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February 22, 2017

Comments

Thanks, Don.

This line from the decision jumped off the page:

“Surely a great many components of an invention (if not every component) are important.”

This confuses me: this is the same court that told us that, when determining patent-eligibility, we can distill “the invention” to its “essence” or “gist”, without reference to the claims and ignoring elements of the claims under consideration that are “routine” or post-process activity. That doesn’t seem to square with identifying all the “components” of an invention.

It seems that when it’s necessary to ignore claim elements to invalidate a patent, that’s acceptable; but when it’s necessary to include claim elements in order to reach a finding of non-infringement, then those elements can’t be ignored.

Have I correctly divined the court's thinking?

All that was necessary to the decision was that Taq polymerase is a known and generic enzyme, and its supply for any purpose does not trigger § 271(f)(1) because of its nature is that of a "staple commercial product" and not a specialised material.

Any more is exuberant pedantry in an inappropriate cause. As Sir Humphrey Appleby (of Yes Minister fame) would have said: "Have you considered all the implications of this line of reasoning?"

"Have I correctly divined the court's thinking?"

Hey Dan,

You have and have also demonstrated how disingenuous and duplicitous SCOTUS is on that score. On the one hand they read the patent infringement statutes in 35 USC 271 narrowly and explicitly to allow accused infringers to escape. Yet conversely they read in all these implicit "exceptions" to patent-eligibility into 35 USC 101. And people wonder why the patent law bar is generally upset with SCOTUS?

BTW, I just got back from 9-10 days in Israel, including the Sea of Galilee and Jerusalem areas. Really enjoyed my trip there. Would gladly go back.

"All that was necessary to the decision was that Taq polymerase is a known and generic enzyme, and its supply for any purpose does not trigger § 271(f)(1) because of its nature is that of a 'staple commercial product' and not a specialised material."

Begging your pardon, but I do not understand how this proposed rule would have served to decide a case under §271(f)(1). "Staple" is not a word that appears in §271(f)(1), so that fact that Taq is not a "staple commercial product" does not tell one anything relevant to the §271(f)(1) analysis. This would be a very sound ground on which to decide a charge of infringement under §271(f)(2), but it swings wide of §271(f)(1).

Now we are obliged to tell our clients or potential clients that your 5 component patented widget (or 4 or 3 or 2) may be assembled by your competitor in Seattle with one of the components coming from Vancouver BC and you cannot stop it. And it does not matter whether component 5 is a rivet or a specialy formulated goop invented by client (that may have its own patent) to bind compinents together.

Does not 271(f)(2) cover me for the special goop situation, client asks? You reply, well "substantial" in 271(f)(2) is probably qualitative, so all your competitor will need to to show is 1 other noninfringing use for the special goop.

Why would they pursue a patent? "Hope" the law will be changed?

"Now we are obliged to tell our clients or potential clients that your 5 component patented widget (or 4 or 3 or 2) may be assembled by your competitor in Seattle with one of the components coming from Vancouver BC and you cannot stop it."

Huh? No way. If they assemble the 5 component kit in Seattle, it is straightforwardly covered by §271(a). The only way that the competitor escapes liability is if they source the single component in *Seattle* and assemble the 5 components into the kit in *Vancouver*. Even then, they are still liable under §271(a) if they try to import the assembled kit back into the U.S.

In other words, the only way they escape liability under your U.S. patent is if they avoid the U.S. market. Of course, if one is concerned about your protecting a product in the Canadian market, perhaps one should acquire a Canadian patent, rather than trying to stretch U.S. §271(f) to absurd contortions to cover conduct occurring beyond the U.S. borders.

I think Greg's last paragraph says it all.

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