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06.26.18

US Supreme Court is Not Revisiting Patent Scope After Alice

Posted in America, Law, Patents at 12:11 am by Dr. Roy Schestowitz

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Summary: 35 U.S.C. § 101 remains untouched as SCOTUS Justices prefer talking about § 102 and § 284/§ 271, which have nothing to do with software patents

EIGHT years after Bilski and four years after Alice there’s still no sign of a turnaround for software patents in the US, irrespective of what the USPTO grants and does not grant (what matters is the outcome in the courts, not the Office).

“The Justices don’t open up to the possibility of altering patent scope, notably § 101.”As it turns out, prior art (§ 102) will be looked at next, at least in relation to a case that Dennis Crouch has been writing about for quite some time. Yesterday he wrote that “[t]he Supreme Court has granted Helsinn’s petition for writ of certiori in the first case focusing on the 2011 rewriting of the prior art and novelty statute 35 U.S.C. 102.”

That’s it? So it’s good news again. The Justices don’t open up to the possibility of altering patent scope, notably § 101.

There’s meanwhile plenty of discussion about a “damages” case, the WesternGeco case (WesternGeco LLC v. ION Geophysical Corp.), which we mentioned here a few times prior to the outcome. Richard Lloyd (patent trolls’ lobby, IAM) wrote about it yesterday, as did Kevin E. Noonan and George “Trey” Lyons, III. Here are a couple of portions:

On Friday, the Supreme Court reversed the judgment of the Federal Circuit in WesternGeco LLC v. ION Geophysical Corp. Justice Thomas (joined by Chief Justice Roberts and Justices Kennedy, Ginsburg, Alito, Sotomayor, and Kagan) held that, based on the “focus” of 35 U.S.C. § 284 of the Patent Act (the general damages provision) when read in light of domestic infringement under 35 U.S.C. § 271(f)(2) (barring exportation of components specifically adapted for a patented invention), a patent owner could recover lost foreign profits. The decision overruled the Federal Circuit’s general practice of interpreting damages under § 271(f)(2) in the same fashion as § 271(a) (the general infringement provision, which does not allow patent owners to recover lost foreign profits).

[...]

For the time being, one practical consequence of this decision is that U.S. patent owners may now recover foreign lost profits tied to domestic acts of infringement under § 271(f)(2).

Crouch’s colleague reposted something for Professor Holbrook, who had “authored an amicus brief in WesternGeco v. Ion,” according to him. The opening paragraph:

When the Supreme Court agreed to review WesternGeco LLC v. ION Geophysical Corp., it was unclear how sweeping the decision would be. The case had clear implications for patent law. It would be the first time the Supreme Court had addressed patent infringement damages under 35 U.S.C. § 284 since its 1984 decision General Motors Corp. v. Devex Corp. The briefing and oral argument suggested the Court had some interest in assessing proximate cause in patent damages, an issue that has not been addressed by the Supreme Court or revisited by the Federal Circuit since its seminal en banc decision in Rite Hite Corp. v. Kelly Company Inc. Finally, beyond patent law, this case had implications for the Court’s jurisprudence on the presumption against extraterritoriality, particularly as to whether the presumption applies to remedial provisions.

Professor Risch alludes to Professor Holbrook and says:

The Supreme Court issued its opinion in WesternGeco last week. The holding (7-2) was relatively straightforward: if an infringer exports a component in violation of 35 USC 271(f)(2) (that is, the component has no substantial noninfringing use), then the presumption of extraterritoriality will not bar damages that occur overseas. And that’s about all it ruled. It left harder questions, like proximate cause, for another day.

I spent the end of the week and weekend reading commentary on the case (and tussling a bit on Facebook and Twitter). A couple blog posts worth checking out are Tim Holbrook’s and Tom Cotter’s. I had just a few thoughts to add.

As we said last year, WesternGeco LLC v. ION Geophysical Corp. is almost of zero relevance to us because we always focus on patent scope. It did, however, show that the Justices don’t have the alleged “anti-patent” bias and we’re glad to see that nothing over the horizon can challenge Alice. As we’ll note in our next post, the patent litigation ‘industry’ is in collapse.

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