aipla 2016 u.s. patent law: application to activities performed outside the united states january...
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AIPLA 2016 Presumption Against ExtraterritorialityTRANSCRIPT
AIPLA 2016
U.S. Patent Law: Application to Activities Performed Outside the United States
January 2016
Presented by:John Livingstone
AIPLA 2016
Application of U.S. Patent Law in an Age of International Infringement
AIPLA 2016
Presumption Against Extraterritoriality
AIPLA 2016
Presumption Against Extraterritoriality
“The presumption that U.S. law governs domestically but does not rule the world applies with particular force in patent law”
Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007)
AIPLA 2016
35 U.S.C. § 271(a)
Whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent
AIPLA 2016
U.S. Sale and Offer for Sale
Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371 (Fed. Cir. 2014)
AIPLA 2016
U.S. Sale and Offer for Sale
“[P]ricing and contracting negotiations alone are insufficient to constitute a ‘sale’ within the United States.”
Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371 (Fed. Cir. 2014)
AIPLA 2016
U.S. Sale and Offer for Sale
An “offer to sell, in order to be an infringement, must be an offer contemplating sale in the United States.”
Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371 (Fed. Cir. 2014)
AIPLA 2016
Sales Activity: Damages
Carnegie Mellon Univ. v. Marvell Tech. Group, Ltd., No. 14-1492, 2015 WL 4639309 (Fed. Cir. 2015)
AIPLA 2016
Sales Activity: Damages
[Cannot use sales] as a direct measure of the royalty except as to sales that are domestic.
Carnegie Mellon Univ. v. Marvell Tech. Group, Ltd., No. 14-1492, 2015 WL 4639309 (Fed. Cir. 2015)
AIPLA 2016
Sales Activity: Damages
“The standards for determining where a sale may be said to occur do not pinpoint a single, universally applicable fact that determines the answer … .”
Carnegie Mellon Univ. v. Marvell Tech. Group, Ltd., No. 14-1492, 2015 WL 4639309 (Fed. Cir. 2015)
AIPLA 2016
Components of Patented Products
AIPLA 2016
35 U.S.C. § 271(f)
Supplying components of patented invention to induce combination outside of the United States is infringement
AIPLA 2016
35 U.S.C. § 271(f)
Supplying component especially made or adaptedfor use in patented invention infringes …
AIPLA 2016
35 U.S.C. § 271(f)
Supplying component especially made or adaptedfor use in patented invention infringes …
unless it is a staple article or commodity suitablefor substantial noninfringing use
AIPLA 2016
Is Software a “Component”?
Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007)
AIPLA 2016
Is Software a “Component”?
Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007)
“Abstract software code is an idea without physical embodiment, and as such, it does not match § 271(f)’s categorization: ‘components’ amenable to ‘combination.’”
AIPLA 2016
Take Home Messages Sales activity may infringe and provide support for
increased damages base Analyze facts on a case-by-case basis
Offer for sale must target sale in the United States to infringe
Software (or blueprints, design tools, schematics, templates, protocols, etc.) is not a “component” for purposes of 271(f)
AIPLA 2016
Questions?
John LivingstoneFinnegan303 Peachtree St. NESuite 3500Atlanta, Georgia [email protected]