*1 regular active service on the Judge that the having requested Court be
Court banc, rehearing en the Petition
polled on En Banc DENIED. Rehearing mandate of this Court will issue on
Wednesday, 28 at 4:00 in the June (Atlanta time). A filing
afternoon stay the
motion to issuance the mandate time for
will NOT extend the the issuance Expect the mandate. no motions
stay the issuance of the mandate to be injunctions All
granted. this case will Wednesday,
dissolve on 28 June (Atlanta time).
4:00 the afternoon All requests stays injunctive
further or for Supreme
relief should be directed to the
Court United States. INDUSTRIES, INC.,
ROTEC
Plaintiff-Appellant,
v. CORPORATION,
MITSUBISHI Tucker
Associates, Garry Tucker, Inc. and
Defendants-Appellees, Corporation,
Mitsubishi International
Defendant-Appellee.
No. 99-1275. Appeals, States Court of
Federal Circuit.
June
Nelson,
(1985),
bound
the decision in
reject
Jean
George P. Ltd., Illinois, Malloy, Chicago, Held & argued for him plaintiff-appellant. With Held, on the brief were John J. Thomas J. Wimbiscus, McAndrews, Matthew G. *3 R. Nuttall. James Warnecke, Mayer, Michael 0. Brown & Illinois, Platt of Chicago, argued for defen- Corporation, dants-appellees Mitsubishi Associates, Inc., Garry Tucker and Tucker defendant-appellee and for Mitsubishi In- Corporation. ternational With him on the brief were Debra Rae Bernard Walter Rogers. M. Cutler, T. Audley, Chapman
David Illinois, of Chicago, defendant-appellee Corporation. Mitsubishi International NEWMAN, MICHEL, Before GAJARSA, Judges. Circuit Opinion by for the court filed Circuit Judge GAJARSA. Opinion concurring judgment Judge filed Circuit PAULINE NEWMAN.
GAJARSA, Judge. Circuit DECISION (“Rotee”) Industries, Rotee Inc. appeals the December 1998 order of the United States District Court Central District of Illinois granting summary judgment Corporation, Associates, Mitsubishi Tucker Inc., Garry Tucker and Mitsubishi Interna Corporation tional on Rotec’s claims of infringement of States Patent No. “ (the 4,170,291 patent”). ’291 See Rotec Indus., Inc. v. Corp., Mitsubishi (C.D.Ill.1998). F.Supp.2d 810 Because we find that the district court did not err in its determinations, we affirm.
BACKGROUND Rotee is a manufacturer of crane and conveyor systems designed carry con- long systems crete over distances. These are useful in large projects, construction as the such construction of river dams. assignee Rotee is the of record of the ’291 provide The ’291 discloses a tower would all of the patent. necessary compo- con- supported crane articulated concrete nents. Under either arrangement, MC veyor system. system Rotee sells a belt provide would the financing. the ’291 under disclosed Rotee, According to activity much of the trade name “Tower Belt.” preceded the Potain/MC/TGDPC August government On agreement place in the United States. (“PRC”) People’s Republic of China asserts, alia, Specifically, it inter that: proposals bid for five solicited units offering parties met several system placing concrete to be used States; times in the United Gorges project Three Dam on the 2. a delegation from China visited All Yangtze proposals River. were re- headquarters Johnson’s in Cham- quired specifications to meet the set forth *4 paign, during Illinois the week of by Gorges Three Dam Chinese Pro- 8,1996; December (“TGDPC”).
ject Corporation Defendants prepared 3. Tucker pricing information Mitsubishi and In- Corporation Mitsubishi and worked “MC”) finalizing design and (collectively, ternational ap- financial aspects proposal of the bid Potain, proached Defendant a French cor- at in Oregon his offices and at John- to that poration, propose Potain become a Champaign, son’s headquar- with a Illinois partner joint MC to submit bid ters; Defendants, proposal. According to Po- working design tain on the of a con- was provided 4. Johnson relevant technical
veyor system that jointly time with and financial to Potain documents to (“Johnson”). result, Johnson As C.S. a in the preparation be used join in Johnson was also invited to bid; project and thereafter, proposal. Shortly Johnson 5. provided non-staple the offer Garry contacted Defendant Tucker components were to be made in the (“Tucker”) of Defendant Tucker Associ- designated United States U.S. (“TA”) ates, help Inc. for additional in supplier. preparing agreed the bid. Tucker to 14, February On 1997 Rotee filed suit serve as an independent per- contractor to MC, Tucker, TA, against and Potain C.S. design project, form the for the work and in Johnson the United States District pre-qualifying attended a formal bid con- Court for the District Central of Illinois. place ference PRC jurisdiction The lower court exercised over October 1995. 1331, 1338(a) §§ the case under 28 U.S.C. January On 1996 Potain and MC 1367(a) (1994). In its Second Amend- joint submitted their bid to the to PRC Complaint, alleged ed Rotee that Defen- supply the equipment. parties subse- infringed dants the ’291 patent making quently negotiated for nearly year, and an “offer for sale” of the invention claimed 16, 1996, Potain, on December andMC States, therein in the United violation of signed purchase agree- TGDPC and sale 271(f) (1994). §§ 35 U.S.C. Ro- ment for two complete concrete alleged conspiracy tee also a civil to com- systems placing requested. The terms of infringement mit between and agreement provided for two alternative Johnson,1 among Defendants and in viola- alternative, arrangements. Under one Po- tion of Illinois state law. tain would design and manufacture the systems, 12(b)(6), used in cranes and Johnson Pursuant De- Fed.R.Civ.P. design convey- would and manufacture the fendants moved to dismiss the Second alternative, Under the Complaint grounds. ors. other Potain Amended on two Although Complaint 1. named as a co-defendant in the Second Amended after it original complaint, Chapter bankruptcy July Johnson not named filed for 1997. court’s appeals the district Rotee now dismiss for moved to
First, Defendants
non-infringement.
judgment of
claim,
that Rotee
arguing
state
failure
commit-
Defendants
prove
could
DISCUSSION
infringement
act
alleged
ted
—the
the United States.
sell—within
offer
of Review
A. Standard
moved to dis-
Second,
Potain
Defendant
court,
above,
pur
the district
noted
As
Af-
jurisdiction.
personal
for lack of
miss
12(b)(6), treated De
to Fed.R.Civ.P.
suant
these is-
discovery on
allowing limited
ter
for
a motion
to dismiss as
fendants’ motion
granted Potain’s
sues,
court
the district
12(b)(6) pro
“Rule
summary judgment.
jur-
personal
for lack of
to dismiss
motion
complain
if
outside the
vides
matters
mo-
isdiction,
remaining
treated
the court
pleading
presented
ant’s
are
summary judgment
for
as motions
tions
treated as one
shall be
the motion
Fed.R.Civ.P.
under
Ad
under Rule 56.”
summary judgment
court
the district
December
On
Sys.,
Inc.
vanced Cardiovascular
summary judgment
Defendants’
granted
Inc.,
F.2d
Sys.,
Scimed Life
insufficient evidence
finding
after
motions
(Fed.Cir.
within
offer for sale
of an
1993). Thus,
treat
we must
Defendants’
no
held that there was
The court
States.
summary judgment
motions as motions
following facts:
*5
as to the
genuine dispute
of the district
reviewing
propriety
the
called for all of the
agreement
the
1.
court’s order.
components to be made in
conveyor
grants
all
of
This
reviews
court
China, regardless of what
Japan and
by a
court de
summary judgment
district
provided
have been
earlier
may
Int’l, Ltd., 14
v. Reebok
Conroy
novo. See
proposals;
1373,
1574,
1570,
USPQ2d
1376
29
F.3d
actually
were
made
components
no
2.
(Fed.Cir.1994). Accordingly,
the court
States;
in the United
pleadings,
for itself “if the
must decide
including the de-
proposal,
the bid
3.
interrogatories,
depositions, answers
pro-
and the
scription
product
file, together with the
and admissions on
Hong
finalized
posed price, was
affidavits,
there
no
any,
if
show
is
China;
presented in
Kong and
fact and
any material
genuine issue as to
with the Chinese
negotiations
4. all
entitled to
moving party
signing the
government prior
a matter of law.” Fed.
judgment as
China;
place in
agreement 56(c);
Corp.
also Celotex
R.Civ.P.
see
signed China.
agreement
5.
317, 322,
2548,
Catrett,
106 S.Ct.
477 U.S.
(1986).
moving party
The
815,
1251 574, 586, Background 106 S.Ct. 89 L.Ed.2d 1. Historical U.S. omitted). (1986) (footnote 271(a) statutory history may of
be divided into two distinct periods: be Uruguay fore the GATT Round Trade Re 271(a) B. Rotec’s Claim Aspects lated Property Intellectual 271(a) (Supp.1997), Under U.S.C. (“TRIPS”) agreements, and after. Before makes, uses, authority “whoever without 271(a) agreements, granted TRIPS sell, any patented offers to or sells inven- right holder the to exclude oth tion, infringes within the United States” only from “making, using ers or selling Rotee, patent. According Defen- throughout invention 271(a) they dants violated when “offered United States.” This court had construed to sell” the invention claimed in the ’291 grant strictly, this so that “neither intent purposes to TGDPC. For the preparation nor [to in sell] constituted court, the motions now before this Defen- fringement.” Laitram Corp. v. Cam dispute dants do not that the ’291 patent Co., bridge Wire Cloth 919 F.2d system they claims the to sell to offered (Fed.Cir. USPQ2d They dispute, however, TGDPC. do 1990). addition, party could not be they made offer for sale to TGDPC threatening held liable for infringement, say the United States. Defendants their devices, contracting infringing to make or China, offer was made in not the United beginning even construction of infringing States, thereby absolving them devices. As we noted in Lilly Eli & Co. v. , 271(a) liability. Medtronic, 670, 673, Inc. (Fed.Cir.1990), genuine dispute
There is no
that at
did not cover acts other than an
making, using
least
activities
actual
selling
pat
some Defendants’
before
*6
completed
ented invention in its
form.
signing
agreement
the
with TGDPC took
Moreover,
Supreme
the
Court held in
in
place
the United States. At the same
Deepsouth Packing
v. Laitram
time,
Corp.,
Co.
undisputed
many
it is also
that
518, 527,
1700,
406 U.S.
92
32
S.Ct.
activities took place
these
outside the Unit
271(a)
(1972),
§
L.Ed.2d
that
273
excluded
States, in
ed
China and elsewhere. These
various activities
to an actual
prior
sale.
however,
extraterritorial activities
ir
are
The Court found that “sales rhetoric and
us,
relevant
to the case before
because
price”
related indicia such as
could not
right
by
patent
conferred
“[t]he
under
infringe
patentee
unless the
our law is confined to the United States
proved
“selling
pat
the defendant was
the
territories,
and
infringement
its
and
of this
ented invention.” Id.
right
predicated
wholly
cannot be
of acts
in a foreign country.” Dowagiac
done
however,
1993,
In
the United States
Co.,
Mfg. Co. v. Minnesota Moline Plow
negotiations on the
completed
TRIPS
641, 650,
235 U.S.
35 S.Ct.
59 L.Ed.
agreements.
negotia-
As a result of these
(1915) (citation omitted). Thus,
we
tions,
agreed
the
amend
United States
to
must establish whether Defendants’ activi
impose
its
law to
in-
additional
States,
in
ties
the United
as would be
fringement liability for “offers to sell.” In
by
jury,
construed
a reasonable
are suffi
to
Congress
satisfy
enacted
statute
sale,”
cient to establish an “offer for
as
The
pledge
the nation’s
under TRIPS.
271(a).
that
If
phrase is used
these
statutory language of the amendment
to
that,
activities are sufficient to establish an “of
January
provided
after
law,
makes,
fer for sale”
a matter of
must
authority
we
“whoever without
uses,
sell,
grant
find that the district court erred in
any patented
or sells
to
offers
not,
ing
invention,
Defendants’ motions.
If
we must
the
...
within
United States
added).
affirm.
infringes
patent.” (emphasis
the
work,
system’s
example, on the
an
did not
stating
than
Unfortunately, other
designated
“in
only
components,
offers
which were
those
crane
sell” includes
“offer
expira-
the
Potain from either
supplied
will occur before
to be
the sale
which
Therefore,
35 U.S.C.
patent,”
itself.
the term
France or within China
tion of
271(i)
no
Congress offered
to sell the entire
(Supp.1997),
did not offer
Johnson
meaning of the
to the
guidance
patent.
other
claimed
the
invention as
phrase.
Supreme
con-
Deepsouth,
In
the
Court
language of a statute
the
When
whether
question
related
sidered the
di
unambiguous
and
provide clear
fails to
the com-
“selling” less than
“making” or
legis
rection,
the
may turn to
statute’s
we
in the
States consti-
plete invention
United
Radloff, 501
Toibb v.
history. See
lative
under
infringement
tutes
act of
157, 162,
115 L.Ed.2d
111 S.Ct.
U.S.
271(a).
Deepsouth
petitioner
The
(“[W]e
(1991)
to the statuto
look first
shrimp deveining
parts
made
of various
legislative
the
and then to
ry language
held
by patents
machines covered
language is un
statutory
if
history
manufac-
parts were
respondent. These
however,
clear.”).
case,
legisla
this
Instead of
in the United States.
tured
offers little addi
history of the statute
tive
fully
selling the machines
assembled
sure,
history
To be
insight.
tional
however,
States,
petitioner
sold
United
sought
Congress
confirms
buyers, who assembled
parts
foreign
afforded under
strengthen
protections
sued
parts
respondent
abroad. The
Agreement
General
On
271. See
Tariffs
271(a), claiming
under
infringement
(GATT):
Property
Intellectual
And Trade
and “sold” the
petitioner
“made”
H.R.
Hearings on
S.
Provisions:
patents
within
inventions
on Intellectual
Subcomm.
Before
are used
those terms
States as
Administration
Property
Judicial
statute,
assembly
“the act of
...
because
Comm, and the Sub-
Judiciary
the House
regarded
importance.”
...
as of no
Patents,
Trade
Copyrights and
comm. on
1253 decide, however, if still even the activities do meet the com- We must “offer,” that term is mon law definition of offer. See id. The what constitutes 271(a). above, mentioned in As patentee used court reasoned that a is harmed to, §,271(a) to imple served amendment by an advertisement for a sale set take nation’s commitments under the ment our place during patent. the term of the Con- Accordingly, we agreements. TRIPS versely, may a defendant not be held liable agreements’ de recognize must one of the for pat- advertisements sales outside the purposes: harmonizing worldwide clared term, ent because the offer exhibited an Lisa B. Martin & Susan patent law. See express intent to interfering avoid with the Amster, International L. Intellectual patentee’s rights. conferred See id. Property Protections in New GATT course, Of ultimately we must decide ’ (1993). Accord, 2 Proprietary J. Rts. this issue as a matter of United States law. agreements, Before the TRIPS the United This court first meaning considered the apart trading part stood from its States 271(a) “offer for sale” context of limiting infringement protection ners Labs., Inc., in 3D Sys., Inc. v. Aarotech “sales,” only opposed to “offers actual (Fed.Cir. 1373, USPQ2d 160 F.3d Indeed, proposal for sale.” our first draft 1998). case, In patentee sued three negotiations reflected during TRIPS defendants the United District States setting only forth unique approach our Court for the Central District of California “making, using selling” patented inven infringement variety for of patents. infringement. tions as acts of See U.S. patentee argued that the defendants Agreement Draft on Trade-Related Intel “offering were liable to sell” the inven Property Rights, Presented at lectual patents. tions disclosed in the The defen Round Uruguay Negotiations GATT Ge moved to dants dismiss suit lack of (BNA) 14, 7 Int’l May Rep. neva Trade personal jurisdiction, arguing 1990). (May Ultimately, how plaintiff had failed to establish ele ever, agreed the United States to the jurisdiction personal required by ments for others, provided by protections broader of Appeals United States Court for the suggesting amendment process Ninth Circuit’s due test. The dis approaches reflects the of the oth agreed, granted trict court the motion and signatory er nations. all dismissed claims. See id. at nation, In at least one such the United 1373, USPQ2d F.3d at 1775. Kingdom, the common law of contract does appeal, On we reversed. The court meaning not limit the of “offer for sale” in jurisdiction the personal found that issue the context of infringement. governed by the law of the Federal Sys. Gerber Tech. Inc. v. Lectra Garment Circuit, circuit It then (United regional law. Ltd., King- 13 R.P.C. 411-12 (not applied personal jurisdiction test set 1995), infringer dom Patents Court Luker, Corp. forth Akro argued that offers are defined contract *8 (Fed.Cir.1995), USPQ2d 33 1505 to the “pre-contract negotiations law and that of plaintiff’s allegation specific personal infringe. an advertisement” do not Id. jurisdiction the over defendants. After disagreed, reasoning The court the concluding that the defendants’ actions merely codify “En- patent law did not the at the purposefully were directed residents glish law of contract” but rather acted to state, satisfying of the forum thus the first prevent “disturbing paten- others from the test, court the monopoly.” prong tee’s It then held that the considered Id. advertising mere the claim infringe, prong: activities could second whether arises not, 271(f) (1994). 271(f) however, good may § § be held does south remains law: one not 271(a) change § liability, 271(a) the nature of it as “making'' § for or “sell- liable under Hence, provides separate a cause action. ing” complete less than a invention. 271(a), brought Deep- § as to under claims 1254 Inc., 1562, 1566, to Quipp
out of or relates those activities. 45 Be- F.3d 33 (Fed.Cir.1995)). 1512, 1515 plaintiff USPQ2d the that the cause claimed defen- “offered” its inventions dants The court held that the then defendants’ 271(a), § sale in the court con- violation price quotation letters were fact offers meaning recently sidered the of this added sell, though they even purported not to 1377-1378, Sys., term. 3D 160 F.3d at See be on their face. treat them “[T]o USPQ2d 48 at 1776-1777. anything other than offers to sell would be 1379, to exalt form over substance.” Id. at urged The defendants that California USPQ2d 48 at 1777. it Accordingly, found governed state law whether the defen- statutory “[a]s of federal matter activities constituted an offer to sell. dants’ construction, quotation price letters court, however, disagreed. The It first can regarded be to sell’ under ‘offerfs] interpretation “[l]ittle noted that of this § 271 on the conveyed based substance change infringement as it relates to direct letters, i.e., description alleg- 271(a) § given, under has been and no edly infringing price merchandise guidance applies on whether state law purchased.” at which it can be Id. if determining when an ‘offer to sell’ has 1378, 1373, occurred.” Id. at 160 F.3d 48 Sys. We recognize that 3D is USPQ2d at 1776. The court then ob- shortly sued Supreme after the Court is “rejected served it previous had at- sued opinion its v. Wells Elecs. Pfaff tempts shape personal jurisdiction our Inc., 55, 304, 525 U.S. 119 S.Ct. 142 through law state common law definitions (1998); however, L.Ed.2d 261 analysis statutory of federal terms as defendants 271(a) § of an “offer to sell” under is con 1379, 1373, suggest.” Id. at 160 F.3d 48 sistent with the Court’s analysis Pfaff result, USPQ2d at 1777. As a the court 102(b).3 § Pfaff, Supreme Court held that statutory “[t]he character of the noted that the norms of traditional con requires ‘offer sell’ us to ‘look back to tract law be the should basis for on- conceptualization’ federal law on the 102(b). § sale determinations under Id.; to sell’ ‘offer itself.” North Am. specifically Court cf. held that Sales, Inc., Philips v. American Vending 102(b) apply, product on-sale bar to “the 1576, 1579, 1203, USPQ2d 1205 must subject be the of a commercial offer (Fed.Cir.1994) (holding that determination for sale.” Id. at 119 S.Ct. of where a sale “requires place look L.Ed.2d USPQ2d at 1646. This law”). back to federal Similarly, the court analysis is divergent from our rejected argument might that it look to analysis, sale, an offer for because whether “on-sale analysis bar” under 35 U.S.C. made before or after a patent is applied 102(b). “We import decline to for, the au- granted, or after it requires is no more thority construing the ‘on sale’ bar of than a commercial offer for sale. Both 102(b) into the provision to sell’ ‘offer sections invoke the traditional contractual 271(a).” Sys., 3D 160 F.3d at analysis. Therefore, 1379 n. similarly we define USPQ2d 271(a)’s at 1777 4 (citing Ferag n. AG “offer to liability according sell” course, Of jurisprudence surrounding public when rely has come to their on 102(b) premised the on-sale bar of ready availability, giving investors policy different As we reasons. noted in 3D period potential reasonable discern Sys.: value of an invention. policy underlying [t]he reasons the on-sale Id. at 1379 n. F.3d 102(b) prohibition §of include the concern contrast, policy underlying 1777 n. 4. In *9 patentees will commercialize their in- liability the "offer to sell” under deferring ventions beginning while the "preventing competitor gen- includes a from term, statutory patent encouraging erating potential infringing in a interests prompt widespread disclosure of inven- product to the commercial detriment of the public, discouraging tions to the the remov- rightful patentee.” Id. al public of inventions from the domain
1255 directly to the norms of contractual This contrasts with traditional the facts in 3D analysis. Sys., in which the defendants’ infringing “offers for sale” consisted of “price quota is similar to the Our task here task by tion letters sent Aaroflex [defendant] to ITC, presented in Enercon v. Id., California residents.” 160 at F.3d (Fed.Cir.1998). 1376, USPQ2d In 47 1725 1379, 48 USPQ2d at 1777. Enercon, required we were to set forth the meaning importation” of the term “sale or In a the absence of communication with 1930, Act under 337 of the Tariff as a third it is difficult to party, imagine any 1381, 1376, id. at 151 amended. See F.3d. rightful pat- commercial detriment of the USPQ2d noting 47 at 1729. After If, however, entee taking place. the court nor legisla- neither the Tariff Act itself its adopt were to Rotec’s reasoning, it would history any tive definition of ei- provided effectively prohibit a patentee’s competi “importation,” ther “sale” or we concluded (1) studying patent tors from: a in antici “Congress give intended to the term (2) pation expiration; estimating of its ordinary thereby meaning, making its an cost a producing disclosed invention be explicit unnecessary.” definition Id. The (3) fore the date of expiration; review court then turned to traditional sources on ing a to ascertain whether term, meaning including of the dictio- claims a product currently read on in de and the naries Uniform Commercial Code. all, velopment. case, After each of these activi Congress again See id. this has ties could also lead to provide explicit “generating elected to an interest definition ... result, a to of the term at issue. As we the commercial detriment of the meaning rightful patentee.” conclude “offer to sell” Sys., 3D 160 F.3d at interpreted according is to be to its ordi- USPQ2d 1379 n. at n. 4. This law, nary meaning in contract as revealed interpretation goes beyond far the limited by authority. traditional sources 271(a). “right provided to exclude” under Furthermore, ignores object it that, argues
Rotee
in
Sys.,
as
3D
Defen-
law
important
as
in
providing
“generated]
dants
potential
interest
disclosing
centives to invent:
new ideas to
infringing product to the commercial detri-
Rizkalla,
public.
See Paulik v.
rightful
ment of the
patentee.”
Sys.,
3D
(Fed.
USPQ
F.2d
“We evidentiary review rulings under an discretion in excluding the statement from abuse of discretion standard.” Munoz v. its consideration. Farms, Inc., Strahm (Fed.Cir.1995) (cita- Brief, In its Reply Rotee also of omitted). tion Rotee argues that deposition fers the testimony of Seeland as statement was admissible as either a state- evidence that an offer was extended to ment made in furtherance of a conspiracy, TGDPC within the United States. *11 fact on the dispute any of material genuine misrep- were you you think Q. And did liability § for an offer that the of issue the Chinese resenting to sell, judg- entitled to the Defendants were origin was USA? and country of a of law. ment as matter They knew—the Absolutely not. R. everything we were knew
Chinese had —we all times. We doing at 271(f)(2) § Claim Rotec’s C. here, them I[sic] had were—we granted court also The district people all Chicago, them in motion on summary judgment Defendants’ here. 271(f)(2). Under claim under Rotec’s face, the This, too, On its is insufficient. 271(f)(2), when not indicate does statement It among whom. meeting place, or authority supplies or without whoever was invention whether the discuss does not or from the supplied be causes to All this state- described, price. or at what pat- any component United States Seeland, perhaps that shows is ment especially that is made ented invention met with Chi- employer, of his behalf in the in- adapted for use especially or time, and point indefinite nese at some article or com- staple and not a vention everything about the Chinese knew that for sub- commerce suitable modity of not It does show activities.4 Seeland’s use, where such noninfringing stantial “manifes- a communicated any Defendant or in whole component is uncombined a into bar- willingness to enter tation is so component that such part, knowing justify person another made as to so gain, intending that adapted made or assent to that that his understanding out- will combined component be such it.” will conclude is invited and bargain in a manner of the United States side (Second) § 24 Contracts Restatement if such infringe that would rely on (1979).5 jury could No reasonable the United occurred within combination was offer to find this statement States, infringement. liable for shall be a States. As within the extended United 271(f)(2). face, its result, not err. On court did 35 U.S.C the district 271(f)(2) only on those liability imposes upon sum, no evidence Rotee offers In ' any “cause supply” “supply” who find in its could jury a reasonable which Rotee patented a invention. component of points it which the evidence favor. Of to. past look the court must argues that theory, only to sell” of its “offer support light it in consider section’s face involves a com- by Seeland the statement to Ro- 271(a), According amended. as Defendants and between munication 271(f)(2) liability on tee, imposes now This customer. potential party third any component supply” “offer to those who statement, however, excluded properly was invention, Congress because patented inadmissible hear- court district strengthen “surely intended insufficient event say, and was result, concludes Rotee laws.” As an of- extended that Defendants establish (cid:127) 271(f) they of- when violated Defendants invention within of the claimed fer for sale conveyor com- result, the Johnson supply no fered to there is States. As the United authoritative, the Restatement Although not 5. have asked that Rotee could court notes in estab- recognized useful long has been meeting dur- about details Seeland law of governing the lishing general law did deposition. Whether Rotee ing Seeland’s Enercon, contracts, including offers. however, Cf. so, ascertainable from is not (holding the “U.C.C. has F.3d event, review the we must record. general governing recognized law as the been light pres- of what court's order in district useful, goods is another the sale of though record, might of what regardless in the ent authoritative, in determin- source presented. been have meaning of the ing ordinary commercial ”). term ‘sale’ NEWMAN, part PAULINE ponent, Judge, which Circuit concurring judgment. States. system, from *12 conclude, I as panel majority, does the is incorrect. The court This that Rotee can not enforce its amendment to one an section may not read However, against the defendants. I reach an amendment to entire of a statute as this conclusion on grounds. different I of the statute in section the ly different separately concerning aspects write two of statutory justification. If any absence of my colleagues’ opinion: 271(f)(2), to amend Congress wanted 271(a), easily it could have it First, amended majority opinion necessarily the reason, general is no how so. There done accepts premise the critical that an “offer ever, play part court of for the to sell” made in the United States can legislature. legisla “[WJhen surrogate constitute infringement even when law, clearly spoken the the court’s ture has contemplated sale could not infringe it as written.” duty is to enforce Telec I patent. do not believe that 35 U.S.C. Ventritex, Inc., Pacing Sys., Inc. v. tronics correctly 271 is interpreted. so I would 1520, 1524, 982 F.2d decide the case on the straightforward (Fed.Cir.1992). The statute is clear ground that infringe- there is no issue of face, there legitimate on its is no because, ment under as is undis- “A any reason to look further. statute is puted, no whereby offer for sale was made the law to be definition followed-—not the sale itself could infringe the United disregarded, effectively repealed, rewritten patent, requirement States of 35 U.S.C. (unless unconstitutional) or overruled 271(i). §—in Indus., the federal courts.” In re Mark Second, panel majority’s reliance on USPQ 1224 224 751 F.2d Deepsouth the overruled inappro- case is (Fed.Cir.1984). empowered “This Court is addition, priate. majority opinion regulations, rewrite neither statutes nor statutory misconstrues the provision, 35 unwise, however nor does it have infor 271(f), U.S.C. that it. overruled expertise nor to do mation base so effec tively.” Newport News Shipbuilding & I Garrett, Dry Dock Co. v. Infringing An “Offer to Be Sett” Must (Fed.Cir.1993). The record contains no Contemplated Infring- for the Sale of an that “supplied evidence Defendant ing Product caused to supply” component pat ented invention or from the For purposes of the defendants’ sum- Indeed, States. Rotee itself motion, admits mary judgment and fundamental all of the tower crane components were litigation, to this it is assumed that manufactured either France or China system that was offered and intended to be majority and that conveyor compo sold to China installed at the Three nents were manufactured either China Gorges Dam is the same “Tower Therefore, or Japan. the district court system Belt” that is described and claimed correctly dismissed this claim. in Rotec’s United patent. States The sum-
mary judgment documents describe the activities Japanese Mitsubishi com- CONCLUSION Potain, pany, the company French and the The decision of the district court is American Company, C.S. Johnson working together purpose supplying for the such AFFIRMED. system principles to China. On the summary judgment accepted it COSTS meetings described occurred in the United party elsewhere, Each to bear its own costs. including States and the visit to by representatives the United States in which the sale will occur be- expiration China. fore the of the term of the patent. The bid document and the final sales (Relevant emphasized.)
contract were executed amendments outside of the Uru- guay Agreements Act, Round United States. The bid document listed Pub.L. No. country origin (1994). 103-465 components some 108 Stat. 271(i) States, specifically as the United Section convey- resolved the issue that is ors, dumpers, By and toolkit. The before us. sales con- requiring actual tract states the countries of sale of the origin thing offered occur will before *13 components France, Japan, China, the patent expires, and the statute makes clear with no listed component as made that the in the sale must be one will infringe that States. patent. United Nor does Rotee that question assert The panel before this any component system of the that was was in the statutory enactment; answered ultimately originated sold I would resolve the United issue ground. on this panel The majority accepts, States. with- Congress undoubtedly aware of the discussion, out premises these can litigation and questions debate of similar satisfy the “offer to sell” provisions of European countries. In Kalman v. PCL § and thus appeal decides the pe- on (UK) Ltd., (at Packaging 1982 F.S.R. 406 ripheral issues such as the admissibility of 221922), 1982 WL Kingdom United of a evidence visit to the United States court held that the statutory “offers to by representatives However, of China. an dispose patented of’ the product “must be offer to sell system a device or whose read as meaning, ‘offers in the United actual sale infringe can not a United States Kingdom dispose product of the in the patent is not an infringing act § under Kingdom.’” See also Benton v. SA, Latour et Fils Transcript: Larking Before 21 § the 1994 amendments to 271 (available April 1993 the law in Lexis in “UK United States was that Cases, database). Combined Courts” liability for In infringement was not incurred Georg al, et by Patentgesetz, Benkard offering patented invention, to sell Ge- a but (9th brauchsmustergesetz, ed.1993), only by 422-24 manufacture, use, its actual or See, the authors discuss e.g., sale. whether an offer Laitram made Corp. v. Cam in Germany to sell bridge Co., product Wire Cloth outside of 1579, 1583, Germany constitutes (Fed.Cir.1990). infringement citing German patent, various implementation factual situ- of Article Agree 28 of the ations have arisen in litigation. ment on Aspects of Trade-Related Intel 271(i) §of enactment any resolved Property Rights (TRIPS), lectual uncer- in 1994 tainty interpretation 271(a), of various amendments were made to the implementation of the patent statute-, provision TRIPS United States including the the United States. following: 271(a) Except as provided otherwise 271(a) Section can not read in be iso title, in this whoever without authority 271(i). lation from A is con statute makes, uses, sell, offers to or sells applied strued and in a manner that does patented invention, within the United not any of provisions render its superflu States or imports into the United States ous, contradictory, illogical. or See Mack any patented during the invention term ey v. Serv., Lanier Collection & Agency patent therefor, infringes pat- Inc., 825, 837, 486 U.S. 108 S.Ct. ent. (1988). L.Ed.2d 836 The purpose of 271(i) section, As used in this an permit towas a patentee to act “offer for sale” or an “offer to sell” against infringing threatened by sale es person patentee, other than the tablishing a of cause action actual before any designee patentee, sale occurred. It is explained 271(f), 35 U.S.C. enacted Congress actual an requiring of consequence “main Su- States to the United “responding] in order term patent during sale ], con- [Deepsouth infringe- decision an act Court preme for sale offer
make the in- legislative date of solution to be the need cerning ment appears the date back to law.” reach fringement loophole will to close Irving L. and (1984). S.Rep. Thomas 28,069 offer.” original See also Cong. Rec. Inven- Lewis, Date Proving a Stacy (1984) leg- D. (describing the 2at No. 98-663 Infringement GATT/ tion deci- Deepsouth After as “reversal islation (Sum- TRIPS, Q.J. 351-52 AIPLA 271(f)(2) Ro- sion”). is invoked Section in- 1994) (the will for sale offer mer/Fall wherein the situation applying to tee before the occur the sale will only if fringe from provide offered the defendants expires). conveyor component United States system: need await Rotec’s patentee Thus injunctive relief sale, may seek actual 271(f)(2) authority without Whoever have accrued may damages that in or supplied or causes be supplies *14 clear, however, that is offer. It to the due component States United from the 271(a), sell, § must offer to infringing especially invention is patented aof the Unit- infringe item that would of an be use in adapted for especially or made sale, upon the intended States ed or staple article and not a the invention in 271(i). made the Unit- an offer § Thus suitable commodity of commerce of whose States, system all to sell ed use, where noninfringing substantial foreign in made would be components in uncombined whole component is such installation, sale,' countries, and use component knowing that such part, or in infringe the not country, does foreign intending adapted and made or is so has not patent. Rotee United .States will combined component be that such other consideration any issue for raised a manner States in the United of outside provisions arising under than those if such infringe that would § 271. the United within occurred combination infringer. States, as an shall be liable II Com- contract, C.S. Johnson In the sales Overruled Has Been Deepsouth by Nip- replaced Illinois had been pany of Packing v. Laitram Co. Deepsouth provider Japan Conveyor Co. of pon 92 S.Ct. Corp., 406 U.S. no remain- system. With conveyor (1972), Supreme Court L.Ed.2d States in the United made ing component patent was States that United confirmed 271(f) mooted, for § was application component parts of when the infringed United originating component no by the Unit- sold machine were a patented that was system included States buyers foreign manufacturer ed States read However, it is incorrect sold. outside the machine who assembled 271(a). In- 271(f) § from § in isolation The Court observed States. includes reading of 271 deed, correct only applied when infringement the law of 271(a) 271(f) harmony with used, made, machine was patented 271(i). complex important So States, that United sold the United components to sell as an offer question do not have extraterritorial States patents disposed of not be device should there, infringe- nowas direct effect. Since dictum, but the it only Not is in dictum. patent, of the United States ment Deepsouth majority’s reliance panel be contrib- that there could not Court held amendment, of the benefit remove infringement by the manufacturer utory “loophole” plugged, from the parts. component 271(f) purpose for the misguided, 271(f) Deepsouth. was to overrule PRODUCTS, INC., ENVIRON
Plaintiff-Appellee,
v. COMPANY, Defendant-
FURON
Appellant. Products, Inc.,
Environ
Plaintiff-Appellee, Polymer Technology, Inc.
Advanced LeBlanc,
and Leo J. Defendants-
Appellants.
EBW, Inc., Plaintiff-Appellant, Products, Inc. and
Environ Michael Webb, Defendants-Appellees.
C. 99-1218,
Nos. 99-1219. Appeals,
United States Court
Federal Circuit.
June