Anticipate This!™ | Patent and Trademark Law Blog

Microsoft Corp. v. AT&T Corp.: USSC Hearings Scheduled for Wednesday, February 21st.

Posted in Litigation Commentary by Jake Ward on February 20, 2007

As reported at MSN/Money, the Supreme Court on Wednesday will hear oral arguments in a case that could test the global reach of U.S. patent law.  The dispute centers on 35 U.S.C. § 271(f)(1), aimed at preventing companies from circumventing U.S. patent law by shipping “components” overseas for assembly.  The case tests whether software is such a “component” and whether creating copies of software overseas from a master disk shipped from the U.S. is covered by § 271(f)(1).

Specifically, the background and questions presented before the USSC have been articulated as follows:

Title 35 U.S.C. § 271(f)(1) provides that it is an act of direct patent infringement to “suppl[y]. . . from the United States . . . components of a patented invention . . . in such manner as to actively induce the combination of such components outside of the United States.”

In this case, AT&T Corp. alleges that when Microsoft Corporation’s Windows software is installed on a personal computer, the programmed computer infringes AT&T’s patent for a “Digital Speech Coder” system. AT&T sought damages not only for each Windows-based computer made or sold in the United States, but also, under Section 271(f)(1), for each computer made and sold abroad. Extending Section 271(f)—and consequently, the extraterritorial application of U.S. patent law—the Federal Circuit held that Microsoft infringed under Section 271(f)(1) when it exported master versions of its Windows software code to foreign computer manufacturers, who then copied the software code and installed the duplicate versions on foreign-manufactured computers that were sold only to foreign consumers.

The questions presented 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.”

One Response

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  1. Jake Ward said, on February 21, 2007 at 9:31 am

    A good summary of this case and the issues presented can also be found at SCOTUS Blog: .

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