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January 13, 2015

Comments

Zuhn: "In so holding, the Court explained that "[n]othing in the ordinary meaning of 'portion' suggests that it necessarily requires a certain quantity or that a single component cannot be a 'portion' of a multi-component invention." "

While the "self-inducement" analysis has its own problems, this "single staple item of commerce" aspect of the majority's holding is the part of the holding that is certainly going to lead to reversal. Jason Rantanen does a decent job of explaining why on Patently-O, and there is more explanation in the comments there: http://patentlyo.com/patent/2015/01/promega-inducement-ones.html

The majority rests its holding on the fact that the term "portion", in the abstract, does not exclude single items. The problem with the majority's hyper-abbreviated analysis is that (1) it ignores the plain language in the remainder of the statute; (2) it ignores the relationship of 271(f)(1) to 271(f)(2); (3) it ignores the purpose and history of the statute; and (4) it leads to absurd results never contamplated by Congress or any other patent system on earth. As a result, we have a stillborn holding that is going to be nullified before you can say "boo".

Here's 271(f)(1) with irrelevant parts deleted:

"Whoever ... causes to be supplied ... from the United States ... a substantial portion of the components of a patented invention, where **such components** [plural] are uncombined ... in such manner as to actively induce the combination of ***such components*** [plural] 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."

With respect to (1), the plain language of the statute is clear that "such components [which] are uncombined" must be "supplied" so as to actively induce their combination overseas. The plain use and meaning of the plural component*s* is emphasized by the recitation of the fact that the components (plural) are "uncombined", as only a plurality of components could be.

271(f)(1) was plainly meant by Congress to close the Deep South "loophole" whereby an entity could avoid infringement of an apparatus by exporting the parts (plural) of an apparatus in uncombined form. 271(f)(2), in contrast, was intended to address the narrower situation where infringement is avoided by exporting a single "component" (typically a nearly completed apparatus) without any other purpose except for completion (typically overseas) into an otherwise infringing apparatus/kit/composition. Critically, however, 271(f)(2) excludes single **staple** items of commerce from its reach. If Congress wanted to include single, **staple** components within the reach of 271, why would it have excluded them from 271(f)(2) which, in stark contrast to 271(f)(1), is plainly concerned with the supply of single items?

The disastrous expansion of liability for exporters of single staple components (including not only public domain polymerase but nucleic acids and vectors in addition to ball bearings, springs, fasteners and other components recited in hundreds of thousands of US patents) under the majority's holding should be evident to everyone.

There is no such "disastrous expansion of liability for exporters." For 271(f) to apply, there STILL needs (in both (f)(1) and (f)(2) the finding that the sum total action [to which section f applies] in that foreign locale to be infringement "if such combination occurred within the United States."

Your alter ego has had this point explained often and well to him on the linked website that you provide.

What should be evident to everyone is that your artificially constrained view eviscerates the singular notion of what the word "portion" plainly means, and renders "substantial" to an equally constrained and artificial view of mere "plurality."

As to "certainly going to lead to reversal," I have yet to see where you under the guise of Kaptain Korwood (here) or any other pseudonym (MM at Patently-O, or countless other sockpuppets here) have actually provided a substantive legal position that provides credence to that "certainly."

Will you actually address ALL of the points offered in the various discussions to actually make your case?

Well, I remain...

Skeptical: "What should be evident to everyone is that your artificially constrained view eviscerates the singular notion of what the word "portion" plainly means,"

There is no "artificial constraint" and there is no "evisceration" of the term "portion". The term's meaning does not change when the statute is properly construed. It's the majority's construction, in fact, that "eviscerates" the requirement that "uncombined" "components" be supplied (or caused to be supplied) by the infringer. If Congress intended to cover the export of single staple items of commerce with 271(f)(1), they could have done that easily. Nobody would have written 271(f) in the manner in which it is written if the goal was to include non-combined, solitary staple items of commerce.

Skeptical: "For 271(f) to apply, there STILL needs (in both (f)(1) and (f)(2) the finding that the sum total action [to which section f applies] in that foreign locale to be infringement "if such combination occurred within the United States.""

With respect to 271(f)(2), in fact, the Federal Circuit found the **exact opposite** to be true in Waymark v. Porta Systems (Fed Cir 2001). The issue was not addressed with respect to 271(f)(1) but the language is similar in both statutes (e.g., 271(f)(2) recites that the infringer intends "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)."

Regardless, even if 271(f)(1) requires an actual combination overseas before infringement of the statute can be found, examples of overseas combinations that comprise at least *one* (!!!) US-derived staple items of commerce, where that combination would infringe a US patent, are hardly rare.

Make no mistake: this aspect of the majority's holding, at least, is going to be quickly nullified for all the reasons that I provided. I haven't done an exhaustive search but I can't find any examples where anyone even contemplates the statute having the scope given to it by the majority here.

It's odd that "EG" hasn't commented here on this topic. I thought he fancied himself some sort of expert on the topic.

Kaptain Korwood,

Did you even bother to read the case you cited (Waymark v Porta Systems)?

The case reads directly against your position here and at Patently-O. You appear to want to confuse the issue here by focusing on the "intend to ACTUALLY make" portion of the case, while ignoring all other aspects that fully indicate that you main view is simply not correct. In fact, the case actually provides even more credence AGAINST you.

Link to the case: http://www.finnegan.com/files/Publication/e29a29ea-240e-47af-8b14-eb583421b050/Presentation/PublicationAttachment/7370e820-3128-4948-ae4e-ec6939842615/00-1327-040601.pdf

I suggest that you spend less time searching to bolster your pre-conceived notions and more time simply listening to those attempting to educate you.

Will you listen to this sage advice?

Well, I remain...

"The case reads directly against your position here and at Patently-O."

No, it most certainly does not.

Skeptical: "You appear to want to confuse the issue here by focusing on the "intend to ACTUALLY make" portion of [Waymark]"

I don't know what you're talking about. My focus is plain: the majority in Promega reached the wrong conclusion and the decision is going to be nullified very soon for the reasons that I have stated here, and for the reasons that Professor Rantanen and Eric Guttag and others have stated on the PatentlyO thread.

I brought up Waymark only in response to your erroneous comment above, i.e., "there STILL needs ... in [271](f)(2) the finding that the sum total action [to which section f applies] in that foreign locale to be infringement 'if such combination occurred within the United States'".

Again, your statement is directly contradicted by the holding in Waymark. Infringement under 271(f)(2) does not require any "sum total action" overseas that would otherwise constitute patent infringement. As the Federal Circuit stated in Waymark, "At no point does the statutory language require or suggest that the infringer must actually combine or assemble the components. A party can intend that a shipped component will ultimately be included in an assembled product even if the combination never occurs."

And just so you aren't further confused, I'll repeat this to you again: regardless of whether the holding in Waymark regarding "actual combination" in the 271(f)(2) context applies equally to 271(f)(2), it doesn't change the fact that, for all the reasons I mentioned, 271(f)(1) plainly requires multiple components [plural] of a patented invention to be supplied in or from the US.

You are free to disagree, of course, with my conclusion, and Professor Rantanen's conclusion about the likelihood of reversal of this decision. And you are free to advise your clients accordingly. Have fun doing so and -- most importantly -- don't forget to collect your fees before the earth moves under your feet.

I see what you are doing here - and I have already noted the obfuscatory nature of "your argument."

You are conflating the "intend to do" portion of the case with the "act overseas" discussion that has been held so far.

Your attempt is akin to moving the goalposts of the discussion already held, and you wish to claim that this new wrinkle vindicates your views.

It simply does not.


All this new wrinkle does - as alluded to in the case itself - is ADD another possibility to the reach of infringement as "offer to sell" adds to an actual sale.

I suggest that you read the case again and see that it does not vindicate your views and there is no support - at all - for your conclusion that the current case of Promega is legally defective. You simply have not provided a LEGAL basis for your conclusion. Your attempted readings of the law violate statutory construction doctrines...

(for example 1 US 1)

...and you have simply "pounded the table" instead of pounding either law or fact. Your "reasons" are purely "emotive based" and lack a foundation and this can be easily seen with your refusal to actually address the counter points put to you in an intellectually honest manner (for example, refusing to admit just whom the law of 271(f) is aimed at - just who the inducer is).

Lastly, your "you are free to disagree" statement, replete with the implicit insult of "collect your bogusly charged fees while you can" has NO PLACE in this discussion. Please leave such out and instead focus on the points of law. Thanks.

Will you constrain yourself appropriately? Sadly, I remain...

And just like that:

http://www.law360.com/articles/612264/promega-life-tech-both-urge-fed-circ-to-review-ip-ruling

one of the very worst Federal Circuit decisions in recent memory is going to be wiped off the books.

Promega's petition for en banc rehearing (which will certainly be granted and which will certainly nullify the CAFC's misguided and ridiculous attempt to broaden 271(f)(1)) includes the exact arguments made here and the arguments made in the above-mentioned PatentlyO thread. Try to remember where you first read those arguments and try to remember where you didn't read them.


There's also this nugget:

"Remarkably, the Supreme Court has directly addressed this issue and arrived at a conclusion contrary to the Majority’s. The Supreme Court explained that “the two paragraphs differ, among other things, on the quantity of components that must be ‘supplie[d]... from the United States’ for liability to attach.” Microsoft v. AT&T, 550 U.S. at 454 n.16; see id. at 458 n.18 (contrasting § 271(f)(1), which applies to all or a substantial portion of a patented invention’s components, with § 271(f)(2), which “applies to the export of even a single component” under certain circumstances). There is no valid reason to defy such clear Supreme Court guidance, especially when the Supreme Court has expressly stated that there is a special presumption against a broad construction of this particular provision."

Oops.

Your quote from the dissent misses the on-point rebuttal from the majority opinion.

Skeptical: "Your quote from the dissent misses the on-point rebuttal from the majority opinion."

Speaking of obfuscation -- please try explaining to readers what you're talking about. What "quote" from what "dissent"? What "on-point rebuttal"?

It seems to me that it's you that "missing something" here. Keep digging, though. Maybe you'll find some blue sky eventually.

Kaptain Korwood, aka KK, aka MM aka Malcolm Mooney, aka any of dozens of sockpuppets (all the while pretending that sockpuppets are the worst thing ever),

Pretending to not understand where you grabbed your "nugget" wile also pretending that the majority position did not dispel the logic of that nugget, and then projecting "obfuscation" on someone else is clearly your hallmark.

It does not work over at Patently-O, and it surely does not work here.

Dr. Noonan, I hope you recover soon from the infestation.

Skeptical: "Pretending to not understand where you grabbed your nugget"

I don't even know what "nugget" you are referring to. And I haven't "pretended to grab" anything.

I did ask you a simple direct question, however, asking you to explain what you are talking about. And I notice you haven't answered it but instead you launched into a stream of weird insults.

More of the usual "Patently-O" tricks being put on display...

I did not say "pretend to grab" - clearly.

There is only one "nugget" that you have referred to. It is simply not believable that you do not understand the reference. Kicking up dust as to the very "Vinnie Barbarino" style, "Huh, what?" while ignoring the actual points of discussion is classic Malcolm Mooney claptrap.

There is no "stream of weird insults" from me. Your so-called "simple direct question" was already met with an even more simple directive to view the words used by the majority. Clearly, the majority having already dispelled with your "nugget" rebuts that "nugget," and is on point for what the "nugget" purports to stand for.

Overall, your latest post is much like the rest of your posts: not very interesting, lacking in legal "oomph," and heavy in meaningless ad hominem.

I will say this though: you are undeterred by your constant failure to make an actual legal point. I guess that counts for something... somewhere...

I'm still waiting for you the answer to my question. You wrote: ""Your quote from the dissent misses the on-point rebuttal from the majority opinion."

What "quote" from what "dissent" were you referring to? What "on-point rebuttal" were you referring to?

Skeptical: "you are undeterred by your constant failure to make an actual legal point."

My points are going to be adopted by the Federal Circuit en banc or the Supreme Court. Where will that leave you?

The games continue...

Same as it ever was with the poster otherwise known as Malcolm Mooney.

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