avoid infringing a US patent on the combination of A,B,C,D,E and F by having its US subsidiary export A,B,C,D,E plus uncombined F to its home country for final assembly, then it should take its chances. It might be a real money-saver! At least that way the Supremes will have a case with the appropriate facts.

            LOL – look who is playing the “gee I was born yesterday” game now…

                1. here we go again

                  If you’d actually respond to the point I raised with a coherent argument rather than an incomprehensible insult with zero other content, then we wouldn’t be “going again.”

                  What on earth did you mean by your 5.1.2.1.1. comment? Go ahead and explain how that’s responsive to what I wrote. That’s what you should have done the first time. Do it now instead of crying to Dennis because Dennis surely knows how you operate. We all know that.

          2. The Supreme Court is not that interested in deciding cases like on the facts. It usually defers to the lower courts in those instances.

            Situation 1: If a patent consists of A+B, and I ship A with instructions on where to find and how to combine with B.

            Situation 2: Patent consists of A+B+C, I ship A and C with instruction on where to find and how to combine with B.

            If Situation 2 is induced infringement, and from my understanding it is, are you saying that Situation 1 is not induced infringement because Congress added an “s” to components? Unlikely, in my opinion.

            1. He hangs his hat on the plural/singular, then ig nores the on point statutory construction canon for plural/singular, and then only has insults and “just because” type of “reasoning.”

              Stellar.

            2. J: Situation 2: Patent consists of A+B+C, I ship A and C with instruction on where to find and how to combine with B.

              If Situation 2 is induced infringement, and from my understanding it is,

              It might be and it might not be. For example, if B is a very complicated piece of specialized equipment that has been separately patented in the US but A and C are “distilled water” and “salt” respectively, I think it’s entirely possible (and reasonable, and fair) for a court to find that there is no infringement under 271(f)(1). That’s because pretty much none of the “substantial components” of the claimed invention are ever within US territory.

              It can’t be repeated often enough, apparently, but here goes: absent a process patent (not an issue here), making a device or composition that is not patented in one’s own country is perfectly legal both here and in the other country (at least under the patent laws).

              Let’s say there’s a US patent on a bong cleaning solution comprising water, salt and a very complicated chemical X — the active ingredient — but there is no patent in Mexico where you live. I can surely send you the US patent and say “Here’s the instructions — to be carried out in Mexico only!” I can also certainly send you some salt with that letter and speak to you about my upcoming visit. Can I now be enjoined by the patentee from crossing the US border to visit you because of the high likelihood I have some water in my car? I kinda doubt that, frankly. Maybe. But I doubt it.

              are you saying that Situation 1 is not induced infringement because Congress added an “s” to components?

              No, I’m saying that the export of a single component is addressed by another section of 271(f) which includes a hugely important exception for the export of single staple items of commerce.

              As already noted, your reading of the 271(f)(1) “swallows up” 271(f)(2) which is a huge problem for your reading of 271(f)(1). Note that you have a big problem with your reading and I haven’t even gotten into the Congressional intent issues or the factual background which led to the passage of 271(f). That’s why reversal is pretty much a no-brainer.

              Maybe also consider that the Supreme Court doesn’t ask the solicitor general for input on most of its cert petitions. Mostly the just deny cert. But some folks here (like me) predicted this case would be different. And lo and behold that’s how it’s turning out. I’m not surprised one bit. Are you?

              1. I think that the Supreme Court is likely to reverse. The CAFC made a very silly decision in my book, but I think it will reverse on Question 1 and will refuse to reverse on Question 2.

                My reading of 271(f)(1) focuses on the language, “in such manner as to actively induce the combination of such components.”

                In my Situations above, A (and C) is a substantial portion of the patented invention. Unlike 271(f)(2), it need not be especially adapted to the patented invention, or only have one function. What matters is that such products are put together in such a way as to actively induce combinations that lead to the patented invention. This is not the same as 271(f)(2).

                Another hypothetical: the patented invention is gadget A configured in position alpha. Position beta is not patented. I send gadget A in configured in position beta with complete instructions to switch the configuration to alpha. I would not be infringing in 271(f)(2), right? But I would be infringing under 271(f)(1), even though it only contains 1 component.

                1. Malcolm commented about how your “version” would have 271(f)(1) swallow 271(f)(2) all the while he merrily disregards how his version does the reverse (in the case of the different intent as you point out with your third paragraph).

                2. J In my Situations above, A (and C) is a substantial portion of the patented invention.

                  Really? Because you say so? Your hypothetical now seems to assume your conclusion! That’s convenient….

                  In your situation 1, A represents one half of the claimed invention. That is a “substantial portion”, as a per se matter, regardless of whether A is a staple item of commerce or not?! Not even the Federal Circuit has strayed that that far from a plain reading of 271(f).

                  What matters is that such products are put together in such a way as to actively induce combinations that lead to the patented invention.

                  In your situation 1, there are no exported “products” (plural) to be put together. So … what are you talking about? How can you export one staple component “in a manner that actively induces” under 271(f)(1)? I’m not suggesting there isn’t an answer. I’m just observing that you haven’t provided it.

                  It’s important to address the obvious questions/issues raised by your own hypotheticals. Don’t just repeat your conclusions, J. That’s a bad habit, especially when your conclusions are disputed (with explanations) by numerous commenters here.

                3. J: Another hypothetical: the patented invention is gadget A configured in position alpha. Position beta is not patented. I send gadget A in configured in position beta with complete instructions to switch the configuration to alpha …I would be infringing under 271(f)(1), even though it only contains 1 component.

                  No, you wouldn’t infringe because 271(f)(1) doesn’t apply to “gadget configurations.” It applies to uncombined elements of a device that, if combined outside of the US border, would infringe a US patent on that device.

                  As you reach futher and further out, J, you’re going to run into bigger and bigger problems with your hypotheticals, i.e., they become sillier and less moored in reality.

                  Try to remember, J, that there is no law — none — preventing me from sending a foreigner a US patent and informing that person “Hey, this is off-patent in your country. Go crazy!” And vice versa. That’s a good thing.

                  The idea that such instruction could be converted into an act of patent infringement because I include with my instructions a single staple item of commerce (e.g., paper) that happens to be recited in a patent claim is, quite frankly, absurd.

                4. “anon”: Malcolm commented about how your “version” would have 271(f)(1) swallow 271(f)(2) all the while he merrily disregards how his version does the reverse (in the case of the different intent as you point out with your third paragraph).

                  There is no “reverse swallowing” in “my version”. If you believe I’m incorrect about that, then do your best to explain why in plain English. Otherwise you’re just puffing hard on your personal pipe, as usual.

    2. I disagree with your statement that the statute is aimed at extraterritoriality. The law is aimed for actions in the United States, where the potential infringer stops just before assembly is complete. That is, everything is done accept the easy stuff. Then the potential infringer, with hardly any contacts outside the U.S., sells and ships the materials with only minor assembly needed. The law aims to prevent certain actions INSIDE the United States.

      1. I disagree with your statement that the statute is aimed at extraterritoriality.

        This gets semantic pretty quickly. The primary purpose of the statute is to close a loophole which allowed actors to profit off disclosed, patented technology by exporting otherwise infringing devices (<–physical objects falling within the scope of a US patent) in unassembled form. Without this statute, those actors would ride freely because the US patent rights don’t reach into the territories beyond the United States where actual infringement occurs (or seems likely to). With this statute, such activity is deterred. Thus (the argument goes), the statute does have “extraterritorial” “aim.”

        1. Talk about spin….:

          This gets semantic pretty quickly. The primary purpose of the statute is to close a loophole which allowed actors to profit off disclosed, patented technology by exporting otherwise infringing devices (<–physical objects falling within the scope of a US patent) in unassembled form.

          No one was exporting devices.
          Period.
          Not “otherwise” or any other spin factor.

          The statute is broader – and was meant to be broader – than the “mere all the pieces are here in a single box, go ahead and assemble.”

          You just have to deal with it.

          1. No one was exporting devices.

            Learn to read.

            The statute is broader – and was meant to be broader – than the “mere all the pieces are here in a single box, go ahead and assemble.”

            In fact it wasn’t meant to be much broader than that and when you read 271(f)(2) in the context of 272(f)(1) and the rest of 271 with an understanding of what Congress was trying to address it’s pretty much impossible to come to any other conclusion. That’s why this decision is going to be reversed or, if it doesn’t get reversed, Congress is going to need to re-write the statute to prevent trolling based on your ridiculous “single staple items are substantial uncombined components” theory.

            I know that being wrong about pretty much every important “controversy: in patent law is a habit of both you and your heroes but maybe take a deep breath and try to recall that even your bff EG is perfectly aligned with me on this “staple item” issue (or he was). This was just a simple example of the CAFC completely botching it for no apparent reason. It happens.

              1. You are doing that “waving around conclusion with no means to get there” thing again.

                Right. I’ve never explained my position on this matter before.

                Keep telling yourself that, psych0.

                1. Your explanation at 5.1.2.1.2.2 is the first time you’ve gone to that level of detail.

                  Most times you simply whine about the plural – in clear mistake of statutory construction canons.

        2. But you agree that the statute doesn’t prevent an American company operating in Brazil to induce infringement in Peru, right? The statute is only trying to stop the practice from occurring in the United States, that is why it is not extraterritorial in any sense.

          1. anon, you argue in post 1 that this is extraterritorial. I’m arguing at 5.2 it isn’t.

            We agree that question 2 in the petition for cert. is going to go against the petitioners, but I have no idea of your opinion on question 1.

          2. J But you agree that the statute doesn’t prevent an American company operating in Brazil to induce infringement in Peru, right?

            Absolutely, J. The statute is not “extraterritorial” in that sense.

      2. 271(f)(1) importantly has this clause:

        supplies or causes to be supplied in or from the United States…

        So yes, J, you are absolutely correct that the law in question is directed to actions under US sovereign control.

        Don’t like it? Talk to Congress. Is there a possibility that other nations might have to go without items from the US? Sure. Again, talk to Congress.

  6. Can someone please post a link to Holbrook’s amicus brief? I couldn’t find a copy …

    Kinda unreal that this stuff isn’t available easy right on the SCOTUS website. It’s 2015. Ten zillion computer patents and apparently putting up some low res images of a text document is just too much technology for this awesome country of ours.

  7. in its petition for certiorari, the adjudged infringer has followed Prof. Rantanen’s lead and asks the following questions:

    1. Whether the Federal Circuit erred in holding that a single entity can “actively induce” itself to infringe a patent under 35 U.S.C. § 271(f)(1).

    2. 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.

    I believe Question 2 can be very easily and conclusively answered in the negative, thereby rendering question 1 moot.

    From a policy perspective (and arguably consistent with Congress’ intent) it seems to me that if a single entity operating in the US and a foreign country were to export from the US to its foreign assembly plant all or nearly all of the non-staple components of, say, a patented shr mp deveiner, the ‘inducing oneself” controversy would be truly academic. I submit that if the Supreme Court decided that the statute was worded in such a way as to exclude “self inducement” with those facts (critically different from the facts of the instant controversy) even our famously dysfunctional Congress would step in to fix the statute to plug the loophole.

    Question 2, however, presents completely different issues and those issues were already plainly addressed by Congress when they drafted the statute. The CAFC just completely botched that aspect of the decision.

    1. Oops, slight correction to my comment above:

      “I believe Question 2 can be very easily and conclusively answered YES, the CAFC did err” [<–fixed]

  8. in its petition for certiorari, the adjudged infringer has followed Prof. Rantanen’s lead and asks the following questions:

    1. Whether the Federal Circuit erred in holding that a single entity can “actively induce” itself to infringe a patent under 35 U.S.C. § 271(f)(1).

    2. 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.

    Question 2 can be very easily and conclusively answered in the negative, thereby rendering question 1 moot.

    From a policy perspective (and arguably consistent with Congress’ intent) it seems to me that if a single entity operating in the US and a foreign country were to export from the US to its foreign assembly plant all or nearly all of the non-staple components of, say, a patented shrimp deveiner, the ‘inducing oneself” controversy would be truly academic. I submit that if the Supreme Court decided that the statute was worded in such a way as to exclude “self inducement” with those facts (critically different from the facts of the instant controversy) even our dysfunctional Congress would step in to fix the statute to plug the loophole.

    Question 2, however, presents completely different issues and those issues were already plainly addressed by Congress when they drafted the statute. The CAFC just completely muffed that aspect of the decision.

    1. Apologies for the double post. First couple tries got stuck in the filter, apparently because of the pejorative reference to a prawn.

  9. I would posit that the larger drive towards global harm-inization evidences the opposite of the views expressed here: that extraterritoriality is indeed not only desired, but inevitable.

    One cannot purposefully choose to be blind to what is easily seen as the inevitable side effects of a “One World Order.”

    I will also note that this (trend towarsds One World Order) goes against my own views.

    1. anon, as I have said before, we need the ROW to agree to allow US patents to be enforced for infringements in their countries by treaty. This way, long term, the US patent will become a world patent.

      I suspect that the Euro’s will want a say in or take a part in the examination process of US patents if they are going to agree to allow them to be enforced in Europe.

      1. As to taking part in the examination process, Ned, are you not aware of the various workshare programs….?

        As I said, the trend already existing is opposite that which the academics indicate here, and is not a trend with which I support.

        I don’t mind “being friendly” and welcoming foreigners into an individual sovereign’s patent “game,” but that “game” first, foremost, and last, is built to advance the interests of the sovereign – not of some larger global community, nor the interests of “making things easy” for those Big Corp multinationals who – in truth – have NO single country allegiance, and can play off one country’s largess against another at will and hop skip and jump from low net cost factor location to lower net cost factor location to lowest net cost factor location at will. Catering to such in such a blind fashion is NOT looking out for the best interests of ANY sovereign.

        1. anon, if we can cooperate at winning wars, sharing command structures, etc., sure we can cooperate on examining patents.

          And, yes, I am aware that the trend is in that direction already.

              1. ^^^ maybe you want to “address” the point at hand?

                (and by “address” I do not mean your typical move of repeating your conclusionary hand-waving and saying “see? I addressed it

                1. (and note the “tag team” aspect of Malcolm jumping in to “derail” a simple point of logic offered to Ned for Ned’s simple affirmation or denial – because the point is in fact rather direct and immediately bearing on the issue at hand, but Malcolm has NO reasoned or thoughtful means to get to his desired ends)

                  Oh so typical.

                2. a simple point of logic offered to Ned

                  LOL

                  Your crack about “the academics here” was a “point of logic”?

                  Funny stuff.

      2. we need the ROW to agree to allow US patents to be enforced for infringements in their countries by treaty. This way, long term, the US patent will become a world patent.

        And the US will, of course, allow patents granted by the Uzbekistan patent office to be enforced here.

        This isn’t going to happen in our lifetime, or our grandchildren’s lifetimes. But there is probably some really rich grifters lying in bed every night fantasizing about the awesome games that can be played when this “treaty” is signed.

      1. If by “post this on infowars” you mean, did I mean to post this to provoke a thoughtful dialogue, the answer is “Yes.”

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