EXTRATERRITORIALITY
OF PROCESS PATENTS
MEET OUR NEW
PATENT CONGRESS:
THE
FEDERAL
CIRCUIT
SHORT HISTORY
1. In Deep South Packaging Co. v. Laitram, 406 U.S.518
(1972), the Supreme Court felt that none of the patent laws covered
components for a shrimp deveining machine, whose components
were manufactured in the United States and assembled abroad.
2. This lead to the Congressional enactment of 271(f) in 1984
and (g) in 1987, laws created without which “the public would not
benefit from the release of creative genius” citing H.R. 6286, Patent
Law Amendments Act of 1984, 130 Cong. Rec. 28069 (Oct. (1984).
When signed by President Reagan he stated the stated 271(f) was
intended to “[close] a loophole in existing law which permitted copiers
to export jobs and avoid liability by arranging for final assembly of
patented machines to occur off-shore.”
www.presidency.ucsb.edu/ws/print.php?pid=39406 (Nov. 9. 1984).
3. 271(f) was enacted specifically in response to the Deep
South decision.
271(f)(1)
(1)
Whoever without authority supplies or causes to be
supplied in or from the United States all or a
substantial portion of the components of a patented
invention, where such components are uncombined
in whole or in part, in such manner as to actively induce
the combination of such components outside of the
United States in a manner that would infringe the patent
if such combination occurred within the United States,
shall be liable as an infringer.
That is, staple articles of commerce.
271(f)(2)
(2)
Whoever without authority supplies or causes to be
supplied in or from the United States any component of
a patented invention that is especially made or
especially adapted for use in the invention and not a
staple article or commodity of commerce suitable for
substantial noninfringing use, where such component
is uncombined in whole or in part, knowing that such
component is so made or adapted and intending that
such component will be combined outside of the United
States in a manner that would infringe the patent if such
combination occurred within the United States, shall be
liable as an infringer.
STANDARDS HAVENS PRODUCTS INC. v.
GENCOR INDUSTRIES, INC.,
953 F.2d 1360 (Fed. Cir. 1991)
Patented method of producing asphalt.
Foreign sale for an apparatus capable of
carrying out the method.
Finding 271(f) not implicated.
WAYMARK CORP. v. PORTA SYS. CORP.,
245 F.3d 1364 (Fed. Cir. 2001)
Holdings:
1. There need not be a direct infringement for liability under
271(f)(2) and
2. Components need not be assembled abroad so long as
the components are intended to be assembled abroad.
The Court’s reasoning: Requiring assembly abroad would
“pose the appearance of ‘giving extraterritorial effect to United
States patent protection.’ ”
PELLIGRINI v. ANALOG DEVICES,
375 F.3d 1113 (Fed. Cir. 2004)
Holding: 271(f) does not apply when the
United States company supplies instructions to
manufacture a patented invention abroad.
Further, for 271(f) to apply, components of
a patented invention must be physically present
in the United States.
EOLAS TECH. INC. v. MICROSOFT
CORP., 399 F.3d 1325 (Fed. Cir. 2005)
Holding: 271(f) applies to the employment of a web
browser and a fully interactive environment in Internet Explorer
where Microsoft sends a golden master disc exported to be
further distributed as source code on computer in foreign
countries.
Finding of Court: Software qualifies as
“components of a patented invention.”
The Court’s reasoning:
“Interchangeable nature of software and hardware.”
AT&T CORP. v. MICROSOFT CORP.,
414 F.3d 1366 (Fed. Cir. 2005)
The patented technology was speech codes (method and article)
alleged to infringe AT&T’s patents.
Presently before the Supreme Court for decision, oral argument
in February 2006.
Holding: 271(f) applies; software can be a component.
“Supplying” means “generating a copy” and Microsoft found to
send a golden master disc outside the United States which was
manufactured abroad by encoding a storage medium with the
Windows software.
Pellegrini distinguished as Microsoft was distributing “an
actual component, i.e., the Windows Operating System.”
Federal Circuit AT&T Decision Reversed
by Supreme Court April 30, 2007
Supreme Court ruling:
• General rule – Section 271(f) shall be read narrowly to only
encompass situations contemplated when enacted.
• There is a presumption against extraterritorial effect. Foreign
conduct is generally the domain of foreign law.
• Foreign law embodies different policy judgments on the rights
of inventors and the public.
• Foreign law alone governs the manufacture and sale of
components of patented inventions in foreign countries.
• Any arguable gaps or loopholes in legislation must be
determined by Congress and not judicial forecasting.
• There is no license to attribute to Congress an unstated
intention.
NTP, Inc. v. RESEARCH IN MOTION,
418 F.3d 1282 (Fed. Cir. 2005)
Holding: As to the method claim, 271(f) did not
apply to the shipment of Blackberry devices, the court
pointing out the difficulty with conceiving “how one
might supply or cause to be supplied all or a substantial
portion of the steps of a patented method.”
No mention ever made of whether a method
Incoming could
Call:
never be invoked under 271(f).
OLD
BATTLE AXE
UNION CARBIDE CHEMS. & PLASTICS
TECH. CORP. v. SHELL OIL CO.,
425 F.3d 1366 (Fed. Cir. 2005)
Petition for certification filed, case settled
before petition acted upon.
Patent for process for using a silvercontaining catalyst. Claim 4 (the only claim at
issue) – the process of Claim 1 where the
alkaline metal is lithium.
UNION CARBIDE CHEMS. & PLASTICS
TECH. CORP. v. SHELL OIL CO.,
425 F.3d 1366 (Fed. Cir. 2005) (cont’d)
Claim 1 – In the continuous process for the production of ethylene oxide by the vapor
phase oxidation of ethylene with molecular oxygen provided as an oxygen-containing gas at a
temperature of from about 200 C. to 300 C. in the presence of at least about one mole percent of
carbon dioxide and an organic chloride in the gaseous feed stream and in the presence of a
supported silver-containing catalyst in a fixed bed, tubular reactor used in commercial
operations to form ethylene oxide, wherein said supported, silver-containing catalyst contains 2 to
20 weight percent silver deposited on a support which is in a form and size for use in the reactor,
wherein (i) the specific reaction conditions of the ethylene oxide process; (ii) the specific
catalyst support characteristics and (iii) the specific silver deposition method comprise an
ethylene oxide production system, the improvement in which the catalyst comprises silver
deposited on an alpha-alumina macroporous support in the first amount having a surface area
less than 10 m 2/g and contains a combination of (a) cesium in a second amount and (b) at
least one other alkali metal selected from the group consisting of lithium, sodium, potassium
and rubidium in a third amount, which combination comprises (a) and (b) in amounts in relation
to the amount of silver in the catalyst sufficient to provide an efficiency of ethylene oxide
manufacture that is greater than the efficiencies obtainable in the same ethylene oxide
production system, including the same conversions, than (i) a second catalyst containing
silver in the first amount and cesium in the second amount, and (ii) a third catalyst containing
silver in the first amount and the alkali metal in the third amount, wherein the combination of
silver, cesium and alkali metal in said catalyst is characterizable by an efficiency equation:
[complicated efficiency equation omitted to save space]
LIMITATIONS OF CLAIM 4 AS CONSTRUED
BY THE DISTRICT COURT (AND AFFIRMED)
(1) an EO process operated at specific reaction conditions;
(2) the catalyst used in the EO process comprises silver in a first amount,
cesium in a second amount, and lithium in a third amount;
(3) the efficiency obtainable from the EO process using the catalyst is
greater than the efficiency of a process using (a) a second catalyst containing silver
in the first amount and cesium in the second amount (but no lithium) and (b) a third
catalyst containing silver in the first amount and lithium in the third amount (but no
cesium), when operated in the same EO production system (the “comparison test”);
and
(4) the combination of silver, cesium and lithium is characterizable by the
efficiency equation set forth in claim 1 (the “characterizable test”).
Holding: 271(f)(2) violated, citing AT&T v. Microsoft and Eolas v. Microsoft,
where the Court compared favorably the exportation of a computer disc with
program code to a catalyst in the performance of a patented process or method.
Although 271(f)(2) is first cited, the only rationale that follows talks to 271(f)
generally.
UNION CARBIDE CHEMS. & PLASTICS
TECH. CORP. v. SHELL OIL CO.,
425 F.3d 1366 (Fed. Cir. 2005)
NTP distinguished Court rules Shell supplied
catalyst from the United States directly to foreign
customers. NTP was the domestic sale of a
component being used in part outside of the United
States.
Holding: Eolas more factually analogous to Shell
and earlier in time than NTP. Further holding: 271(f)
governs method/process inventions, exportation of
catalyst may result in liability in 271(f).
PROBLEM: UNLIKE EOLAS AND AT&T, THE
CATALYST IN SHELL WAS NOT A PATENTABLE
COMPONENT BUT A VERY OLD SILVER
CATALYST NOW USED IN A NEW AND IMPROVED
PROCESS THAT WAS PATENTABLE
It does not appear that the
silver catalyst was “especially
made or especially adapted for
use in the invention.” It does
appear as if it is a staple article
or commodity of commerce
suitable for substantial
noninfringing use, such as use
of Shell’s process prior to its
infringing use.
UNION CARBIDE CHEMS. & PLASTICS
TECH. CORP. v. SHELL OIL CO.
FIRST DECISION – 308 F.3d 1167 (Fed. Cir. 2002)
Findings of Court: “It is well known in the field
that one can increase reaction efficiency by combining
the ethylene and oxygen in the presence of silver
catalyst.”
1243
Union Carbide patent referred to as the
synergy patent: a synergistic mixture of silver, cesium
and lithium and is “characterized by an efficiency
equation.”
UNIVERSITY OF ROCHESTER v.
G.D. SEARLE & CO., INC.
375 F.2d 1303 (Fed. Cir. 2004)
1. A method for selectively inhibiting
PGHS-2 activity in a human host, comprising
administering a non-steroidal compound that
selectively inhibits activity of the PGHS-2 gene
product to a human host in need of such
treatment.
UNIVERSITY OF ROCHESTER v.
G.D. SEARLE & CO., INC.
375 F.2d 1303 (Fed. Cir. 2004) (Cont’d)
6. A method for selectively inhibiting PGHS-2 activity in a human host,
comprising administering a non-steroidal compound that selectively inhibits activity of
the PGHS-2 gene product in a human host in need of such treatment, wherein the
ability of the non-steroidal compound to selectively inhibit the activity of the PGHS-2
gene product is determined by:
a) contacting a genetically engineered cell that expresses human PGHS-2,
and not human PGHS-1, with the compound for 30 minutes, and exposing the cell to a
pre-determined-amount of arachidonic acid;
b) contacting a genetically engineered cell that expresses human PGHS-1,
and not human PGHS-2, with the compound for 30 minutes, and exposing the cell to a
pre-determined amount of arachidonic acid;
c) measuring the conversion of arachidonic acid to its prostaglandin
metabolite; and
d) comparing the amount of the converted arachidonic acid converted by
each cell exposed to the compound to the amount of the arachidonic acid converted
by control cells that were not exposed to the compound, so that the compounds that
inhibit PGHS-2 and not PGHS-1 activity are identified.
BIOINFORMATICS
If this road to infringement is not closed,
there are certain likely/typical results to follow in
all fields of technology. The following are some
possible examples relating to the approximately
2,000+ bioinformatics patents:
U.S. PATENT NO. 7,191,173
MARCH 13, 2007
Method of determining database search path
Inventors: Mizunuma; Tadashi (Tokyo, JP),
Tago; Shigeru (Tokyo, JP), Yoshii;
Junji (Tokyo, JP)
Assignee: Hitachi Software Engineering Co.,
Ltd. (Kanagawa, JP)
U.S. PATENT NO. 7,191,173
MARCH 13, 2007 (Cont’d)
1. A method of determining a database search path in a database system,
which includes databases each containing records with search keys of related
records stored in other databases, for extracting records containing a search key that
is entered into the system, in which system a starting record extraction is carried out
using a starting search key that is entered into a starting database thereby extracting
records from the starting database, and an intervening search key that is contained
in the extracted records from the starting database and that is different from the
starting search key is entered into the intervening database different from the starting
database so as to carry out an intervening record extraction in the intervening
database in a chain-reactive manner form the starting database via a plurality of
intervening databases to the terminal database using search keys and records to link
the starting, intervening, and terminal databases, the extracted records as search
results, the method comprising: a first step of classifying the plurality of databases
into groups based on the characteristics of data included in individual databases; a
second step of creating a correlation network wherein the groups are related with
each other based on relevance between the groups; a third step of obtaining intergroup path candidates in the correlation network; and a fourth step of designating a
starting database and a terminal database from the plurality of databases and
obtaining an inter-database path candidate that exists on one of the inter-group path
candidates that exists between the starting and terminal databases.
U.S. PATENT NO. 7,191,068
MARCH 13, 2007
Proteomic analysis of biological fluids.
Inventors: Rosenfeld; Ron (Los Altos, CA),
Nagalla; Sri (Hillsboro, OR),
Gravett;
Mike (Portland, OR)
Assignee:
Proteogenix, Inc. (Portland, OR)
0
U.S. PATENT NO. 7,191,068
MARCH 13, 2007 (Cont’d)
30.
A method for the diagnosis of intra-amniotic infection,
comprising (a) comparing the proteomic profile of a test sample of a
biological fluid selected from the group consisting of amniotic fluid,
serum and plasma obtained from a pregnant female mammal with the
proteomic profile of a normal sample, or a reference proteomic profile
comprising at least one unique expression signature characteristic of
said condition, wherein said proteomic profiles provide information of
the mass of the proteins present in said samples, or the proteolytic
fragments thereof; (b) diagnosing said mammal with intra-aniniotic
infection if the proteomic profile of the test sample shows a unique
expression signature in the 3-5 and/or 10-12 KDa molecular weight
range; and (c) wherein said test sample proteomic profile and said
normal sample proteomic profile or reference proteomic profile
comprise information of the expression of azurocidin, fragments or
naturally occurring variants therof that are functional in the diagnosis of
intra-amniotic infection.
U.S. PATENT NO. 7,189,839
MARCH 13, 2007
Isolated polyncleotides encoding a human cytokine receptor human cytokine
receptor
Inventors:
Presnell: Scott R. (Tacoma, WA), Xu; Wenfeng (Mukilteo, WA),
Kindsvogel; Wayne (Seattle, WA), Chen; Zhi (Seattle, WA)
Assignee:
ZymoGenetics, Inc. (Seattle, WA)
15.
A method of producing a soluble cytokine receptor polypeptide,
the method comprising culturing recombinant host cells that comprise the
expression vector of claim 13, and that produce the soluble cytokine receptor
polypeptide, and isolating the soluble cytokine receptor polypeptide from the
cultured recombinant host cells.
U.S. PATENT NO. 7,189,507
MARCH 13, 2007
Methods of diagnosis of ovarian cancer, compositions and methods of
screening for modulators of ovarian cancer.
Inventors: Mack; David H. (Menlo Park, CA), Gish; Kurt C. (San Francisco,
CA)
Assignee: PDL BioPharma, Inc. (Fremont, CA)
1. A method of detecting ovarian cancer in a patient, the method
comprising: (i) detecting a nucleic acid in a first sample from the patient,
wherein the nucleic acid is at least 95% identical to a sequence selected from
the group consisting of SEQ ID NOs: 13, 15, 17, 19 and 21, and wherein the
nucleic acid encodes a G protein-coupled receptor 64; and (ii) comparing the
expression level of the nucleic acid in the first sample to the expression level
in a normal sample, wherein an increase in the level of the nucleic acid
relative to a normal sample is indicative of ovarian cancer.
U.S. PATENT NO. 7,188,032
MARCH 6, 2007
Incremental determination of Teiresias patterns.
Inventors: Srinivasa; Deepak M. (Bangalore, IN)
Assignee:
International Business Machines Corporation (Armonk, NY)
1. A method for determining Teiresias patterns, said method comprising
the steps of: providing a set of S’.sub.0 of n sequences denoted as S.sub.1,
S.sub.2, ... S.sub.n, positive integers L, W, and K, and teiresias patterns P’.sub.0
consisting of all<L, W, K> patterns for the set S’.sub.0, each sequence of the n
sequences consisting of characters from an alphabet, wherein a sequence index I
equals 1; supplying a sequence S.sub.n+1 to form a set S’.sub.i consisting of
S’.sub.i-1.orgate.S.sub.n+1, wherein S.sub.n+1 consists of characters from the
alphabet; and determining Teiresias patterns P’.sub.i consisting of all <L, W, K>
patterns for the set S’.sub.i by performing an algorithm that utilizes S’.sub.i-1, L,
W, K, P’.sub.i-1, and S.sub,n+i as input.
U.S. PATENT NO. 7,179,787
FEBRUARY 20, 2007
Methods of using human Zven proteins
Inventors: Sheppard: Paul O. (Granite Falls,
WA), Bishop; Paul D. (Fall City, WA)
Assignee: ZymoGenetics, Inc. (Seattle, WA)
U.S. PATENT NO. 7,179,787
FEBRUARY 20, 2007 (Cont’d)
PATENT NO.
7,179,787
1. A method of stimulating gastrointestinal contractility
in a mammal in need thereof comprising administering to the
mammal a polypeptide, wherein the polypeptide comprises the
amino acid sequence of amino acid residues 28 to 108 of
SEQ ID NO:2 and whereby gastrointestinal contractility
is stimulated.
4. A method of stimulating gastric emptying in a mammal in need
thereof comprising administering to the mammal a polypeptide, wherein the
polypeptide comprises the amino acid sequence of amino acid residues 28 to
108 of SEQ ID NO:2 and whereby gastric emptying is stimulated.
5. The method according to claim 4, wherein the polypeptide is
administered in one or more administration.
6. The method according to claim 4, wherein the polypeptide is
administered continually for a period of time.
ARGUMENTS BEFORE SUPREME COURT IN AT&T
CASE BY FICPI
1.
2.
3.
4.
5.
TERRITORIALITY IS DEFINED BY TREATIES;
ULTRA VIRES ACTS BY FEDERAL CIRCUIT CANNOT
BE CONDONED;
INTERNATIONAL LAW PREVENTS AN INFRINGEMENT
FINDING;
THE PATENTABILITY OF SOFTWARE IS NOT
RECOGNIZED OUTSIDE THE UNITED STATES;
FEDERAL CIRCUIT DECISIONS UNDERCUT THE
ABILITY OF OTHER NATIONS TO ENFORCE PATENT
SYSTEMS OF THEIR OWN DESIGN.
THE CONSTITUTION OF THE UNITED STATES IS “TO FORM
A MORE PERFECT UNION”, TO “ENSURE DOMESTIC
TRANQUILITY” IN THE UNITED STATES AND “PROMOTE
GENERAL WELFARE” IN THE UNITED STATES.
IT NEVER CONSIDERED THE GOVERNING OF ACTIVITIES
EXCLUSIVELY WITHIN FOREIGN COUNTRIES.
ARTICLE 1, INCLUDING SECTION 8 (PATENTS AND
COPYRIGHTS) LISTING THE SPECIFIC POWERS OF
CONGRESS ARE LIMITED TO THE “UNITED STATES” OR
THE “UNION”.
PARIS CONVENTION, ARTICLE 4(1):
“Patents applied for in the various countries of the Union by
nationals of countries of the Union shall be independent of
patents obtained for the same invention in other countries,
whether members of the Union or not.”
The “independent” concept is an indication that a United States
patent is independent of a patent in any other country and
cannot govern acts in other countries. The concept of
“territoriality” has been central to international law for over a
century.
Paris Convention was a treaty made under Article 2, Sec. 2,
Para. 2 of the Constitution with the advice and consent of 2/3 of
the Senate.
Computer programs were specifically not
allowed to be patented under European policy.
UK High Court of Justice, Chancery Division,
Patents Court, 21 July 2005.
“International conventions are to be given
purposive interpretation”
Cont’d.
The reasons given were that such patents were:
1.
2.
3.
4.
5.
6.
7.
8.
Not really needed;
Were too cumbersome (it was felt that searching the prior art would be a
big problem and would do more harm than good);
The software industry in America developed at an astonishing pace
when no patent protection was available;
Copyright law protects computer programs against copying;
A patent on a computer program would stop others from using it even
though there have been no copying at all;
There would have to be infringement searches;
You cannot have a sensible patent system unless there is a proper body
of prior art that can be searched;
Not only are most computer programs supplied in binary form,
unintelligible to humans, but most of the time, it is actually illegal to
convert as a human readable form.
A patent system where it is illegal to search most prior art is something of an
absurdity
(quoting the High Court).
INTERNATIONAL LAW
The basic structure of an international patent system is
territorial. This is recognized by TRIPS dated April 15,
1994. A patent shall confer on its owner the following
exclusive rights:
Where the subject matter of a patent is a product, to
prevent third parties not having the owner’s consent,
from the acts of making, using, offering for sale, selling,
or importing that product.
CONCLUSION
The present state of the
law of the Federal
Circuit is not in accord
with Congressional
intent and the laws of
most foreign countries.
Applying
extraterritoriality reach
offends our treaties and
our relationships in
foreign commerce.
Thank you.