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Patents The Courts United States

Supreme Court Considers When US Patent Violations Are 'Induced' Abroad (arstechnica.com) 31

Posted by msmash from the making-clear dept.
The US Supreme Court today will take up a case that will determine how much help an overseas manufacturer can get from the U.S. without running afoul of US patent laws. From a report on ArsTechnica: The case originates in a dispute between two competitors in the field of genetic testing. Both Promega Corporation and Life Technologies (selling through its Applied Biosciences brand) make DNA testing kits that can be used in a variety of fields, including forensic identification, paternity testing, medical treatment, and research. Promega licensed several patents to Applied Biosystems that allowed its competitor to sell kits for use in "Forensics and Human Identity Applications." The license forbade sales for clinical or research uses. In 2010, Promega filed a lawsuit in federal court, saying that Life Technologies had "engaged in a concerted effort to sell its kits into unlicensed fields," thus infringing its patents. A Wisconsin federal jury found that Life Tech had willfully infringed and should pay $52 million in damages. But the district judge overseeing the case set aside that verdict after trial, ruling that since nearly all of the Life Tech product had been assembled and shipped from outside the US, the product wasn't subject to US patent laws.
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Supreme Court Considers When US Patent Violations Are 'Induced' Abroad More

Supreme Court Considers When US Patent Violations Are 'Induced' Abroad

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  • Next time, don't use legalzoom forms for your contract. Pay some shyster to insert "worldwide" after "The license forbade sales for clinical or research uses."

    • Re: (Score:1)

      by Anonymous Coward

      Next time, don't listen to non-lawyers such as the above on slashdot. Forbidding worldwide sales in geographic areas not covered by the patent(s) being licensed would almost certainly be seen as anticompetitive and invalidate the entire license.

  • This is a fairly common issue in biotech. US patent office tends to grant patents far too easily in biotech, resulting in a situation where a product is patent-protected in the US, but not abroad. The decision is absolutely right, Life Technologies licensed the product for the US market, but not the rest of the world, as there was no need for that. The patented parts of the product were not produced in the US, so there was no US-based transaction of the protected property. The analogous situation would be

    • The patented parts of the product were not produced in the US

      Um, one of them actually was. Whether that's enough to constitute infringement of Promega's U.S. patent is the exact question the Supreme Court is taking up [scotusblog.com]:

      Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. 271(f)(1), exposing the manufacturer to liability for all worldwide sales.

      • It's more complicated than that. Patent was for a process, not any individual components. The component produced in the US (the enzyme) is not patent protected, it's a commonly used commodity. So the issue was, since the process is dependent on the commodity (it will not work without it), is this a substantive component of the device? Promega argued that any of the components is substantive, since it its absence invalidates the process. Courts view was that, since this component was a commodity that is not

        • Patent was for a process, not any individual components.

          Sorry, but that's just flat wrong. The asserted claim that gave rise to the appeal (claim 42 of U.S. Patent No. RE 37,984) is not on a process at all, but on a kit with five individual components:

          • 42. A kit for analyzing polymorphism in at least one locus in an DNA sample, comprising:
          • a) at least one vessel containing a mixture of primers constituting between 1 and 50 of said primer pairs;
          • b) a vessel containing a polymerizing enzyme suitable for performing a primer-directed polymerase chain reaction;
          • c) a ves

  • Isn't this a simple contractual dispute? Probably there is no such thing as a simple contractual dispute. It just doesn't seem to be about patents as it is about licensing. Look up "Apple"? Yeah yeah, trademarks, but the idea is there.

  • Just to clarify... (Score:5, Interesting)

    by Theaetetus ( 590071 ) <theaetetus@slashdot.gmail@com> on Tuesday December 06, 2016 @03:48PM (#53435071) Homepage Journal

    A Wisconsin federal jury found that Life Tech had willfully infringed and should pay $52 million in damages. But the district judge overseeing the case set aside that verdict after trial, ruling that since nearly all of the Life Tech product had been assembled and shipped from outside the US, the product wasn't subject to US patent laws.

    It's infringement under US Patent law to make, use, or sell a patented invention in the US. However, it's also infringement to import a patented invention, made elsewhere, into the US. So you can't, for example, escape liability by saying "oh, we don't manufacture in the US. We manufacture in Mexico and then heave them over Trump's wall to waiting buyers." So, something had been assembled and shipped from outside the US would still be subject to US patent laws if it was being shipped to the US.

    In this case, LifeTech manufactures their kits in the UK and sells them in Europe (and elsewhere). One component of the kit is manufactured in the US and shipped from the US to the UK, and the question is whether that component brings those sales under US patent law.

    So, just to clarify, the summary should be "since nearly all of the Life Tech product had been assembled and shipped from outside the US to locations outside the US, the product wasn't subject to US patent laws."

    • IMHO, this is one of the most idiotic part of US patent law. US companies should be free to manufacture and ship any product to another country, irrespective of US patents.

      The patents that should be applied are those in the other country at the time of import, using that country's laws.

      There is no gain to the US in preventing US exports of products that are in violation of US patents. The result of this crazy law is what happened here: the products will be manufactured elsewhere and shipped to the end marke

      • It's not about the patent , it's about possibly wasting the court's time over a matter that
        was outside of US jurisdiction.

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