Brief Amici Curiae of Intellectual Property Professors in Support of Petitioner, No. 18-600, Texas Advanced Optoelectronic Solutions, Inc. V. Renesas Electronics America, Inc.

No. 18-600 In the Supreme Court of the United States, 2018

30 Pages Posted: 27 Dec 2018

See all articles by Timothy R. Holbrook

Timothy R. Holbrook

Emory University

Ann Bartow

Franklin Pierce Center for IP at UNH Law

Andrew Chin

University of North Carolina School of Law

David C. Hricik

Mercer University - Walter F. George School of Law

Yvette Joy Liebesman

Saint Louis University - School of Law

Lucas Osborn

Campbell University Law School

Date Written: December 10, 2018

Abstract

To comply with the obligations of the Uruguay Round Agreements, particularly the Agreement on the Trade Related Aspects of Intellectual Property (TRIPS), Congress amended 35 U.S.C. § 271(a) to make it an act of infringement to “offer to sell” a patented invention within the United States. See Uruguay Round Agreements Act, Pub. L. No. 103-465, §§ 531-533, 108 Stat. 4809 (1994).

The Federal Circuit has interpreted this provision in a manner contrary to the presumption against the extraterritorial reach of United States laws. The Federal Circuit has held that location of the ultimate sale contemplated in the offer controls the locus of the act of infringement, not the location of the offer. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296, 1309 (Fed. Cir. 2010) (holding that “the location of the contemplated sale controls whether there is an offer to sell within the United States.”). The Federal Circuit further clarified that an offer made in the United States to sell the invention abroad is not infringing. Halo Elecs., Inc. v. Pulse Elecs., Inc., 831 F.3d 1369, 1380 (Fed. Cir. 2016).

As a result, the court has created an odd dichotomy: activity entirely outside of the United States can trigger liability for infringement of a United States patent, whereas activity within the United States does not. Such an approach is inconsistent with the presumption against extraterritoriality, particularly the two-step framework of RJR Nabisco, Inc. v. European Community, 136 S. Ct. 2090, 2101 (2016). This issue is of considerable importance, and this case is an excellent vehicle for assessing the appropriate territorial scope of § 271(a).

Keywords: Transocean, Halo, Extraterritoriality, Offer to Sell, Patent, Infringement, RJR Nabisco

Suggested Citation

Holbrook, Timothy Richard and Bartow, Ann and Chin, Andrew and Hricik, David C. and Liebesman, Yvette Joy and Osborn, Lucas, Brief Amici Curiae of Intellectual Property Professors in Support of Petitioner, No. 18-600, Texas Advanced Optoelectronic Solutions, Inc. V. Renesas Electronics America, Inc. (December 10, 2018). No. 18-600 In the Supreme Court of the United States, 2018. Available at SSRN: https://ssrn.com/abstract=3298888 or http://dx.doi.org/10.2139/ssrn.3298888

Timothy Richard Holbrook (Contact Author)

Emory University ( email )

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

Ann Bartow

Franklin Pierce Center for IP at UNH Law ( email )

Two White Street
Concord, NH 03301
United States

Andrew Chin

University of North Carolina School of Law ( email )

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

David C. Hricik

Mercer University - Walter F. George School of Law ( email )

1021 Georgia Ave
Macon, GA 31207-0001
United States

Yvette Joy Liebesman

Saint Louis University - School of Law ( email )

100 N. Tucker Blvd.
St. Louis, MO 63101
United States

Lucas Osborn

Campbell University Law School ( email )

United States
919-865-4673 (Phone)

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