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IN THE SUPREME COURT OF THE UNITED STATES
- - - - - - - - - - - - - - - - - x
LIFE TECHNOLOGIES
CORPORATION ET AL
Petitioners No 14-1538
v
PROMEGA CORPORATION
Respondent
- - - - - - - - - - - - - - - - - x
Washington DC
Tuesday December 6 2016
The above-entitled matter came on for oral
argument before the Supreme Court of the United States
at 1015 am
APPEARANCES
CARTER G PHILLIPS ESQ Washington DC on behalf of
the Petitioners
ZACHARY D TRIPP ESQ Assistant to the Solicitor
General Department of Justice Washington DC for
United States as amicus curiae supporting the
Petitioners
SETH P WAXMAN ESQ Washington DC on behalf of the
Respondent
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C O N T E N T S
ORAL ARGUMENT OF PAGE
CARTER G PHILLIPS ESQ
On behalf of the Petitioners 3
ORAL ARGUMENT OF
ZACHARY D TRIPP ESQ
For United States as amicus curiae
supporting the Petitioners 18
ORAL ARGUMENT OF
SETH P WAXMAN ESQ
On behalf of the Respondent 29
REBUTTAL ARGUMENT OF
CARTER G PHILLIPS ESQ
On behalf of the Petitioners 52
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P R O C E E D I N G S
(1015 am)
CHIEF JUSTICE ROBERTS Well hear argument
this morning in Case 14-1538 Life Technologies
Corporation v Promega Corporation
Mr Phillips
ORAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Mr Chief Justice and may it
please the Court
I think because this is largely an
international trade case its probably useful to put
this case in context and to compare it to the facts that
gave rise to the passage of Section 271(f) thats at
issue in this case Youll recall that in the Deepsouth
case that was a case involving a shrimp deveiner in
which all of the activities took place within the United
States except for the final act that took less than an
hour to assemble in a foreign country In that case
this Court held even that was not within the meaning of
the -- of the patent statute as it existed then and
Congress then acted to fill that particular loophole
The facts of this case seem to me to be the
polar opposite of that With -- Life Tech has -- Life
Technologies operates an -- an enormous plant in
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England in the United Kingdom It spends tens of
million dollars on that plant Four out of the five
components that go into the creation of the kits that
are at issue in this case are sourced outside of the
United States one inside Ill come back to that in a
minute And as relevant to this litigation all of the
kit -- kits are sold outside of the United States
So the only contact that any of this has
with the United States is the fact that a single
commodity product is shipped to England as part of the
process for the fabrication of these particular kits
Now that commodity product is called a Taq
polymerase which I will readily concede that when I
think about what you buy off-the-shelf I dont go to
Costco to buy Taq polymerase but Im told and I think
its absolutely undisputed in the record that this is a
commodity This is at the essence of what the Congress
enacted in (f)(2) which is a staple article or
commodity of commerce suitable for many non-infringing
uses And indeed if you get online and put in Taq
polymerase you can find literally dozens and dozens of
ways to purchase it online at this time And that was
true as much in 2006 It may have been a significant
product in 1989 but clearly by 2006 it was a
commodity
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And so the question is is whether or not
simply by using a single staple article Congress
intended through 271 to -- to declare that this is --
JUSTICE SOTOMAYOR Could you tell us --
MR PHILLIPS -- a violation
JUSTICE SOTOMAYOR -- is this product
available outside the US
MR PHILLIPS Taq polymerase
JUSTICE SOTOMAYOR Yes
MR PHILLIPS Absolutely Yes Its --
its readily available throughout the world through --
there are a variety of manufacturers who wish to make --
JUSTICE SOTOMAYOR Theres no patent on
that particular component
MR PHILLIPS No none that -- none that
exists any longer no As I said its a commodity
product The --
JUSTICE GINSBURG Do we know why that
particular component was exported from the United
States You -- you said all the others --
MR PHILLIPS Right
JUSTICE GINSBURG -- were made in England
MR PHILLIPS Yeah and the key to this is
you want -- you want to get the best quality product
at -- presumably at the lowest possible price And --
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and most of these were purchased -- most of the Taq was
purchased from the Roche company and I -- and I suspect
they just had a better supply arrangement
I mean thats -- thats the key to this
case in a lot of ways is what youre looking for is
what are the best supply arrangements that you can make
on a global basis Can you get them in the United
States Can you get them outside the United States
And what it seems to me clear that Congress could never
have intended was to in some way disadvantage US
manufacturers who are providing a particular staple
Indeed I would read 271(f)(2) as saying
categorically that the one thing Congress did not want
to do is to interfere with the ability to -- of a
manufacturer to provide a staple article as part of
the -- as part of an activity outside of the United
States
JUSTICE KENNEDY If all of this had
happened in the United States would there have been a
patent infringement suit that would be -- have merit
MR PHILLIPS Yes if everything had
take -- taken place inside the United States there
would have been
JUSTICE KENNEDY Under the UK laws are
patents generally enforced for items that are patentable
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in the UK
MR PHILLIPS Yes Yes absolutely
And -- and -- and indeed in this case Promega had --
I think Promega -- at least somebody had a patent in the
UK but that patent had expired which is candidly
not surprisingly why the activity was taken
And that -- and that is ultimately Justice
Kennedy the answer to these issues If a patentholder
in the United States is upset by the use of a particular
invention outside the United States the solution is to
go outside of the United States and seek packet -- pack
-- patent protection in that particular country
JUSTICE KENNEDY I assume though that
there might be other countries that are not so vigorous
in their enforcements as the UK
MR PHILLIPS Well I suspect that there
may be although there -- you know this isnt broadly
regulated by -- by treaties And the -- and to me the
key is you know right -- you know the United States
has agreed that each country should regulate its own
patent rights I mean were bought into that deal
in -- in the Paris Convention in the 19th century
and -- and consistently have accepted that And
thats -- and the whole theory of this is to ensure the
free flow of commerce across borders on a regular basis
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at least when were talking about staple articles of
commerce
You know if -- if -- you know where the
Federal Circuit clearly got this wrong is in saying that
you could interpret (f)(1) which talks about a -- a
substantial portion of the commodities and say that a
single commodity can be a substantial portion when
(f)(2) says that in order for a single commodity to
constitute a -- to give rise to a potential claim of a
violation what it has to be is especially made or
especially adapted for use in the particular invention
JUSTICE ALITO Does substantial portion
mean a majority
MR PHILLIPS Oh I think it means
substantially more than a majority I -- I would -- I
would say that it has to be approximating or very close
or tantamount to all
JUSTICE ALITO So here there were five
components
MR PHILLIPS Yes Your Honor
JUSTICE ALITO And -- and they would have
to be -- all -- all five would have to be made in the
United States Or --
MR PHILLIPS Well I -- I would -- at
minimum --
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JUSTICE ALITO -- four would be enough
MR PHILLIPS I would have thought at least
four would have to be But I -- I -- you know in many
instances my guess is the right answer may well be
five
JUSTICE KAGAN Where -- where do you get
that from Whats the principle there
MR PHILLIPS Because all Congress wanted
to do was to close a loophole where youre essentially
doing nothing but violating US patent law and avoiding
it by simply offloading it at the last second In a lot
of instances I dont think thats true when youre only
talking about a majority of -- of the -- the items
JUSTICE KAGAN Well how do we know that
thats all Congress wanted to do I mean that might
have been the -- the -- the scenario in Deepsouth but
Congress used language that could refer to much more
than that that could refer to a majority that even
could refer to a substantial minority
MR PHILLIPS Yeah I -- I -- I think
there is no way to -- to -- first of all the -- the
rule against extra -- the rule -- the presumption
against extraterritoriality would drive you in the
opposite direction Even if you could reasonably read
the language either way you would -- you would drive it
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toward recognizing that the company that the substantial
portion keeps is the word all and its talking about
components
And so those are to my mind very much
quantitative and driven in the direction of all I --
JUSTICE GINSBURG And so you agree that
substantial portion is an ambiguous term
MR PHILLIPS Yes Justice Ginsburg I --
I agree It could be interpreted in either of two ways
which is why I think the principle against
extraterritoriality drives you in the direction of
saying Congress meant only to allow US patents to
operate outside the United States in very narrow
circumstances And if Congress chooses to -- to create
the kinds of international problems that will
undoubtedly arise by an overbroad interpretation of
271(f) which is what the Federal Circuit has adopted
leave it to Congress to go back and fix that because
those are -- those are issues of international relations
that it seems to me Congress is in a much better
position than the courts --
JUSTICE KENNEDY But those are --
MR PHILLIPS -- to sort out
JUSTICE KENNEDY -- just two -- two
components the polymerase and then a -- a patent --
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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25
So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
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am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
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5410 Agilent 4724 anti-circumve articles 81 2912 5220
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addition 2614 311219 372 areas 1213 averting 3414 brief 201024
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argued 208 4220 argument 114
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
2316 outside 447 57 3019 311314 1325 1469 N 6816 71011 3118 3413 1415 15217
N 211 31 O 1013 547 362225 3715 1521 1625 narrow 1013 O 21 31 overbroad 1016 391520 401 1623 172125 1311 objected 3022 overcomes 519 4027 4616 208 521819 narrowly 1349 objection 3211 overlap 4916 479 4923 5221 176 obtain 213 238 overseas 1221 506 525 541 physical 3324 natural 1625 obvious 3223 1510 3513 543 pick 3818 3410 4619 3820 4924 patents 3625 picture 1913 nature 2917 obviously 1220 505 patentable 625 245 nearly 3913 403 overturn 4920 1919 piece 1921 201 necessary 345 occurs 4924 patented 204 541 41317 4524 5113 P 2819 3368 pinned 2720 need 1424 213 off-the-shelf P 123 210 31 3781116 pinning 289 2423 264 414 2911 3814 398 place 317 622 4911111219 offend 171 pack 711 413 494 plain 2315 4919 offloading 911 packet 711 5017 plainly 3415 needs 206 237 offshore 548 page 22 2024 patentholder plant 325 42 2413 26124 Oh 814 1121 24721 2924 78 3622 plausible 174 2719 4921 3015 3610 patents 625 please 310 negative 16617 okay 1220 pages 331013 1012 301 1821 2914 5411 3016 3221 331520 349 3325 plural 3444 negligence 471 37923 4517 442424 people 3212 Plus 4121 never 69 1825 502 parade 474 percent 2014 point 1125 144 2018 261 once 121117 paradigm 2822 2014 211314 234 3423 294 3820 231011 278 3012 211717 2825 3610 511212 4915 549 ones 446 Paris 722 5016 5314 nine 159 online 42022 part 410 615 perfectly 1410 pointed 4821 non-bespoke operate 1013 616 111 267 points 4217 3910 operates 325 1425 1913 person 1924 4810 non-infringing 131 308 4414 Petitioner 483 polar 324 419 309 operation 1916 particular 322 Petitioners 15 policy 141117 3415 3946 413 411 51419 11822 248 polymer 5122 4825 opinion 1717 611 7912 214 38 1819 52712 normal 121118 469 811 1712 2916 5220 polymerase 413 notice 5324 opportunity 188 222 pharmaceutical 41521 58 notion 5120 5324 2616 321718 3814 397 1025 411314 notwithstandi opposed 1618 412021 459 409 411720 4222 3019 4115 opposite 324 particularly Phillips 117 23 43131316 novelty 1916 924 1223 3314 213 3679 45921 2122 2411 oral 113 2259 partly 3415 558101521 portion 86712 number 2618 37 1817 passage 314 523 621 72 1027 1612
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
R R 31 races 2312 rare 3124
reference 4115 496 regular 725 regulate 720 regulated 718
restrictioning 2818 result 321 review 1877 4421
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
542 Solicitor 119 statements 417 1714 2316 S sends 3017 solution 710 States 111421 282510 308
S 21 31 3722 2919 513 27 318 457 33671014 sake 365 sense 2121 241 solve 4820 49 520 688 3319 3438 salable 4118 sentence 43518 somebody 74 6171922 79 34111421 sale 3615 3924 set 2225 2519 221015 2619 7101119 3619 382 sales 4110 SETH 123 210 4817 504 823 1013 414 421922 saline 513 2911 someplace 2814 15121619 4225 43816 satisfied 538 shelf 1512 sophisticated 1818 205 444561017 satisfy 1522 ship 482 3921 2820 292225 442121 456 sauce 4815 shipped 410 sorry 1121 301 3238 451424 464 saying 612 84 shipping 205 3811 3420 3516 4621 4718 1012 1618 2820 sort 1023 1214 3822 391 4825 51217 1711 207 shore 203 2818 144 2417 4024 4124 535615 2120 231725 show 374 3914 2610 47612 5114 substantiality 253 2717 showed 223 sorting 2419 523714 1622 2816 368 388 Showing 518 Sotomayor 546 5313 545 3418 4324 shows 301011 5913 20714 States 353 substantially says 88 1115 484 2217 2413 statue 2817 815 2089 1613 259 shrimp 316 43362223 statute 321 2510 3012 263 311416 side 3413 392 511921 522 1220 1524 36891316
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
1958 2215 817 199 549 totally 303 UK 624 715 2962021 221323 2511 things 115 touch 501 715 307 356 381 26425 1510 1822 touched 5214 US 57 610 3913 476 Taq 4121520 285 3512 trade 312 910 1012 4811114 58 61 4112 468 482 transcript 4518 3019 50679 532024 545 4114162024 think 311 414 translates 3125 5025 5216 supplying 1925 421822 4315 415 74 814 treaties 718 5478811 22132324 4423 4599 91220 1010 treaty 3114 ultimate 546 27122 3921 4521 121214 151 trial 41121619 ultimately 77 support 3519 Tech 324 154 1624 4122 4217 uncommon supporting 121 Technologies 19120 2015 45818 2417 28 1819 13 3425 20131619 tried 4520 undermines supposed 5319 4216 4725 217111323 Tripp 119 26 2323 Supreme 1114 5121 525 2124 221122 18161720 underscored sure 12719 tell 54 1318 2224 23510 201316 217 4423 1525 16416 461212 231224 247 211119 2222 underscoring 2712 424 telling 2518 2422 2513 2324 2418 517 436 5211 tells 1523 25162325 25162325 understand surprisingly 76 ten 159 262024 273 266915 2320 2418 suspect 62 716 tens 41 274101517 2715 2814 2817 2916 sway 126 term 107 287 28421 293 281215 293 3016 3214 sweep 132 terms 2225 279 2915 314 393 531
terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
4217 5310 wants 162
wish 512 witnesses 4314 0
2817 374 549
301 3238 3420 35315 3822 391 4024 4124 47611 5114 523714 5313 545 units 348 unlawful 5111 upset 79 urge 5412 use 79 811 142 148 3019 331722 344 3612 3812 396 493 5111 5222 useful 312 uses 420 309 341518 394 4825 493
V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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C O N T E N T S
ORAL ARGUMENT OF PAGE
CARTER G PHILLIPS ESQ
On behalf of the Petitioners 3
ORAL ARGUMENT OF
ZACHARY D TRIPP ESQ
For United States as amicus curiae
supporting the Petitioners 18
ORAL ARGUMENT OF
SETH P WAXMAN ESQ
On behalf of the Respondent 29
REBUTTAL ARGUMENT OF
CARTER G PHILLIPS ESQ
On behalf of the Petitioners 52
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P R O C E E D I N G S
(1015 am)
CHIEF JUSTICE ROBERTS Well hear argument
this morning in Case 14-1538 Life Technologies
Corporation v Promega Corporation
Mr Phillips
ORAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Mr Chief Justice and may it
please the Court
I think because this is largely an
international trade case its probably useful to put
this case in context and to compare it to the facts that
gave rise to the passage of Section 271(f) thats at
issue in this case Youll recall that in the Deepsouth
case that was a case involving a shrimp deveiner in
which all of the activities took place within the United
States except for the final act that took less than an
hour to assemble in a foreign country In that case
this Court held even that was not within the meaning of
the -- of the patent statute as it existed then and
Congress then acted to fill that particular loophole
The facts of this case seem to me to be the
polar opposite of that With -- Life Tech has -- Life
Technologies operates an -- an enormous plant in
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England in the United Kingdom It spends tens of
million dollars on that plant Four out of the five
components that go into the creation of the kits that
are at issue in this case are sourced outside of the
United States one inside Ill come back to that in a
minute And as relevant to this litigation all of the
kit -- kits are sold outside of the United States
So the only contact that any of this has
with the United States is the fact that a single
commodity product is shipped to England as part of the
process for the fabrication of these particular kits
Now that commodity product is called a Taq
polymerase which I will readily concede that when I
think about what you buy off-the-shelf I dont go to
Costco to buy Taq polymerase but Im told and I think
its absolutely undisputed in the record that this is a
commodity This is at the essence of what the Congress
enacted in (f)(2) which is a staple article or
commodity of commerce suitable for many non-infringing
uses And indeed if you get online and put in Taq
polymerase you can find literally dozens and dozens of
ways to purchase it online at this time And that was
true as much in 2006 It may have been a significant
product in 1989 but clearly by 2006 it was a
commodity
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And so the question is is whether or not
simply by using a single staple article Congress
intended through 271 to -- to declare that this is --
JUSTICE SOTOMAYOR Could you tell us --
MR PHILLIPS -- a violation
JUSTICE SOTOMAYOR -- is this product
available outside the US
MR PHILLIPS Taq polymerase
JUSTICE SOTOMAYOR Yes
MR PHILLIPS Absolutely Yes Its --
its readily available throughout the world through --
there are a variety of manufacturers who wish to make --
JUSTICE SOTOMAYOR Theres no patent on
that particular component
MR PHILLIPS No none that -- none that
exists any longer no As I said its a commodity
product The --
JUSTICE GINSBURG Do we know why that
particular component was exported from the United
States You -- you said all the others --
MR PHILLIPS Right
JUSTICE GINSBURG -- were made in England
MR PHILLIPS Yeah and the key to this is
you want -- you want to get the best quality product
at -- presumably at the lowest possible price And --
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and most of these were purchased -- most of the Taq was
purchased from the Roche company and I -- and I suspect
they just had a better supply arrangement
I mean thats -- thats the key to this
case in a lot of ways is what youre looking for is
what are the best supply arrangements that you can make
on a global basis Can you get them in the United
States Can you get them outside the United States
And what it seems to me clear that Congress could never
have intended was to in some way disadvantage US
manufacturers who are providing a particular staple
Indeed I would read 271(f)(2) as saying
categorically that the one thing Congress did not want
to do is to interfere with the ability to -- of a
manufacturer to provide a staple article as part of
the -- as part of an activity outside of the United
States
JUSTICE KENNEDY If all of this had
happened in the United States would there have been a
patent infringement suit that would be -- have merit
MR PHILLIPS Yes if everything had
take -- taken place inside the United States there
would have been
JUSTICE KENNEDY Under the UK laws are
patents generally enforced for items that are patentable
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in the UK
MR PHILLIPS Yes Yes absolutely
And -- and -- and indeed in this case Promega had --
I think Promega -- at least somebody had a patent in the
UK but that patent had expired which is candidly
not surprisingly why the activity was taken
And that -- and that is ultimately Justice
Kennedy the answer to these issues If a patentholder
in the United States is upset by the use of a particular
invention outside the United States the solution is to
go outside of the United States and seek packet -- pack
-- patent protection in that particular country
JUSTICE KENNEDY I assume though that
there might be other countries that are not so vigorous
in their enforcements as the UK
MR PHILLIPS Well I suspect that there
may be although there -- you know this isnt broadly
regulated by -- by treaties And the -- and to me the
key is you know right -- you know the United States
has agreed that each country should regulate its own
patent rights I mean were bought into that deal
in -- in the Paris Convention in the 19th century
and -- and consistently have accepted that And
thats -- and the whole theory of this is to ensure the
free flow of commerce across borders on a regular basis
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at least when were talking about staple articles of
commerce
You know if -- if -- you know where the
Federal Circuit clearly got this wrong is in saying that
you could interpret (f)(1) which talks about a -- a
substantial portion of the commodities and say that a
single commodity can be a substantial portion when
(f)(2) says that in order for a single commodity to
constitute a -- to give rise to a potential claim of a
violation what it has to be is especially made or
especially adapted for use in the particular invention
JUSTICE ALITO Does substantial portion
mean a majority
MR PHILLIPS Oh I think it means
substantially more than a majority I -- I would -- I
would say that it has to be approximating or very close
or tantamount to all
JUSTICE ALITO So here there were five
components
MR PHILLIPS Yes Your Honor
JUSTICE ALITO And -- and they would have
to be -- all -- all five would have to be made in the
United States Or --
MR PHILLIPS Well I -- I would -- at
minimum --
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JUSTICE ALITO -- four would be enough
MR PHILLIPS I would have thought at least
four would have to be But I -- I -- you know in many
instances my guess is the right answer may well be
five
JUSTICE KAGAN Where -- where do you get
that from Whats the principle there
MR PHILLIPS Because all Congress wanted
to do was to close a loophole where youre essentially
doing nothing but violating US patent law and avoiding
it by simply offloading it at the last second In a lot
of instances I dont think thats true when youre only
talking about a majority of -- of the -- the items
JUSTICE KAGAN Well how do we know that
thats all Congress wanted to do I mean that might
have been the -- the -- the scenario in Deepsouth but
Congress used language that could refer to much more
than that that could refer to a majority that even
could refer to a substantial minority
MR PHILLIPS Yeah I -- I -- I think
there is no way to -- to -- first of all the -- the
rule against extra -- the rule -- the presumption
against extraterritoriality would drive you in the
opposite direction Even if you could reasonably read
the language either way you would -- you would drive it
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toward recognizing that the company that the substantial
portion keeps is the word all and its talking about
components
And so those are to my mind very much
quantitative and driven in the direction of all I --
JUSTICE GINSBURG And so you agree that
substantial portion is an ambiguous term
MR PHILLIPS Yes Justice Ginsburg I --
I agree It could be interpreted in either of two ways
which is why I think the principle against
extraterritoriality drives you in the direction of
saying Congress meant only to allow US patents to
operate outside the United States in very narrow
circumstances And if Congress chooses to -- to create
the kinds of international problems that will
undoubtedly arise by an overbroad interpretation of
271(f) which is what the Federal Circuit has adopted
leave it to Congress to go back and fix that because
those are -- those are issues of international relations
that it seems to me Congress is in a much better
position than the courts --
JUSTICE KENNEDY But those are --
MR PHILLIPS -- to sort out
JUSTICE KENNEDY -- just two -- two
components the polymerase and then a -- a patent --
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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56
briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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KAGAN 9614 knowledge 3024 3820 5325 1313 1525 164 5116 476 504 528 majority 81315 measure 1110 2724 28913 KSR 4620 Life 13 3424 91318 meeting 241 2823 324 4123 making 204 meets 4815 keep 20710 L 4216 5121 2819 4618 mens 5225 542 language 917 5215 501117 mention 5025 keeps 102 925 1312 light 192 2816 manifestly 477 mentioned 292 Kennedy 618 175613 4619 manufacture 31523 624 7813 2810 31522 limits 386 3018 merely 5110 102224 118 321 4014 line 2017 manufactured merit 620 111719 4713 large 195 2424 list 3722 4024 4123 mesh 4915 471921 4810 largely 311 literally 421 manufacturer met 4625 5318 Laughter 1413 litigation 46 615 2514 method 3325 kept 368 268 4320 2711 511 methods 3418 key 523 64 498 little 1210 manufacturers microchip 3921 719 234 law 910 1211 lo 5013 512 611 548 404 kind 2317 132021 179 loaded 1912 manufacturing microprocessor 501617 5410 2414 288 local 3823 224 392125 405 5410 31131419 locution 3611 material 2921 Microsoft 1224 kinds 1015 122 36152021 longer 516 325 1224 1725 Kingdom 41 372 4615 look 1410 182 materiality 2021 2422 kit 47 471 5413 19114 2019 461013 3225 3321 kits 43711 laws 519 2025 21216 Mathias 2919 3510 229 411317 laws 624 2313 2489 304 311217 million 42 4221 lawyer 1319 2410 3411 323 411010 know 518 717 lawyers 2517 4221 4416 Mathiass 3014 mind 104 206 71919 833 2520 4220 4519 4723 matter 113 235 3624 9314 1145 leave 1018 looking 65 254 541319 mine 3713 1124 121720 3720 398 1421 191322 mean 64 721 minimum 825 132021 1517 left 238 2410 237 278 813 915 129 2011 171523 185 272 looks 3514 1318 1417 minority 919 211517 225 legislation 305 5215 1652324 minute 46 228 2319 legislative 314 loophole 322 209 2114 minutes 5218 2413 252 31825 497 99 231112 256 5222 277 303 legislatures 365 lot 65 911 258 2813 minutiae 1210 3210111112 lets 158 2219 1316 245 3115 3211 misapprehend 33913 3412 3814 412 2511 26144 5125 2917 3525 362124 433 4910 265 4612 meaning 320 mischief 1419 37713 3815 level 3216 5224 136 1524 misunderstood 39121523 Levinson 4611 love 371 447 3424 40911 428 LGE 3925 lowest 525 means 814 mix 224 2623 431 447 liability 113 2320 25810 276 4524 46356 167 3913 M 264 2811 modeled 327 4619 4799 4515 4812 main 231 2715 3517 4410 331 4813 4711 5014 4925 519 maintain 123 4525 4614 modern 4725 5224 531119 liable 2212 major 1714 4613 517 molecule 3825 532021 549 2621 272 232 531114 meant 1012 3945 4720
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
542 Solicitor 119 statements 417 1714 2316 S sends 3017 solution 710 States 111421 282510 308
S 21 31 3722 2919 513 27 318 457 33671014 sake 365 sense 2121 241 solve 4820 49 520 688 3319 3438 salable 4118 sentence 43518 somebody 74 6171922 79 34111421 sale 3615 3924 set 2225 2519 221015 2619 7101119 3619 382 sales 4110 SETH 123 210 4817 504 823 1013 414 421922 saline 513 2911 someplace 2814 15121619 4225 43816 satisfied 538 shelf 1512 sophisticated 1818 205 444561017 satisfy 1522 ship 482 3921 2820 292225 442121 456 sauce 4815 shipped 410 sorry 1121 301 3238 451424 464 saying 612 84 shipping 205 3811 3420 3516 4621 4718 1012 1618 2820 sort 1023 1214 3822 391 4825 51217 1711 207 shore 203 2818 144 2417 4024 4124 535615 2120 231725 show 374 3914 2610 47612 5114 substantiality 253 2717 showed 223 sorting 2419 523714 1622 2816 368 388 Showing 518 Sotomayor 546 5313 545 3418 4324 shows 301011 5913 20714 States 353 substantially says 88 1115 484 2217 2413 statue 2817 815 2089 1613 259 shrimp 316 43362223 statute 321 2510 3012 263 311416 side 3413 392 511921 522 1220 1524 36891316
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
1958 2215 817 199 549 totally 303 UK 624 715 2962021 221323 2511 things 115 touch 501 715 307 356 381 26425 1510 1822 touched 5214 US 57 610 3913 476 Taq 4121520 285 3512 trade 312 910 1012 4811114 58 61 4112 468 482 transcript 4518 3019 50679 532024 545 4114162024 think 311 414 translates 3125 5025 5216 supplying 1925 421822 4315 415 74 814 treaties 718 5478811 22132324 4423 4599 91220 1010 treaty 3114 ultimate 546 27122 3921 4521 121214 151 trial 41121619 ultimately 77 support 3519 Tech 324 154 1624 4122 4217 uncommon supporting 121 Technologies 19120 2015 45818 2417 28 1819 13 3425 20131619 tried 4520 undermines supposed 5319 4216 4725 217111323 Tripp 119 26 2323 Supreme 1114 5121 525 2124 221122 18161720 underscored sure 12719 tell 54 1318 2224 23510 201316 217 4423 1525 16416 461212 231224 247 211119 2222 underscoring 2712 424 telling 2518 2422 2513 2324 2418 517 436 5211 tells 1523 25162325 25162325 understand surprisingly 76 ten 159 262024 273 266915 2320 2418 suspect 62 716 tens 41 274101517 2715 2814 2817 2916 sway 126 term 107 287 28421 293 281215 293 3016 3214 sweep 132 terms 2225 279 2915 314 393 531
terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
4217 5310 wants 162
wish 512 witnesses 4314 0
2817 374 549
301 3238 3420 35315 3822 391 4024 4124 47611 5114 523714 5313 545 units 348 unlawful 5111 upset 79 urge 5412 use 79 811 142 148 3019 331722 344 3612 3812 396 493 5111 5222 useful 312 uses 420 309 341518 394 4825 493
V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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P R O C E E D I N G S
(1015 am)
CHIEF JUSTICE ROBERTS Well hear argument
this morning in Case 14-1538 Life Technologies
Corporation v Promega Corporation
Mr Phillips
ORAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Mr Chief Justice and may it
please the Court
I think because this is largely an
international trade case its probably useful to put
this case in context and to compare it to the facts that
gave rise to the passage of Section 271(f) thats at
issue in this case Youll recall that in the Deepsouth
case that was a case involving a shrimp deveiner in
which all of the activities took place within the United
States except for the final act that took less than an
hour to assemble in a foreign country In that case
this Court held even that was not within the meaning of
the -- of the patent statute as it existed then and
Congress then acted to fill that particular loophole
The facts of this case seem to me to be the
polar opposite of that With -- Life Tech has -- Life
Technologies operates an -- an enormous plant in
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England in the United Kingdom It spends tens of
million dollars on that plant Four out of the five
components that go into the creation of the kits that
are at issue in this case are sourced outside of the
United States one inside Ill come back to that in a
minute And as relevant to this litigation all of the
kit -- kits are sold outside of the United States
So the only contact that any of this has
with the United States is the fact that a single
commodity product is shipped to England as part of the
process for the fabrication of these particular kits
Now that commodity product is called a Taq
polymerase which I will readily concede that when I
think about what you buy off-the-shelf I dont go to
Costco to buy Taq polymerase but Im told and I think
its absolutely undisputed in the record that this is a
commodity This is at the essence of what the Congress
enacted in (f)(2) which is a staple article or
commodity of commerce suitable for many non-infringing
uses And indeed if you get online and put in Taq
polymerase you can find literally dozens and dozens of
ways to purchase it online at this time And that was
true as much in 2006 It may have been a significant
product in 1989 but clearly by 2006 it was a
commodity
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And so the question is is whether or not
simply by using a single staple article Congress
intended through 271 to -- to declare that this is --
JUSTICE SOTOMAYOR Could you tell us --
MR PHILLIPS -- a violation
JUSTICE SOTOMAYOR -- is this product
available outside the US
MR PHILLIPS Taq polymerase
JUSTICE SOTOMAYOR Yes
MR PHILLIPS Absolutely Yes Its --
its readily available throughout the world through --
there are a variety of manufacturers who wish to make --
JUSTICE SOTOMAYOR Theres no patent on
that particular component
MR PHILLIPS No none that -- none that
exists any longer no As I said its a commodity
product The --
JUSTICE GINSBURG Do we know why that
particular component was exported from the United
States You -- you said all the others --
MR PHILLIPS Right
JUSTICE GINSBURG -- were made in England
MR PHILLIPS Yeah and the key to this is
you want -- you want to get the best quality product
at -- presumably at the lowest possible price And --
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and most of these were purchased -- most of the Taq was
purchased from the Roche company and I -- and I suspect
they just had a better supply arrangement
I mean thats -- thats the key to this
case in a lot of ways is what youre looking for is
what are the best supply arrangements that you can make
on a global basis Can you get them in the United
States Can you get them outside the United States
And what it seems to me clear that Congress could never
have intended was to in some way disadvantage US
manufacturers who are providing a particular staple
Indeed I would read 271(f)(2) as saying
categorically that the one thing Congress did not want
to do is to interfere with the ability to -- of a
manufacturer to provide a staple article as part of
the -- as part of an activity outside of the United
States
JUSTICE KENNEDY If all of this had
happened in the United States would there have been a
patent infringement suit that would be -- have merit
MR PHILLIPS Yes if everything had
take -- taken place inside the United States there
would have been
JUSTICE KENNEDY Under the UK laws are
patents generally enforced for items that are patentable
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in the UK
MR PHILLIPS Yes Yes absolutely
And -- and -- and indeed in this case Promega had --
I think Promega -- at least somebody had a patent in the
UK but that patent had expired which is candidly
not surprisingly why the activity was taken
And that -- and that is ultimately Justice
Kennedy the answer to these issues If a patentholder
in the United States is upset by the use of a particular
invention outside the United States the solution is to
go outside of the United States and seek packet -- pack
-- patent protection in that particular country
JUSTICE KENNEDY I assume though that
there might be other countries that are not so vigorous
in their enforcements as the UK
MR PHILLIPS Well I suspect that there
may be although there -- you know this isnt broadly
regulated by -- by treaties And the -- and to me the
key is you know right -- you know the United States
has agreed that each country should regulate its own
patent rights I mean were bought into that deal
in -- in the Paris Convention in the 19th century
and -- and consistently have accepted that And
thats -- and the whole theory of this is to ensure the
free flow of commerce across borders on a regular basis
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at least when were talking about staple articles of
commerce
You know if -- if -- you know where the
Federal Circuit clearly got this wrong is in saying that
you could interpret (f)(1) which talks about a -- a
substantial portion of the commodities and say that a
single commodity can be a substantial portion when
(f)(2) says that in order for a single commodity to
constitute a -- to give rise to a potential claim of a
violation what it has to be is especially made or
especially adapted for use in the particular invention
JUSTICE ALITO Does substantial portion
mean a majority
MR PHILLIPS Oh I think it means
substantially more than a majority I -- I would -- I
would say that it has to be approximating or very close
or tantamount to all
JUSTICE ALITO So here there were five
components
MR PHILLIPS Yes Your Honor
JUSTICE ALITO And -- and they would have
to be -- all -- all five would have to be made in the
United States Or --
MR PHILLIPS Well I -- I would -- at
minimum --
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JUSTICE ALITO -- four would be enough
MR PHILLIPS I would have thought at least
four would have to be But I -- I -- you know in many
instances my guess is the right answer may well be
five
JUSTICE KAGAN Where -- where do you get
that from Whats the principle there
MR PHILLIPS Because all Congress wanted
to do was to close a loophole where youre essentially
doing nothing but violating US patent law and avoiding
it by simply offloading it at the last second In a lot
of instances I dont think thats true when youre only
talking about a majority of -- of the -- the items
JUSTICE KAGAN Well how do we know that
thats all Congress wanted to do I mean that might
have been the -- the -- the scenario in Deepsouth but
Congress used language that could refer to much more
than that that could refer to a majority that even
could refer to a substantial minority
MR PHILLIPS Yeah I -- I -- I think
there is no way to -- to -- first of all the -- the
rule against extra -- the rule -- the presumption
against extraterritoriality would drive you in the
opposite direction Even if you could reasonably read
the language either way you would -- you would drive it
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toward recognizing that the company that the substantial
portion keeps is the word all and its talking about
components
And so those are to my mind very much
quantitative and driven in the direction of all I --
JUSTICE GINSBURG And so you agree that
substantial portion is an ambiguous term
MR PHILLIPS Yes Justice Ginsburg I --
I agree It could be interpreted in either of two ways
which is why I think the principle against
extraterritoriality drives you in the direction of
saying Congress meant only to allow US patents to
operate outside the United States in very narrow
circumstances And if Congress chooses to -- to create
the kinds of international problems that will
undoubtedly arise by an overbroad interpretation of
271(f) which is what the Federal Circuit has adopted
leave it to Congress to go back and fix that because
those are -- those are issues of international relations
that it seems to me Congress is in a much better
position than the courts --
JUSTICE KENNEDY But those are --
MR PHILLIPS -- to sort out
JUSTICE KENNEDY -- just two -- two
components the polymerase and then a -- a patent --
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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equally 1418 explained 3321 461525 412021 4218 447 483 174 3516 3919 factual 429 459 494 given 4624 equivalence 468 fair 4415 former 282 global 67 3417 4621 explaining fairly 2117 formulations gloss 2610 equivalency 4424 2311 3216 4618 2815 3417 explicated 4615 5011 forth 3115 go 4314 711 equivalent 4620 export 343 far 301012 found 4115 1018 142224 4621 exported 519 4914 four 42 913 1712 255 especially 810 3819 426 Federal 84 521822 3120 3316 811 111618 exporter 3017 1017 1419 France 3115 3715 38723 152222 168 exporting 3512 1717 191122 frankly 254 4214 4310 16811 192 extent 3420 3612 4225 273 4714 531323 ESQ 1171923 extra 922 177 4317 4416 free 725 548 2361013 extraterritorial feel 1411 French 3115 goes 357 essence 417 125825 156 fewer 365 friend 3413 going 121 133 305 1788 3511 figure 243 417 5224 131920 1422 essential 1916 extraterritori 2520 4713 friends 4115 19171919 2122 2411 923 1011 fill 322 friends 392 2124 2412 essentially 99 145 173 193 final 318 full 126 276 295 407 ET 14 2713 359 find 421 449 fully 2225 415 451718 evidence 419 extraterritori 4521 519 functions 3418 4519 4710 43810 4421 132 finding 281314 fundamentally 496 506 542 4519 4717 extremely 2915 finish 434 5210 2916 537 543446 exactly 1223 finished 4318 further 1813 good 484 1322 234 F 4318 good-bye 265 271822 323 f 418 858 first 921 1624 G government 383 1120 1523 1824 2021 G 117 2313 283 2917 example 318 165101216 224 3316 317 5219 governments 3917 40911 161820 192 416 5223 game 2023 248 449 4910 451213 1925 2019 fits 2712 gazillion 3923 governs 3119 examples 221 2020 2821 five 42 81822 gears 4915 grand 144 3813 2947 3267 95 1811 gee 3022 475 great 377 395 exchange 3124 3414 401618 2218 381723 4718 greater 156 32122 496 472222 486 4021 4124 General 120 Grokster 3517 Excuse 4212 48820 4910 4235 453 generally 625 516 exercise 1425 491120 534 fix 1018 1623 German 5010 ground 353 exhaust 402 534 flow 725 getting 2716 guess 94 4810 exhausted 401 fabrication 411 focus 3122 giant 399 exhaustion face 2018 3223 focused 459 Ginsburg 518 H
3920 408 fact 49 2521 focusing 2315 522 1068 half 4113 existed 321 3011 3222 following 329 172022 2612 happen 115 exists 516 346 3915 463 3520 402023 2624 expected 297 4422 force 2323 4118 42110 happened 619 expert 2217 factors 2313 foreign 319 4213 4919 458 441 249 466 521313 give 89 214 happy 258 262 expired 75 525 factory 3820 forever 5012 221 2610 267 3822 explain 446 facts 31323 form 39716 2815 3618 hard 225 3111
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
3515 4717 4013 492 38351013 I induced 3023 instructions invest 5012 3918 40920
idea 236 331 491317 3018 3518 involved 3920 4023 4118 illegal 371724 inducement 4211 4715 involving 316 4211013 3725 387 2920 328 instructive issue 315 44 43361722 394 35516 375 4725 1225 3917 4323 451223 illustrations 381 3910 Intel 3920 issues 78 1019 47131921 2616 4019 4516 Intels 3924 items 625 913 48921 4919 imagine 3818 4817 51715 intend 5222 5091920 immunity 1215 5225 intended 53 J 511921 522 impact 541111 inducing 515 610 153 398 judgment 1111 524111721 implication 166 inert 381724 4016 549 5413 531018 5416 1617 3914 intent 5115 judgments 122 Justices 3121 implications infringe 2923 interesting juries 468 351125 3019 4712 4215 juror 4521 K
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KAGAN 9614 knowledge 3024 3820 5325 1313 1525 164 5116 476 504 528 majority 81315 measure 1110 2724 28913 KSR 4620 Life 13 3424 91318 meeting 241 2823 324 4123 making 204 meets 4815 keep 20710 L 4216 5121 2819 4618 mens 5225 542 language 917 5215 501117 mention 5025 keeps 102 925 1312 light 192 2816 manifestly 477 mentioned 292 Kennedy 618 175613 4619 manufacture 31523 624 7813 2810 31522 limits 386 3018 merely 5110 102224 118 321 4014 line 2017 manufactured merit 620 111719 4713 large 195 2424 list 3722 4024 4123 mesh 4915 471921 4810 largely 311 literally 421 manufacturer met 4625 5318 Laughter 1413 litigation 46 615 2514 method 3325 kept 368 268 4320 2711 511 methods 3418 key 523 64 498 little 1210 manufacturers microchip 3921 719 234 law 910 1211 lo 5013 512 611 548 404 kind 2317 132021 179 loaded 1912 manufacturing microprocessor 501617 5410 2414 288 local 3823 224 392125 405 5410 31131419 locution 3611 material 2921 Microsoft 1224 kinds 1015 122 36152021 longer 516 325 1224 1725 Kingdom 41 372 4615 look 1410 182 materiality 2021 2422 kit 47 471 5413 19114 2019 461013 3225 3321 kits 43711 laws 519 2025 21216 Mathias 2919 3510 229 411317 laws 624 2313 2489 304 311217 million 42 4221 lawyer 1319 2410 3411 323 411010 know 518 717 lawyers 2517 4221 4416 Mathiass 3014 mind 104 206 71919 833 2520 4220 4519 4723 matter 113 235 3624 9314 1145 leave 1018 looking 65 254 541319 mine 3713 1124 121720 3720 398 1421 191322 mean 64 721 minimum 825 132021 1517 left 238 2410 237 278 813 915 129 2011 171523 185 272 looks 3514 1318 1417 minority 919 211517 225 legislation 305 5215 1652324 minute 46 228 2319 legislative 314 loophole 322 209 2114 minutes 5218 2413 252 31825 497 99 231112 256 5222 277 303 legislatures 365 lot 65 911 258 2813 minutiae 1210 3210111112 lets 158 2219 1316 245 3115 3211 misapprehend 33913 3412 3814 412 2511 26144 5125 2917 3525 362124 433 4910 265 4612 meaning 320 mischief 1419 37713 3815 level 3216 5224 136 1524 misunderstood 39121523 Levinson 4611 love 371 447 3424 40911 428 LGE 3925 lowest 525 means 814 mix 224 2623 431 447 liability 113 2320 25810 276 4524 46356 167 3913 M 264 2811 modeled 327 4619 4799 4515 4812 main 231 2715 3517 4410 331 4813 4711 5014 4925 519 maintain 123 4525 4614 modern 4725 5224 531119 liable 2212 major 1714 4613 517 molecule 3825 532021 549 2621 272 232 531114 meant 1012 3945 4720
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
2316 outside 447 57 3019 311314 1325 1469 N 6816 71011 3118 3413 1415 15217
N 211 31 O 1013 547 362225 3715 1521 1625 narrow 1013 O 21 31 overbroad 1016 391520 401 1623 172125 1311 objected 3022 overcomes 519 4027 4616 208 521819 narrowly 1349 objection 3211 overlap 4916 479 4923 5221 176 obtain 213 238 overseas 1221 506 525 541 physical 3324 natural 1625 obvious 3223 1510 3513 543 pick 3818 3410 4619 3820 4924 patents 3625 picture 1913 nature 2917 obviously 1220 505 patentable 625 245 nearly 3913 403 overturn 4920 1919 piece 1921 201 necessary 345 occurs 4924 patented 204 541 41317 4524 5113 P 2819 3368 pinned 2720 need 1424 213 off-the-shelf P 123 210 31 3781116 pinning 289 2423 264 414 2911 3814 398 place 317 622 4911111219 offend 171 pack 711 413 494 plain 2315 4919 offloading 911 packet 711 5017 plainly 3415 needs 206 237 offshore 548 page 22 2024 patentholder plant 325 42 2413 26124 Oh 814 1121 24721 2924 78 3622 plausible 174 2719 4921 3015 3610 patents 625 please 310 negative 16617 okay 1220 pages 331013 1012 301 1821 2914 5411 3016 3221 331520 349 3325 plural 3444 negligence 471 37923 4517 442424 people 3212 Plus 4121 never 69 1825 502 parade 474 percent 2014 point 1125 144 2018 261 once 121117 paradigm 2822 2014 211314 234 3423 294 3820 231011 278 3012 211717 2825 3610 511212 4915 549 ones 446 Paris 722 5016 5314 nine 159 online 42022 part 410 615 perfectly 1410 pointed 4821 non-bespoke operate 1013 616 111 267 points 4217 3910 operates 325 1425 1913 person 1924 4810 non-infringing 131 308 4414 Petitioner 483 polar 324 419 309 operation 1916 particular 322 Petitioners 15 policy 141117 3415 3946 413 411 51419 11822 248 polymer 5122 4825 opinion 1717 611 7912 214 38 1819 52712 normal 121118 469 811 1712 2916 5220 polymerase 413 notice 5324 opportunity 188 222 pharmaceutical 41521 58 notion 5120 5324 2616 321718 3814 397 1025 411314 notwithstandi opposed 1618 412021 459 409 411720 4222 3019 4115 opposite 324 particularly Phillips 117 23 43131316 novelty 1916 924 1223 3314 213 3679 45921 2122 2411 oral 113 2259 partly 3415 558101521 portion 86712 number 2618 37 1817 passage 314 523 621 72 1027 1612
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
R R 31 races 2312 rare 3124
reference 4115 496 regular 725 regulate 720 regulated 718
restrictioning 2818 result 321 review 1877 4421
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
542 Solicitor 119 statements 417 1714 2316 S sends 3017 solution 710 States 111421 282510 308
S 21 31 3722 2919 513 27 318 457 33671014 sake 365 sense 2121 241 solve 4820 49 520 688 3319 3438 salable 4118 sentence 43518 somebody 74 6171922 79 34111421 sale 3615 3924 set 2225 2519 221015 2619 7101119 3619 382 sales 4110 SETH 123 210 4817 504 823 1013 414 421922 saline 513 2911 someplace 2814 15121619 4225 43816 satisfied 538 shelf 1512 sophisticated 1818 205 444561017 satisfy 1522 ship 482 3921 2820 292225 442121 456 sauce 4815 shipped 410 sorry 1121 301 3238 451424 464 saying 612 84 shipping 205 3811 3420 3516 4621 4718 1012 1618 2820 sort 1023 1214 3822 391 4825 51217 1711 207 shore 203 2818 144 2417 4024 4124 535615 2120 231725 show 374 3914 2610 47612 5114 substantiality 253 2717 showed 223 sorting 2419 523714 1622 2816 368 388 Showing 518 Sotomayor 546 5313 545 3418 4324 shows 301011 5913 20714 States 353 substantially says 88 1115 484 2217 2413 statue 2817 815 2089 1613 259 shrimp 316 43362223 statute 321 2510 3012 263 311416 side 3413 392 511921 522 1220 1524 36891316
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
1958 2215 817 199 549 totally 303 UK 624 715 2962021 221323 2511 things 115 touch 501 715 307 356 381 26425 1510 1822 touched 5214 US 57 610 3913 476 Taq 4121520 285 3512 trade 312 910 1012 4811114 58 61 4112 468 482 transcript 4518 3019 50679 532024 545 4114162024 think 311 414 translates 3125 5025 5216 supplying 1925 421822 4315 415 74 814 treaties 718 5478811 22132324 4423 4599 91220 1010 treaty 3114 ultimate 546 27122 3921 4521 121214 151 trial 41121619 ultimately 77 support 3519 Tech 324 154 1624 4122 4217 uncommon supporting 121 Technologies 19120 2015 45818 2417 28 1819 13 3425 20131619 tried 4520 undermines supposed 5319 4216 4725 217111323 Tripp 119 26 2323 Supreme 1114 5121 525 2124 221122 18161720 underscored sure 12719 tell 54 1318 2224 23510 201316 217 4423 1525 16416 461212 231224 247 211119 2222 underscoring 2712 424 telling 2518 2422 2513 2324 2418 517 436 5211 tells 1523 25162325 25162325 understand surprisingly 76 ten 159 262024 273 266915 2320 2418 suspect 62 716 tens 41 274101517 2715 2814 2817 2916 sway 126 term 107 287 28421 293 281215 293 3016 3214 sweep 132 terms 2225 279 2915 314 393 531
terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
4217 5310 wants 162
wish 512 witnesses 4314 0
2817 374 549
301 3238 3420 35315 3822 391 4024 4124 47611 5114 523714 5313 545 units 348 unlawful 5111 upset 79 urge 5412 use 79 811 142 148 3019 331722 344 3612 3812 396 493 5111 5222 useful 312 uses 420 309 341518 394 4825 493
V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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England in the United Kingdom It spends tens of
million dollars on that plant Four out of the five
components that go into the creation of the kits that
are at issue in this case are sourced outside of the
United States one inside Ill come back to that in a
minute And as relevant to this litigation all of the
kit -- kits are sold outside of the United States
So the only contact that any of this has
with the United States is the fact that a single
commodity product is shipped to England as part of the
process for the fabrication of these particular kits
Now that commodity product is called a Taq
polymerase which I will readily concede that when I
think about what you buy off-the-shelf I dont go to
Costco to buy Taq polymerase but Im told and I think
its absolutely undisputed in the record that this is a
commodity This is at the essence of what the Congress
enacted in (f)(2) which is a staple article or
commodity of commerce suitable for many non-infringing
uses And indeed if you get online and put in Taq
polymerase you can find literally dozens and dozens of
ways to purchase it online at this time And that was
true as much in 2006 It may have been a significant
product in 1989 but clearly by 2006 it was a
commodity
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And so the question is is whether or not
simply by using a single staple article Congress
intended through 271 to -- to declare that this is --
JUSTICE SOTOMAYOR Could you tell us --
MR PHILLIPS -- a violation
JUSTICE SOTOMAYOR -- is this product
available outside the US
MR PHILLIPS Taq polymerase
JUSTICE SOTOMAYOR Yes
MR PHILLIPS Absolutely Yes Its --
its readily available throughout the world through --
there are a variety of manufacturers who wish to make --
JUSTICE SOTOMAYOR Theres no patent on
that particular component
MR PHILLIPS No none that -- none that
exists any longer no As I said its a commodity
product The --
JUSTICE GINSBURG Do we know why that
particular component was exported from the United
States You -- you said all the others --
MR PHILLIPS Right
JUSTICE GINSBURG -- were made in England
MR PHILLIPS Yeah and the key to this is
you want -- you want to get the best quality product
at -- presumably at the lowest possible price And --
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and most of these were purchased -- most of the Taq was
purchased from the Roche company and I -- and I suspect
they just had a better supply arrangement
I mean thats -- thats the key to this
case in a lot of ways is what youre looking for is
what are the best supply arrangements that you can make
on a global basis Can you get them in the United
States Can you get them outside the United States
And what it seems to me clear that Congress could never
have intended was to in some way disadvantage US
manufacturers who are providing a particular staple
Indeed I would read 271(f)(2) as saying
categorically that the one thing Congress did not want
to do is to interfere with the ability to -- of a
manufacturer to provide a staple article as part of
the -- as part of an activity outside of the United
States
JUSTICE KENNEDY If all of this had
happened in the United States would there have been a
patent infringement suit that would be -- have merit
MR PHILLIPS Yes if everything had
take -- taken place inside the United States there
would have been
JUSTICE KENNEDY Under the UK laws are
patents generally enforced for items that are patentable
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in the UK
MR PHILLIPS Yes Yes absolutely
And -- and -- and indeed in this case Promega had --
I think Promega -- at least somebody had a patent in the
UK but that patent had expired which is candidly
not surprisingly why the activity was taken
And that -- and that is ultimately Justice
Kennedy the answer to these issues If a patentholder
in the United States is upset by the use of a particular
invention outside the United States the solution is to
go outside of the United States and seek packet -- pack
-- patent protection in that particular country
JUSTICE KENNEDY I assume though that
there might be other countries that are not so vigorous
in their enforcements as the UK
MR PHILLIPS Well I suspect that there
may be although there -- you know this isnt broadly
regulated by -- by treaties And the -- and to me the
key is you know right -- you know the United States
has agreed that each country should regulate its own
patent rights I mean were bought into that deal
in -- in the Paris Convention in the 19th century
and -- and consistently have accepted that And
thats -- and the whole theory of this is to ensure the
free flow of commerce across borders on a regular basis
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at least when were talking about staple articles of
commerce
You know if -- if -- you know where the
Federal Circuit clearly got this wrong is in saying that
you could interpret (f)(1) which talks about a -- a
substantial portion of the commodities and say that a
single commodity can be a substantial portion when
(f)(2) says that in order for a single commodity to
constitute a -- to give rise to a potential claim of a
violation what it has to be is especially made or
especially adapted for use in the particular invention
JUSTICE ALITO Does substantial portion
mean a majority
MR PHILLIPS Oh I think it means
substantially more than a majority I -- I would -- I
would say that it has to be approximating or very close
or tantamount to all
JUSTICE ALITO So here there were five
components
MR PHILLIPS Yes Your Honor
JUSTICE ALITO And -- and they would have
to be -- all -- all five would have to be made in the
United States Or --
MR PHILLIPS Well I -- I would -- at
minimum --
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JUSTICE ALITO -- four would be enough
MR PHILLIPS I would have thought at least
four would have to be But I -- I -- you know in many
instances my guess is the right answer may well be
five
JUSTICE KAGAN Where -- where do you get
that from Whats the principle there
MR PHILLIPS Because all Congress wanted
to do was to close a loophole where youre essentially
doing nothing but violating US patent law and avoiding
it by simply offloading it at the last second In a lot
of instances I dont think thats true when youre only
talking about a majority of -- of the -- the items
JUSTICE KAGAN Well how do we know that
thats all Congress wanted to do I mean that might
have been the -- the -- the scenario in Deepsouth but
Congress used language that could refer to much more
than that that could refer to a majority that even
could refer to a substantial minority
MR PHILLIPS Yeah I -- I -- I think
there is no way to -- to -- first of all the -- the
rule against extra -- the rule -- the presumption
against extraterritoriality would drive you in the
opposite direction Even if you could reasonably read
the language either way you would -- you would drive it
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toward recognizing that the company that the substantial
portion keeps is the word all and its talking about
components
And so those are to my mind very much
quantitative and driven in the direction of all I --
JUSTICE GINSBURG And so you agree that
substantial portion is an ambiguous term
MR PHILLIPS Yes Justice Ginsburg I --
I agree It could be interpreted in either of two ways
which is why I think the principle against
extraterritoriality drives you in the direction of
saying Congress meant only to allow US patents to
operate outside the United States in very narrow
circumstances And if Congress chooses to -- to create
the kinds of international problems that will
undoubtedly arise by an overbroad interpretation of
271(f) which is what the Federal Circuit has adopted
leave it to Congress to go back and fix that because
those are -- those are issues of international relations
that it seems to me Congress is in a much better
position than the courts --
JUSTICE KENNEDY But those are --
MR PHILLIPS -- to sort out
JUSTICE KENNEDY -- just two -- two
components the polymerase and then a -- a patent --
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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25
So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
5320 closer 1312 101 5013 4245 4448 C challenging 226 2223 512223 522 45325 4815
c 21 31 503 chase 5323 closing 4221 524 49214 512 533 cheaper 2620 code 3413 comparative 511617 5315 call 2315 361 Chief 339 127 colleague 5321 1924 237 compromising 503 1222 138 combination compare 313 2322 called 412 181520 215 2424 2922 compelled 1712 computer 3918 4121 21812 2310 341 40218 competitors 392222 406 candidly 75 274 29913 4711 492424 3714 concede 413 135 31172123 505 complete 294 3410 capable 2423 3210 3423 combinations 4918 conceded 423 capacious 4014 4317 521117 332324 3816 completeness concern 2120 care 236 5221 5416 combined 2922 365 2719 5024 careful 35913 chooses 1014 4710 complex 481 concerns 193 caricature 4418 Circuit 84 come 45 1920 complicated 1910 3511 457 1017 1717 543 2311 concession carries 2325 1922 4225 comes 1613 component 514 4112 CARTER 117 4317 comfortable 519 124 134 conclude 455 2313 37 Circuits 1419 141011 131119 167 concluded 4311 5219 1911 4416 coming 1111 161114 1825 conclusion case 341213 circumstance 1518 5313 1918 2169 1712 315161619 2210 251213 commerce 419 224 297 conduct 3514 323 44 65 circumstances 725 82 1425 3118 355 3822 4515 73 1111 1014 4511 3512 371920 382 4613 472 1216 136 4625 531720 commercial 3812 3911 4816 5079 188 2223 circumvention 5110 4010 4222 5113 5216 263 3417 4824 commercially 441718 456 confusion 2711 3517 3919 cited 3618 4118 4513 475 Congress 322 419 42216 claim 89 1822 commissioner 5116 526 417 52 6913 439 4425 18345 2415 2925 3021 539 541 981517 4520 46715 241725 committee 3219 components 43 1012141820 4615 4819 claims 18710 commodities 86 819 10325 153 162 541718 clause 1210 commodity 410 11422 159 1713 29518
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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equally 1418 explained 3321 461525 412021 4218 447 483 174 3516 3919 factual 429 459 494 given 4624 equivalence 468 fair 4415 former 282 global 67 3417 4621 explaining fairly 2117 formulations gloss 2610 equivalency 4424 2311 3216 4618 2815 3417 explicated 4615 5011 forth 3115 go 4314 711 equivalent 4620 export 343 far 301012 found 4115 1018 142224 4621 exported 519 4914 four 42 913 1712 255 especially 810 3819 426 Federal 84 521822 3120 3316 811 111618 exporter 3017 1017 1419 France 3115 3715 38723 152222 168 exporting 3512 1717 191122 frankly 254 4214 4310 16811 192 extent 3420 3612 4225 273 4714 531323 ESQ 1171923 extra 922 177 4317 4416 free 725 548 2361013 extraterritorial feel 1411 French 3115 goes 357 essence 417 125825 156 fewer 365 friend 3413 going 121 133 305 1788 3511 figure 243 417 5224 131920 1422 essential 1916 extraterritori 2520 4713 friends 4115 19171919 2122 2411 923 1011 fill 322 friends 392 2124 2412 essentially 99 145 173 193 final 318 full 126 276 295 407 ET 14 2713 359 find 421 449 fully 2225 415 451718 evidence 419 extraterritori 4521 519 functions 3418 4519 4710 43810 4421 132 finding 281314 fundamentally 496 506 542 4519 4717 extremely 2915 finish 434 5210 2916 537 543446 exactly 1223 finished 4318 further 1813 good 484 1322 234 F 4318 good-bye 265 271822 323 f 418 858 first 921 1624 G government 383 1120 1523 1824 2021 G 117 2313 283 2917 example 318 165101216 224 3316 317 5219 governments 3917 40911 161820 192 416 5223 game 2023 248 449 4910 451213 1925 2019 fits 2712 gazillion 3923 governs 3119 examples 221 2020 2821 five 42 81822 gears 4915 grand 144 3813 2947 3267 95 1811 gee 3022 475 great 377 395 exchange 3124 3414 401618 2218 381723 4718 greater 156 32122 496 472222 486 4021 4124 General 120 Grokster 3517 Excuse 4212 48820 4910 4235 453 generally 625 516 exercise 1425 491120 534 fix 1018 1623 German 5010 ground 353 exhaust 402 534 flow 725 getting 2716 guess 94 4810 exhausted 401 fabrication 411 focus 3122 giant 399 exhaustion face 2018 3223 focused 459 Ginsburg 518 H
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
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KAGAN 9614 knowledge 3024 3820 5325 1313 1525 164 5116 476 504 528 majority 81315 measure 1110 2724 28913 KSR 4620 Life 13 3424 91318 meeting 241 2823 324 4123 making 204 meets 4815 keep 20710 L 4216 5121 2819 4618 mens 5225 542 language 917 5215 501117 mention 5025 keeps 102 925 1312 light 192 2816 manifestly 477 mentioned 292 Kennedy 618 175613 4619 manufacture 31523 624 7813 2810 31522 limits 386 3018 merely 5110 102224 118 321 4014 line 2017 manufactured merit 620 111719 4713 large 195 2424 list 3722 4024 4123 mesh 4915 471921 4810 largely 311 literally 421 manufacturer met 4625 5318 Laughter 1413 litigation 46 615 2514 method 3325 kept 368 268 4320 2711 511 methods 3418 key 523 64 498 little 1210 manufacturers microchip 3921 719 234 law 910 1211 lo 5013 512 611 548 404 kind 2317 132021 179 loaded 1912 manufacturing microprocessor 501617 5410 2414 288 local 3823 224 392125 405 5410 31131419 locution 3611 material 2921 Microsoft 1224 kinds 1015 122 36152021 longer 516 325 1224 1725 Kingdom 41 372 4615 look 1410 182 materiality 2021 2422 kit 47 471 5413 19114 2019 461013 3225 3321 kits 43711 laws 519 2025 21216 Mathias 2919 3510 229 411317 laws 624 2313 2489 304 311217 million 42 4221 lawyer 1319 2410 3411 323 411010 know 518 717 lawyers 2517 4221 4416 Mathiass 3014 mind 104 206 71919 833 2520 4220 4519 4723 matter 113 235 3624 9314 1145 leave 1018 looking 65 254 541319 mine 3713 1124 121720 3720 398 1421 191322 mean 64 721 minimum 825 132021 1517 left 238 2410 237 278 813 915 129 2011 171523 185 272 looks 3514 1318 1417 minority 919 211517 225 legislation 305 5215 1652324 minute 46 228 2319 legislative 314 loophole 322 209 2114 minutes 5218 2413 252 31825 497 99 231112 256 5222 277 303 legislatures 365 lot 65 911 258 2813 minutiae 1210 3210111112 lets 158 2219 1316 245 3115 3211 misapprehend 33913 3412 3814 412 2511 26144 5125 2917 3525 362124 433 4910 265 4612 meaning 320 mischief 1419 37713 3815 level 3216 5224 136 1524 misunderstood 39121523 Levinson 4611 love 371 447 3424 40911 428 LGE 3925 lowest 525 means 814 mix 224 2623 431 447 liability 113 2320 25810 276 4524 46356 167 3913 M 264 2811 modeled 327 4619 4799 4515 4812 main 231 2715 3517 4410 331 4813 4711 5014 4925 519 maintain 123 4525 4614 modern 4725 5224 531119 liable 2212 major 1714 4613 517 molecule 3825 532021 549 2621 272 232 531114 meant 1012 3945 4720
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
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terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
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V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
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1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
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5 52 214
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And so the question is is whether or not
simply by using a single staple article Congress
intended through 271 to -- to declare that this is --
JUSTICE SOTOMAYOR Could you tell us --
MR PHILLIPS -- a violation
JUSTICE SOTOMAYOR -- is this product
available outside the US
MR PHILLIPS Taq polymerase
JUSTICE SOTOMAYOR Yes
MR PHILLIPS Absolutely Yes Its --
its readily available throughout the world through --
there are a variety of manufacturers who wish to make --
JUSTICE SOTOMAYOR Theres no patent on
that particular component
MR PHILLIPS No none that -- none that
exists any longer no As I said its a commodity
product The --
JUSTICE GINSBURG Do we know why that
particular component was exported from the United
States You -- you said all the others --
MR PHILLIPS Right
JUSTICE GINSBURG -- were made in England
MR PHILLIPS Yeah and the key to this is
you want -- you want to get the best quality product
at -- presumably at the lowest possible price And --
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and most of these were purchased -- most of the Taq was
purchased from the Roche company and I -- and I suspect
they just had a better supply arrangement
I mean thats -- thats the key to this
case in a lot of ways is what youre looking for is
what are the best supply arrangements that you can make
on a global basis Can you get them in the United
States Can you get them outside the United States
And what it seems to me clear that Congress could never
have intended was to in some way disadvantage US
manufacturers who are providing a particular staple
Indeed I would read 271(f)(2) as saying
categorically that the one thing Congress did not want
to do is to interfere with the ability to -- of a
manufacturer to provide a staple article as part of
the -- as part of an activity outside of the United
States
JUSTICE KENNEDY If all of this had
happened in the United States would there have been a
patent infringement suit that would be -- have merit
MR PHILLIPS Yes if everything had
take -- taken place inside the United States there
would have been
JUSTICE KENNEDY Under the UK laws are
patents generally enforced for items that are patentable
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in the UK
MR PHILLIPS Yes Yes absolutely
And -- and -- and indeed in this case Promega had --
I think Promega -- at least somebody had a patent in the
UK but that patent had expired which is candidly
not surprisingly why the activity was taken
And that -- and that is ultimately Justice
Kennedy the answer to these issues If a patentholder
in the United States is upset by the use of a particular
invention outside the United States the solution is to
go outside of the United States and seek packet -- pack
-- patent protection in that particular country
JUSTICE KENNEDY I assume though that
there might be other countries that are not so vigorous
in their enforcements as the UK
MR PHILLIPS Well I suspect that there
may be although there -- you know this isnt broadly
regulated by -- by treaties And the -- and to me the
key is you know right -- you know the United States
has agreed that each country should regulate its own
patent rights I mean were bought into that deal
in -- in the Paris Convention in the 19th century
and -- and consistently have accepted that And
thats -- and the whole theory of this is to ensure the
free flow of commerce across borders on a regular basis
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at least when were talking about staple articles of
commerce
You know if -- if -- you know where the
Federal Circuit clearly got this wrong is in saying that
you could interpret (f)(1) which talks about a -- a
substantial portion of the commodities and say that a
single commodity can be a substantial portion when
(f)(2) says that in order for a single commodity to
constitute a -- to give rise to a potential claim of a
violation what it has to be is especially made or
especially adapted for use in the particular invention
JUSTICE ALITO Does substantial portion
mean a majority
MR PHILLIPS Oh I think it means
substantially more than a majority I -- I would -- I
would say that it has to be approximating or very close
or tantamount to all
JUSTICE ALITO So here there were five
components
MR PHILLIPS Yes Your Honor
JUSTICE ALITO And -- and they would have
to be -- all -- all five would have to be made in the
United States Or --
MR PHILLIPS Well I -- I would -- at
minimum --
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JUSTICE ALITO -- four would be enough
MR PHILLIPS I would have thought at least
four would have to be But I -- I -- you know in many
instances my guess is the right answer may well be
five
JUSTICE KAGAN Where -- where do you get
that from Whats the principle there
MR PHILLIPS Because all Congress wanted
to do was to close a loophole where youre essentially
doing nothing but violating US patent law and avoiding
it by simply offloading it at the last second In a lot
of instances I dont think thats true when youre only
talking about a majority of -- of the -- the items
JUSTICE KAGAN Well how do we know that
thats all Congress wanted to do I mean that might
have been the -- the -- the scenario in Deepsouth but
Congress used language that could refer to much more
than that that could refer to a majority that even
could refer to a substantial minority
MR PHILLIPS Yeah I -- I -- I think
there is no way to -- to -- first of all the -- the
rule against extra -- the rule -- the presumption
against extraterritoriality would drive you in the
opposite direction Even if you could reasonably read
the language either way you would -- you would drive it
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toward recognizing that the company that the substantial
portion keeps is the word all and its talking about
components
And so those are to my mind very much
quantitative and driven in the direction of all I --
JUSTICE GINSBURG And so you agree that
substantial portion is an ambiguous term
MR PHILLIPS Yes Justice Ginsburg I --
I agree It could be interpreted in either of two ways
which is why I think the principle against
extraterritoriality drives you in the direction of
saying Congress meant only to allow US patents to
operate outside the United States in very narrow
circumstances And if Congress chooses to -- to create
the kinds of international problems that will
undoubtedly arise by an overbroad interpretation of
271(f) which is what the Federal Circuit has adopted
leave it to Congress to go back and fix that because
those are -- those are issues of international relations
that it seems to me Congress is in a much better
position than the courts --
JUSTICE KENNEDY But those are --
MR PHILLIPS -- to sort out
JUSTICE KENNEDY -- just two -- two
components the polymerase and then a -- a patent --
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
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1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
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and most of these were purchased -- most of the Taq was
purchased from the Roche company and I -- and I suspect
they just had a better supply arrangement
I mean thats -- thats the key to this
case in a lot of ways is what youre looking for is
what are the best supply arrangements that you can make
on a global basis Can you get them in the United
States Can you get them outside the United States
And what it seems to me clear that Congress could never
have intended was to in some way disadvantage US
manufacturers who are providing a particular staple
Indeed I would read 271(f)(2) as saying
categorically that the one thing Congress did not want
to do is to interfere with the ability to -- of a
manufacturer to provide a staple article as part of
the -- as part of an activity outside of the United
States
JUSTICE KENNEDY If all of this had
happened in the United States would there have been a
patent infringement suit that would be -- have merit
MR PHILLIPS Yes if everything had
take -- taken place inside the United States there
would have been
JUSTICE KENNEDY Under the UK laws are
patents generally enforced for items that are patentable
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in the UK
MR PHILLIPS Yes Yes absolutely
And -- and -- and indeed in this case Promega had --
I think Promega -- at least somebody had a patent in the
UK but that patent had expired which is candidly
not surprisingly why the activity was taken
And that -- and that is ultimately Justice
Kennedy the answer to these issues If a patentholder
in the United States is upset by the use of a particular
invention outside the United States the solution is to
go outside of the United States and seek packet -- pack
-- patent protection in that particular country
JUSTICE KENNEDY I assume though that
there might be other countries that are not so vigorous
in their enforcements as the UK
MR PHILLIPS Well I suspect that there
may be although there -- you know this isnt broadly
regulated by -- by treaties And the -- and to me the
key is you know right -- you know the United States
has agreed that each country should regulate its own
patent rights I mean were bought into that deal
in -- in the Paris Convention in the 19th century
and -- and consistently have accepted that And
thats -- and the whole theory of this is to ensure the
free flow of commerce across borders on a regular basis
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at least when were talking about staple articles of
commerce
You know if -- if -- you know where the
Federal Circuit clearly got this wrong is in saying that
you could interpret (f)(1) which talks about a -- a
substantial portion of the commodities and say that a
single commodity can be a substantial portion when
(f)(2) says that in order for a single commodity to
constitute a -- to give rise to a potential claim of a
violation what it has to be is especially made or
especially adapted for use in the particular invention
JUSTICE ALITO Does substantial portion
mean a majority
MR PHILLIPS Oh I think it means
substantially more than a majority I -- I would -- I
would say that it has to be approximating or very close
or tantamount to all
JUSTICE ALITO So here there were five
components
MR PHILLIPS Yes Your Honor
JUSTICE ALITO And -- and they would have
to be -- all -- all five would have to be made in the
United States Or --
MR PHILLIPS Well I -- I would -- at
minimum --
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JUSTICE ALITO -- four would be enough
MR PHILLIPS I would have thought at least
four would have to be But I -- I -- you know in many
instances my guess is the right answer may well be
five
JUSTICE KAGAN Where -- where do you get
that from Whats the principle there
MR PHILLIPS Because all Congress wanted
to do was to close a loophole where youre essentially
doing nothing but violating US patent law and avoiding
it by simply offloading it at the last second In a lot
of instances I dont think thats true when youre only
talking about a majority of -- of the -- the items
JUSTICE KAGAN Well how do we know that
thats all Congress wanted to do I mean that might
have been the -- the -- the scenario in Deepsouth but
Congress used language that could refer to much more
than that that could refer to a majority that even
could refer to a substantial minority
MR PHILLIPS Yeah I -- I -- I think
there is no way to -- to -- first of all the -- the
rule against extra -- the rule -- the presumption
against extraterritoriality would drive you in the
opposite direction Even if you could reasonably read
the language either way you would -- you would drive it
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toward recognizing that the company that the substantial
portion keeps is the word all and its talking about
components
And so those are to my mind very much
quantitative and driven in the direction of all I --
JUSTICE GINSBURG And so you agree that
substantial portion is an ambiguous term
MR PHILLIPS Yes Justice Ginsburg I --
I agree It could be interpreted in either of two ways
which is why I think the principle against
extraterritoriality drives you in the direction of
saying Congress meant only to allow US patents to
operate outside the United States in very narrow
circumstances And if Congress chooses to -- to create
the kinds of international problems that will
undoubtedly arise by an overbroad interpretation of
271(f) which is what the Federal Circuit has adopted
leave it to Congress to go back and fix that because
those are -- those are issues of international relations
that it seems to me Congress is in a much better
position than the courts --
JUSTICE KENNEDY But those are --
MR PHILLIPS -- to sort out
JUSTICE KENNEDY -- just two -- two
components the polymerase and then a -- a patent --
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
Alderson Reporting Company
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55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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purchasers 547 purchasing 547 purely 279 purpose 206 28616
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
4217 5310 wants 162
wish 512 witnesses 4314 0
2817 374 549
301 3238 3420 35315 3822 391 4024 4124 47611 5114 523714 5313 545 units 348 unlawful 5111 upset 79 urge 5412 use 79 811 142 148 3019 331722 344 3612 3812 396 493 5111 5222 useful 312 uses 420 309 341518 394 4825 493
V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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in the UK
MR PHILLIPS Yes Yes absolutely
And -- and -- and indeed in this case Promega had --
I think Promega -- at least somebody had a patent in the
UK but that patent had expired which is candidly
not surprisingly why the activity was taken
And that -- and that is ultimately Justice
Kennedy the answer to these issues If a patentholder
in the United States is upset by the use of a particular
invention outside the United States the solution is to
go outside of the United States and seek packet -- pack
-- patent protection in that particular country
JUSTICE KENNEDY I assume though that
there might be other countries that are not so vigorous
in their enforcements as the UK
MR PHILLIPS Well I suspect that there
may be although there -- you know this isnt broadly
regulated by -- by treaties And the -- and to me the
key is you know right -- you know the United States
has agreed that each country should regulate its own
patent rights I mean were bought into that deal
in -- in the Paris Convention in the 19th century
and -- and consistently have accepted that And
thats -- and the whole theory of this is to ensure the
free flow of commerce across borders on a regular basis
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at least when were talking about staple articles of
commerce
You know if -- if -- you know where the
Federal Circuit clearly got this wrong is in saying that
you could interpret (f)(1) which talks about a -- a
substantial portion of the commodities and say that a
single commodity can be a substantial portion when
(f)(2) says that in order for a single commodity to
constitute a -- to give rise to a potential claim of a
violation what it has to be is especially made or
especially adapted for use in the particular invention
JUSTICE ALITO Does substantial portion
mean a majority
MR PHILLIPS Oh I think it means
substantially more than a majority I -- I would -- I
would say that it has to be approximating or very close
or tantamount to all
JUSTICE ALITO So here there were five
components
MR PHILLIPS Yes Your Honor
JUSTICE ALITO And -- and they would have
to be -- all -- all five would have to be made in the
United States Or --
MR PHILLIPS Well I -- I would -- at
minimum --
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JUSTICE ALITO -- four would be enough
MR PHILLIPS I would have thought at least
four would have to be But I -- I -- you know in many
instances my guess is the right answer may well be
five
JUSTICE KAGAN Where -- where do you get
that from Whats the principle there
MR PHILLIPS Because all Congress wanted
to do was to close a loophole where youre essentially
doing nothing but violating US patent law and avoiding
it by simply offloading it at the last second In a lot
of instances I dont think thats true when youre only
talking about a majority of -- of the -- the items
JUSTICE KAGAN Well how do we know that
thats all Congress wanted to do I mean that might
have been the -- the -- the scenario in Deepsouth but
Congress used language that could refer to much more
than that that could refer to a majority that even
could refer to a substantial minority
MR PHILLIPS Yeah I -- I -- I think
there is no way to -- to -- first of all the -- the
rule against extra -- the rule -- the presumption
against extraterritoriality would drive you in the
opposite direction Even if you could reasonably read
the language either way you would -- you would drive it
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toward recognizing that the company that the substantial
portion keeps is the word all and its talking about
components
And so those are to my mind very much
quantitative and driven in the direction of all I --
JUSTICE GINSBURG And so you agree that
substantial portion is an ambiguous term
MR PHILLIPS Yes Justice Ginsburg I --
I agree It could be interpreted in either of two ways
which is why I think the principle against
extraterritoriality drives you in the direction of
saying Congress meant only to allow US patents to
operate outside the United States in very narrow
circumstances And if Congress chooses to -- to create
the kinds of international problems that will
undoubtedly arise by an overbroad interpretation of
271(f) which is what the Federal Circuit has adopted
leave it to Congress to go back and fix that because
those are -- those are issues of international relations
that it seems to me Congress is in a much better
position than the courts --
JUSTICE KENNEDY But those are --
MR PHILLIPS -- to sort out
JUSTICE KENNEDY -- just two -- two
components the polymerase and then a -- a patent --
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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equally 1418 explained 3321 461525 412021 4218 447 483 174 3516 3919 factual 429 459 494 given 4624 equivalence 468 fair 4415 former 282 global 67 3417 4621 explaining fairly 2117 formulations gloss 2610 equivalency 4424 2311 3216 4618 2815 3417 explicated 4615 5011 forth 3115 go 4314 711 equivalent 4620 export 343 far 301012 found 4115 1018 142224 4621 exported 519 4914 four 42 913 1712 255 especially 810 3819 426 Federal 84 521822 3120 3316 811 111618 exporter 3017 1017 1419 France 3115 3715 38723 152222 168 exporting 3512 1717 191122 frankly 254 4214 4310 16811 192 extent 3420 3612 4225 273 4714 531323 ESQ 1171923 extra 922 177 4317 4416 free 725 548 2361013 extraterritorial feel 1411 French 3115 goes 357 essence 417 125825 156 fewer 365 friend 3413 going 121 133 305 1788 3511 figure 243 417 5224 131920 1422 essential 1916 extraterritori 2520 4713 friends 4115 19171919 2122 2411 923 1011 fill 322 friends 392 2124 2412 essentially 99 145 173 193 final 318 full 126 276 295 407 ET 14 2713 359 find 421 449 fully 2225 415 451718 evidence 419 extraterritori 4521 519 functions 3418 4519 4710 43810 4421 132 finding 281314 fundamentally 496 506 542 4519 4717 extremely 2915 finish 434 5210 2916 537 543446 exactly 1223 finished 4318 further 1813 good 484 1322 234 F 4318 good-bye 265 271822 323 f 418 858 first 921 1624 G government 383 1120 1523 1824 2021 G 117 2313 283 2917 example 318 165101216 224 3316 317 5219 governments 3917 40911 161820 192 416 5223 game 2023 248 449 4910 451213 1925 2019 fits 2712 gazillion 3923 governs 3119 examples 221 2020 2821 five 42 81822 gears 4915 grand 144 3813 2947 3267 95 1811 gee 3022 475 great 377 395 exchange 3124 3414 401618 2218 381723 4718 greater 156 32122 496 472222 486 4021 4124 General 120 Grokster 3517 Excuse 4212 48820 4910 4235 453 generally 625 516 exercise 1425 491120 534 fix 1018 1623 German 5010 ground 353 exhaust 402 534 flow 725 getting 2716 guess 94 4810 exhausted 401 fabrication 411 focus 3122 giant 399 exhaustion face 2018 3223 focused 459 Ginsburg 518 H
3920 408 fact 49 2521 focusing 2315 522 1068 half 4113 existed 321 3011 3222 following 329 172022 2612 happen 115 exists 516 346 3915 463 3520 402023 2624 expected 297 4422 force 2323 4118 42110 happened 619 expert 2217 factors 2313 foreign 319 4213 4919 458 441 249 466 521313 give 89 214 happy 258 262 expired 75 525 factory 3820 forever 5012 221 2610 267 3822 explain 446 facts 31323 form 39716 2815 3618 hard 225 3111
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
3515 4717 4013 492 38351013 I induced 3023 instructions invest 5012 3918 40920
idea 236 331 491317 3018 3518 involved 3920 4023 4118 illegal 371724 inducement 4211 4715 involving 316 4211013 3725 387 2920 328 instructive issue 315 44 43361722 394 35516 375 4725 1225 3917 4323 451223 illustrations 381 3910 Intel 3920 issues 78 1019 47131921 2616 4019 4516 Intels 3924 items 625 913 48921 4919 imagine 3818 4817 51715 intend 5222 5091920 immunity 1215 5225 intended 53 J 511921 522 impact 541111 inducing 515 610 153 398 judgment 1111 524111721 implication 166 inert 381724 4016 549 5413 531018 5416 1617 3914 intent 5115 judgments 122 Justices 3121 implications infringe 2923 interesting juries 468 351125 3019 4712 4215 juror 4521 K
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KAGAN 9614 knowledge 3024 3820 5325 1313 1525 164 5116 476 504 528 majority 81315 measure 1110 2724 28913 KSR 4620 Life 13 3424 91318 meeting 241 2823 324 4123 making 204 meets 4815 keep 20710 L 4216 5121 2819 4618 mens 5225 542 language 917 5215 501117 mention 5025 keeps 102 925 1312 light 192 2816 manifestly 477 mentioned 292 Kennedy 618 175613 4619 manufacture 31523 624 7813 2810 31522 limits 386 3018 merely 5110 102224 118 321 4014 line 2017 manufactured merit 620 111719 4713 large 195 2424 list 3722 4024 4123 mesh 4915 471921 4810 largely 311 literally 421 manufacturer met 4625 5318 Laughter 1413 litigation 46 615 2514 method 3325 kept 368 268 4320 2711 511 methods 3418 key 523 64 498 little 1210 manufacturers microchip 3921 719 234 law 910 1211 lo 5013 512 611 548 404 kind 2317 132021 179 loaded 1912 manufacturing microprocessor 501617 5410 2414 288 local 3823 224 392125 405 5410 31131419 locution 3611 material 2921 Microsoft 1224 kinds 1015 122 36152021 longer 516 325 1224 1725 Kingdom 41 372 4615 look 1410 182 materiality 2021 2422 kit 47 471 5413 19114 2019 461013 3225 3321 kits 43711 laws 519 2025 21216 Mathias 2919 3510 229 411317 laws 624 2313 2489 304 311217 million 42 4221 lawyer 1319 2410 3411 323 411010 know 518 717 lawyers 2517 4221 4416 Mathiass 3014 mind 104 206 71919 833 2520 4220 4519 4723 matter 113 235 3624 9314 1145 leave 1018 looking 65 254 541319 mine 3713 1124 121720 3720 398 1421 191322 mean 64 721 minimum 825 132021 1517 left 238 2410 237 278 813 915 129 2011 171523 185 272 looks 3514 1318 1417 minority 919 211517 225 legislation 305 5215 1652324 minute 46 228 2319 legislative 314 loophole 322 209 2114 minutes 5218 2413 252 31825 497 99 231112 256 5222 277 303 legislatures 365 lot 65 911 258 2813 minutiae 1210 3210111112 lets 158 2219 1316 245 3115 3211 misapprehend 33913 3412 3814 412 2511 26144 5125 2917 3525 362124 433 4910 265 4612 meaning 320 mischief 1419 37713 3815 level 3216 5224 136 1524 misunderstood 39121523 Levinson 4611 love 371 447 3424 40911 428 LGE 3925 lowest 525 means 814 mix 224 2623 431 447 liability 113 2320 25810 276 4524 46356 167 3913 M 264 2811 modeled 327 4619 4799 4515 4812 main 231 2715 3517 4410 331 4813 4711 5014 4925 519 maintain 123 4525 4614 modern 4725 5224 531119 liable 2212 major 1714 4613 517 molecule 3825 532021 549 2621 272 232 531114 meant 1012 3945 4720
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
2316 outside 447 57 3019 311314 1325 1469 N 6816 71011 3118 3413 1415 15217
N 211 31 O 1013 547 362225 3715 1521 1625 narrow 1013 O 21 31 overbroad 1016 391520 401 1623 172125 1311 objected 3022 overcomes 519 4027 4616 208 521819 narrowly 1349 objection 3211 overlap 4916 479 4923 5221 176 obtain 213 238 overseas 1221 506 525 541 physical 3324 natural 1625 obvious 3223 1510 3513 543 pick 3818 3410 4619 3820 4924 patents 3625 picture 1913 nature 2917 obviously 1220 505 patentable 625 245 nearly 3913 403 overturn 4920 1919 piece 1921 201 necessary 345 occurs 4924 patented 204 541 41317 4524 5113 P 2819 3368 pinned 2720 need 1424 213 off-the-shelf P 123 210 31 3781116 pinning 289 2423 264 414 2911 3814 398 place 317 622 4911111219 offend 171 pack 711 413 494 plain 2315 4919 offloading 911 packet 711 5017 plainly 3415 needs 206 237 offshore 548 page 22 2024 patentholder plant 325 42 2413 26124 Oh 814 1121 24721 2924 78 3622 plausible 174 2719 4921 3015 3610 patents 625 please 310 negative 16617 okay 1220 pages 331013 1012 301 1821 2914 5411 3016 3221 331520 349 3325 plural 3444 negligence 471 37923 4517 442424 people 3212 Plus 4121 never 69 1825 502 parade 474 percent 2014 point 1125 144 2018 261 once 121117 paradigm 2822 2014 211314 234 3423 294 3820 231011 278 3012 211717 2825 3610 511212 4915 549 ones 446 Paris 722 5016 5314 nine 159 online 42022 part 410 615 perfectly 1410 pointed 4821 non-bespoke operate 1013 616 111 267 points 4217 3910 operates 325 1425 1913 person 1924 4810 non-infringing 131 308 4414 Petitioner 483 polar 324 419 309 operation 1916 particular 322 Petitioners 15 policy 141117 3415 3946 413 411 51419 11822 248 polymer 5122 4825 opinion 1717 611 7912 214 38 1819 52712 normal 121118 469 811 1712 2916 5220 polymerase 413 notice 5324 opportunity 188 222 pharmaceutical 41521 58 notion 5120 5324 2616 321718 3814 397 1025 411314 notwithstandi opposed 1618 412021 459 409 411720 4222 3019 4115 opposite 324 particularly Phillips 117 23 43131316 novelty 1916 924 1223 3314 213 3679 45921 2122 2411 oral 113 2259 partly 3415 558101521 portion 86712 number 2618 37 1817 passage 314 523 621 72 1027 1612
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
R R 31 races 2312 rare 3124
reference 4115 496 regular 725 regulate 720 regulated 718
restrictioning 2818 result 321 review 1877 4421
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
542 Solicitor 119 statements 417 1714 2316 S sends 3017 solution 710 States 111421 282510 308
S 21 31 3722 2919 513 27 318 457 33671014 sake 365 sense 2121 241 solve 4820 49 520 688 3319 3438 salable 4118 sentence 43518 somebody 74 6171922 79 34111421 sale 3615 3924 set 2225 2519 221015 2619 7101119 3619 382 sales 4110 SETH 123 210 4817 504 823 1013 414 421922 saline 513 2911 someplace 2814 15121619 4225 43816 satisfied 538 shelf 1512 sophisticated 1818 205 444561017 satisfy 1522 ship 482 3921 2820 292225 442121 456 sauce 4815 shipped 410 sorry 1121 301 3238 451424 464 saying 612 84 shipping 205 3811 3420 3516 4621 4718 1012 1618 2820 sort 1023 1214 3822 391 4825 51217 1711 207 shore 203 2818 144 2417 4024 4124 535615 2120 231725 show 374 3914 2610 47612 5114 substantiality 253 2717 showed 223 sorting 2419 523714 1622 2816 368 388 Showing 518 Sotomayor 546 5313 545 3418 4324 shows 301011 5913 20714 States 353 substantially says 88 1115 484 2217 2413 statue 2817 815 2089 1613 259 shrimp 316 43362223 statute 321 2510 3012 263 311416 side 3413 392 511921 522 1220 1524 36891316
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
1958 2215 817 199 549 totally 303 UK 624 715 2962021 221323 2511 things 115 touch 501 715 307 356 381 26425 1510 1822 touched 5214 US 57 610 3913 476 Taq 4121520 285 3512 trade 312 910 1012 4811114 58 61 4112 468 482 transcript 4518 3019 50679 532024 545 4114162024 think 311 414 translates 3125 5025 5216 supplying 1925 421822 4315 415 74 814 treaties 718 5478811 22132324 4423 4599 91220 1010 treaty 3114 ultimate 546 27122 3921 4521 121214 151 trial 41121619 ultimately 77 support 3519 Tech 324 154 1624 4122 4217 uncommon supporting 121 Technologies 19120 2015 45818 2417 28 1819 13 3425 20131619 tried 4520 undermines supposed 5319 4216 4725 217111323 Tripp 119 26 2323 Supreme 1114 5121 525 2124 221122 18161720 underscored sure 12719 tell 54 1318 2224 23510 201316 217 4423 1525 16416 461212 231224 247 211119 2222 underscoring 2712 424 telling 2518 2422 2513 2324 2418 517 436 5211 tells 1523 25162325 25162325 understand surprisingly 76 ten 159 262024 273 266915 2320 2418 suspect 62 716 tens 41 274101517 2715 2814 2817 2916 sway 126 term 107 287 28421 293 281215 293 3016 3214 sweep 132 terms 2225 279 2915 314 393 531
terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
4217 5310 wants 162
wish 512 witnesses 4314 0
2817 374 549
301 3238 3420 35315 3822 391 4024 4124 47611 5114 523714 5313 545 units 348 unlawful 5111 upset 79 urge 5412 use 79 811 142 148 3019 331722 344 3612 3812 396 493 5111 5222 useful 312 uses 420 309 341518 394 4825 493
V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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at least when were talking about staple articles of
commerce
You know if -- if -- you know where the
Federal Circuit clearly got this wrong is in saying that
you could interpret (f)(1) which talks about a -- a
substantial portion of the commodities and say that a
single commodity can be a substantial portion when
(f)(2) says that in order for a single commodity to
constitute a -- to give rise to a potential claim of a
violation what it has to be is especially made or
especially adapted for use in the particular invention
JUSTICE ALITO Does substantial portion
mean a majority
MR PHILLIPS Oh I think it means
substantially more than a majority I -- I would -- I
would say that it has to be approximating or very close
or tantamount to all
JUSTICE ALITO So here there were five
components
MR PHILLIPS Yes Your Honor
JUSTICE ALITO And -- and they would have
to be -- all -- all five would have to be made in the
United States Or --
MR PHILLIPS Well I -- I would -- at
minimum --
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JUSTICE ALITO -- four would be enough
MR PHILLIPS I would have thought at least
four would have to be But I -- I -- you know in many
instances my guess is the right answer may well be
five
JUSTICE KAGAN Where -- where do you get
that from Whats the principle there
MR PHILLIPS Because all Congress wanted
to do was to close a loophole where youre essentially
doing nothing but violating US patent law and avoiding
it by simply offloading it at the last second In a lot
of instances I dont think thats true when youre only
talking about a majority of -- of the -- the items
JUSTICE KAGAN Well how do we know that
thats all Congress wanted to do I mean that might
have been the -- the -- the scenario in Deepsouth but
Congress used language that could refer to much more
than that that could refer to a majority that even
could refer to a substantial minority
MR PHILLIPS Yeah I -- I -- I think
there is no way to -- to -- first of all the -- the
rule against extra -- the rule -- the presumption
against extraterritoriality would drive you in the
opposite direction Even if you could reasonably read
the language either way you would -- you would drive it
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toward recognizing that the company that the substantial
portion keeps is the word all and its talking about
components
And so those are to my mind very much
quantitative and driven in the direction of all I --
JUSTICE GINSBURG And so you agree that
substantial portion is an ambiguous term
MR PHILLIPS Yes Justice Ginsburg I --
I agree It could be interpreted in either of two ways
which is why I think the principle against
extraterritoriality drives you in the direction of
saying Congress meant only to allow US patents to
operate outside the United States in very narrow
circumstances And if Congress chooses to -- to create
the kinds of international problems that will
undoubtedly arise by an overbroad interpretation of
271(f) which is what the Federal Circuit has adopted
leave it to Congress to go back and fix that because
those are -- those are issues of international relations
that it seems to me Congress is in a much better
position than the courts --
JUSTICE KENNEDY But those are --
MR PHILLIPS -- to sort out
JUSTICE KENNEDY -- just two -- two
components the polymerase and then a -- a patent --
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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25
So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
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am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
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addition 2614 311219 372 areas 1213 averting 3414 brief 201024
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argued 208 4220 argument 114
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
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KAGAN 9614 knowledge 3024 3820 5325 1313 1525 164 5116 476 504 528 majority 81315 measure 1110 2724 28913 KSR 4620 Life 13 3424 91318 meeting 241 2823 324 4123 making 204 meets 4815 keep 20710 L 4216 5121 2819 4618 mens 5225 542 language 917 5215 501117 mention 5025 keeps 102 925 1312 light 192 2816 manifestly 477 mentioned 292 Kennedy 618 175613 4619 manufacture 31523 624 7813 2810 31522 limits 386 3018 merely 5110 102224 118 321 4014 line 2017 manufactured merit 620 111719 4713 large 195 2424 list 3722 4024 4123 mesh 4915 471921 4810 largely 311 literally 421 manufacturer met 4625 5318 Laughter 1413 litigation 46 615 2514 method 3325 kept 368 268 4320 2711 511 methods 3418 key 523 64 498 little 1210 manufacturers microchip 3921 719 234 law 910 1211 lo 5013 512 611 548 404 kind 2317 132021 179 loaded 1912 manufacturing microprocessor 501617 5410 2414 288 local 3823 224 392125 405 5410 31131419 locution 3611 material 2921 Microsoft 1224 kinds 1015 122 36152021 longer 516 325 1224 1725 Kingdom 41 372 4615 look 1410 182 materiality 2021 2422 kit 47 471 5413 19114 2019 461013 3225 3321 kits 43711 laws 519 2025 21216 Mathias 2919 3510 229 411317 laws 624 2313 2489 304 311217 million 42 4221 lawyer 1319 2410 3411 323 411010 know 518 717 lawyers 2517 4221 4416 Mathiass 3014 mind 104 206 71919 833 2520 4220 4519 4723 matter 113 235 3624 9314 1145 leave 1018 looking 65 254 541319 mine 3713 1124 121720 3720 398 1421 191322 mean 64 721 minimum 825 132021 1517 left 238 2410 237 278 813 915 129 2011 171523 185 272 looks 3514 1318 1417 minority 919 211517 225 legislation 305 5215 1652324 minute 46 228 2319 legislative 314 loophole 322 209 2114 minutes 5218 2413 252 31825 497 99 231112 256 5222 277 303 legislatures 365 lot 65 911 258 2813 minutiae 1210 3210111112 lets 158 2219 1316 245 3115 3211 misapprehend 33913 3412 3814 412 2511 26144 5125 2917 3525 362124 433 4910 265 4612 meaning 320 mischief 1419 37713 3815 level 3216 5224 136 1524 misunderstood 39121523 Levinson 4611 love 371 447 3424 40911 428 LGE 3925 lowest 525 means 814 mix 224 2623 431 447 liability 113 2320 25810 276 4524 46356 167 3913 M 264 2811 modeled 327 4619 4799 4515 4812 main 231 2715 3517 4410 331 4813 4711 5014 4925 519 maintain 123 4525 4614 modern 4725 5224 531119 liable 2212 major 1714 4613 517 molecule 3825 532021 549 2621 272 232 531114 meant 1012 3945 4720
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
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N 211 31 O 1013 547 362225 3715 1521 1625 narrow 1013 O 21 31 overbroad 1016 391520 401 1623 172125 1311 objected 3022 overcomes 519 4027 4616 208 521819 narrowly 1349 objection 3211 overlap 4916 479 4923 5221 176 obtain 213 238 overseas 1221 506 525 541 physical 3324 natural 1625 obvious 3223 1510 3513 543 pick 3818 3410 4619 3820 4924 patents 3625 picture 1913 nature 2917 obviously 1220 505 patentable 625 245 nearly 3913 403 overturn 4920 1919 piece 1921 201 necessary 345 occurs 4924 patented 204 541 41317 4524 5113 P 2819 3368 pinned 2720 need 1424 213 off-the-shelf P 123 210 31 3781116 pinning 289 2423 264 414 2911 3814 398 place 317 622 4911111219 offend 171 pack 711 413 494 plain 2315 4919 offloading 911 packet 711 5017 plainly 3415 needs 206 237 offshore 548 page 22 2024 patentholder plant 325 42 2413 26124 Oh 814 1121 24721 2924 78 3622 plausible 174 2719 4921 3015 3610 patents 625 please 310 negative 16617 okay 1220 pages 331013 1012 301 1821 2914 5411 3016 3221 331520 349 3325 plural 3444 negligence 471 37923 4517 442424 people 3212 Plus 4121 never 69 1825 502 parade 474 percent 2014 point 1125 144 2018 261 once 121117 paradigm 2822 2014 211314 234 3423 294 3820 231011 278 3012 211717 2825 3610 511212 4915 549 ones 446 Paris 722 5016 5314 nine 159 online 42022 part 410 615 perfectly 1410 pointed 4821 non-bespoke operate 1013 616 111 267 points 4217 3910 operates 325 1425 1913 person 1924 4810 non-infringing 131 308 4414 Petitioner 483 polar 324 419 309 operation 1916 particular 322 Petitioners 15 policy 141117 3415 3946 413 411 51419 11822 248 polymer 5122 4825 opinion 1717 611 7912 214 38 1819 52712 normal 121118 469 811 1712 2916 5220 polymerase 413 notice 5324 opportunity 188 222 pharmaceutical 41521 58 notion 5120 5324 2616 321718 3814 397 1025 411314 notwithstandi opposed 1618 412021 459 409 411720 4222 3019 4115 opposite 324 particularly Phillips 117 23 43131316 novelty 1916 924 1223 3314 213 3679 45921 2122 2411 oral 113 2259 partly 3415 558101521 portion 86712 number 2618 37 1817 passage 314 523 621 72 1027 1612
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
R R 31 races 2312 rare 3124
reference 4115 496 regular 725 regulate 720 regulated 718
restrictioning 2818 result 321 review 1877 4421
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
542 Solicitor 119 statements 417 1714 2316 S sends 3017 solution 710 States 111421 282510 308
S 21 31 3722 2919 513 27 318 457 33671014 sake 365 sense 2121 241 solve 4820 49 520 688 3319 3438 salable 4118 sentence 43518 somebody 74 6171922 79 34111421 sale 3615 3924 set 2225 2519 221015 2619 7101119 3619 382 sales 4110 SETH 123 210 4817 504 823 1013 414 421922 saline 513 2911 someplace 2814 15121619 4225 43816 satisfied 538 shelf 1512 sophisticated 1818 205 444561017 satisfy 1522 ship 482 3921 2820 292225 442121 456 sauce 4815 shipped 410 sorry 1121 301 3238 451424 464 saying 612 84 shipping 205 3811 3420 3516 4621 4718 1012 1618 2820 sort 1023 1214 3822 391 4825 51217 1711 207 shore 203 2818 144 2417 4024 4124 535615 2120 231725 show 374 3914 2610 47612 5114 substantiality 253 2717 showed 223 sorting 2419 523714 1622 2816 368 388 Showing 518 Sotomayor 546 5313 545 3418 4324 shows 301011 5913 20714 States 353 substantially says 88 1115 484 2217 2413 statue 2817 815 2089 1613 259 shrimp 316 43362223 statute 321 2510 3012 263 311416 side 3413 392 511921 522 1220 1524 36891316
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
1958 2215 817 199 549 totally 303 UK 624 715 2962021 221323 2511 things 115 touch 501 715 307 356 381 26425 1510 1822 touched 5214 US 57 610 3913 476 Taq 4121520 285 3512 trade 312 910 1012 4811114 58 61 4112 468 482 transcript 4518 3019 50679 532024 545 4114162024 think 311 414 translates 3125 5025 5216 supplying 1925 421822 4315 415 74 814 treaties 718 5478811 22132324 4423 4599 91220 1010 treaty 3114 ultimate 546 27122 3921 4521 121214 151 trial 41121619 ultimately 77 support 3519 Tech 324 154 1624 4122 4217 uncommon supporting 121 Technologies 19120 2015 45818 2417 28 1819 13 3425 20131619 tried 4520 undermines supposed 5319 4216 4725 217111323 Tripp 119 26 2323 Supreme 1114 5121 525 2124 221122 18161720 underscored sure 12719 tell 54 1318 2224 23510 201316 217 4423 1525 16416 461212 231224 247 211119 2222 underscoring 2712 424 telling 2518 2422 2513 2324 2418 517 436 5211 tells 1523 25162325 25162325 understand surprisingly 76 ten 159 262024 273 266915 2320 2418 suspect 62 716 tens 41 274101517 2715 2814 2817 2916 sway 126 term 107 287 28421 293 281215 293 3016 3214 sweep 132 terms 2225 279 2915 314 393 531
terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
4217 5310 wants 162
wish 512 witnesses 4314 0
2817 374 549
301 3238 3420 35315 3822 391 4024 4124 47611 5114 523714 5313 545 units 348 unlawful 5111 upset 79 urge 5412 use 79 811 142 148 3019 331722 344 3612 3812 396 493 5111 5222 useful 312 uses 420 309 341518 394 4825 493
V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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JUSTICE ALITO -- four would be enough
MR PHILLIPS I would have thought at least
four would have to be But I -- I -- you know in many
instances my guess is the right answer may well be
five
JUSTICE KAGAN Where -- where do you get
that from Whats the principle there
MR PHILLIPS Because all Congress wanted
to do was to close a loophole where youre essentially
doing nothing but violating US patent law and avoiding
it by simply offloading it at the last second In a lot
of instances I dont think thats true when youre only
talking about a majority of -- of the -- the items
JUSTICE KAGAN Well how do we know that
thats all Congress wanted to do I mean that might
have been the -- the -- the scenario in Deepsouth but
Congress used language that could refer to much more
than that that could refer to a majority that even
could refer to a substantial minority
MR PHILLIPS Yeah I -- I -- I think
there is no way to -- to -- first of all the -- the
rule against extra -- the rule -- the presumption
against extraterritoriality would drive you in the
opposite direction Even if you could reasonably read
the language either way you would -- you would drive it
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toward recognizing that the company that the substantial
portion keeps is the word all and its talking about
components
And so those are to my mind very much
quantitative and driven in the direction of all I --
JUSTICE GINSBURG And so you agree that
substantial portion is an ambiguous term
MR PHILLIPS Yes Justice Ginsburg I --
I agree It could be interpreted in either of two ways
which is why I think the principle against
extraterritoriality drives you in the direction of
saying Congress meant only to allow US patents to
operate outside the United States in very narrow
circumstances And if Congress chooses to -- to create
the kinds of international problems that will
undoubtedly arise by an overbroad interpretation of
271(f) which is what the Federal Circuit has adopted
leave it to Congress to go back and fix that because
those are -- those are issues of international relations
that it seems to me Congress is in a much better
position than the courts --
JUSTICE KENNEDY But those are --
MR PHILLIPS -- to sort out
JUSTICE KENNEDY -- just two -- two
components the polymerase and then a -- a patent --
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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25
So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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equally 1418 explained 3321 461525 412021 4218 447 483 174 3516 3919 factual 429 459 494 given 4624 equivalence 468 fair 4415 former 282 global 67 3417 4621 explaining fairly 2117 formulations gloss 2610 equivalency 4424 2311 3216 4618 2815 3417 explicated 4615 5011 forth 3115 go 4314 711 equivalent 4620 export 343 far 301012 found 4115 1018 142224 4621 exported 519 4914 four 42 913 1712 255 especially 810 3819 426 Federal 84 521822 3120 3316 811 111618 exporter 3017 1017 1419 France 3115 3715 38723 152222 168 exporting 3512 1717 191122 frankly 254 4214 4310 16811 192 extent 3420 3612 4225 273 4714 531323 ESQ 1171923 extra 922 177 4317 4416 free 725 548 2361013 extraterritorial feel 1411 French 3115 goes 357 essence 417 125825 156 fewer 365 friend 3413 going 121 133 305 1788 3511 figure 243 417 5224 131920 1422 essential 1916 extraterritori 2520 4713 friends 4115 19171919 2122 2411 923 1011 fill 322 friends 392 2124 2412 essentially 99 145 173 193 final 318 full 126 276 295 407 ET 14 2713 359 find 421 449 fully 2225 415 451718 evidence 419 extraterritori 4521 519 functions 3418 4519 4710 43810 4421 132 finding 281314 fundamentally 496 506 542 4519 4717 extremely 2915 finish 434 5210 2916 537 543446 exactly 1223 finished 4318 further 1813 good 484 1322 234 F 4318 good-bye 265 271822 323 f 418 858 first 921 1624 G government 383 1120 1523 1824 2021 G 117 2313 283 2917 example 318 165101216 224 3316 317 5219 governments 3917 40911 161820 192 416 5223 game 2023 248 449 4910 451213 1925 2019 fits 2712 gazillion 3923 governs 3119 examples 221 2020 2821 five 42 81822 gears 4915 grand 144 3813 2947 3267 95 1811 gee 3022 475 great 377 395 exchange 3124 3414 401618 2218 381723 4718 greater 156 32122 496 472222 486 4021 4124 General 120 Grokster 3517 Excuse 4212 48820 4910 4235 453 generally 625 516 exercise 1425 491120 534 fix 1018 1623 German 5010 ground 353 exhaust 402 534 flow 725 getting 2716 guess 94 4810 exhausted 401 fabrication 411 focus 3122 giant 399 exhaustion face 2018 3223 focused 459 Ginsburg 518 H
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
3515 4717 4013 492 38351013 I induced 3023 instructions invest 5012 3918 40920
idea 236 331 491317 3018 3518 involved 3920 4023 4118 illegal 371724 inducement 4211 4715 involving 316 4211013 3725 387 2920 328 instructive issue 315 44 43361722 394 35516 375 4725 1225 3917 4323 451223 illustrations 381 3910 Intel 3920 issues 78 1019 47131921 2616 4019 4516 Intels 3924 items 625 913 48921 4919 imagine 3818 4817 51715 intend 5222 5091920 immunity 1215 5225 intended 53 J 511921 522 impact 541111 inducing 515 610 153 398 judgment 1111 524111721 implication 166 inert 381724 4016 549 5413 531018 5416 1617 3914 intent 5115 judgments 122 Justices 3121 implications infringe 2923 interesting juries 468 351125 3019 4712 4215 juror 4521 K
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
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terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
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V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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toward recognizing that the company that the substantial
portion keeps is the word all and its talking about
components
And so those are to my mind very much
quantitative and driven in the direction of all I --
JUSTICE GINSBURG And so you agree that
substantial portion is an ambiguous term
MR PHILLIPS Yes Justice Ginsburg I --
I agree It could be interpreted in either of two ways
which is why I think the principle against
extraterritoriality drives you in the direction of
saying Congress meant only to allow US patents to
operate outside the United States in very narrow
circumstances And if Congress chooses to -- to create
the kinds of international problems that will
undoubtedly arise by an overbroad interpretation of
271(f) which is what the Federal Circuit has adopted
leave it to Congress to go back and fix that because
those are -- those are issues of international relations
that it seems to me Congress is in a much better
position than the courts --
JUSTICE KENNEDY But those are --
MR PHILLIPS -- to sort out
JUSTICE KENNEDY -- just two -- two
components the polymerase and then a -- a patent --
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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25
So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
5320 closer 1312 101 5013 4245 4448 C challenging 226 2223 512223 522 45325 4815
c 21 31 503 chase 5323 closing 4221 524 49214 512 533 cheaper 2620 code 3413 comparative 511617 5315 call 2315 361 Chief 339 127 colleague 5321 1924 237 compromising 503 1222 138 combination compare 313 2322 called 412 181520 215 2424 2922 compelled 1712 computer 3918 4121 21812 2310 341 40218 competitors 392222 406 candidly 75 274 29913 4711 492424 3714 concede 413 135 31172123 505 complete 294 3410 capable 2423 3210 3423 combinations 4918 conceded 423 capacious 4014 4317 521117 332324 3816 completeness concern 2120 care 236 5221 5416 combined 2922 365 2719 5024 careful 35913 chooses 1014 4710 complex 481 concerns 193 caricature 4418 Circuit 84 come 45 1920 complicated 1910 3511 457 1017 1717 543 2311 concession carries 2325 1922 4225 comes 1613 component 514 4112 CARTER 117 4317 comfortable 519 124 134 conclude 455 2313 37 Circuits 1419 141011 131119 167 concluded 4311 5219 1911 4416 coming 1111 161114 1825 conclusion case 341213 circumstance 1518 5313 1918 2169 1712 315161619 2210 251213 commerce 419 224 297 conduct 3514 323 44 65 circumstances 725 82 1425 3118 355 3822 4515 73 1111 1014 4511 3512 371920 382 4613 472 1216 136 4625 531720 commercial 3812 3911 4816 5079 188 2223 circumvention 5110 4010 4222 5113 5216 263 3417 4824 commercially 441718 456 confusion 2711 3517 3919 cited 3618 4118 4513 475 Congress 322 419 42216 claim 89 1822 commissioner 5116 526 417 52 6913 439 4425 18345 2415 2925 3021 539 541 981517 4520 46715 241725 committee 3219 components 43 1012141820 4615 4819 claims 18710 commodities 86 819 10325 153 162 541718 clause 1210 commodity 410 11422 159 1713 29518
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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equally 1418 explained 3321 461525 412021 4218 447 483 174 3516 3919 factual 429 459 494 given 4624 equivalence 468 fair 4415 former 282 global 67 3417 4621 explaining fairly 2117 formulations gloss 2610 equivalency 4424 2311 3216 4618 2815 3417 explicated 4615 5011 forth 3115 go 4314 711 equivalent 4620 export 343 far 301012 found 4115 1018 142224 4621 exported 519 4914 four 42 913 1712 255 especially 810 3819 426 Federal 84 521822 3120 3316 811 111618 exporter 3017 1017 1419 France 3115 3715 38723 152222 168 exporting 3512 1717 191122 frankly 254 4214 4310 16811 192 extent 3420 3612 4225 273 4714 531323 ESQ 1171923 extra 922 177 4317 4416 free 725 548 2361013 extraterritorial feel 1411 French 3115 goes 357 essence 417 125825 156 fewer 365 friend 3413 going 121 133 305 1788 3511 figure 243 417 5224 131920 1422 essential 1916 extraterritori 2520 4713 friends 4115 19171919 2122 2411 923 1011 fill 322 friends 392 2124 2412 essentially 99 145 173 193 final 318 full 126 276 295 407 ET 14 2713 359 find 421 449 fully 2225 415 451718 evidence 419 extraterritori 4521 519 functions 3418 4519 4710 43810 4421 132 finding 281314 fundamentally 496 506 542 4519 4717 extremely 2915 finish 434 5210 2916 537 543446 exactly 1223 finished 4318 further 1813 good 484 1322 234 F 4318 good-bye 265 271822 323 f 418 858 first 921 1624 G government 383 1120 1523 1824 2021 G 117 2313 283 2917 example 318 165101216 224 3316 317 5219 governments 3917 40911 161820 192 416 5223 game 2023 248 449 4910 451213 1925 2019 fits 2712 gazillion 3923 governs 3119 examples 221 2020 2821 five 42 81822 gears 4915 grand 144 3813 2947 3267 95 1811 gee 3022 475 great 377 395 exchange 3124 3414 401618 2218 381723 4718 greater 156 32122 496 472222 486 4021 4124 General 120 Grokster 3517 Excuse 4212 48820 4910 4235 453 generally 625 516 exercise 1425 491120 534 fix 1018 1623 German 5010 ground 353 exhaust 402 534 flow 725 getting 2716 guess 94 4810 exhausted 401 fabrication 411 focus 3122 giant 399 exhaustion face 2018 3223 focused 459 Ginsburg 518 H
3920 408 fact 49 2521 focusing 2315 522 1068 half 4113 existed 321 3011 3222 following 329 172022 2612 happen 115 exists 516 346 3915 463 3520 402023 2624 expected 297 4422 force 2323 4118 42110 happened 619 expert 2217 factors 2313 foreign 319 4213 4919 458 441 249 466 521313 give 89 214 happy 258 262 expired 75 525 factory 3820 forever 5012 221 2610 267 3822 explain 446 facts 31323 form 39716 2815 3618 hard 225 3111
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
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S 21 31 3722 2919 513 27 318 457 33671014 sake 365 sense 2121 241 solve 4820 49 520 688 3319 3438 salable 4118 sentence 43518 somebody 74 6171922 79 34111421 sale 3615 3924 set 2225 2519 221015 2619 7101119 3619 382 sales 4110 SETH 123 210 4817 504 823 1013 414 421922 saline 513 2911 someplace 2814 15121619 4225 43816 satisfied 538 shelf 1512 sophisticated 1818 205 444561017 satisfy 1522 ship 482 3921 2820 292225 442121 456 sauce 4815 shipped 410 sorry 1121 301 3238 451424 464 saying 612 84 shipping 205 3811 3420 3516 4621 4718 1012 1618 2820 sort 1023 1214 3822 391 4825 51217 1711 207 shore 203 2818 144 2417 4024 4124 535615 2120 231725 show 374 3914 2610 47612 5114 substantiality 253 2717 showed 223 sorting 2419 523714 1622 2816 368 388 Showing 518 Sotomayor 546 5313 545 3418 4324 shows 301011 5913 20714 States 353 substantially says 88 1115 484 2217 2413 statue 2817 815 2089 1613 259 shrimp 316 43362223 statute 321 2510 3012 263 311416 side 3413 392 511921 522 1220 1524 36891316
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
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terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
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V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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the -- a second part of a patent that well envision
MR PHILLIPS Right Clearly in that
situation theres -- theres no liability because
it -- you know because only one of those components --
you know either one of two things happen Either both
of them are being put together or -- or only one of them
is and 271(f)(1) --
JUSTICE KENNEDY It seems -- it seems to me
that even if we -- we agree with you that quantitative
is -- is the proper measure you still have qualitative
coming in to balance your judgment as in the case of
one out of two --
MR PHILLIPS Well I -- not in one out of
two One out of two seems to me is dictated by
271(f)(2) that says that if its only one and then it
has to be either especially --
JUSTICE KENNEDY No no no --
MR PHILLIPS -- adapted or especially --
JUSTICE KENNEDY Well Im just talking
about (f)(1)
MR PHILLIPS Oh Im sorry I thought you
were talking about one out of two components I
apologize
No when you get to one -- you know theres
no question at some point as youre approaching all
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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25
So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
5320 closer 1312 101 5013 4245 4448 C challenging 226 2223 512223 522 45325 4815
c 21 31 503 chase 5323 closing 4221 524 49214 512 533 cheaper 2620 code 3413 comparative 511617 5315 call 2315 361 Chief 339 127 colleague 5321 1924 237 compromising 503 1222 138 combination compare 313 2322 called 412 181520 215 2424 2922 compelled 1712 computer 3918 4121 21812 2310 341 40218 competitors 392222 406 candidly 75 274 29913 4711 492424 3714 concede 413 135 31172123 505 complete 294 3410 capable 2423 3210 3423 combinations 4918 conceded 423 capacious 4014 4317 521117 332324 3816 completeness concern 2120 care 236 5221 5416 combined 2922 365 2719 5024 careful 35913 chooses 1014 4710 complex 481 concerns 193 caricature 4418 Circuit 84 come 45 1920 complicated 1910 3511 457 1017 1717 543 2311 concession carries 2325 1922 4225 comes 1613 component 514 4112 CARTER 117 4317 comfortable 519 124 134 conclude 455 2313 37 Circuits 1419 141011 131119 167 concluded 4311 5219 1911 4416 coming 1111 161114 1825 conclusion case 341213 circumstance 1518 5313 1918 2169 1712 315161619 2210 251213 commerce 419 224 297 conduct 3514 323 44 65 circumstances 725 82 1425 3118 355 3822 4515 73 1111 1014 4511 3512 371920 382 4613 472 1216 136 4625 531720 commercial 3812 3911 4816 5079 188 2223 circumvention 5110 4010 4222 5113 5216 263 3417 4824 commercially 441718 456 confusion 2711 3517 3919 cited 3618 4118 4513 475 Congress 322 419 42216 claim 89 1822 commissioner 5116 526 417 52 6913 439 4425 18345 2415 2925 3021 539 541 981517 4520 46715 241725 committee 3219 components 43 1012141820 4615 4819 claims 18710 commodities 86 819 10325 153 162 541718 clause 1210 commodity 410 11422 159 1713 29518
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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equally 1418 explained 3321 461525 412021 4218 447 483 174 3516 3919 factual 429 459 494 given 4624 equivalence 468 fair 4415 former 282 global 67 3417 4621 explaining fairly 2117 formulations gloss 2610 equivalency 4424 2311 3216 4618 2815 3417 explicated 4615 5011 forth 3115 go 4314 711 equivalent 4620 export 343 far 301012 found 4115 1018 142224 4621 exported 519 4914 four 42 913 1712 255 especially 810 3819 426 Federal 84 521822 3120 3316 811 111618 exporter 3017 1017 1419 France 3115 3715 38723 152222 168 exporting 3512 1717 191122 frankly 254 4214 4310 16811 192 extent 3420 3612 4225 273 4714 531323 ESQ 1171923 extra 922 177 4317 4416 free 725 548 2361013 extraterritorial feel 1411 French 3115 goes 357 essence 417 125825 156 fewer 365 friend 3413 going 121 133 305 1788 3511 figure 243 417 5224 131920 1422 essential 1916 extraterritori 2520 4713 friends 4115 19171919 2122 2411 923 1011 fill 322 friends 392 2124 2412 essentially 99 145 173 193 final 318 full 126 276 295 407 ET 14 2713 359 find 421 449 fully 2225 415 451718 evidence 419 extraterritori 4521 519 functions 3418 4519 4710 43810 4421 132 finding 281314 fundamentally 496 506 542 4519 4717 extremely 2915 finish 434 5210 2916 537 543446 exactly 1223 finished 4318 further 1813 good 484 1322 234 F 4318 good-bye 265 271822 323 f 418 858 first 921 1624 G government 383 1120 1523 1824 2021 G 117 2313 283 2917 example 318 165101216 224 3316 317 5219 governments 3917 40911 161820 192 416 5223 game 2023 248 449 4910 451213 1925 2019 fits 2712 gazillion 3923 governs 3119 examples 221 2020 2821 five 42 81822 gears 4915 grand 144 3813 2947 3267 95 1811 gee 3022 475 great 377 395 exchange 3124 3414 401618 2218 381723 4718 greater 156 32122 496 472222 486 4021 4124 General 120 Grokster 3517 Excuse 4212 48820 4910 4235 453 generally 625 516 exercise 1425 491120 534 fix 1018 1623 German 5010 ground 353 exhaust 402 534 flow 725 getting 2716 guess 94 4810 exhausted 401 fabrication 411 focus 3122 giant 399 exhaustion face 2018 3223 focused 459 Ginsburg 518 H
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
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KAGAN 9614 knowledge 3024 3820 5325 1313 1525 164 5116 476 504 528 majority 81315 measure 1110 2724 28913 KSR 4620 Life 13 3424 91318 meeting 241 2823 324 4123 making 204 meets 4815 keep 20710 L 4216 5121 2819 4618 mens 5225 542 language 917 5215 501117 mention 5025 keeps 102 925 1312 light 192 2816 manifestly 477 mentioned 292 Kennedy 618 175613 4619 manufacture 31523 624 7813 2810 31522 limits 386 3018 merely 5110 102224 118 321 4014 line 2017 manufactured merit 620 111719 4713 large 195 2424 list 3722 4024 4123 mesh 4915 471921 4810 largely 311 literally 421 manufacturer met 4625 5318 Laughter 1413 litigation 46 615 2514 method 3325 kept 368 268 4320 2711 511 methods 3418 key 523 64 498 little 1210 manufacturers microchip 3921 719 234 law 910 1211 lo 5013 512 611 548 404 kind 2317 132021 179 loaded 1912 manufacturing microprocessor 501617 5410 2414 288 local 3823 224 392125 405 5410 31131419 locution 3611 material 2921 Microsoft 1224 kinds 1015 122 36152021 longer 516 325 1224 1725 Kingdom 41 372 4615 look 1410 182 materiality 2021 2422 kit 47 471 5413 19114 2019 461013 3225 3321 kits 43711 laws 519 2025 21216 Mathias 2919 3510 229 411317 laws 624 2313 2489 304 311217 million 42 4221 lawyer 1319 2410 3411 323 411010 know 518 717 lawyers 2517 4221 4416 Mathiass 3014 mind 104 206 71919 833 2520 4220 4519 4723 matter 113 235 3624 9314 1145 leave 1018 looking 65 254 541319 mine 3713 1124 121720 3720 398 1421 191322 mean 64 721 minimum 825 132021 1517 left 238 2410 237 278 813 915 129 2011 171523 185 272 looks 3514 1318 1417 minority 919 211517 225 legislation 305 5215 1652324 minute 46 228 2319 legislative 314 loophole 322 209 2114 minutes 5218 2413 252 31825 497 99 231112 256 5222 277 303 legislatures 365 lot 65 911 258 2813 minutiae 1210 3210111112 lets 158 2219 1316 245 3115 3211 misapprehend 33913 3412 3814 412 2511 26144 5125 2917 3525 362124 433 4910 265 4612 meaning 320 mischief 1419 37713 3815 level 3216 5224 136 1524 misunderstood 39121523 Levinson 4611 love 371 447 3424 40911 428 LGE 3925 lowest 525 means 814 mix 224 2623 431 447 liability 113 2320 25810 276 4524 46356 167 3913 M 264 2811 modeled 327 4619 4799 4515 4812 main 231 2715 3517 4410 331 4813 4711 5014 4925 519 maintain 123 4525 4614 modern 4725 5224 531119 liable 2212 major 1714 4613 517 molecule 3825 532021 549 2621 272 232 531114 meant 1012 3945 4720
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
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S 21 31 3722 2919 513 27 318 457 33671014 sake 365 sense 2121 241 solve 4820 49 520 688 3319 3438 salable 4118 sentence 43518 somebody 74 6171922 79 34111421 sale 3615 3924 set 2225 2519 221015 2619 7101119 3619 382 sales 4110 SETH 123 210 4817 504 823 1013 414 421922 saline 513 2911 someplace 2814 15121619 4225 43816 satisfied 538 shelf 1512 sophisticated 1818 205 444561017 satisfy 1522 ship 482 3921 2820 292225 442121 456 sauce 4815 shipped 410 sorry 1121 301 3238 451424 464 saying 612 84 shipping 205 3811 3420 3516 4621 4718 1012 1618 2820 sort 1023 1214 3822 391 4825 51217 1711 207 shore 203 2818 144 2417 4024 4124 535615 2120 231725 show 374 3914 2610 47612 5114 substantiality 253 2717 showed 223 sorting 2419 523714 1622 2816 368 388 Showing 518 Sotomayor 546 5313 545 3418 4324 shows 301011 5913 20714 States 353 substantially says 88 1115 484 2217 2413 statue 2817 815 2089 1613 259 shrimp 316 43362223 statute 321 2510 3012 263 311416 side 3413 392 511921 522 1220 1524 36891316
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
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terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
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V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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but not all that youre going to have to make some
kinds of judgments but it seems to me its absolutely
critical that the Court maintain a very significant
numerical component to it Otherwise what you do is
allow the -- the extraterritorial principle not to have
the full sway that it should be entitled to
CHIEF JUSTICE ROBERTS Im not sure I agree
with your understanding of the extraterritorial
principle I dont -- I mean do you really take that
down into the minutiae of every little clause It seems
to me its once the law applies then you apply normal
principles of statutory interpretation I think we have
cases about that in other -- in other areas which is
sort of what is the reach I think may be the
presumption against infringements in sovereign immunity
is -- a case I cant recall right away that said well
once you get over it you know its over and then you
apply normal principles
And it -- Im not sure at every turn --
okay and we know that this is a statute that obviously
applies overseas
MR PHILLIPS Yeah Mr Chief Justice
that -- thats exactly the opposite of what the Court
said in Microsoft In Microsoft the Court said that
the issue is not simply is this extraterritorial
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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25
So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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c 21 31 503 chase 5323 closing 4221 524 49214 512 533 cheaper 2620 code 3413 comparative 511617 5315 call 2315 361 Chief 339 127 colleague 5321 1924 237 compromising 503 1222 138 combination compare 313 2322 called 412 181520 215 2424 2922 compelled 1712 computer 3918 4121 21812 2310 341 40218 competitors 392222 406 candidly 75 274 29913 4711 492424 3714 concede 413 135 31172123 505 complete 294 3410 capable 2423 3210 3423 combinations 4918 conceded 423 capacious 4014 4317 521117 332324 3816 completeness concern 2120 care 236 5221 5416 combined 2922 365 2719 5024 careful 35913 chooses 1014 4710 complex 481 concerns 193 caricature 4418 Circuit 84 come 45 1920 complicated 1910 3511 457 1017 1717 543 2311 concession carries 2325 1922 4225 comes 1613 component 514 4112 CARTER 117 4317 comfortable 519 124 134 conclude 455 2313 37 Circuits 1419 141011 131119 167 concluded 4311 5219 1911 4416 coming 1111 161114 1825 conclusion case 341213 circumstance 1518 5313 1918 2169 1712 315161619 2210 251213 commerce 419 224 297 conduct 3514 323 44 65 circumstances 725 82 1425 3118 355 3822 4515 73 1111 1014 4511 3512 371920 382 4613 472 1216 136 4625 531720 commercial 3812 3911 4816 5079 188 2223 circumvention 5110 4010 4222 5113 5216 263 3417 4824 commercially 441718 456 confusion 2711 3517 3919 cited 3618 4118 4513 475 Congress 322 419 42216 claim 89 1822 commissioner 5116 526 417 52 6913 439 4425 18345 2415 2925 3021 539 541 981517 4520 46715 241725 committee 3219 components 43 1012141820 4615 4819 claims 18710 commodities 86 819 10325 153 162 541718 clause 1210 commodity 410 11422 159 1713 29518
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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equally 1418 explained 3321 461525 412021 4218 447 483 174 3516 3919 factual 429 459 494 given 4624 equivalence 468 fair 4415 former 282 global 67 3417 4621 explaining fairly 2117 formulations gloss 2610 equivalency 4424 2311 3216 4618 2815 3417 explicated 4615 5011 forth 3115 go 4314 711 equivalent 4620 export 343 far 301012 found 4115 1018 142224 4621 exported 519 4914 four 42 913 1712 255 especially 810 3819 426 Federal 84 521822 3120 3316 811 111618 exporter 3017 1017 1419 France 3115 3715 38723 152222 168 exporting 3512 1717 191122 frankly 254 4214 4310 16811 192 extent 3420 3612 4225 273 4714 531323 ESQ 1171923 extra 922 177 4317 4416 free 725 548 2361013 extraterritorial feel 1411 French 3115 goes 357 essence 417 125825 156 fewer 365 friend 3413 going 121 133 305 1788 3511 figure 243 417 5224 131920 1422 essential 1916 extraterritori 2520 4713 friends 4115 19171919 2122 2411 923 1011 fill 322 friends 392 2124 2412 essentially 99 145 173 193 final 318 full 126 276 295 407 ET 14 2713 359 find 421 449 fully 2225 415 451718 evidence 419 extraterritori 4521 519 functions 3418 4519 4710 43810 4421 132 finding 281314 fundamentally 496 506 542 4519 4717 extremely 2915 finish 434 5210 2916 537 543446 exactly 1223 finished 4318 further 1813 good 484 1322 234 F 4318 good-bye 265 271822 323 f 418 858 first 921 1624 G government 383 1120 1523 1824 2021 G 117 2313 283 2917 example 318 165101216 224 3316 317 5219 governments 3917 40911 161820 192 416 5223 game 2023 248 449 4910 451213 1925 2019 fits 2712 gazillion 3923 governs 3119 examples 221 2020 2821 five 42 81822 gears 4915 grand 144 3813 2947 3267 95 1811 gee 3022 475 great 377 395 exchange 3124 3414 401618 2218 381723 4718 greater 156 32122 496 472222 486 4021 4124 General 120 Grokster 3517 Excuse 4212 48820 4910 4235 453 generally 625 516 exercise 1425 491120 534 fix 1018 1623 German 5010 ground 353 exhaust 402 534 flow 725 getting 2716 guess 94 4810 exhausted 401 fabrication 411 focus 3122 giant 399 exhaustion face 2018 3223 focused 459 Ginsburg 518 H
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
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KAGAN 9614 knowledge 3024 3820 5325 1313 1525 164 5116 476 504 528 majority 81315 measure 1110 2724 28913 KSR 4620 Life 13 3424 91318 meeting 241 2823 324 4123 making 204 meets 4815 keep 20710 L 4216 5121 2819 4618 mens 5225 542 language 917 5215 501117 mention 5025 keeps 102 925 1312 light 192 2816 manifestly 477 mentioned 292 Kennedy 618 175613 4619 manufacture 31523 624 7813 2810 31522 limits 386 3018 merely 5110 102224 118 321 4014 line 2017 manufactured merit 620 111719 4713 large 195 2424 list 3722 4024 4123 mesh 4915 471921 4810 largely 311 literally 421 manufacturer met 4625 5318 Laughter 1413 litigation 46 615 2514 method 3325 kept 368 268 4320 2711 511 methods 3418 key 523 64 498 little 1210 manufacturers microchip 3921 719 234 law 910 1211 lo 5013 512 611 548 404 kind 2317 132021 179 loaded 1912 manufacturing microprocessor 501617 5410 2414 288 local 3823 224 392125 405 5410 31131419 locution 3611 material 2921 Microsoft 1224 kinds 1015 122 36152021 longer 516 325 1224 1725 Kingdom 41 372 4615 look 1410 182 materiality 2021 2422 kit 47 471 5413 19114 2019 461013 3225 3321 kits 43711 laws 519 2025 21216 Mathias 2919 3510 229 411317 laws 624 2313 2489 304 311217 million 42 4221 lawyer 1319 2410 3411 323 411010 know 518 717 lawyers 2517 4221 4416 Mathiass 3014 mind 104 206 71919 833 2520 4220 4519 4723 matter 113 235 3624 9314 1145 leave 1018 looking 65 254 541319 mine 3713 1124 121720 3720 398 1421 191322 mean 64 721 minimum 825 132021 1517 left 238 2410 237 278 813 915 129 2011 171523 185 272 looks 3514 1318 1417 minority 919 211517 225 legislation 305 5215 1652324 minute 46 228 2319 legislative 314 loophole 322 209 2114 minutes 5218 2413 252 31825 497 99 231112 256 5222 277 303 legislatures 365 lot 65 911 258 2813 minutiae 1210 3210111112 lets 158 2219 1316 245 3115 3211 misapprehend 33913 3412 3814 412 2511 26144 5125 2917 3525 362124 433 4910 265 4612 meaning 320 mischief 1419 37713 3815 level 3216 5224 136 1524 misunderstood 39121523 Levinson 4611 love 371 447 3424 40911 428 LGE 3925 lowest 525 means 814 mix 224 2623 431 447 liability 113 2320 25810 276 4524 46356 167 3913 M 264 2811 modeled 327 4619 4799 4515 4812 main 231 2715 3517 4410 331 4813 4711 5014 4925 519 maintain 123 4525 4614 modern 4725 5224 531119 liable 2212 major 1714 4613 517 molecule 3825 532021 549 2621 272 232 531114 meant 1012 3945 4720
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
2316 outside 447 57 3019 311314 1325 1469 N 6816 71011 3118 3413 1415 15217
N 211 31 O 1013 547 362225 3715 1521 1625 narrow 1013 O 21 31 overbroad 1016 391520 401 1623 172125 1311 objected 3022 overcomes 519 4027 4616 208 521819 narrowly 1349 objection 3211 overlap 4916 479 4923 5221 176 obtain 213 238 overseas 1221 506 525 541 physical 3324 natural 1625 obvious 3223 1510 3513 543 pick 3818 3410 4619 3820 4924 patents 3625 picture 1913 nature 2917 obviously 1220 505 patentable 625 245 nearly 3913 403 overturn 4920 1919 piece 1921 201 necessary 345 occurs 4924 patented 204 541 41317 4524 5113 P 2819 3368 pinned 2720 need 1424 213 off-the-shelf P 123 210 31 3781116 pinning 289 2423 264 414 2911 3814 398 place 317 622 4911111219 offend 171 pack 711 413 494 plain 2315 4919 offloading 911 packet 711 5017 plainly 3415 needs 206 237 offshore 548 page 22 2024 patentholder plant 325 42 2413 26124 Oh 814 1121 24721 2924 78 3622 plausible 174 2719 4921 3015 3610 patents 625 please 310 negative 16617 okay 1220 pages 331013 1012 301 1821 2914 5411 3016 3221 331520 349 3325 plural 3444 negligence 471 37923 4517 442424 people 3212 Plus 4121 never 69 1825 502 parade 474 percent 2014 point 1125 144 2018 261 once 121117 paradigm 2822 2014 211314 234 3423 294 3820 231011 278 3012 211717 2825 3610 511212 4915 549 ones 446 Paris 722 5016 5314 nine 159 online 42022 part 410 615 perfectly 1410 pointed 4821 non-bespoke operate 1013 616 111 267 points 4217 3910 operates 325 1425 1913 person 1924 4810 non-infringing 131 308 4414 Petitioner 483 polar 324 419 309 operation 1916 particular 322 Petitioners 15 policy 141117 3415 3946 413 411 51419 11822 248 polymer 5122 4825 opinion 1717 611 7912 214 38 1819 52712 normal 121118 469 811 1712 2916 5220 polymerase 413 notice 5324 opportunity 188 222 pharmaceutical 41521 58 notion 5120 5324 2616 321718 3814 397 1025 411314 notwithstandi opposed 1618 412021 459 409 411720 4222 3019 4115 opposite 324 particularly Phillips 117 23 43131316 novelty 1916 924 1223 3314 213 3679 45921 2122 2411 oral 113 2259 partly 3415 558101521 portion 86712 number 2618 37 1817 passage 314 523 621 72 1027 1612
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
R R 31 races 2312 rare 3124
reference 4115 496 regular 725 regulate 720 regulated 718
restrictioning 2818 result 321 review 1877 4421
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
542 Solicitor 119 statements 417 1714 2316 S sends 3017 solution 710 States 111421 282510 308
S 21 31 3722 2919 513 27 318 457 33671014 sake 365 sense 2121 241 solve 4820 49 520 688 3319 3438 salable 4118 sentence 43518 somebody 74 6171922 79 34111421 sale 3615 3924 set 2225 2519 221015 2619 7101119 3619 382 sales 4110 SETH 123 210 4817 504 823 1013 414 421922 saline 513 2911 someplace 2814 15121619 4225 43816 satisfied 538 shelf 1512 sophisticated 1818 205 444561017 satisfy 1522 ship 482 3921 2820 292225 442121 456 sauce 4815 shipped 410 sorry 1121 301 3238 451424 464 saying 612 84 shipping 205 3811 3420 3516 4621 4718 1012 1618 2820 sort 1023 1214 3822 391 4825 51217 1711 207 shore 203 2818 144 2417 4024 4124 535615 2120 231725 show 374 3914 2610 47612 5114 substantiality 253 2717 showed 223 sorting 2419 523714 1622 2816 368 388 Showing 518 Sotomayor 546 5313 545 3418 4324 shows 301011 5913 20714 States 353 substantially says 88 1115 484 2217 2413 statue 2817 815 2089 1613 259 shrimp 316 43362223 statute 321 2510 3012 263 311416 side 3413 392 511921 522 1220 1524 36891316
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
1958 2215 817 199 549 totally 303 UK 624 715 2962021 221323 2511 things 115 touch 501 715 307 356 381 26425 1510 1822 touched 5214 US 57 610 3913 476 Taq 4121520 285 3512 trade 312 910 1012 4811114 58 61 4112 468 482 transcript 4518 3019 50679 532024 545 4114162024 think 311 414 translates 3125 5025 5216 supplying 1925 421822 4315 415 74 814 treaties 718 5478811 22132324 4423 4599 91220 1010 treaty 3114 ultimate 546 27122 3921 4521 121214 151 trial 41121619 ultimately 77 support 3519 Tech 324 154 1624 4122 4217 uncommon supporting 121 Technologies 19120 2015 45818 2417 28 1819 13 3425 20131619 tried 4520 undermines supposed 5319 4216 4725 217111323 Tripp 119 26 2323 Supreme 1114 5121 525 2124 221122 18161720 underscored sure 12719 tell 54 1318 2224 23510 201316 217 4423 1525 16416 461212 231224 247 211119 2222 underscoring 2712 424 telling 2518 2422 2513 2324 2418 517 436 5211 tells 1523 25162325 25162325 understand surprisingly 76 ten 159 262024 273 266915 2320 2418 suspect 62 716 tens 41 274101517 2715 2814 2817 2916 sway 126 term 107 287 28421 293 281215 293 3016 3214 sweep 132 terms 2225 279 2915 314 393 531
terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
4217 5310 wants 162
wish 512 witnesses 4314 0
2817 374 549
301 3238 3420 35315 3822 391 4024 4124 47611 5114 523714 5313 545 units 348 unlawful 5111 upset 79 urge 5412 use 79 811 142 148 3019 331722 344 3612 3812 396 493 5111 5222 useful 312 uses 420 309 341518 394 4825 493
V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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because theres no question that 271(f) operates
extraterritorially The question is the sweep of
271(f) And -- and this Court said that it was going to
interpret the word component very narrowly in that
context candidly in the same way that the -- that this
Court also interpreted it in the Deepsouth case meaning
CHIEF JUSTICE ROBERTS Well --
MR PHILLIPS -- very narrowly And were
asking you to do the same thing which is to say adopt
a narrow construction of the substantial component
language so that it drives much closer to the word all
and recognizes that this is meant as a --
JUSTICE BREYER Your real argument is just
that -- isnt it -- that you interpret it differently
than you do and we cause a lot of problems in other
countries
I mean they -- they cant tell whether
when they get one component their lawyer is going to
have to know not only British law its going to have to
know American law
MR PHILLIPS Thats exactly --
JUSTICE BREYER And -- and thats a very
practical argument
MR PHILLIPS Right
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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25
So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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equally 1418 explained 3321 461525 412021 4218 447 483 174 3516 3919 factual 429 459 494 given 4624 equivalence 468 fair 4415 former 282 global 67 3417 4621 explaining fairly 2117 formulations gloss 2610 equivalency 4424 2311 3216 4618 2815 3417 explicated 4615 5011 forth 3115 go 4314 711 equivalent 4620 export 343 far 301012 found 4115 1018 142224 4621 exported 519 4914 four 42 913 1712 255 especially 810 3819 426 Federal 84 521822 3120 3316 811 111618 exporter 3017 1017 1419 France 3115 3715 38723 152222 168 exporting 3512 1717 191122 frankly 254 4214 4310 16811 192 extent 3420 3612 4225 273 4714 531323 ESQ 1171923 extra 922 177 4317 4416 free 725 548 2361013 extraterritorial feel 1411 French 3115 goes 357 essence 417 125825 156 fewer 365 friend 3413 going 121 133 305 1788 3511 figure 243 417 5224 131920 1422 essential 1916 extraterritori 2520 4713 friends 4115 19171919 2122 2411 923 1011 fill 322 friends 392 2124 2412 essentially 99 145 173 193 final 318 full 126 276 295 407 ET 14 2713 359 find 421 449 fully 2225 415 451718 evidence 419 extraterritori 4521 519 functions 3418 4519 4710 43810 4421 132 finding 281314 fundamentally 496 506 542 4519 4717 extremely 2915 finish 434 5210 2916 537 543446 exactly 1223 finished 4318 further 1813 good 484 1322 234 F 4318 good-bye 265 271822 323 f 418 858 first 921 1624 G government 383 1120 1523 1824 2021 G 117 2313 283 2917 example 318 165101216 224 3316 317 5219 governments 3917 40911 161820 192 416 5223 game 2023 248 449 4910 451213 1925 2019 fits 2712 gazillion 3923 governs 3119 examples 221 2020 2821 five 42 81822 gears 4915 grand 144 3813 2947 3267 95 1811 gee 3022 475 great 377 395 exchange 3124 3414 401618 2218 381723 4718 greater 156 32122 496 472222 486 4021 4124 General 120 Grokster 3517 Excuse 4212 48820 4910 4235 453 generally 625 516 exercise 1425 491120 534 fix 1018 1623 German 5010 ground 353 exhaust 402 534 flow 725 getting 2716 guess 94 4810 exhausted 401 fabrication 411 focus 3122 giant 399 exhaustion face 2018 3223 focused 459 Ginsburg 518 H
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
3515 4717 4013 492 38351013 I induced 3023 instructions invest 5012 3918 40920
idea 236 331 491317 3018 3518 involved 3920 4023 4118 illegal 371724 inducement 4211 4715 involving 316 4211013 3725 387 2920 328 instructive issue 315 44 43361722 394 35516 375 4725 1225 3917 4323 451223 illustrations 381 3910 Intel 3920 issues 78 1019 47131921 2616 4019 4516 Intels 3924 items 625 913 48921 4919 imagine 3818 4817 51715 intend 5222 5091920 immunity 1215 5225 intended 53 J 511921 522 impact 541111 inducing 515 610 153 398 judgment 1111 524111721 implication 166 inert 381724 4016 549 5413 531018 5416 1617 3914 intent 5115 judgments 122 Justices 3121 implications infringe 2923 interesting juries 468 351125 3019 4712 4215 juror 4521 K
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
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terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
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V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
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1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
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7 70 21131416 2117 700 4110
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JUSTICE BREYER And it -- really we dont
need -- well you its up to you what you want to use
But I dont -- you -- the problem is if thats the
point why do you need this sort of grand thing about --
about a -- a presumption against extraterritoriality
MR PHILLIPS Yeah --
JUSTICE BREYER Its up to you what you
want to use but --
MR PHILLIPS Yeah yeah yeah -- well
look Im -- Im perfectly comfortable with really
any -- any policy argument you feel comfortable with
That one --
(Laughter)
JUSTICE BREYER Well I --
MR PHILLIPS -- is certainly one that
we -- we embraced
I mean the other -- the other policy
argument that seems to me equally strong in this context
is the -- is the mischief that the Federal Circuits
Rule provides for trolls because now not only do you
have all of the trolls in the world looking for all of
the products in the world but now theyre going to go
through the entire supply chain of every punitive
infringer and go after each provider of a single staple
article of commerce as part of this exercise --
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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55
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am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
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addition 2614 311219 372 areas 1213 averting 3414 brief 201024
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
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terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
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1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
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JUSTICE ALITO Do you think --
MR PHILLIPS -- and it seems to me that
cannot be possibly what Congress intended
JUSTICE ALITO Do you think its clear that
the -- that the -- the qualitative interpretation has a
greater extraterritorial effect than the quantitative
interpretation
What if you have a situation where -- lets
say there are ten components and nine of them are --
are made overseas but those are very routine things
those are like the product that was made in the United
States here You can buy them off the shelf
But theres one thats very unique Now
its not made specifically for this device but its
very -- its -- its very unique and thats -- and
thats made in the United States
MR PHILLIPS Yeah Well you know -- from
my -- it -- the only device coming from the United
States is a single device --
JUSTICE ALITO Right
MR PHILLIPS -- and its not -- and it
doesnt satisfy especially made or especially adapted
It seems to me that (f)(2) tells you specifically
thats not within the meaning of the statute
JUSTICE KAGAN Well Im not sure if thats
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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equally 1418 explained 3321 461525 412021 4218 447 483 174 3516 3919 factual 429 459 494 given 4624 equivalence 468 fair 4415 former 282 global 67 3417 4621 explaining fairly 2117 formulations gloss 2610 equivalency 4424 2311 3216 4618 2815 3417 explicated 4615 5011 forth 3115 go 4314 711 equivalent 4620 export 343 far 301012 found 4115 1018 142224 4621 exported 519 4914 four 42 913 1712 255 especially 810 3819 426 Federal 84 521822 3120 3316 811 111618 exporter 3017 1017 1419 France 3115 3715 38723 152222 168 exporting 3512 1717 191122 frankly 254 4214 4310 16811 192 extent 3420 3612 4225 273 4714 531323 ESQ 1171923 extra 922 177 4317 4416 free 725 548 2361013 extraterritorial feel 1411 French 3115 goes 357 essence 417 125825 156 fewer 365 friend 3413 going 121 133 305 1788 3511 figure 243 417 5224 131920 1422 essential 1916 extraterritori 2520 4713 friends 4115 19171919 2122 2411 923 1011 fill 322 friends 392 2124 2412 essentially 99 145 173 193 final 318 full 126 276 295 407 ET 14 2713 359 find 421 449 fully 2225 415 451718 evidence 419 extraterritori 4521 519 functions 3418 4519 4710 43810 4421 132 finding 281314 fundamentally 496 506 542 4519 4717 extremely 2915 finish 434 5210 2916 537 543446 exactly 1223 finished 4318 further 1813 good 484 1322 234 F 4318 good-bye 265 271822 323 f 418 858 first 921 1624 G government 383 1120 1523 1824 2021 G 117 2313 283 2917 example 318 165101216 224 3316 317 5219 governments 3917 40911 161820 192 416 5223 game 2023 248 449 4910 451213 1925 2019 fits 2712 gazillion 3923 governs 3119 examples 221 2020 2821 five 42 81822 gears 4915 grand 144 3813 2947 3267 95 1811 gee 3022 475 great 377 395 exchange 3124 3414 401618 2218 381723 4718 greater 156 32122 496 472222 486 4021 4124 General 120 Grokster 3517 Excuse 4212 48820 4910 4235 453 generally 625 516 exercise 1425 491120 534 fix 1018 1623 German 5010 ground 353 exhaust 402 534 flow 725 getting 2716 guess 94 4810 exhausted 401 fabrication 411 focus 3122 giant 399 exhaustion face 2018 3223 focused 459 Ginsburg 518 H
3920 408 fact 49 2521 focusing 2315 522 1068 half 4113 existed 321 3011 3222 following 329 172022 2612 happen 115 exists 516 346 3915 463 3520 402023 2624 expected 297 4422 force 2323 4118 42110 happened 619 expert 2217 factors 2313 foreign 319 4213 4919 458 441 249 466 521313 give 89 214 happy 258 262 expired 75 525 factory 3820 forever 5012 221 2610 267 3822 explain 446 facts 31323 form 39716 2815 3618 hard 225 3111
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
3515 4717 4013 492 38351013 I induced 3023 instructions invest 5012 3918 40920
idea 236 331 491317 3018 3518 involved 3920 4023 4118 illegal 371724 inducement 4211 4715 involving 316 4211013 3725 387 2920 328 instructive issue 315 44 43361722 394 35516 375 4725 1225 3917 4323 451223 illustrations 381 3910 Intel 3920 issues 78 1019 47131921 2616 4019 4516 Intels 3924 items 625 913 48921 4919 imagine 3818 4817 51715 intend 5222 5091920 immunity 1215 5225 intended 53 J 511921 522 impact 541111 inducing 515 610 153 398 judgment 1111 524111721 implication 166 inert 381724 4016 549 5413 531018 5416 1617 3914 intent 5115 judgments 122 Justices 3121 implications infringe 2923 interesting juries 468 351125 3019 4712 4215 juror 4521 K
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KAGAN 9614 knowledge 3024 3820 5325 1313 1525 164 5116 476 504 528 majority 81315 measure 1110 2724 28913 KSR 4620 Life 13 3424 91318 meeting 241 2823 324 4123 making 204 meets 4815 keep 20710 L 4216 5121 2819 4618 mens 5225 542 language 917 5215 501117 mention 5025 keeps 102 925 1312 light 192 2816 manifestly 477 mentioned 292 Kennedy 618 175613 4619 manufacture 31523 624 7813 2810 31522 limits 386 3018 merely 5110 102224 118 321 4014 line 2017 manufactured merit 620 111719 4713 large 195 2424 list 3722 4024 4123 mesh 4915 471921 4810 largely 311 literally 421 manufacturer met 4625 5318 Laughter 1413 litigation 46 615 2514 method 3325 kept 368 268 4320 2711 511 methods 3418 key 523 64 498 little 1210 manufacturers microchip 3921 719 234 law 910 1211 lo 5013 512 611 548 404 kind 2317 132021 179 loaded 1912 manufacturing microprocessor 501617 5410 2414 288 local 3823 224 392125 405 5410 31131419 locution 3611 material 2921 Microsoft 1224 kinds 1015 122 36152021 longer 516 325 1224 1725 Kingdom 41 372 4615 look 1410 182 materiality 2021 2422 kit 47 471 5413 19114 2019 461013 3225 3321 kits 43711 laws 519 2025 21216 Mathias 2919 3510 229 411317 laws 624 2313 2489 304 311217 million 42 4221 lawyer 1319 2410 3411 323 411010 know 518 717 lawyers 2517 4221 4416 Mathiass 3014 mind 104 206 71919 833 2520 4220 4519 4723 matter 113 235 3624 9314 1145 leave 1018 looking 65 254 541319 mine 3713 1124 121720 3720 398 1421 191322 mean 64 721 minimum 825 132021 1517 left 238 2410 237 278 813 915 129 2011 171523 185 272 looks 3514 1318 1417 minority 919 211517 225 legislation 305 5215 1652324 minute 46 228 2319 legislative 314 loophole 322 209 2114 minutes 5218 2413 252 31825 497 99 231112 256 5222 277 303 legislatures 365 lot 65 911 258 2813 minutiae 1210 3210111112 lets 158 2219 1316 245 3115 3211 misapprehend 33913 3412 3814 412 2511 26144 5125 2917 3525 362124 433 4910 265 4612 meaning 320 mischief 1419 37713 3815 level 3216 5224 136 1524 misunderstood 39121523 Levinson 4611 love 371 447 3424 40911 428 LGE 3925 lowest 525 means 814 mix 224 2623 431 447 liability 113 2320 25810 276 4524 46356 167 3913 M 264 2811 modeled 327 4619 4799 4515 4812 main 231 2715 3517 4410 331 4813 4711 5014 4925 519 maintain 123 4525 4614 modern 4725 5224 531119 liable 2212 major 1714 4613 517 molecule 3825 532021 549 2621 272 232 531114 meant 1012 3945 4720
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
2316 outside 447 57 3019 311314 1325 1469 N 6816 71011 3118 3413 1415 15217
N 211 31 O 1013 547 362225 3715 1521 1625 narrow 1013 O 21 31 overbroad 1016 391520 401 1623 172125 1311 objected 3022 overcomes 519 4027 4616 208 521819 narrowly 1349 objection 3211 overlap 4916 479 4923 5221 176 obtain 213 238 overseas 1221 506 525 541 physical 3324 natural 1625 obvious 3223 1510 3513 543 pick 3818 3410 4619 3820 4924 patents 3625 picture 1913 nature 2917 obviously 1220 505 patentable 625 245 nearly 3913 403 overturn 4920 1919 piece 1921 201 necessary 345 occurs 4924 patented 204 541 41317 4524 5113 P 2819 3368 pinned 2720 need 1424 213 off-the-shelf P 123 210 31 3781116 pinning 289 2423 264 414 2911 3814 398 place 317 622 4911111219 offend 171 pack 711 413 494 plain 2315 4919 offloading 911 packet 711 5017 plainly 3415 needs 206 237 offshore 548 page 22 2024 patentholder plant 325 42 2413 26124 Oh 814 1121 24721 2924 78 3622 plausible 174 2719 4921 3015 3610 patents 625 please 310 negative 16617 okay 1220 pages 331013 1012 301 1821 2914 5411 3016 3221 331520 349 3325 plural 3444 negligence 471 37923 4517 442424 people 3212 Plus 4121 never 69 1825 502 parade 474 percent 2014 point 1125 144 2018 261 once 121117 paradigm 2822 2014 211314 234 3423 294 3820 231011 278 3012 211717 2825 3610 511212 4915 549 ones 446 Paris 722 5016 5314 nine 159 online 42022 part 410 615 perfectly 1410 pointed 4821 non-bespoke operate 1013 616 111 267 points 4217 3910 operates 325 1425 1913 person 1924 4810 non-infringing 131 308 4414 Petitioner 483 polar 324 419 309 operation 1916 particular 322 Petitioners 15 policy 141117 3415 3946 413 411 51419 11822 248 polymer 5122 4825 opinion 1717 611 7912 214 38 1819 52712 normal 121118 469 811 1712 2916 5220 polymerase 413 notice 5324 opportunity 188 222 pharmaceutical 41521 58 notion 5120 5324 2616 321718 3814 397 1025 411314 notwithstandi opposed 1618 412021 459 409 411720 4222 3019 4115 opposite 324 particularly Phillips 117 23 43131316 novelty 1916 924 1223 3314 213 3679 45921 2122 2411 oral 113 2259 partly 3415 558101521 portion 86712 number 2618 37 1817 passage 314 523 621 72 1027 1612
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
R R 31 races 2312 rare 3124
reference 4115 496 regular 725 regulate 720 regulated 718
restrictioning 2818 result 321 review 1877 4421
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
542 Solicitor 119 statements 417 1714 2316 S sends 3017 solution 710 States 111421 282510 308
S 21 31 3722 2919 513 27 318 457 33671014 sake 365 sense 2121 241 solve 4820 49 520 688 3319 3438 salable 4118 sentence 43518 somebody 74 6171922 79 34111421 sale 3615 3924 set 2225 2519 221015 2619 7101119 3619 382 sales 4110 SETH 123 210 4817 504 823 1013 414 421922 saline 513 2911 someplace 2814 15121619 4225 43816 satisfied 538 shelf 1512 sophisticated 1818 205 444561017 satisfy 1522 ship 482 3921 2820 292225 442121 456 sauce 4815 shipped 410 sorry 1121 301 3238 451424 464 saying 612 84 shipping 205 3811 3420 3516 4621 4718 1012 1618 2820 sort 1023 1214 3822 391 4825 51217 1711 207 shore 203 2818 144 2417 4024 4124 535615 2120 231725 show 374 3914 2610 47612 5114 substantiality 253 2717 showed 223 sorting 2419 523714 1622 2816 368 388 Showing 518 Sotomayor 546 5313 545 3418 4324 shows 301011 5913 20714 States 353 substantially says 88 1115 484 2217 2413 statue 2817 815 2089 1613 259 shrimp 316 43362223 statute 321 2510 3012 263 311416 side 3413 392 511921 522 1220 1524 36891316
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
1958 2215 817 199 549 totally 303 UK 624 715 2962021 221323 2511 things 115 touch 501 715 307 356 381 26425 1510 1822 touched 5214 US 57 610 3913 476 Taq 4121520 285 3512 trade 312 910 1012 4811114 58 61 4112 468 482 transcript 4518 3019 50679 532024 545 4114162024 think 311 414 translates 3125 5025 5216 supplying 1925 421822 4315 415 74 814 treaties 718 5478811 22132324 4423 4599 91220 1010 treaty 3114 ultimate 546 27122 3921 4521 121214 151 trial 41121619 ultimately 77 support 3519 Tech 324 154 1624 4122 4217 uncommon supporting 121 Technologies 19120 2015 45818 2417 28 1819 13 3425 20131619 tried 4520 undermines supposed 5319 4216 4725 217111323 Tripp 119 26 2323 Supreme 1114 5121 525 2124 221122 18161720 underscored sure 12719 tell 54 1318 2224 23510 201316 217 4423 1525 16416 461212 231224 247 211119 2222 underscoring 2712 424 telling 2518 2422 2513 2324 2418 517 436 5211 tells 1523 25162325 25162325 understand surprisingly 76 ten 159 262024 273 266915 2320 2418 suspect 62 716 tens 41 274101517 2715 2814 2817 2916 sway 126 term 107 287 28421 293 281215 293 3016 3214 sweep 132 terms 2225 279 2915 314 393 531
terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
4217 5310 wants 162
wish 512 witnesses 4314 0
2817 374 549
301 3238 3420 35315 3822 391 4024 4124 47611 5114 523714 5313 545 units 348 unlawful 5111 upset 79 urge 5412 use 79 811 142 148 3019 331722 344 3612 3812 396 493 5111 5222 useful 312 uses 420 309 341518 394 4825 493
V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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MR PHILLIPS And if Congress wants to fix
it it can fix that
JUSTICE KAGAN Im not sure if thats true
Mr Phillips I mean youre reading (f)(2) as having a
negative implication that this is the only time when
one component can create liability is when its
especially made or especially adapted But these might
be just independent clauses
In other words (f)(2) talks about a
component thats especially made whether or not its a
substantial portion of the product And then (f)(1)
comes in and says -- independently creates a rule for a
component or components that are a substantial portion
of the product
So Im not sure why we have to read (f)(2)
as creating this negative implication as to any product
any single product as opposed to just saying (f)(2) is
about specially made stuff and it has nothing to do
with (f)(1) which is not about specially made stuff
and provides a different test about substantial --
substantiality
MR PHILLIPS Right I mean in -- in the
first instance I dont -- I mean I dont think thats
the more natural way to read the two together But then
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
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1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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90 2825
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I would go back and -- and without trying to offend
Justice Breyer go to the principle against
extraterritoriality and say -- say to you that if there
were two different ways that are equally plausible to
interpret this language you should interpret the
language to be more narrowly applicable and therefore
less likely to interfere with extra -- with
extraterritorial -- extraterritorial application of
patent law
And so thats the reason It -- Im not
saying that you would have in the abstract been
compelled to a particular conclusion but in a situation
where Congress has used the language talking about all
or a major -- or a -- or a substantial portion where all
is all but -- you know its very close to that talks
about components of the invention not of the invention
itself the Federal Circuit twice in its opinion just
dropped out of the components of the invention where
its clear that thats designed to be a --
JUSTICE GINSBURG And what are --
MR PHILLIPS -- quantitative analysis
JUSTICE GINSBURG What are the -- what are
the components of the invention How do we know what
the -- the components of the invention
MR PHILLIPS This Court in Microsoft said
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
5320 closer 1312 101 5013 4245 4448 C challenging 226 2223 512223 522 45325 4815
c 21 31 503 chase 5323 closing 4221 524 49214 512 533 cheaper 2620 code 3413 comparative 511617 5315 call 2315 361 Chief 339 127 colleague 5321 1924 237 compromising 503 1222 138 combination compare 313 2322 called 412 181520 215 2424 2922 compelled 1712 computer 3918 4121 21812 2310 341 40218 competitors 392222 406 candidly 75 274 29913 4711 492424 3714 concede 413 135 31172123 505 complete 294 3410 capable 2423 3210 3423 combinations 4918 conceded 423 capacious 4014 4317 521117 332324 3816 completeness concern 2120 care 236 5221 5416 combined 2922 365 2719 5024 careful 35913 chooses 1014 4710 complex 481 concerns 193 caricature 4418 Circuit 84 come 45 1920 complicated 1910 3511 457 1017 1717 543 2311 concession carries 2325 1922 4225 comes 1613 component 514 4112 CARTER 117 4317 comfortable 519 124 134 conclude 455 2313 37 Circuits 1419 141011 131119 167 concluded 4311 5219 1911 4416 coming 1111 161114 1825 conclusion case 341213 circumstance 1518 5313 1918 2169 1712 315161619 2210 251213 commerce 419 224 297 conduct 3514 323 44 65 circumstances 725 82 1425 3118 355 3822 4515 73 1111 1014 4511 3512 371920 382 4613 472 1216 136 4625 531720 commercial 3812 3911 4816 5079 188 2223 circumvention 5110 4010 4222 5113 5216 263 3417 4824 commercially 441718 456 confusion 2711 3517 3919 cited 3618 4118 4513 475 Congress 322 419 42216 claim 89 1822 commissioner 5116 526 417 52 6913 439 4425 18345 2415 2925 3021 539 541 981517 4520 46715 241725 committee 3219 components 43 1012141820 4615 4819 claims 18710 commodities 86 819 10325 153 162 541718 clause 1210 commodity 410 11422 159 1713 29518
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
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that the components of the invention are the elements in
the claim and so you look at the claim and you
interpret the claim and you -- and you devise from that
Now that -- that -- thats claim -- thats
claim construction And thats you know not always
the easiest thing in the world to do and it requires
review of the claims review of the specification and
the -- and the history But in this particular case
its really easy
The claims say very categorically what each
of the five components are is and -- and so that one
is easy
If there are no further questions Your
Honors Id like to reserve the balance of my time
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Tripp
ORAL ARGUMENT OF ZACHARY D TRIPP
FOR UNITED STATES AS AMICUS CURIAE
SUPPORTING THE PETITIONERS
MR TRIPP Mr Chief Justice and may it
please the Court
We are asking the Court to do two things
here today
First we are asking the Court to hold that
the supply of a single commodity component is never
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
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am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
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accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
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accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
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activities 317 allow 1012 125 approach 2124 495 2551724
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addition 2614 311219 372 areas 1213 averting 3414 brief 201024
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argued 208 4220 argument 114
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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4410 import 391 506 interfere 614 jury 4291419 harm 2917 5013 infringement 177 4223 4310 hear 33 importance 464 620 2012 international 45235 4612 heard 45223 important 196 3072325 312 101519 465121924 hearing 2924 1915 2022 3312 354 Internet 4116 4716 313 321318 211022 296 4913131725 interpret 85 Justice 120 33 heartbeat 228 2915 3314 5034 518 13415 1755 39 546913 held 320 4010 4218 infringements 183 3112 51822 618 help 3110 4619 4315 4423 1215 interpretation 624 7713 483 45422 491 infringer 1424 1016 1212 8121821 91 hierarchy 314 5016 5312 3024 1557 285 9614 1068 high 3216 importantly infringing 2522 302 3619 102224 118 history 188 514 505 5124 interpreted 109 111719 127 31481621 importation ingredient 2513 136 206 1222 13814 312325 497 52912 3623 3817 interpreting 1323 1417 hold 1824 194 imports 5214 ingredients 2611 1414 1514 407 inadvertently 3622 381724 interpretive 152025 164 holding 439 367 initial 4221 322 1722022 hole 2123 399 include 455 injectable 397 introduced 466 181520 207 Honor 820 5115 3915 494 invention 710 2014 2158 Honors 1814 includes 4813 innovative 491 811 171616 2112 2217 5415 incorrect 477 inquiry 237 17182324 2310 2413 horribles 474 incredibly 225 inside 45 622 181 196716 2551724 horror 487 independent 548 204 2123 26312 274 hour 319 169 537 insignificant 222 2421 2724 28913 House 321618 independently 2118 2220 2617 2755 282323 299 3219 1613 instance 1624 2819 3368 2913 3117 hundreds 482 indication 3323 257 345 357 3318 377 31102023 hypothetical indistinguisha 3617 445111213 3210 334 2824 347 349 instances 9412 5118 3423 35820 3813 443 individual 296 4623 inventions 1918 36620 376 451 493 induce 3025 instructed 4224 inventive 406 37102024
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4822 3319 445 2911 patent 321 513 716 81420 money 2125 478 order 88 4519 620 74512 824 92820 morning 34 numbers 2022 4523 4716 721 910 10823 112 Mossinghoffs 2025 244 4818 1025 111 11131821 3021 numerical 124 original 324 179 241417 1222 13922
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N 211 31 O 1013 547 362225 3715 1521 1625 narrow 1013 O 21 31 overbroad 1016 391520 401 1623 172125 1311 objected 3022 overcomes 519 4027 4616 208 521819 narrowly 1349 objection 3211 overlap 4916 479 4923 5221 176 obtain 213 238 overseas 1221 506 525 541 physical 3324 natural 1625 obvious 3223 1510 3513 543 pick 3818 3410 4619 3820 4924 patents 3625 picture 1913 nature 2917 obviously 1220 505 patentable 625 245 nearly 3913 403 overturn 4920 1919 piece 1921 201 necessary 345 occurs 4924 patented 204 541 41317 4524 5113 P 2819 3368 pinned 2720 need 1424 213 off-the-shelf P 123 210 31 3781116 pinning 289 2423 264 414 2911 3814 398 place 317 622 4911111219 offend 171 pack 711 413 494 plain 2315 4919 offloading 911 packet 711 5017 plainly 3415 needs 206 237 offshore 548 page 22 2024 patentholder plant 325 42 2413 26124 Oh 814 1121 24721 2924 78 3622 plausible 174 2719 4921 3015 3610 patents 625 please 310 negative 16617 okay 1220 pages 331013 1012 301 1821 2914 5411 3016 3221 331520 349 3325 plural 3444 negligence 471 37923 4517 442424 people 3212 Plus 4121 never 69 1825 502 parade 474 percent 2014 point 1125 144 2018 261 once 121117 paradigm 2822 2014 211314 234 3423 294 3820 231011 278 3012 211717 2825 3610 511212 4915 549 ones 446 Paris 722 5016 5314 nine 159 online 42022 part 410 615 perfectly 1410 pointed 4821 non-bespoke operate 1013 616 111 267 points 4217 3910 operates 325 1425 1913 person 1924 4810 non-infringing 131 308 4414 Petitioner 483 polar 324 419 309 operation 1916 particular 322 Petitioners 15 policy 141117 3415 3946 413 411 51419 11822 248 polymer 5122 4825 opinion 1717 611 7912 214 38 1819 52712 normal 121118 469 811 1712 2916 5220 polymerase 413 notice 5324 opportunity 188 222 pharmaceutical 41521 58 notion 5120 5324 2616 321718 3814 397 1025 411314 notwithstandi opposed 1618 412021 459 409 411720 4222 3019 4115 opposite 324 particularly Phillips 117 23 43131316 novelty 1916 924 1223 3314 213 3679 45921 2122 2411 oral 113 2259 partly 3415 558101521 portion 86712 number 2618 37 1817 passage 314 523 621 72 1027 1612
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1614 1714 4821 put 312 420 rea 5225 reinstate 5412 195714 problems 1015 116 197 reach 1214 rejected 4611 2316 2424 1316 2613 3222 reached 5213 rejecting 4618 28210 3367 process 411 386 reaches 1958 relations 1019 331015 343 226 reaction 22711 relationship 348 3610 product 41012 Q 2619 4314 5123 382 4220 424 561724 qualification read 612 924 relative 212 4418 451425 1511 161215 2613 161625 2020 relevant 46 4718 4814 161718 2824 qualitative 3213 4015 3412 51217 5366 2825 301820 1110 155 4518 5010 reliable 4118 position 1021 4710 5012 249 2613 readily 413 reluctance 519 2718 4325 5110 277 341619 511 relying 317 possible 525 products 1422 3421 36219 reading 165 322 possibly 153 3020 qualities 2514 3410 4415 remaining 213 potential 89 progress 2710 quality 524 real 1314 3220 remediates powers 396 prohibited 305 Quanta 3918 really 129 141 3815 practical 1324 Promega 17 35 392225 4011 1410 189 report 321516 1910 734 4123 4512 2115 2213 3223 practiced 4711 proper 1110 quantitative 23622 2623 request 4223 preclude 305 properly 4716 105 119 156 3112 3711 require 356 precluded 2920 proposed 2919 1721 241 4718 4820 5114 3324 304 2614 3311 reason 1710 required 4122 precludes 3278 protected 4824 341121 362 2724 3711 requirement presumably protection 712 361419 484 4820 2921 3023 525 532 quantitatively reasonable 4814 5025 presumption provide 615 279 4521 495 537 922 1215 provided 4017 question 51 reasonably 924 requires 186 145 2713 provider 1424 1125 1312 reasons 373 resemble 2822 pretty 2721 provides 1420 191224 2121 4216 reserve 1814 313 1621 2410 2721 rebuttal 212 respect 4811 price 525 providing 611 331719 358 4221 5219 respond 5223 primary 4613 3518 3719 385 recall 315 1216 5310 472 provision 202 3924 4168 recipe 5322 responded 499 primer 224 243 2720 421279 431 recognize 5312 Respondent 18 2622 3514 4813 438 452 recognized 124 211 primers 4112 5215 4822 5318 3225 3510 2912 principal 1910 provisions 2821 questions 1813 recognizes 1313 responding 2119 331 341212 quickly 227 recognizing 101 4818 principle 97 507 quite 2113 record 416 223 response 3014 1010 1259 punitive 1423 2320 2522 2225 3021 417 172 232223 purchase 422 262 recounted 4422 rest 238 principles 1212 purchased 612 quote 3017 518 refer 9171819 restriction 203 1218 prior 4620 probably 312 3612 problem 143
purchasers 547 purchasing 547 purely 279 purpose 206 28616
R R 31 races 2312 rare 3124
reference 4115 496 regular 725 regulate 720 regulated 718
restrictioning 2818 result 321 review 1877 4421
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right 521 719 336 4416 significance 524 5310 2018 2325 94 112 1216 5322 2169 sounds 4722 315 32117 1325 1520 scenario 916 significant 423 sourced 44 3224 335 1623 191 scope 341 123 2121 sovereign 1215 3522 382121 3014 425 scrapped 324 221819 532 special 251314 5024 rights 721 352 537 295 statutes 3612 rise 314 89 second 911 111 similar 1925 specially 1619 36121415 risk 4819 19421 4114 simply 52 911 1620 307 statutory 1212 road 4816 secondary 503 1225 416 355 stem 1911 ROBERTS 33 Section 314 48418 534 specific 3017 step 441213 127 138 see 297 3711 single 49 52 5115 steps 3517 514 1815 2158 3715 878 1424 specifically stipulated 423 2112 2310 seek 711 1519 1618 151423 stop 547 274 299 311 seen 4914 1825 2825 specification stories 488 3210 4317 sell 3711216 307 539 187 STR 4117 521117 5416 sells 5110 single-minded spends 41 stretch 3220 Roche 62 4120 Senate 312 4617 spent 5224 strike 256 4123 321315 situation 113 stake 3617 strong 1418 roll 4517 Senator 2919 158 1712 standard 4624 271818 routine 1510 30414 3112 3017 538 staple 418 52 stuff 161920 rubber 4815 3116 323 situations 2821 61115 81 submitted 5417 rule 92222 send 3118 sleeves 4517 1424 3020 5419 1420 1613 3623 4715 Smiths 3714 5325 substantial 867 295 399 5111 5324 software 3325 started 3425 812 919 101 ruling 1911 542 sold 47 3925 353 107 1311 runs 311314 sending 5325 5122 State 361214 16121421
542 Solicitor 119 statements 417 1714 2316 S sends 3017 solution 710 States 111421 282510 308
S 21 31 3722 2919 513 27 318 457 33671014 sake 365 sense 2121 241 solve 4820 49 520 688 3319 3438 salable 4118 sentence 43518 somebody 74 6171922 79 34111421 sale 3615 3924 set 2225 2519 221015 2619 7101119 3619 382 sales 4110 SETH 123 210 4817 504 823 1013 414 421922 saline 513 2911 someplace 2814 15121619 4225 43816 satisfied 538 shelf 1512 sophisticated 1818 205 444561017 satisfy 1522 ship 482 3921 2820 292225 442121 456 sauce 4815 shipped 410 sorry 1121 301 3238 451424 464 saying 612 84 shipping 205 3811 3420 3516 4621 4718 1012 1618 2820 sort 1023 1214 3822 391 4825 51217 1711 207 shore 203 2818 144 2417 4024 4124 535615 2120 231725 show 374 3914 2610 47612 5114 substantiality 253 2717 showed 223 sorting 2419 523714 1622 2816 368 388 Showing 518 Sotomayor 546 5313 545 3418 4324 shows 301011 5913 20714 States 353 substantially says 88 1115 484 2217 2413 statue 2817 815 2089 1613 259 shrimp 316 43362223 statute 321 2510 3012 263 311416 side 3413 392 511921 522 1220 1524 36891316
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3618 448 T 211 test 1621 2023 43161718 true 423 912 suddenly 3119 table 2411 2224 23511 4415 4879 164 sufficient 428 tablet 3815 251922 2719 4821 502223 try 2610 4322910 take 622 129 411 484 5316 trying 171 233 454 1918 2823 testified 301 third 291 243 2520 sufficiently 3121 3521 testimony 2217 Thomas 3919 26915 2815 4118 3917 407 41161922 thought 92 Tuesday 111 suggested 324 4412 514 43121214 1121 3022 turn 1219 suggestion 353 533 44224 three 221819 turns 3417 4910 taken 622 76 text 2315 335 4012 4446 twice 1717 suit 620 525 thank 1815 454 531114 two 1092424 suitable 419 takes 2319 299 316 time 422 166 115121414 5110 talk 3615 4321 521721 1814 2021 1122 1625 super 296 4010 talking 81 913 541516 21255 2319 174 1822 supplied 1914 102 111922 theory 724 2519 276 22120 373 1923 2111 1713 2318 therapeutic 291 5224 3719 3812 22101519 3215 347 4823 time-consuming 403 4110 2619 411113 5113 5224 thing 613 1310 225 4258 432 4510 538 144 186 today 1823 469 4810 49314 supplies 475 talks 85 1610 251921 2716 told 415 507 5312 4818 1715 291 367 topdown 303 twofold 546 supply 636 tangible 3324 3712 3819 tort 508 1423 1825 tantamount 4417 501117 tortious 4816 U
1958 2215 817 199 549 totally 303 UK 624 715 2962021 221323 2511 things 115 touch 501 715 307 356 381 26425 1510 1822 touched 5214 US 57 610 3913 476 Taq 4121520 285 3512 trade 312 910 1012 4811114 58 61 4112 468 482 transcript 4518 3019 50679 532024 545 4114162024 think 311 414 translates 3125 5025 5216 supplying 1925 421822 4315 415 74 814 treaties 718 5478811 22132324 4423 4599 91220 1010 treaty 3114 ultimate 546 27122 3921 4521 121214 151 trial 41121619 ultimately 77 support 3519 Tech 324 154 1624 4122 4217 uncommon supporting 121 Technologies 19120 2015 45818 2417 28 1819 13 3425 20131619 tried 4520 undermines supposed 5319 4216 4725 217111323 Tripp 119 26 2323 Supreme 1114 5121 525 2124 221122 18161720 underscored sure 12719 tell 54 1318 2224 23510 201316 217 4423 1525 16416 461212 231224 247 211119 2222 underscoring 2712 424 telling 2518 2422 2513 2324 2418 517 436 5211 tells 1523 25162325 25162325 understand surprisingly 76 ten 159 262024 273 266915 2320 2418 suspect 62 716 tens 41 274101517 2715 2814 2817 2916 sway 126 term 107 287 28421 293 281215 293 3016 3214 sweep 132 terms 2225 279 2915 314 393 531
terrific 492 3311111213 trolls 142021 understanding T territorial 203 358 417 5323 128 5024
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understood 441 violate 542 ways 422 65 X 26 2024 247 undisputed 416 violating 910 109 174 288 x 129 3622 27 2421 undoubtedly violation 55 well 33 111 5012 270 4917 1016 810 5015 271 53 2918 unembodied voting 3212 were 721 81 Y 3225 531 3325 139 2024 yeah 523 920 271(a) 4925 unique 151315 W 262 2815 1222 14699 502 4218 wading 3217 322 5113 149 1517 271(b) 3023 United 111421 want 52424 543 2523 266 327 332 27 317 415 613 1428 weve 3113 381010 4022 4813 503 479 519 67 2010 2314 501117 years 5018 533 68161922 2466 367 weak 313 271(c) 306 329 79101119 5013 5223 went 3213 Z 332 823 1013 wanted 9815 werent 438 ZACHARY 271(f) 314 15111618 311217 386 505 119 26 1817 1017 1313 1818 204 2819 292225
4217 5310 wants 162
wish 512 witnesses 4314 0
2817 374 549
301 3238 3420 35315 3822 391 4024 4124 47611 5114 523714 5313 545 units 348 unlawful 5111 upset 79 urge 5412 use 79 811 142 148 3019 331722 344 3612 3812 396 493 5111 5222 useful 312 uses 420 309 341518 394 4825 493
V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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90 2825
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enough We think thats clearly right when you look at
(f)(1) and (f)(2) together especially in light of
extraterritoriality concerns
Second we are asking the Court to hold that
(f)(1) reaches the supply of all or a large portion of
the components of the invention not any important
portion of the invention And the way we had put it is
that it reaches the supply of all or something
tantamount to all of the components
And our principal practical concerns here
stem from the breadth of the Federal Circuits ruling
and its broad because they are asking a loaded question
thats looking only at part of the picture
If you look only at the supplied portion of
the components and you ask whether they are important or
essential to the operation or novelty of the invention
the answer is always going to be yes In most
inventions if you take away any component it isnt
going to work and its not going to be patentable So
we think you just cant come at it that way
And then the second piece is that the
Federal Circuit isnt looking at all the components that
were not supplied and so they are not asking the
comparative question of whether the person has done
anything similar to supplying all of the components
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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V v 16 35 3225 3322 4611 vaguer 2011 validated 5023 variety 512 view 3117 vigorous 714
warehouse 3823 Warner-Jenki 3416 4622 Washington 110172023 wasnt 4219 Waxman 123 210 291011 2913 31620 3221 3316 3523 3739 37182325 384911 402225 415 421215 434 43721 4414 462 471420 489 49921 501922 5119 512025 523 52912 way 610 921 925 135 1625 19720 2020 2322 2420 254 361 371315 3820 4015 4225 4818
4315 442223 wood 501414 5016 5113 word 102 134 1312 331722 352122 words 1610 2321 5021 521 work 1919 2115 2226 238 2519 283 391 441317 481 4823 works 2125 229 4313 world 511 142122 186 3113 4213 4823 5323 worried 5020 worries 2524 worry 5023 wouldnt 2012 2116 254 2625 271 456 4617 512 527 wrong 84 442
1 1 85 1120 161220 192 195 2019 2821 327 4016 4722 491120 534 1015 115 32 1114 5418 12 3313 14-1538 15 34 16 3313 18 28 19 3622 1984 2924 1989 424 19th 722
2 2 418 88 1523 165101618 192 2020 2947 326 3414 4722 486820 4910 534 20 2014 4012 2006 42324 2016 111
271(f)(1) 117 326 508 271(f)(2) 612 1115 3011 328 29 211 2925 3015
3 3 24 30 2014 5016 300-plus 4110 35 3610
4 40 2015
5 52 214
6 6 111
7 70 21131416 2117 700 4110
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And we think thats just a critical piece here This is
an anti-circumvention provision It was enacted to
shore up the basic territorial restriction against
actually making a patented invention in the United
States and then shipping it abroad and we think it
needs to be interpreted with that purpose in mind
JUSTICE SOTOMAYOR You keep saying
substantially all Mr Phillips argued that
substantially all has to mean just that Almost all
You instead in your brief want us to keep
that vaguer but Im assuming that there is a minimum
that wouldnt constitute an infringement
MR TRIPP Well I think --
JUSTICE SOTOMAYOR 20 percent 30 percent
40 How -- how --
MR TRIPP Well so I think the -- the --
the one bright line that we -- that we are drawing here
is -- on the face of the statute is that one is never
enough We think thats clear when you look at (f)(1)
and (f)(2) together the way this Court read them in
Microsoft the first time
Beyond that the numbers are very important
under our test but they are not the whole ball game
Were -- we say this on page 26 of our brief You could
also -- you would look not only at the numbers of the
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components that were supplied and not supplied but you
would also look at the relative time money and effort
that you would need to obtain the remaining components
So if I could give --
CHIEF JUSTICE ROBERTS Time -- time money
and effort but not significance of the component
MR TRIPP I think --
CHIEF JUSTICE ROBERTS It seems to me that
the significance of the component would be the most
important consideration If --
MR TRIPP I think -- and so the --
CHIEF JUSTICE ROBERTS If its the -- if
its whatever you think is not quite enough 70 percent
but 70 percent of the components -- I mean thats
really the core of what makes it work I dont know why
you wouldnt look at that differently than if its 70
percent but the 70 percent are you know fairly
insignificant
MR TRIPP Well I -- I -- our principal
concern or -- as I was saying is that if you just ask
the question of whether its significant in the sense of
is it essential or important to the novelty of the
invention I think thats just a black hole thats not
going to get you anywhere And we think our approach
works better
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And if I could just give you two examples of
how this would work using this particular invention
So if some -- if -- if the record here showed that
manufacturing the first component the primer mix was
you know an incredibly difficult time-consuming hard
challenging process the bulk of the work here but that
you could get the -- the reaction buffer very quickly in
a heartbeat you know its like a dime a dozen you
drop it into the kits and it works
In that circumstance if somebody supplied
all the components except the reaction buffer we think
they would clearly be liable because they would have
done something that is really tantamount to supplying
all of the components You could get that last one so
easily but if supply -- if somebody supplied all the
components --
JUSTICE SOTOMAYOR To the expert testimony
here that out of the five three were significant so
lets assume they supplied the three significant
components and not the two less insignificant What --
what would your answer be then
MR TRIPP I think that would be a much
closer case to supplying something that is tantamount to
supplying all of them under our test I think the --
the record here isnt -- isnt fully set out in terms of
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what it is that -- that -- that makes them main or
major
What we are trying to get at -- and -- and
the key point to us whether exactly how you articulate
this test I think doesnt matter all that much to us
but what we really do care about is the idea that this
needs to be a comparative inquiry looking at how much
work there is left to be done to obtain the rest of the
components so that --
CHIEF JUSTICE ROBERTS I think once you --
once youre into your fairly complicated test I mean I
think its -- youre off to the races I mean what
factors do you look at all of that when it -- it seems
to me the -- the clear argument is whether you want to
call it the plain text or not but its just focusing on
a numerical Its -- its -- its a substantial portion
of the components and now youre saying well it kind
of depends on what components we are talking about You
know how much time it takes to make them Effort I
dont quite understand what effort means in that area
In -- in other words youre -- youre --
youre compromising the principle in a way that really
undermines the force of the principle
MR TRIPP No I -- I -- I think that what
we are saying is that the -- the statute carries the
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quantitative meeting in the sense that it needs to be a
large portion but this is an anti-circumvention
provision and then trying to figure out what it needs
for it to be a large portion the numbers are a whole
lot of the picture
I -- I dont want to -- I dont want to
diminish that but as we said on page 26 we think they
are not the entire ball game and a court look at --
could look at some qualitative factors but that it
would not look at the question of whether whats left on
the table is essential or in -- or to the novelty
because the answer to that is always going to be yes
JUSTICE SOTOMAYOR I dont know enough
patent law to have the answer to this When a -- a
claim is made what -- how is the determination made of
what the elements are Do the elements determinations
sort out the common from the uncommon in a patent claim
MR TRIPP Not as I understand it no It
would just be -- it would just be sorting out what the
elements are and -- and the way we approach the
components of the invention this is on page 27 of our
brief is we think as in Microsoft that they --
they -- they are -- they need to be capable of
combination and they are derived from the elements of
the claim
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So we think in -- in most cases it actually
wont be that difficult And also as it -- you know
as I was saying I -- I think under our approach it
also frankly wouldnt matter that way
JUSTICE BREYER But why do we have to go
into the details here I mean it did strike me as an
instance where maybe the less said by us the better I
mean would you be happy if we say it means what it
says
All or substantially all means a whole
lot Or what you said tantamount to all So if you
get into that circumstance or you get into the to
circumstance which is there is a special ingredient
here that has the special qualities Mr Manufacturer
dont get close to that
MR TRIPP I -- I think --
JUSTICE BREYER All these lawyers that will
be there telling them dont get close to that and the
thing will work over time If we set a detailed test
down then all those lawyers will be trying to figure
out how in fact they actually do the thing without
quite infringing the detail test
MR TRIPP Yeah I -- I -- I think that --
JUSTICE BREYER Thats what worries me
MR TRIPP I -- I think if you said that
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one was never enough and it needs to be a whole lot we
would be quite happy All that were --
JUSTICE BREYER End of the case It says
one means a lot we need a whole lot tantamount to the
whole lot and good-bye
MR TRIPP Yeah we -- we -- we would be
perfectly happy with that
(Laughter)
MR TRIPP All -- all that Im trying to do
is try and give you our sort of best gloss on
interpreting --
JUSTICE GINSBURG Then why did you -- why
did you add the qualification to put in qualitative
considerations in addition to quantitative
MR TRIPP Well as I was trying to get at
with the -- the illustrations using this particular
invention like you could get to a different answer even
when you have the same number of components So if
somebody supplied everything but the reaction buffer
this one you would get cheaper and easily we think you
would be liable
But if they did everything except the primer
mix and thats really just an enormous amount of --
of -- of what needs to happen here then we think they
wouldnt have done something thats tantamount to
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supplying all the components And they wouldnt be
liable because there would be so much left to be done
But I think frankly --
CHIEF JUSTICE ROBERTS I think thats your
answer in this invention but every other invention is
going to have a different mix of the time the effort
the you know qualitative aspect and it -- again it
does seem to be that once you get beyond looking at
purely quantitatively in terms of the components I
dont think youve made much progress in clearing up
the -- the litigation costs and the confusion
And Im also not sure how it fits in with
the presumption against extraterritoriality or at least
the clear application of that
MR TRIPP Well I -- I -- I think the main
thing that we are getting at is that -- and -- and --
and again as I was saying I -- I dont think we have a
strong -- strong position on how exactly you -- you
articulate the test Our concern is that it needs to be
pinned to an anti-circumvention provision and the
question is are you doing something that is pretty
close to supplying all the components How exactly are
you --
JUSTICE KAGAN Because theres a reason why
its that almost all
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I mean if I said to you Mr Tripp a
substantial portion of my former clerks have gone into
government work how many would I mean
MR TRIPP Well I -- I think with any of
these things the interpretation of substantial depends
entirely on its context and its purpose and -- and --
and so this term is used in just like a countless
array of ways in the law
JUSTICE KAGAN So youre not pinning this
on the -- on the language here the substantial portion
means almost all
MR TRIPP Well no --
JUSTICE KAGAN You are finding it from
someplace else And where are you finding it from
MR TRIPP So were trying to give a gloss
on substantiality in light of the context and purpose of
this statue as -- as we understand all of 271(f) is
designed to shore up the basic restrictioning and is
actually making a patented invention in the United
States and then shipping it abroad Both of the
provisions get at that We think (f)(1) is situations
that resemble the Deepsouth paradigm youre --
JUSTICE KAGAN But then you take Justice
Alitos hypothetical which is a product where theres a
single product that is accounting for 90 percent of the
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time and effort and whatever the third thing you
mentioned was
MR TRIPP I think in -- in -- in the one
is never enough (f)(2) was just a complete answer to
that And if Congress was going to draft a special rule
about the supply of an individual super important
component you would have expected to see it in (f)(2)
and its just not there
CHIEF JUSTICE ROBERTS Thank you counsel
Mr Waxman
ORAL ARGUMENT OF SETH P WAXMAN
ON BEHALF OF THE RESPONDENT
MR WAXMAN Mr Chief Justice and may it
please the Court
I think its extremely important to
understand how fundamentally the Petitioners and the
government misapprehend the nature of the harm that
Congress addressed in 271 as enacted When the
Deepsouth solution was proposed by Senator Mathias it
precluded the supply with no active inducement
requirement the supply of the material components of a
combination that if combined in the United States would
infringe
In the 1984 hearing thats discussed at page
29 of our brief the United States -- the commissioner
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of patents came in and testified that the United States
objected to that interpretation They objected to the
topdown -- you know not -- not totally all and
proposed instead that Senator Mathias amend his
legislation to preclude what in essence is prohibited
domestically in 271(c) that is contributory
infringement That is the supply of a single specially
designed part where there are no substantial
non-infringing uses
That in and of itself shows you how far --
and that is in fact 271(f)(2) And that shows you how
far from this all or substantially all paradigm
Congress was aiming
Now Senator Mathiass response right
there -- and again we discuss it at page 29 -- was
okay I understand that But what about he said the
situation of the quote exporter who sends specific
instructions on how to manufacture a product which would
infringe a US patent notwithstanding the use of a
staple product or products
And Commissioner Mossinghoffs response was
gee I hadnt thought of that That would be the analog
to 271(b) That is the induced infringement requirement
which makes one liable as an infringer if you actively
induce infringement by another and --
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CHIEF JUSTICE ROBERTS Youre -- but
youre -- youre beginning with a dialogue at a Senate
hearing on the bill thats pretty weak even in the
legislative history hierarchy but I dont think youve
mentioned the actual language of the statute yet
MR WAXMAN Well that -- thank you
Mr Chief Justice And Im not relying on the
legislative history alone This is just one example
in --
JUSTICE BREYER Well how does it help you
Because I -- its very hard for me to believe that
Senator Mathias really wanted to interpret American
patent law so that it runs the world when weve entered
into a treaty which says British patent law runs
Britain French France and so forth I mean is there
something in this history which says no no Senator
Mathias had a different view he -- he wanted whenever
you send any component abroad thats in a patent
suddenly American law governs it
MR WAXMAN So Justice Breyer before I go
back to the history Ill take the Chief Justices
admonition and -- and -- and focus on the language
I mentioned the history Mr Chief Justice
only because its rare that an exchange in the
legislative history translates so directly to the
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language of the statute as a result of that exchange
which were not relying on as interpretive authority
Senator Mathias did exactly what the United States
suggested He -- he scrapped the original -- the
material components and came back with what is now
271(f)(1) and (f)(2)
(f)(1) modeled on 271(b) precludes active
inducement in the United States and 271(f)(2) precludes
following on 271(c)
CHIEF JUSTICE ROBERTS Well I know But I
mean you know you know the objection I dont -- I
dont know how many of the people voting on the bill
went back and read the Senate hearing
I understand the argument when youre
talking about something in the Senate Report or the
House Report at a fairly high level of connection to the
statute But when youre wading into the particular --
the dialogues at a particular hearing in one House --
one committee of one House of the Congress thats a
real stretch
MR WAXMAN Okay Let me -- let me -- let
me put aside that exchange The -- the -- in fact the
report does acknowledge what is obvious from the face of
the statute and which I believe -- and this Court
recognized in Microsoft v ATampT which is the 271
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provisions were modeled after induced infringement under
271(b) and contributory infringement under 271(c) And
-- and --
JUSTICE ALITO What about the -- what about
the text of the -- of the statute It doesnt say a
substantial portion of the patented invention It says
a substantial portion of the components of -- of the
patented invention
So if I were to -- you know if I were to
ask what is a substantial portion of the pages of your
brief I think someone would think thats a quantitative
determination and -- and would not think that well you
know I think pages 12 to 16 of your brief are
particularly important so that would be a substantial
portion of the -- of the pages of your brief
MR WAXMAN So I -- let me go first to
the -- to the question about the use of the word
components rather than invention and then address
your -- your question on the substantial number of
pages
As this Court explained in Microsoft
v ATampT the use of the word components is the -- is
Congresss indication that the combinations that are
precluded are tangible or physical combinations not
method patents or unembodied software Thats how you
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know what the scope of the combination is
And if Congress had said you know to
export one or more rather than a substantial portion
you would still use the plural because the plural is
necessary to accommodate the instance in which it will
in fact commonly be more than one
Now in your hypothetical if youre talking
about a substantial portion of units that are
indistinguishable from each other like pages of the
brief then I concede that the more natural reading is a
quantitative one But if you look at how substantial
is used in the relevant provisions the provisions of
the patent code that my friend on the other side is
averting to that is (f)(2) where substantial
non-infringing uses is plainly at least partly
qualitative or as they say the Warner-Jenkinson the
doctrine of equivalence case where equivalency turns on
substantiality of functions and methods and uses it is
also qualitative our argument is that again we agree
with the United States whether the extent to which
substantial is qualitative or quantitative depends on
the context
And so my only point Mr Chief Justice
just so that Im not misunderstood here is Congress --
when Congress rather than what it started to do which
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was to count down -- enact something that counted down
from all the components it instead scrapped it at the
United States suggestion and started from the ground up
from contributory infringement which is just one
component specially designed and active inducement
which doesnt require the supply of any components
Now in this instance and this goes I
think to Justice Breyers question about
extraterritoriality Congress was very careful -- of
course as this Court recognized in Microsoft there are
extraterritorial implications because it concerns
exporting things for something to be done in commerce
overseas But Congress was very very careful to make
the conduct that the provision looks at domestic only
It is -- you have to actively induce from the United
States an active inducement this Court explained in the
Grokster case means active steps to encourage like
advertising or providing instructions You have to
support --
JUSTICE GINSBURG What do you do -- what do
you do with the word all I take it your argument
would be easier if that word were not in the statute
MR WAXMAN I dont -- I dont -- Im
not -- I dont -- I dont agree that our argument would
be easier All you know has the same implications one
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way or the other whether you call substantial
quantitative or qualitative Clearly Congress was
aiming at less than all
But its a commonplace for -- for
legislatures for completeness sake to say all or fewer
than all or all or some And Justice Breyer I do
want to correct one thing You -- you inadvertently
kept saying this is all or substantially all Its not
all or substantially all Its all or a substantial
portion And as we point out in I believe page 35 of
our brief there are -- it is a commonplace locution in
State statutes and probably Federal statutes to use all
or substantially all which is more clearly
quantitative And the State statutes these are often
corporate law statutes that talk about the sale or
alienation of all or substantially all of the assets
In that instance the stake -- the cases we
cited and many others give substantially all a
quantitative as well as a qualitative interpretation
JUSTICE BREYER Is it against the law
Which I dont know Is it against the law for a
patentholder on patent X which has 19 ingredients to
send one commonplace ingredient over to England and say
you know I -- I dont mind Here -- here is what my
patents on here but there is no British patent And I
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would love you to make this and sell it in Britain Is
that against American law
MR WAXMAN It is not for two reasons
One what -- what you have to show under 271(f) is the
act of active inducement that is --
JUSTICE BREYER What -- what he does is
just as I said You know I have a great invention in
America Its patented
MR WAXMAN Okay I got it
JUSTICE BREYER In England its not
patented And what I really -- I see no reason why you
cannot make my thing over there and sell it over there
And here by the way -- its not mine you know Its
Mr Smiths my competitors And -- and here by the
way is the patent You see what it is and go ahead
Sell it in England Its not patented there Can you
not do that Is that illegal
MR WAXMAN So there you would ask the
question whether the component or two components --
JUSTICE BREYER If we leave the component
out of it There are no components What he does is he
sends him a list
MR WAXMAN Okay That is --
JUSTICE BREYER Is that illegal
MR WAXMAN -- not illegal because in
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addition to active inducement you also have to supply a
substantial portion of the component
JUSTICE BREYER Exactly
MR WAXMAN Now after that --
JUSTICE BREYER So then the question
becomes one of what limits Congress wanted to put in an
area where it isnt illegal Now go ahead with your
argument because what theyre saying --
MR WAXMAN So if the --
JUSTICE BREYER Yeah Yeah
MR WAXMAN Sorry
If the component is -- let me use two
examples One Ill adopt Justice Alitos hypothetical
Lets assume that you have a patented pharmaceutical a
tablet that you know remediates a disease It has --
as is commonplace in these combinations it has one
active ingredient and it has five inert ingredients
that are as easy to pick up as you can imagine
The thing that is exported -- the -- the --
the factory overseas which by the way is never liable
under the statute because the statute only applies to
conduct in the United States they -- theyre happy to
go down to their local warehouse and get the -- the five
inert ingredients
But the -- the -- the molecule that does all
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the work they import from the United States
Now my friends on the other side would say
and I believe Mr Tripp actually did say if that
molecule has no non-infringing uses its illegal But
if its such a great molecule that it actually has
another non-infringing use say it also powers the
injectable form of the pharmaceutical which is not
patented that what Congress intended to do was leave
this giant doughnut hole in the rule between the active
inducement of a commodity that is non-bespoke
component
You have to -- you know theres no
liability at all You have to supply all or nearly all
of those inert components or you have to show that you
know there in fact is a patent on the injectable
form
Or take also the example that was at issue
in this Courts decision in Quanta Computer Justice
Thomas explained for the Court that that was a case that
involved the patent exhaustion doctrine where Intel was
supplying a very sophisticated microchip microprocessor
that was used by Quanta Computer in a computer that had
you know gazillion other components
And the question was whether Intels sale of
the microprocessor to LGE which then sold it to Quanta
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exhausted the patent And what this Court said is
well it didnt exhaust the patent on the combination
because obviously its only one or two components
But because that microchip -- that
microprocessor embodied the -- what it said was the
inventive aspect of the computer as a whole we are
going to take account of that and hold that patent
exhaustion applies And that would apply not only to my
pharmaceutical example or Justice Alitos you know one
super important component it would apply to a more --
you know the Quanta example where there may be -- say
there are 20 components but three of them constitute
the inventive aspect
This -- the language is capacious enough and
can be read in a commonsense way to make clear that that
is what Congress intended to address in (f)(1) by
enacting -- provided there is active encouragement for
the combination by enacting the analog the -- the (f)
analog to what is active inducement under (b)
JUSTICE GINSBURG So how do you decide --
here there are five
MR WAXMAN Yeah
JUSTICE GINSBURG And only one is
manufactured in the United States
MR WAXMAN So --
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JUSTICE GINSBURG Under your test where
there are five and lets assume that each one is
necessary to the operation of the patented device how
do you decide if one is substantial one out of five
MR WAXMAN I -- Im going to answer your
question but first of all let me simply correct a
couple of statements by my friend I think in response
to your earlier question Justice Ginsburg
The evidence in this case was that as to
300-plus million of the 700 million in sales two
components were supplied There was a -- there was a
concession at trial that both primers and the Taq
polymerase were supplied for almost half of the kits
Second of all Taq polymerase
notwithstanding my friends reference to what he found
on the Internet the testimony at trial is that the Taq
polymerase that is necessary to make these STR kits
sufficiently reliable to be commercially salable was --
and there was testimony about this at trial -- was a
form of very particular Taq polymerase made by Roche
called AmpliGold Plus which is a particular form and
was required and the testimony at trial was was
manufactured by Roche Promega and Life only in the
United States This is not your Amazoncom Taq thats
now available
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Now as to your question Justice Ginsburg
the question of whether in this case whether it was
stipulated -- it was conceded there were five
components although I must say Im not sure thats
right that of the five components one or two were
exported
And as -- and the question is how do you
know whether that one or two is sufficient That was
addressed as a factual question by the jury and --
JUSTICE GINSBURG And what were the
instructions
MR WAXMAN Excuse me
JUSTICE GINSBURG How -- how in the world
would a jury go about deciding that
MR WAXMAN Well its interesting in this
case because for other reasons Life Technologies at
other points of the trial wanted to emphasize just how
important and unique this form of Taq was It didnt
actually argue to the jury that it wasnt a substantial
portion Our lawyers argued in their -- in their
initial closing and on rebuttal look these kits all
had Taq polymerase That is a substantial component
There was no request that the jury be
instructed as to how you determine what is or isnt
substantial and the way the Federal Circuit -- the
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question for the Federal Circuit was you know is one
sufficient or is two sufficient
JUSTICE SOTOMAYOR Lets assume the --
MR WAXMAN If I could just finish my
sentence and then Ill --
JUSTICE SOTOMAYOR Sure
MR WAXMAN The Federal Circuit dealt with
this as a substantial evidence question They werent
holding that one is sufficient in this case They asked
whether there was sufficient evidence to go to the jury
and they concluded that the answer was yes because all
of the testimony -- and there were days of testimony
about how polymerase works and the polymerase chain
reaction All of the testimony from our witnesses and
their witnesses emphasized just how important Taq
polymerase was So I think its substantial --
CHIEF JUSTICE ROBERTS I think youve
finished -- I think youve finished your sentence
So --
(Laughter)
MR WAXMAN Thank you very much
Justice Sotomayor
JUSTICE SOTOMAYOR It seems to me that what
you -- you appear to be saying is still not answering
your adversarys position
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If there are as I understood the expert
testimony from the briefing -- and I could be wrong and
youll correct me on that -- but assume my hypothetical
that there are three substantial components in this
invention How is one a substantial number of those
three substantial ones Because unless you can explain
that I dont know how to give meaning to all or
substantially all the components
And -- and I do find the governments
argument that its hard to say that substantial means
just something thats critical to the invention Every
step is critical to an invention You take out the
step the invention doesnt work
MR WAXMAN So its not part of our
argument and we dont think its a fair reading of the
Federal Circuits decision that says look if the
thing wont work without a component its a substantial
portion of the component That is a caricature of what
the Court decided
The Court as I said was engaging in
substantial -- deferential substantial evidence review
It recounted the fact that both their witnesses and our
witnesses underscored how important Taq was It didnt
catalogue the pages and pages of testimony explaining
why thats the case
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If youre asking me the hypothetical
question if all the jury heard was -- and heard -- the
jury heard nothing more than there are five components
and three are important would that be sufficient for a
jury to include -- to conclude that one was a
substantial component I wouldnt say so
But thats a caricature of what actually
happened in an eight-day trial that was very much
focused on Taq polymerase and the particular form of Taq
that was supplied here and so this Court could if this
Court agrees with us that there may be circumstances --
maybe its the Quanta example or maybe its Justice
Alitos example -- in which one component constitutes
a -- could constitute a substantial portion and
therefore liability would apply if there were conduct
that amounted to active inducement this Court could
then say okay we are going to roll up our sleeves and
we are going to read the trial transcript and we are
going to look at what the evidence was in order to
determine whether on the case as it was tried here a
reasonable juror could find that Taq polymerase was that
important
JUSTICE ALITO Well in order to do that
it would be necessary to know what a substantial
portion of the components means
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So what would you tell a jury that means
MR WAXMAN So I would tell a jury you
know following the dictionary definitions that
substantial means considerable in importance andor
amount And then you know the jury will -- and you
may consider you know whatever factors are introduced
in the case just as when -- as this Court has
explained when juries have to decide things like just
adverting to your opinion announced today what is
materiality
In Basic v Levinson this Court rejected
the advocacy that youve got to tell the jury a lot of
primary conduct depends on what materiality means and
what this Court said is the contours of that will be
explicated based on the facts of the case and case law
as it develops And in the patent context this Court
has been -- I wouldnt say single-minded but very
active in making -- in rejecting formulations that you
know help the jury determine what is obvious in light
of prior art That was KSR What is equivalent --
substantial equivalent under the doctrine of equivalence
in Warner-Jenkinson
These are all instances in which this Court
said the jury is given the standard and it then applies
the facts and circumstances to determine its met just
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as it does in negligence cases and in criminal law cases
and many other contexts in which primary conduct is
being adjusted
Here the -- the -- this parade of horribles
that gee anybody who supplies a component from the
United States could be liable if they are in the supply
chain is -- is manifestly incorrect
They have to -- they have to number one
know that there is a patent They have to know that the
product is going to be combined with others They have
to know that the combination if practiced in the United
States would infringe
JUSTICE KENNEDY Do they have to figure --
MR WAXMAN They have to go beyond that and
actively encourage send instructions or blueprints or
something in order to do it and a jury properly
instructed based on the evidence has to ascertain
gee this really is a substantial portion
JUSTICE KENNEDY Well that -- that --
MR WAXMAN This is the molecule
JUSTICE KENNEDY That -- that -- that
sounds to me much more like (f)(2) than (f)(1) but
Ill -- Ill -- Ill look at that
The -- the -- the brief by Agilent
Technologies was instructive for me as to how modern
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supply chains work They say its very complex They
ship out hundreds of different things And that seems
to me to give some help to the Petitioner because it
shows that a quantitative test is simply a good baseline
to begin with and the more egregious cases it seems to
me are under (f)(2) anyway
If we have -- if we can think of horror
stories they are mostly covered by (f)(2) arent they
MR WAXMAN I -- I dont think so Justice
Kennedy I -- I -- I guess Id make two points with
respect to the supply chain
The liability in this -- this is -- this is
a provision modeled on 271(b) It also includes the
requirement of the domestic supply of a portion of the
components But the sauce here where the rubber meets
the road is that the -- the -- the tortious conduct is
the active -- active inducement and somebody who was
simply responding to an order for supplies is in no way
at risk in this case
The reason that (f)(2) doesnt really solve
the problem is again I think pointed out by Justice
Alitos question You can have a molecule that has --
that does all the therapeutic work in the world and you
get -- and it is protected against circumvention only if
it has no substantial non-infringing uses
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Many of the most important innovative
inventive components actually are terrific because they
have two uses In my hypothetical it has a use for an
injectable form of the drug which is not patented It
is not reasonable to assume that the Congress that -- I
was going to make a reference to the exchange in the
legislative history but the Congress --
(Laughter)
MR WAXMAN -- that responded to the
governments suggestion like lets just have (f)(2)
and said well we need -- we need (f)(1) too That
is we -- we need the analog not just to contributory
infringement but to induced infringement that they
would have seen these two components as so far apart
that their gears never mesh when as this Court has
said it is a commonplace that there is overlap between
270 -- between contributory and induced infringement
Its not a complete --
JUSTICE GINSBURG If you need -- you need
(f)(1) to -- to -- to overturn Deepsouth
MR WAXMAN Oh no no not at all Not at
all
What Deepsouth said is the patent is on the
combination If the combination occurs overseas there
is no infringement Theres no 271(a) liability abroad
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Congress didnt touch that
What it said was okay 271(a) is direct
infringement 271(b) and (c) are what we call secondary
infringement It makes somebody liable even if they
werent infringing and because the combination overseas
doesnt infringe the US patent we are going to enact
these two provisions that address only US conduct
The -- the tort of 271(f)(1) --
JUSTICE BREYER Thats US conduct but
you read the brief of the German companies and they
said its a fairly common thing Weve been making
product X forever and now we invest in an American
company and lo and behold we just want to import some
wood You know just some wood and -- and -- and we
cant do it because well be had up under this because
wood is an important -- some kind of -- is -- 30 percent
of some kind of a patented thing that weve been making
for years
MR WAXMAN Justice Breyer --
JUSTICE BREYER So they are worried about
it in other words
MR WAXMAN I -- I think that I -- I -- I
dont think that their worry is validated by a correct
understanding of the statute Their -- their concern
makes no mention of the requirement that the US
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manufacturer act -- not send wood but send a
substantial portion of the components which wouldnt be
wood or saline solution or something like that and
importantly has to take the additional steps of
actively inducing
And in Grokster this Court when it was
underscoring what active inducement means said
quote Showing that the infringement was encouraged
overcomes the laws reluctance to find liability when a
defendant merely sells a commercial product suitable for
some unlawful use
And that is -- thats the point The point
here is that were talking about conduct that occurs
only in the United States that must require -- that must
include the act of active inducement specific intent
and knowledge and a component or components that
constitute a substantial portion of the components of
the invention And --
JUSTICE SOTOMAYOR Mr Waxman --
MR WAXMAN -- the notion -- Im --
JUSTICE SOTOMAYOR -- if Life Technologies
sold this polymer to another company that it hadnt had
a relationship with would that other company be
considered to be infringing
MR WAXMAN No No I mean unless --
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when you say Life -- in other words if --
JUSTICE SOTOMAYOR This company --
MR WAXMAN -- from the United States --
JUSTICE SOTOMAYOR Any other company but
Life Technologies could have taken this expired patent
in England and brought all of these -- this component
this polymer from the United States and it wouldnt be
liable What would --
MR WAXMAN The importation of the -- may I
finish
CHIEF JUSTICE ROBERTS Sure
MR WAXMAN The importation of the polymer
is not reached A foreign -- a foreign assembler who
imports something from the United States is not touched
by a provision that -- that looks at and addresses only
US conduct
CHIEF JUSTICE ROBERTS Thank you counsel
Four minutes Mr Phillips
REBUTTAL ARGUMENT OF CARTER G PHILLIPS
ON BEHALF OF THE PETITIONERS
MR PHILLIPS Thank you Mr Chief Justice
I dont intend to use all four minutes
First of all what I want to respond to is
you know my friend has spent a lot of time talking
about active inducement and the mens rea elements of
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271 And I understand that and thats certainly a
significant protection
But Congress did not take 271(b) and (c) and
simply apply them in the (f)(1) context or the (f)(2)
context What it said is there has to be a substantial
portion all or a substantial portion And thats a
fundamentally significant independent requirement that
cannot be satisfied in a situation where youre talking
about a single component
Justice Sotomayor I just wanted to respond
to your -- you know the three that are major its
important to recognize that two of those are clearly not
coming from the United States So I go back to the
point you made later which is if there are three major
components how can one of them be the substantial one
I think the answer is it cannot be under those
circumstances
Justice Kennedy you asked the question
about you know what are we supposed to do in these
circumstances as -- you know with supply chains And
the answer is -- you know the answer that my colleague
gave you was one that basically says this is a recipe
for the trolls of the world to go and chase down every
supply opportunity And do what Send them notice that
what youre sending is a staple article thats a major
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component of a piece thats in the patent and that if
you send -- keep sending that youre going to violate
that patent and were going to come after you
And whats that going to do Thats going
to disrupt the supply chain in the United States and
the ultimate effect is going to be twofold Either
purchasers outside the US will stop purchasing from
inside the US or US manufacturers will go offshore
And the one thing we know that 271(f) was never intended
to do was to accomplish that kind of an -- that kind of
an impact -- negative impact on the US economy
I urge the Court to reinstate the -- the
judgment as a matter of law that the District Court
entered
Thank you Your Honors
CHIEF JUSTICE ROBERTS Thank you counsel
The case is submitted
(Whereupon at 1114 am the case in the
above-entitled matter was submitted)
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OOffffiicciiaall -- SSuubbjjeecctt ttoo FFiinnaall RReevviieeww
55
A 4016 507 465 225912 33 back 45 1018
am 115 32 addressed 2918 amounted 4516 37 131424 171 3121
5418 429 AmpliGold 141118 1817 32513 5313
ability 614 addresses 5215 4121 2314 2911 balance 1111
above-entitled adjusted 473 analog 3022 3214 3419 1814
113 5419 admonition 401819 4912 352124 388 ball 2023 248
abroad 205 3122 analysis 1721 441015 5219 based 4615
2820 3118 adopt 1310 andor 464 arrangement 4717
4925 3813 announced 469 63 baseline 484
absolutely 416 adopted 1017 answer 78 94 arrangements basic 203 2818
510 72 122 adversarys 1917 2221 66 4611
abstract 1711 4325 241214 2617 array 288 basically 5322
accepted 723 adverting 469 275 294 415 art 4620 basis 67 725
accommodate advertising 4311 531621 article 418 52 beginning 312
345 3518 5321 615 1425 behalf 11723
accomplish advocacy 4612 answering 4324 5325 241114 38
5410 Agilent 4724 anti-circumve articles 81 2912 5220
account 407 agree 1069 202 242 articulate 234 behold 5013
accounting 119 127 2720 2719 believe 3111
2825 3419 3524 anybody 475 ascertain 4717 3224 3610
acknowledge agreed 720 anyway 486 aside 3222 393
3223 agrees 4511 apart 4914 asked 439 best 524 66
act 318 375 ahead 3715 apologize 1123 5318 2610
51115 387 appear 4324 asking 1310 better 63 1020
acted 322 aiming 3013 APPEARAN 182224 194 2125 257
active 2920 363 116 191223 451 beyond 2022
327 35516 AL 14 applicable 176 aspect 277 406 278 4714
3517 375 alienation 3616 application 178 4013 bill 313 3212
38117 399 ALITO 81218 2714 assemble 319 black 2123
401719 4516 821 91 1514 applies 121121 assembler 5213 blueprints 4715
4618 481717 1520 334 3821 408 assets 3616 borders 725
51715 5225 4523 4624 Assistant 119 bought 721
actively 3024 Alitos 2824 apply 121118 assume 713 breadth 1911
3515 4715 3813 409 40810 4515 2219 3814 Breyer 131423
515 4513 4822 534 412 433 443 141714 172
activities 317 allow 1012 125 approach 2124 495 2551724
activity 616 76 Amazoncom 2420 253 assuming 2011 263 311020
actual 315 4124 approaching ATampT 3225 36620 376
adapted 811 ambiguous 107 1125 3322 37102024
1118 1522 amend 304 approximating authority 322 383510 509
168 America 378 816 available 5711 501920
add 2613 American 1321 area 2320 387 4125 Breyers 358
addition 2614 311219 372 areas 1213 averting 3414 brief 201024
381 5012 argue 4219 avoiding 910 2422 2925
additional 514 address 3318
amicus 121 27 1818 amount 2623
argued 208 4220 argument 114
B b 4019
33111315 3410 3611 4724 5010
AAllddeerrssoonn RReeppoorrttiinngg CCoommppaannyy
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briefing 442 cases 1213 251 clauses 169 412171925 1614 171618 bright 2017 3617 4711 clear 69 154 516 878 172324 181 Britain 3115 485 1719 2019 1825 3910 1811 1969 371 catalogue 4424 2314 2714 common 2417 19152225 British 1320 categorically 4015 5011 211314 3114 3625 613 1810 clearing 2710 commonly 346 2211141620 broad 1912 cause 1316 clearly 424 84 commonplace 2391718 broadly 717 century 722 112 191 3641123 2421 2618 brought 526 certainly 1415 2212 36213 3816 4916 271922 buffer 22711 531 5312 commonsense 2921 325 2619 chain 1423 clerks 282 4015 3371822 bulk 226 4313 477 close 816 99 companies 3526 3719 buy 41415 4811 545 1715 251518 5010 3721 391423 1512 chains 481 2722 company 62 40312 4111
5320 closer 1312 101 5013 4245 4448 C challenging 226 2223 512223 522 45325 4815
c 21 31 503 chase 5323 closing 4221 524 49214 512 533 cheaper 2620 code 3413 comparative 511617 5315 call 2315 361 Chief 339 127 colleague 5321 1924 237 compromising 503 1222 138 combination compare 313 2322 called 412 181520 215 2424 2922 compelled 1712 computer 3918 4121 21812 2310 341 40218 competitors 392222 406 candidly 75 274 29913 4711 492424 3714 concede 413 135 31172123 505 complete 294 3410 capable 2423 3210 3423 combinations 4918 conceded 423 capacious 4014 4317 521117 332324 3816 completeness concern 2120 care 236 5221 5416 combined 2922 365 2719 5024 careful 35913 chooses 1014 4710 complex 481 concerns 193 caricature 4418 Circuit 84 come 45 1920 complicated 1910 3511 457 1017 1717 543 2311 concession carries 2325 1922 4225 comes 1613 component 514 4112 CARTER 117 4317 comfortable 519 124 134 conclude 455 2313 37 Circuits 1419 141011 131119 167 concluded 4311 5219 1911 4416 coming 1111 161114 1825 conclusion case 341213 circumstance 1518 5313 1918 2169 1712 315161619 2210 251213 commerce 419 224 297 conduct 3514 323 44 65 circumstances 725 82 1425 3118 355 3822 4515 73 1111 1014 4511 3512 371920 382 4613 472 1216 136 4625 531720 commercial 3812 3911 4816 5079 188 2223 circumvention 5110 4010 4222 5113 5216 263 3417 4824 commercially 441718 456 confusion 2711 3517 3919 cited 3618 4118 4513 475 Congress 322 419 42216 claim 89 1822 commissioner 5116 526 417 52 6913 439 4425 18345 2415 2925 3021 539 541 981517 4520 46715 241725 committee 3219 components 43 1012141820 4615 4819 claims 18710 commodities 86 819 10325 153 162 541718 clause 1210 commodity 410 11422 159 1713 29518
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3013 3219 costs 2711 deal 721 276 3117 easy 18912 3422425 counsel 1815 dealt 437 482 3818 35913 362 299 5217 December 111 differently economy 5411 386 398 5416 decide 4020 1315 2116 effect 156 546 4016 4957 count 351 414 468 difficult 225 effort 2126 501 533 counted 351 decided 4419 252 231920 276 Congresss countless 287 deciding 4214 dime 228 291 3323 countries 714 decision 3918 diminish 247 egregious 485 connection 1317 4416 direct 502 eight-day 458 3216 country 319 declare 53 direction 924 either 925 109 consider 466 71220 Deepsouth 315 10511 115516 546 considerable couple 417 916 136 directly 3125 elements 181 464 course 3510 2822 2919 disadvantage 24162024 consideration court 1114 492023 610 5225 2110 31020 123 defendant 5110 discuss 3015 elements 2416 considerations 122324 133 deferential discussed 2924 embodied 405 2614 136 1725 4421 disease 3815 embraced 1416 considered 18212224 definitions 463 disrupt 545 emphasize 4217 5124 194 2020 Department District 5413 emphasized consistently 248 2914 120 doctrine 3417 4315 723 3224 3321 depends 2318 3920 4621 enact 351 506 constitute 89 351016 3919 285 3421 doing 910 2721 enacted 418 2012 4012 401 441920 4613 dollars 42 202 2918 4514 5117 45101116 derived 2424 domestic 3514 enacting 4017 constitutes 467111416 designed 1719 4814 4018 4513 4623 4915 2818 308 domestically encourage 3517 construction 516 541213 355 306 4715 1311 185 Courts 3918 detail 2522 doughnut 399 encouraged 518 contact 48 courts 1021 detailed 2519 dozen 228 encouragement context 313 covered 488 details 256 dozens 42121 4017 135 1418 create 1014 determination draft 295 enforced 625 28616 3422 167 2415 3312 drawing 2017 enforcements 4616 5345 creates 1613 determinations drive 92325 715 contexts 472 creating 1617 2416 driven 105 engaging 4420 contours 4614 creation 43 determine 4224 drives 1011 England 4110 contributory criminal 471 4520 461925 1312 522 3623 306 332 354 critical 123 deveiner 316 drop 229 371016 526 491217 201 441112 develops 4616 dropped 1718 enormous 325 Convention 722 curiae 121 27 device 151418 drug 494 2623 core 2115 1818 1519 413 ensure 724 corporate 3615 devise 183 E entered 3113 Corporation 14 D dialogue 312 E 21 311 5414 17 355 D 119 26 31 dialogues 3218 earlier 418 entire 1423 correct 367 1817 dictated 1114 easier 352225 248 416 443 DC 1101720 dictionary 463 easiest 186 entirely 286 5023 123 different 1621 easily 2215 entitled 126 Costco 415 days 4312 174 2617 2620 envision 111
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