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 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 , 2015 WL (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 , 2015 WL (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 , 2015 WL (Fed. Cir. 2015)

AIPLA 2016 Components of Patented Products

AIPLA U.S.C. § 271(f) Supplying components of patented invention to induce combination outside of the United States is infringement

AIPLA U.S.C. § 271(f) Supplying component especially made or adapted for use in patented invention infringes …

AIPLA U.S.C. § 271(f) Supplying component especially made or adapted for use in patented invention infringes … unless it is a staple article or commodity suitable for 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 Livingstone Finnegan 303 Peachtree St. NE Suite 3500 Atlanta, Georgia