Brief Amici Curiae of Intellectual Property Professors in Support of Petitioners

31 Pages Posted: 15 Sep 2016  

Timothy R. Holbrook

Emory University School of Law

Margo A. Bagley

Emory University School of Law; University of Virginia School of Law; Emory University School of Law

Andrew Chin

University of North Carolina (UNC) at Chapel Hill - School of Law

Lucas Osborn

Campbell University Law School

Jason Rantanen

University of Iowa - College of Law

Date Written: September 14, 2016

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

Suggested Citation

Holbrook, Timothy R. and Bagley, Margo A. and Chin, Andrew and Osborn, Lucas and Rantanen, Jason, Brief Amici Curiae of Intellectual Property Professors in Support of Petitioners (September 14, 2016). UNC Legal Studies Research Paper No. 2838959. Available at SSRN: https://ssrn.com/abstract=2838959 or http://dx.doi.org/10.2139/ssrn.2838959

Timothy Richard Holbrook (Contact Author)

Emory University School of Law ( email )

1301 Clifton Road
Atlanta, GA 30322
United States
404-712-0353 (Phone)

Margo A. Bagley

Emory University School of Law ( email )

1301 Clifton Road
Atlanta, GA 30322
United States
404-727-8293 (Phone)
404-727-6820 (Fax)

University of Virginia School of Law ( email )

580 Massie Road
Charlottesville, VA 22903
United States

Emory University School of Law ( email )

1301 Clifton Road
Atlanta, GA 30322
United States
404-727-8293 (Phone)
404-727-6820 (Fax)

Andrew Chin

University of North Carolina (UNC) at Chapel Hill - School of Law ( email )

Van Hecke-Wettach Hall
100 Ridge Road
Chapel Hill, NC 27599-3380
United States
919-962-4116 (Phone)

Lucas Osborn

Campbell University Law School ( email )

United States
919-865-4673 (Phone)

Jason Rantanen

University of Iowa - College of Law ( email )

Melrose and Byington
Iowa City, IA 52242
United States

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