Supreme Court to hear oral arguments regarding scope of US patent lawFebruary 21, 2007

This morning the Supreme Court will hear oral argument in Microsoft Corp. v. AT&T Corp., a case about the potential extraterritorial reach of United States patent law. Specifically, the case deals with § 271(f)(1), which states that:

(f)(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

The issue in this case is whether software code can be considered a “component” of a patented invention, such that when shipped overseas and installed on a computer in a foreign country, liability under § 271(f)(1) is triggered. Specifically, the questions presented to the Court are:

(1) Whether digital software code–an intangible sequence of “1’s” and “0’s”–may be considered a “component[] of a patented invention” within the meaning of Section 271(f)(1); and, if so, (2) Whether copies of such a “component[]” made in a foreign country are “supplie[d] . . . from the United States.”

The patent at issue, Reissue Patent No. 32,580, covers a system for speech pattern processing. AT&T alleged that Microsoft incorporated a program into its Windows® operating system that infringed this patent. For purposes of this case, the key aspect is AT&T’s assertion that because Microsoft exported “golden master” disks encoding the Windows® to other countries where they were subsequently installed onto computers, Microsoft is liable for infringement under § 271(f)(1). As an interesting side note, Chief Justice Roberts has recused himself from the case, so the decision could come out as a 4-4 tie. AT&T was successful both at the district court and before the Federal Circuit. The Federal Circuit’s decision can be found here. This afternoon, the transcript of the oral argument will be available on the Supreme Court’s website here. Media previews of the oral arguments: CNBC cNet Business Week MSNBC Bloomberg CNN Money Blog coverage: Patently-O (Patently-O also has the briefs available here) SCOTUS blog Supreme Court Times

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