Certiorari to the United States Court of Appeals for the Federal Circuit
No. 05-1056. Argued February 21, 2007-Decided April 30, 2007
It is the general rule under United States patent law that no infringement occurs when a patented product is made and sold in another country. There is an exception. Section 271 (f) of the Patent Act, adopted in 1984, provides that infringement does occur when one "supplies]... from the United States," for "combination" abroad, a patented invention's "components." 35 U.S.C. s.271 (f)(1). This case concerns the applicability of s.271 (f) to computer software first sent from the United States to a foreign manufacturer on a master disk, or by electronic transmission, then copied by the foreign recipient for installation on computers made and sold abroad.
AT&T filed an infringement suit charging Microsoft with liability for the foreign installations of Windows. By sending Windows to foreign manufacturers, AT&T contended, Microsoft "supplie[d]... from the United States," for "combination" abroad, "components" of AT&T's patented speech-processing computer, and, accordingly, was liable under s.271 (f). Microsoft responded that unincorporated software, because it is intangible information, cannot be typed a "component" of an invention under s.271 (f). Microsoft also urged that the foreign-generated copies of Windows actually installed abroad were not "supplie[d]... from
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the United States." Rejecting these responses, the District Court held Microsoft liable under s.271(f), and a divided Federal Circuit panel affirmed.
Held: Because Microsoft does not export from the United States the copies of Windows installed on the foreign-made computers in question, Microsoft does not "suppl[y]... from the United States" "components" of those computers, and therefore is not liable under s.271(f) as currently written.
22 Read the decision again and answer these questions.
1 What is the exception to the general rule under US patent law that no infringement occurs when a patented product is made and sold in another country?
2 What were Microsoft's two main arguments during the District Court hearing?
3 What was the reasoning behind the Supreme Court's decision?
23 The ruling in Microsoft Corp. v. AT&T meant that AT&T was not entitled to damages for breaches of its patent on non-US manufactured computers running Windows. Under what circumstances would Microsoft have been liable for these damages?
24 In dissent1, Justice Stevens argued that paragraph (2) of 271(f) supported AT&T's case, and said that 'if a disk with software inscribed on it is a "component", I find it difficult to understand why the most important ingredient of that component is not also a component'. Do you agree with him? Why do you think the majority decided against AT&T?
Listening 2: Multiple jurisdictions
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The case of Microsoft Corp. v. AT&T is an example of a domestic court refusing to extend its jurisdiction to another state; but what happens when a case involves the laws of more than one jurisdiction? You are going to hear a discussion between a lawyer (Mr Connor) and his client (Mr Jones) about such a case. Mr Jones has recently sold his share in a restaurant in order to set up business in Austria. Unfortunately, the agreement between himself and his new business partner has collapsed.
25 ^$9.2 Listen to the first part of the discussion. Which countries and nationalities are mentioned?
26 ^$9.2 Listen again and answer these questions.
1 What was Mr Jones's planned business venture?
2 What was the agreement between Mr Jones and Mr Kundakgi?
3 Why has the deal fallen through?
4 What is the first issue the court will look at if the case goes to trial?
1 an explicit disagreement by one or more judges with the decision of the majority in a case (also: dissenting judgment, dissenting opinion)
27 4z9.2 Listen again and complete Mr Connor's notes from his conversation with Mr Jones.
People
Tu'kisU nafional curvenfly livina m 1)................................; Mosf of life $oe,<A \v\ 2)..............................
Plcwied -fo rvvoVe- to Auslr'iQ.
Dual cifiZecisUip: 3)....................... cu^d Arneiocan. LiVeS iki 4)......................... mo5-f or fine CKcjin a
resfaur'cW). Domicile- iS 5)......................... j woViKia -fo 6)..................... (peff ikip rwarVied)
Amonio Piombo \5eA\e-r)
Italian liVifia in 7)..........................
I^i-fial cc*\Wc\cJcs aq^eed per- 8)..........................., WcwA copies posfed. Mf 9)........................... paid Ui5
shave- oi dc-poSifj deal fell fl^foupU. Difficulf fo cai5e alfer'nafive tviat'idKiq (bad
10).................).
28 a ^9.3 Listen to the second part of the conversation. What are the five main stages to a case involving a conflict of laws?
b ^c9.3 Listen again and decide whether these statements are true (T) or false (F).
1 A court may decide it has jurisdiction in some aspects of a case, but not others.
2 Forum shopping is the practice of filing a lawsuit in the jurisdiction thought most likely to provide a favourable outcome for the claimant.
3 The cause of action is the legal argument in a case.
4 An incidental question is one that is not relevant to the main claim.
5 Renvoi refers to the choice of law rules that may be applied whenever a court is directed to consider the law of another jurisdiction.
6 Once a court has declared itself competent to hear a case, its judgment will definitely be recognised across borders.
Read the audio transcript of the lawyer-client interview (pages 136-138) and compare it with the WASP criteria in Unit 3. Are all of the stages included? Is there any other information that the lawyer could have asked for at this stage?
tnguage use: Explaining legal terms to m-lawyers
iese are some of the phrases Mr Connor uses to explain some of the legal sncepts so that the client can understand them.
i your domicile is America? That is, America is your official permanent residence?. we'll first need to consider which court has jurisdiction. In other words, which jurt is competent to deal with any of the legal aspects that might arise...
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2................
Let's say that you can't go ahead with the purchase.
