At & T Corp. v. Microsoft Corporation

it a Supplemental but filed Notice of Re- ed States Appeals Court of for the Fifth on moval October that included a Circuit. jurisdiction claim removal on based TRANSFERRED.

U.S.C. 1330. The distl'ict court found jurisdiction original under NTT’s Notice of

Removal and dismissed NTT’s motion IV. COSTS Supplemental file its Notice of Removal on party Each shall bear own its costs. grounds untimely that was and NTT had failed to why, show cause as to 1441(d).

required by 28 U.S.C. NTT

argues Supplemental that its Notice Re-

moval untimely was not because NTT had properly

not been served Hague under the

Convention thirty and therefore day period

removal had not yet begun to run. Murphy See Pipe Bros. v. Michetti String- CORP., AT Plaintiff-Appellee, & T Inc., ing, 344, 350-51, 526 U.S. (1999) 143 L.Ed.2d (holding process “service of is the official trigger CORPORATION, MICROSOFT responsive by action an individual or Defendant-Appellant. defendant”). entity named NTT initially raised this Supplemental issue its No- No. 04-1285. Removal, tice of but pursue did not it after jurisdiction district court found United States Court Appeals, based original Notice of Removal. Federal Circuit. presents NTT argument colorable July 13, 2005. its Supplemental Notice of Removal was timely and preserved therefore its claim to jurisdiction

removal under 28 U.S.C. Accordingly, 1330. pres- because NTT

ents an jurisdictional alternative argument

capable of being heard the Fifth Cir-

cuit, isit in the justice interest of to trans-

fer appeal pursuant that court to 28

U.S.C. 1631. It will then be for the

Fifth Circuit to determine if NTT properly

raised its additional basis for ju- removal

risdiction and if it appropriate to reach

NTT’s claim for sovereign immunity.

III. CONCLUSION reasons,

For foregoing we conclude

that this court jurisdiction does not have

hear appeal. NTT’s Pursuant to 28 U.S.C. we transfer appeal to the Unit- Neal, LLP,

Stephen Cooley C. Godward California, Alto, argued plain- of Palo him on the brief were tiff-appellee. With and Nathan K. Cum- Jonathan G. Graves Reston, Virginia. Of counsel on mings, of Raster, A. AT & T was Laura brief Bedminster, Jersey. New Heist, Washburn Dale M. Woodcock LLP, Philadelphia, Pennsylvania, ar- defendant-appellant. him gued for With Bailey R. on the were David brief Lynn B. Of counsel on the brief Morreale. T. H. James were James Carter LLP, Williams, & Cromwell Sullivan York, York, An- New and Thomas New Culbert, Corporation, Microsoft drew Redmond, Washington. Vandenberg, Spark- Klarquist D.

John Portland, LLP, man, Oregon, amici Corporation, et Technology Wacom curiae al. Scherkenbach, Rich- Fish &

Frank E. Boston, Massachusetts, P.C., ardson Inc., et al. Systems, amici curiae Adobe L. Kurt Glitzen- him on the brief was With brief was Jenni- Of counsel on the stein. Bush, Diego, California. K. of San fer LOURIE, MAYER, Before RADER, Judges. Circuit filed Circuit for the court Opinion Dissenting opinion -filed Judge LOURIE. Judge RADER. by Circuit LOURIE, Judge. Circuit (“Microsoft”) ap- Corporation Microsoft judgment peals from the Dis- for the Court Southern States District York of AT & T required by trict of New favor because (“AT T”), Corp. holding & that Microsoft foreign-assem- Windows® installed on the infringement of AT was liable for & T’s computers bled had all been made abroad. 32,580 Reissue Patent under United States By stipulation, subsequently the-parties § for copies of the Win- U.S.C. converted motion in Microsoft’s limine operating system that had dows® been summary into a partial judg- motion for from a master version replicated abroad 271(f), noninfringement § ment of under . United States AT T sent from the & which the district court on the denied basis Corp. Corp., No. 01-CV-4872 v. Microsoft jurisprudence surrounding that neither the . 2004). (S.D.N.Y. 5,Mar. affirm We § legislative history nor sup- its ported reading Microsoft’s words BACKGROUND “component” “supplied.” Reasoning distribution, To facilitate international patentability that the of software was well- flagship product, supplies Microsoft established and that the statute did not limited of master versions of the number structures, “components” limit to tangible to foreign computer software Windows® court-rejected the district ar- Microsoft’s foreign manufacturers and authorized “re- gument that software could not be a “com- who, plicators,” pursuant to their licensing ponent” of a invention under Microsoft, agreements with replicate the 271(f). § copies As for made abroad from generating multiple master versions in a master version sent from the United copies of Windows® for installation on for- States, the district court ruled that such eign-assembled computers that are then copies § were not shielded from The foreign sold customers. master light of purpose the statute’s of prohibiting versions are created the United States infringement circumvention of through and are sent “golden abroad so-called exportation. parties thereafter master” disks via electronic transmis- agreed entry to the stipulated of a final sions. judgment holding Microsoft for in- hable The master versions of Windows® thus 271(f), § fringement expressly while exported incorporate speech certain co- reserving right Microsoft’s appeal that decs,1which, when on computer, installed issue. AT & alleged infringe T’s ’580 pat- appeal This jurisdic- followed. We have ent. During the course of AT & T’s suit 1295(a)(1). tion to 28 pursuant U.S.C. against patent infringement, Microsoft for Microsoft moved in limine to evi- exclude DISCUSSION dence purported liability under 35 appeal, On Microsoft argues that arising foreign U.S.C. from sales n district court in its erred determination of motion, In support Windows®. of its 271(f), (1) infringement insisting argued Microsoft that: software in- the master versions of the tangible information Windows® soft- such it could not ware that “component” exports be a abroad are (2) 271(f); “components” meaning, within the within meaning even if the argues Windows® software It also that liability under were..a “component,” “components” no actual had should copies not attach to the “supplied” been the United States as Windows® made abroad because those "speech program (Am. 1. A is a original. codec” software like the Compl. sounds signal speech ¶ that codes a 14; into a 142). more com- J.A. form, pact signal and decodes' it back into staple the invention and not a “supplied” are not article commodity States. of commerce suitable for use, noninfringing substantial where i.e., question, The first whether component such is uncombined whole “component” pat of a part, knowing component or in that such 271(f), an- ented invention under was adapted intending is so made or in the affirmative in Eolas Techs. swered that such will be combined Inc. v. 399 F.3d 1325 Microsoft outside of the United States a manner (Fed.Cir.2005), in- which issued while the that would infringe the such case, In appeal pending. stant was combination occurred within the United “[wjithout question, that we held software States, shall be liable as an infringer. qualifies eligible code alone as an invention 271(f) (2000) patenting,” “statutory and that the lan- (emphases 35 U.S.C. add- 271(f) patent- ed). not limit guage did section to patented ‘machines’ or ‘physical ed struc- briefs, In its Microsoft maintains that no ”

tures,’ very such that software could well attaches under for for- a “component” patented be eign-replicated of Windows® be- 271(f). purposes at the Id. 1339. they are not or “supplie[d] cause cause[d] to be in or from supplied then, remaining question, The is Microsoft, States.” to a for- According replicated abroad from a whether software eign-replicated copy made from a master exported master version from the United that it replicat supplied States-with the intent be version from the States United “supplied” from be deemed the actually has “manufactured” been abroad ed— 271(f). purposes United States the by encoding storage medium with question That impression, is one of first disagree Windows® We no software. which statutory answer to turns on liability attaches. an interpretation, issue of law that we interpreting statutory pro When States, de review novo. Romero United start, always, vision with the lan “[w]e (Fed.Cir.1994). 1204, 38 F.3d statute,” guage giving the words issue, 271(f), pro statute at 35 U.S.C. ordinary, contemporary, “their common that: vides meaning, Congress absent an indication (1) authority sup- without Whoever im intended them to bear some different plies supplied or be or causes to in 420, port.” v. Taylor, Williams 529 U.S. or the United States all a substantial (2000) 1479, 146 L.Ed.2d 435 portion components (internal marks and citations quotation invention, such where omitted). As the forth no statute sets in part, uncombined whole or in in such “supplied,” specific definition of the word actively manner as to the combi- induce accordingly “ordinary, look to con we such nation of outside of the temporary, meaning,” common which is United States in manner that would necessarily In context-dependent. infringe such combination case, present being is invoked States, occurred within the United shall context of software distribution. be hable as infringer. an Therefore, in to properly for us con order (2) authority sup- without Whoever the “supplie[d] strue to be eause[d] plies supplied or causes be to supplied in or from the States” any component the United States aof way requirement, must look at we especially invention that is adapted typically “supplied.” made or especially for use software is technology, essentially the nature of the Given been from the United commonly “supplying” of software involves competing States. Where there are inter- copy. example, For when a generating pretations of imposes a statute that liabili- software downloads from server on user acts, ty interpretation for certain an Internet, “supplies” the server allows attach a party when computer by to the user’s trans- acts an unlikely unrealistic manner is mitting copy. Uploading an exact a single Haggar Helvering, be correct. See v.Co. any is copy to the server sufficient allow 308 U.S. 84 L.Ed. downloaded, copies to number of exact be (1940) (“A reading literal statute] [a therefore, “supplied.” Copying, and hence which would lead to absurd is be results part parcel is of software distribution. ....”). reject avoided We therefore Mi- Accordingly, “components,” for software reading crosoft’s the act of subsumed the act We reject argument also Microsoft’s “supplying,” that sending such Devices, Inc., v. Analog copy abroad with the intent (Fed.Cir.2004), F.3d 1113 compels rever- 271(f) § replicated liability invokes for liability sal. held that foreign-made copies.2 those 271(f) § may only component exist where a Indeed, full Microsoft has taken ad opposed itself-as to instructions for manu- vantage replicable of the nature of soft facturing management the or efficiently ware to distribute Windows® oversight “suppliefd] been or —has internationally. time, At the same howev in or supplied cause[d] be from the er, 271(f) posits § Microsoft liability Pellegrini, United States.” 375 F.3d at only should attach to each disk that is case, 1118. In present what is being shipped incorporated into foreign- a supplied component, abroad is an actual 12, assembled computer. See Tr. of Dec. ie., system, operating Windows® (J.A. 359). Hearing, at 16:10-17 We for ready is on a computer installation reject theory as it fails to form an infringing apparatus instruc- —not account for the realities of software distri tions to foreign engineers software for de- appellate bution. process “[T]he is a signing coding Windows®. Pel- exercise,” Rosemount, mere academic Inc. legrini does not control this case. Instruments, Inc., v. Beckman 727 F.2d Additionally, cannot accept we Mi 1540, (Fed.Cir.1984), and we cannot suggestion by crosoft’s that software sent disregard the nature of the relevant tech electronic transmission must be treated nology practices and business underlying a 271(f) differently purposes for particular litigation. It is in inherent disks, software nature of see Tr. of software that can supply one 12, (J.A. 351), a Dec. at Hearing, disk that be 8:8-17 replicated- saving- material, as it would shipping, and amount to an storage exaltation form supplying costs—instead of separate Liability a over substance. disk copy each of the software depend to be sold does not on the medium used for abroad. All of such resulting copies exportation: merely have a disk is a container grounds 2. The disagreement dissent on a facts before us. To decide otherwise would purported statutory distinction between the emasculate for software inventions. ''supplies” term ''copying,” Obtaining such terms as foreign patents surely allevi- "replicating,” "reproducing.” law, or Whatever ate some avoidance of American but we contexts, the distinction in other we irrespective are inter- must construe our statutes preting statutory term the context of foreign patents. existence or nonexistence loophole solution to close of soft- tive physical handling that facilitates ware, pres- or liquids like much bottles law. gases. empha- As we cylinders surized 6286, H.R. Patent Law Amendments Act Eolas, §of applicability sized in (Oct. 1984, Cong. Rec. 28069 physical” to “structural or not limited

is 1984). enactment, At the time of its Eolas, at 399 F.3d components. “housekeeping- was touted in- every form of (“[E]very component of measure, pat- oriented” without which “the of section protection deserves vention system responsive ent would not be 271(f).”). Therefore, software whether challenges of a world and changing transmission sent abroad via electronic from the public would not benefit release “golden master” disk shipped abroad on However, it genius.” of creative Id. is clear for the without difference is distinction 271(f), legislative history from the 271(f) liability. Liability §of un- purposes loophole,” which was remedial “close[d] on the mode premised der is not nature, such that “should be con- exportation, rather the fact ex- but broadly purposes.” strued to effectuate its portation. Tcherepnin v. Knight, 389 U.S. interpretation “supplie[d] Our (1967). Con- 19 L.Ed.2d 564 from the cause[d] or. gress obviously intended the statute to in the States” context have an extraterritorial effect to extent Congress’s motivation for comports with exportation that the was facilitated acts It enacting is well-established States, acts at issue statute, expounding a principle “[i]n originating here from the United States provisions look to of the must ... the we similarly can be understood to be within law, object policy.” and to its whole meaning of the statute. of Boisdore, v. States Heirs U.S. supply towe hold that Microsoft’s Were (1850). How.) (8 113, 122, 12 L.Ed. 1009 by exportation of the master versions of 271(f) 1984, In enacted Congress specifically for Windows® software — ruling response Supreme to the Court’s purpose foreign replication-avoids of Deepsouth Packing Co. Laitram infringement, subverting we would be 32 L.Ed.2d 406 U.S. 271(f), a permitting remedial nature of (1972), § 271 exposed loophole by ignor- technical of statute avoidance potential infringers to avoid that allowed technology— ing in a field of the advances by manufacturing industry practices and its associated —that patented products in the United States of developed enactment of after the shipping them abroad for assem- and then It statuto- be unsound construe in the bly. explained Congressional As ry originally that was enacted to provision Record: by technology clos- encourage advances prevent copiers will [Section ] ing in a that allows the loophole, manner by avoiding supplying patents from U.S. technology thus encour- very advances patented product of a in this aged to intent. Section subvert assembly country that the of the com- so effective, 271(f), to remain must is may abroad. This ponents completed be interpreted in a manner that be therefore responds States proposal to the United to the nature technol- appropriate is in Deepsouth Supreme Court decision ogy at issue. Packing Corp., 406 v. Laitram Co. reason, Microsoft’s For this we find L.Ed.2d (1972), lock-and-key in which a sin- hypothetical, concerning legisla- the need for a

gle key master is sent abroad ther unpersuasive for mass unnecessary reso- replication, unpersuasive to be and irrele- lution of this appeal. lock-and-key

vant to this A case. assem- bly type is a of technology different CONCLUSION software, uses, with different such that its reasons, For foregoing the judgment production mode mass and consequent of the district court lia- holding Microsoft manner supply very abroad could well ble under is way be different Microsoft conve- niently hypothesizes it to be. it is While AFFIRMED. clear a software manufacturer would RADER, Judge, Circuit copies dissenting. want a spe- several million exact generated program cific software abroad today This court supply- determines that distribution, why it is unclear lock- “component” of and-key manufacturer would want several invention from the gives United States rise made, of a specific key million exact to endless in the United States point having lock-and-key as the as- products manufactured sembly to allow access control aby few entirely my eyes, abroad. To judg- keys. prefer interpretation an We disregards existing ment international by that is informed actual indus- scheme potential law with conse- try practices, hypothetical scenarios beyond a quences “parade of horribles [in] bearing no that have the technical reali- industry.” the domestic software There- invention at ties issue. fore, although agreeing may that software Finally, impassioned Microsoft’s recita- of a parade tion of a horribles that and that electronic trans- industry— befall the domestic software missions of software from the United such as the relocation States must receive manufacturing the same treatment as provides facilities an insufficient from the United States overseas— reaching disks, in I respectfully basis different result this dissent from the all, 271(f) proposition case. After enactment of foreign that manufacture of a similarly thought component could have been mere a patented product to result of jobs, in export and Congress liability of creates still the United States under provision. Moreover, enacted that possi- jobs ble loss of this country is not court, As noted by this section

justification misinterpreting a statute imposes anyone liability on who “without to permit patent infringement. More im- authority supplies ... from the United however, portantly, enough “[i]t is that ... States of patented Congress intended that the language it invention ... in such a manner as to ac- enacted applied would be as we ap- have tively induce the combination such com- plied Contractors, it.” v. Oceanic Griffin ponents outside States in Inc., 564, 576, 3245, 458 102 U.S. S.Ct. 73 manner that infringe patent (1982). ” Therefore, L.Ed.2d 973 “[t]he Today’s .... judgment turns on the remedy any dissatisfaction with the meaning of “supplies.” This pur- court results in particular cases lies with Con- ports to construe that term according to gress” and with this court. Id. “ordinary, contemporary, common We have considered Microsoft’s meaning.” ordinary other meaning “sup- arguments and they however, conclude that plies,” are ei- does not “copy- include

1373 (citing Co. v. & Dictionary United G C “reproducing” or “replicating,” ing,” —in 260, Co., 265, supply- 208 “manufacturing.” The act Merriam U.S. 28 effect (1908))); copying, 290, distinct from 52 L.Ed. 478 accord Int’l ing separate Thus, Co., manufacturing. this v. reproducing, Corp. Samsung Elecs. Rectifier expansion provides (Fed.Cir.2004); court extraterritorial F.3d under U.S. law punishing Devices, law Inc., U.S. Analog v. 375 F.3d copy- occurs abroad. While “copying” Indus., that (Fed.Cir.2004); Rotec Inc. v. Tokyo may indeed Düsseldorf Mitsubishi F.3d infringement, infringement constitute (Fed.Cir.2000); Waymark Corp. see remedy under German or must find its Sys. Corp., Porta F.3d 1367-68 law. Japanese (Fed.Cir.2001) (holding liability shipment attaches with mere product of Each manufacture from the States and act of separate and distinct constitutes presence does not consider the or absence a mas- infringement. “supplied” Microsoft abroad). occurring York, Düsseldorf, of acts disc New ter as- Tokyo. properly The district court Again expansion this extraterritorial Microsoft under damages against sessed flows from this court’s broad construction 271(a) of the master man- copy for each court “supplies.” This reasons in- into an implemented ufactured and justifies a dif- technology” “nature Similarly, York.1 fringing product New ferent, unordinary, and uncommon con- in- attaches to each section of that court struction term. this States of export dividual from the United distinguishes compo- intangible software incomplete an invention for components of tangible components on the nents assembly manufacturing As for abroad. grounds ‘supplying’ that “the of software Tokyo for the in Düsseldorf and copy.” commonly generating involves markets, Japanese those acts German contrary, copying and supplying To the Jap- under German or create separate acts with different conse- Nonetheless, court ex- anese law. this “supply- quences particularly when — extraterritorial tends cover ing” occurs in the United States and the Tokyo. This copying Düsseldorf Tokyo. occurs in Düsseldorf or expansion extraterritorial logic, supply cannot one As matter of one precedent contravenes the law inven- hundred ex- Court Supreme court and one making cop- tion without first hundred pressly rights by confines the conferred of component, regardless of wheth- ies Terri- Title 35 to the United States and its components supplied physical er the are Dowagiac Mfg. v. Minn. tories. See Co. Thus, copy- parts intangible software. Co., 641, 650, 35 Moline Plow acts, are and ing supplying and different (“The (1915) right L.Ed. give cannot rise to “supplying” one act of our law by is conferred liability multiple copying. of acts and Ter- to the United States confined 4884) today The that “the (Rev.Stat., and, proposition court’s infringe- ritories commonly of involves ‘supplying’ software right predicated of this cannot be on ment actually not dis- country.” generating copy” does wholly in a foreign acts done (c) 271(a) importing (prohibiting into the supplying & might 1. Microsoft also be liable Tokyo copies compo- patented and the master to Düsseldorf States inventions or thereof). overseas locations are sold made in those nents 35 U.S.C. back into the U.S. market. See components from to tinguish physi- supplied,” software invention but no of part of other components products cal inven- the accused ever entered or exit- tions. The true difference between ed the United States. 375 F.3d at 1118. supplying' compo- production and software making infringing of the physical components cop- nents products by was “facilitated ies of to in 'the Despite software easier acts United States.” eco- transport. copying plaintiff make and The ease of nomic harm to the and economic both, patented component proper is not the benefit to defendant States, making strictly basis distinctions under this court construed 271(f) to “appl[y] only compo- where patentfed] nents of a physi- invention are Possibly recognizing defects its rea- cally present in the United States then soning, this court limits its novel uncom- sold or exported either ....” Id. at 1117. “supplies” mon to construction of “software This court should exercise same re- ‘components,’ for those inven- [because straint demonstrated in Pellegrini re- act of is subsumed in tions] ” fusing to broaden to accommodate ‘supplying,’ the act of .... Rather than the “nature of technology the relevant “according the same treatment to all forms practices underlying business a particular invention,” Inc. of Eolas Techs. v. Micro- litigation.” (2005) (cit- F.3d soft II, fact, Agreement, TRIPS Part In Section 5 the “realities of software distri- (1994) (“Patents pat- shall be available and bution” or “nature n the relevant technol- enjoyable rights ogy ent without discrimina- practices” and business theory inyention[ place tion as to the amounts to following: ][and] “section ....”) technology (emphases add- attaches if perceives this court field of ed)), court this creates new rule that patented component is cheaper or foreign copying pat- a component of a more replicate convenient to than abroad ented invention ship sum, the U.S. to from the United States.” In gives Apparent- rise the U.S. this “nature of theory the business” has no ly this rule applies only statutory inven- support software well not even tions. This application “supplies” solely on an be based accurate understanding of ignores the nature the software business. court’s case law that refuses discrimi- Furthermore, this court’s dismissal nate based on field technology. Id. Pellegrini because Microsoft an language §of does discrimi- actual nate Oftechnology, basted field form merely and not as in Pellegri- instructions yet this court invents such distinction. ni does holding not reconcile the of Pelle-

This court also declines to treat software grini today’s with ruling. Pellegrini holds same other inventions because a that “the language clearly con- literal application templates “fails to ac- that there must be an intervén- count for the realities of software exportation; distribu- sale or there can be no 271(f) tion ... disregard [this § and cannot court] under unless components the of technology nature the relevant and from the United States for practices underlying particular business a assembly.” 375 at 1117. In F.3d the case However, litigation.” in Pellegrini an before this court Tokyo Düsseldorf and corporation American provided the in- copy distributors components the corporate structions and oversight from the United States and then install components the patented “cause[d] those copies infringing into the products. 271(f) § Nothing enacting or docu- Japanese manufacturers and The German expresses an intent to attach liabili- component “sup- ments actual do not install the disc). (the ty manufacturing occurring to activities master from the U.S. plied” wholly ruling, abroad. howev- This court’s Instead, a in Dus- they copy install made er, exactly does that: It holds Microsoft Thus, under Tokyo. seldorf or 271(f) foreign activities of liable the under be- liability cannot attach manufac- of com- making copies patented turers the actually assembled cause the ponent abroad. products infringing into were never the from the United States.” literally “shipped contrary, the protects To eyes, today’s ruling my departs To components “supplied in or from Unit- the Pellegrini. holding the of language This limited ed States.” embrace, to it not manufac- ensure would majority purports also to construe occurring turing activities Congresses] with mo- “comport to and the “supplied abroad. The 271(f).” enacting § Apart tivation for wholly United States” limitation would be Congres- impossibility divining from the unnecessary, indeed would contradict language the sional intent divorced from law, intended, the law the intent of the law, reasoning this court’s misses the the today, regulate activ- as this court holds to 271(f). Congress enacted policy behind Tokyo. occurring ities in Dusseldorf Supreme response to the to Congress give Had intended extraterri- Packing Co. holding Deepsouth Court’s laws, torial effect to U.S. Corp., 406 U.S. v. Laitram Instead, expressly have stated so. Title (1972). Deepsouth 32 L.Ed.2d limits expressly making shipping held that occurring activities the United States patented combination parts of shipment the literal of com- result in “making” patented constitute the did not ponents “in or from the United States.” Id. at 527- invention in United States. (“We cannot endorse to confront central S.Ct. As final refusal case, today that the manufacture of the court dismiss- view ‘substantial issues as lock-and-key hypothetical of a machine’ consti- parts the constituent es Microsoft’s “irrelevant,” infringement merely when we have so “without tutes direct as scenario To the patent pro- bearing often held that a combination on the technical realities.” easily can only against operable assembly contrary,, just computers tects manufacture of its copies the whole and not the make key Thus, Deepsouth computer replica- because was parts.”). patented products,, can make “making” easily the invention in the machines tion ,of lock exportation, key component’ paténted there was no States before copy infringer product. computer in the United States to A needs a master direct software; key infringe- similarly, a charge contributory replicate enable copy master Deep- at 1700. machine needs a replication ment. Id. escape key. pres- in- fair south let manufacturers replicate U.S. manu- exporting hypothetical, less U.S. fringement making entation of key of a invention. master complete patented supplies than the facturer by at- from the United loophole closed that lock invention Section 271® copy then Foreign manufacturers for States. manufacturers taching liability part of the key .foreign sale as -components making exporting n . product.2 I doubt patented lock invention. by adjusting easily the facts “key” hypotheti- cal is addressed 2. dismissal of the The court’s not, today, manufacturer who or at until pro- U.S. least did not key master would liable foreign foreign tect markets from com- multiple infringing products lock petitors. expansion This court’s and Yet manufactured sold abroad. this protection to offer foreign to liability under indistinguish- court creates markets foreign competitors distorts able circumstances. the language policy both and the of the proper statute. This court should accord possible

Other further high- scenarios to respect language the clear of the stat- light difficulties with this court’s holding. foreign to example, holding patent regimes by For this court’s would ute and lim- impose seem to iting application compo- foreign-manufactured copies on an individ- literally “shipped nents from the United copy ual who AT purchased & T’s States.” Pellegrini, 375 F.3d at 1117. software and then it reasons, foregoing For the I must re- knowing overseas be copied spectfully dissent. Tokyo. and sold in Düsseldorf or problem might same arise the individual

ships purchased Düssel- making

dorf with no intention further

copies, but the Düsseldorf distributor of its then

own accord makes and sells foreign

copies. opinion, Before this the law would suggested have that AT & T would need to BIOCHEM, INC., ENZO resort to German law courts deter- Plaintiff-Appellant, any mine infringement for the man- Düsseldorf, ufactured and sold in but ap- parently court purports change GEN-PROBE, INCORPORATED, basic tenet of law. Defendant-Appellee, This court point reinforces one several times, namely judgment reaches just Becton Company, result Dickinson and imposing liability for

multiple infringing by foreign Defendant-Appellee. acts manu- “supplier” facturers on a of a single No. 04-1570. patented component. This emphasis sug- gests might that AT & T otherwise have United States of Appeals, Court remedy infringement no occurring Federal Circuit. wholly outside the United States. AT & July 2005. T, however, is not left remedy. without protect AT & T can its foreign markets foreign competitors by obtaining enforcing patents. foreign Section

271(f) protects foreign markets from do-

mestic competitors. Section does hypothetical. of the lock-and-key Consider a necessary locking teeth to rotate the mecha- recognizes combination the voice key may of the nism. each lock and have the key’s rightful Only confirming shape, thereby owner. decreasing after same manufactur- costs, identity expose yet owner does lock allow access to a limited opening key key expose for the and the persons. number of

Case Details

Case Name: At & T Corp. v. Microsoft Corporation

Court Name: Court of Appeals for the Federal Circuit

Date Published: Jul 13, 2005

Citation: 414 F.3d 1366

Docket Number: 04-1285

Court Abbreviation: Fed. Cir.