Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

The big news in patent law this week is the Supreme Court oral argument in Microsoft v. AT&T.  Microsoft exports software from the United States to various countries.  The software code alone cannot infringe AT&T's patents until it is combined with the hardware, which only occurs after the software has left the United States.  So, exporting the software is not an act of infringement.  The issue, therefore, is whether, pursuant to 35 U.S.C. Section 271(f), exporting the software constitutes:

suppl[y] . . . from the United States . . . [of] all or a substantial portion of the components of a patented invention . . . in such manner as to actively induce the combination of such components outside of the United States,” as well as the “suppl[y] . . . from the United States [of] any component of a patented invention that is especially made or especially adapted for use in the invention.

For more on the issues, you can find the briefs at Patently-O. 

The case has received substantial media attention both because it was granted cert and because the case could have effects far beyond the international exportation of software.  The oral arguments were interesting (transcript here) and both the main stream media and blogs are frantically reading the tea leaves.

 

 

My favorite oral argument quotes both came from Justice Scalia:

JUSTICE SCALIA:  Mr. Olson, before you get into the merits I have a question, a preliminary question. I understand from AT&T's brief that there has been a stipulation entered into between the parties after the judgment below which preserved Microsoft's right to appeal and prescribed different dollar amounts that Microsoft must pay AT&T depending on the outcome of the appeal. Does that raise any, any muteness problem? Can you sort of wager on the outcome of an appeal that way?

                                                               * * *

JUSTICE SCALIA:  I hope we can continue calling it the golden disk. It has a certain Scheherazade quality that really adds a lot of interest to this case.

(Laughter.)

For more on the oral arguments and analysis of the case generally, check out:

Patently-O -- Discussion of the oral argument and quotes from the transcript.

The BLT (Blog of the Legal Times)* -- Coverage of Solicitor General Ted Olson accidentally referring to Justice Stevens (a former Chicagoan) as Justice Scalia and Chief Justice Roberts recusing himself based upon his stock holdings. 

The WSJ Law Blog -- Focusing on Justice Breyer's statement to AT&T:  "I don’t see how to decide for you.”

The WSJ print story (subscription required) -- A broader overview of the story, including a discussion of the fact that the Supreme Court has never held that software is patentable.

271 Patent Blog -- Focusing on the "metaphysical" aspects of the case with extensive quotes from the oral argument.

IP Kat -- A pre-argument case detailing the parties' arguments.

*  This is a new blog that is well worth checking out and adding to your RSS feeds.

 

 

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Last Wednesday the Chicago IP Alliance held its second annual Chicago IP Day at Loyola.  It was, no surprise, an excellent program providing an information-packed day.  I do not have the time to summarize all of the presentations, but I will give some highlights.  George McAndrews, McAndrews, Held & Malloy, gave a very interesting presentation outlining his views on the Supreme Court's recent eBay v. MercExchange opinion requiring the use of the standard permanent injunction test to determine whether a permanent injunction should be granted after a patent infringement judgment.  Essentially, he argued that the Supreme Court's ruling contradicts the constitutional grant of a limited monopoly.  His presentation led to some spirited debate at various tables during the excellent lunch in Loyola's beautiful new conference room atop the law school.

The day's keynote presentation was by the USPTO's Deputy General Counsel and Solicitor General John Whealan.  John's presentation lived up to my advance billing.  He gave his take on the Supreme Court's recently increased interest in the patent laws.  While I cannot do all of his remarks justice, he outlined three instances in which he felt the Supreme Court was taking patent appeals.  First, circuit splits -- splits between the Federal Circuit  case law and the law of a regional circuit pre-Federal Circuit.  Second, and maybe the most obvious, splits between different Federal Circuit panels.  And third, on Cert. View of the Solicitor General ("CVSG").  CVSG is a process initiated by the Court, when they ask the Solicitor General for its view on whether the Court should grant cert.  The Solicitor General works with the relevant governmental entity, the USPTO in the case of patents, and hears arguments from each side of the case before sending the Supreme Court its recommendation.  Whealan stated that CVSG had been used once for a patent issue prior to 2000 and 17 times since then.  Once again, if you get the chance to hear Whealan speak, do not pass it up.  You always learn something and he is always an entertaining speaker.

Great job to the folks at Loyola and Kent for putting together an excellent and educational day.

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