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Re: Jurisdiction Penumbra

From: rjack
Subject: Re: Jurisdiction Penumbra
Date: Tue, 19 Dec 2006 23:35:37 -0500
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Lee Hollaar wrote:
In article <> rjack 
<> writes:

Lee Hollaar wrote:

In article <> rjack 
<> writes:

The application of U.S. Patent Law should properly be restricted to U.S. territorial jurisdictions (importation) unless by International accord.

Since the provision in question, 35 USC 271(f) has been a part of
United States patent law since November 8, 1984, it is hard to see
what the rant below contributes to the discussion.

Birdbrain Bush announced the U.S.'s unilateral expansion of criminal jurdiction to foreign sovereign's territories. This policy will one day return to bite innocent U.S. citizens in the ass when other countries reciprocate with similar "preemptive" policies.

. . . [I]t is hard to see what the rant below contributes to the

Perhaps you should wipe the cruel sneer from your hauty visage

Even without a sneer, it is hard to see how your anti-Bush rant
has anything to do with an amendment to the patent statutes that
was made by Congress in 1984.

3. If there were any doubt about the proper interpretation
of Section 271(f), the presumption against extraterritoriality
would resolve it. As this Court observed in Deepsouth,
“[o]ur patent system makes no claim to extraterritorial
effect,” and our laws “correspondingly reject the claims
of others to such control over our markets.” 406 U.S. at
531; accord Dowagiac Mfg. Co. v. Minnesota Moline Plow
Co., 235 U.S. 641, 650 (1915). That venerable principle follows
not only from the text of the Patent Act, which generally
grants rights only within the United States, see, e.g., 35
U.S.C. 154(a)(1), but also from considerations of comity, as
courts must “assume that legislators take account of the
legitimate sovereign interests of other nations when they
write American laws.” F. Hoffmann-La Roche Ltd. v.
Empagran S.A., 542 U.S. 155, 164 (2004). Foreign conduct
is generally the domain of foreign law, which may embody
different policy judgments.

Need I say more?

Well, you could explain how the Deepsouth decision, which was in
1972, tells us anything about how to interpret an amendment to
the patent statutes in 1984 that was made, in part, to overturn

The section at issue, 35 USC 271(f), is directed precisely at
foreign conduct -- in particular, the assembly of a patented
article from components produced in the United States.  It
makes the supplying of the components from the United States
a form of contributory infringement.  Therefore, it does not
go to foreign conduct, but instead conduct within the United

I would be more impressed with the government's brief if they
looked to what the patented invention -- as denoted by the
claims -- when determining whether something is a component
of that patented invention.  In the case of a Beauregard-type
claim, where the claimed invention is a computer medium storing
a particular program, it is hard to see why the program is not
a component of the claimed invention when it is, in fact, the
key component.

And the reproduction of the Microsoft "gold disk" in that case
would not produce a copy of the program which would be a component
of the claimed invention, but produces the claimed invention

See "The Form of a Software Claim Makes a Big Difference" in
BNA's PTCJ, November 7, 2006, reprinted at:

The Supreme Court used the term “component” twice in Diamond v. Diehr, 450 U.S. 175 (1981) at 187 and Fn11. These occurrences make clear the intended meaning of the word “component” in that decision:

“At approximately the time that the Commission issued its report, the Patent Office published notice of its intention to prescribe guidelines for the examination of applications for patents on computer programs. See 829 Off. Gaz. Pat. Off. 865 (Aug. 16, 1966). Under the proposed guidelines, a computer program, whether claimed as an apparatus or as a process, was unpatentable. 11 The Patent Office indicated, however, [450 U.S. 175, 198] that a programmed computer could be a component of a patentable process if combined with unobvious elements to produce a physical result. The Patent Office formally adopted the guidelines in 1968. See 33 Fed. Reg. 15609 (1968).”
“[ Footnote 11 ] The Patent Office guidelines were based primarily upon the mental-steps doctrine and the Cochrane v. Deener, 94 U.S. 780 (1877), definition of "process." See 829 Off. Gaz. Pat. Off. 865 (Aug. 16, 1966); 33 Fed. Reg. 15609 (1968).”

The Court in 1981 in Diamond *clearly* used the term “component” in the sense of an abstract, ordinal step in a process. Witness: “[T]he mental-steps doctrine and the Cochrane v. Deener, 94 U.S. 780 (1877), definition of ‘process’ ” at Fn11 -- I see no other rational interpretation of the Court’s usage of that term (component).

I believe that Congress in 35 USC 271(f) in 1984 used “component” in the sense of a “tangible” component (as embedded in a medium).

The DOJ brief correctly identifies the “linguistic leap” from intangible to tangible made by the CAFC in the semantics of “component”.

“The particular copy of Windows object code installed on a computer overseas has no existence until it is created by replication, and a component cannot have been “suppl[ied]” before it even exists —- nor can it have been supplied “from” a country in which it was never present. To be sure, creating copies of computer software is a fast and inexpensive process, but that does not justify the linguistic leap necessary to conclude that supplying one copy from the United States also constitutes supplying from the United States whatever new copies may later be made overseas, any more than sending one mold abroad constitutes supplying from the United States as many items as are later made from that mold in a foreign nation.” DOJ brief at 13.

The CAFC should be reversed.

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