Brief Amici Curiae of Intellectual Property Professors in Support of Petitioners

Abstract

The Supreme Court has made clear that, absent a clear expression from Congress, U.S. laws do not apply extraterritorially. The Court has noted that the presumption against extraterritoriality has particular force in the context of patent law.

The Federal Circuit has given short shrift to this argument. This brief argues that this case presents the opportunity for the Court to strike the appropriate extraterritorial reach for a U.S. patent under 35 U.S.C. § 271(f) and to signal to the Federal Circuit to take the presumption against extraterritoriality seriously.

On the merits, the brief offers two approaches to answer this question. The first, following the typical approach to extraterritoriality, argues that the Federal Circuit’s interpretation was unnecessarily broad in light of the presumption against extraterritoriality.

Second, the brief offers an alternative approach for patent law, drawing on academic literature, criminal law, and trademark law: courts should consider the potential for conflicts with foreign law in assessing whether liability for patent infringement is appropriate.

Keywords: Promega, Life Technologies, inducement, 35 U.S.C. 271(f), 271(f), export, patent infringement, staple article of commerce, Taq-polymerase, extraterritorial, extraterritoriality, conflict of laws, comity