Microsoft v. ATT ruling by US Supreme Court on 30 April 2007
Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), posed the question to the US Supreme Court of whether a company can be liable for patent violation for a product, in this case software, used in another country. The topic was thus not necessarily related to software and patentable subject matter, but there was room to discuss these topics, which SFLC did in their brief.
(For a more accurate summary, see this article by Tim Lee)
The litigation began in the United States District Court for the Southern District of Indiana, and an appeal was heard in the US Court of Appeals for the Federal Circuit (CAFC), and thereafter in the US Supreme Court.
The US legislation at issue in this case was USC 271(f).
As described by opening of the Supreme Court's opinion:
It is the general rule under United States patent law that no infringe ment occurs when a patented product is made and sold in another country. There is an exception. Section 271(f) of the Patent Act, adopted in 1984, provides that infringement does occur when one “suppl[ies] . . . from the United States,” for “combination” abroad, a patented invention’s “components.” 35 U. S. C. §271(f)(1). This case concerns the applicability of §271(f) to computer software first sent from the United States to a foreign manufacturer on a master disk, or by electronic transmission, then copied by the foreign recipient for installation on computers made and sold abroad.
AT&T holds a patent on a computer used to digitally encode and compress recorded speech. Microsoft’s Windows operating system has the potential to infringe that patent[...]
Supreme Court opinions
From the published decision:
GINSBURG, J., delivered the opinion of the Court, except as to footnote 14. SCALIA, KENNEDY, and SOUTER, JJ., joined that opinion in full. ALITO, J., filed an opinion concurring as to all but footnote 14, in which THOMAS and BREYER, JJ., joined. STEVENS, J., filed a dissenting opinion. ROBERTS, C. J., took no part in the consideration or decision of the case.
The opinion of the court was written by Justice Ginsburg. In it she rejected that the set of US and foreign acts constituted a violation of §271(f) of the Patent Act.
There is nothing in the record to suggest that any physical part of the disk became a physical part of the foreign-made computer, and such an occurrence would be contrary to the general workings of computers.
Because no physical object originating in the United States was combined with these computers, there was no violation of §271(f).
§271(f) of the Patent Act says that is it an infringement to, among other things, supply:
[...] 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 [...]
Most patent infringement falls under §271(a), which doesn't talk about "components", so the scope of this ruling is narrow.
Justice Stevens wrote a dissenting opinion. Some view this opinion as a change from the opinion he wrote in 1981 for Diamond v. Diehr ("no program-related invention is a patentable process"). His dissenting opinion for Microsoft v. AT&T begins:
I disagree with the Court’s suggestion that because software is analogous to an abstract set of instructions, it cannot be regarded as a “component” within the meaning of §271(f). See ante, at 9–10. Whether attached or de tached from any medium, software plainly satisfies the dictionary definition of that word. See ante, at 9, n. 11 (observing that “ ‘[c]omponent’ is commonly defined as ‘a constituent part,’ ‘element,’ or ‘ingredient’ ”). And unlike a blueprint that merely instructs a user how to do some thing, software actually causes infringing conduct to occur. It is more like a roller that causes a player piano to pro duce sound than sheet music that tells a pianist what to do.
Related pages on en.swpat.org
Supreme Court case
- The Supreme Court ruling
- Oral arguments (the hearing)
- SFLC's amicus brief (discussed on the SFLC page)
- Microsoft's page of links
- Microsoft and free software movement tag-team the Supreme Court, by Timothy B. Lee
- Federal Circuit Shows How to Protect Software Patents In Europe: AT&T v. Microsoft, July 2005
- Bush Administration Intercedes in BlackBerry Patent Case, Nov 2005
- Supreme Court Likely to Hear Transnational Patent Law Dispute, Oct 2006
- Patently-o gives an overview of Microsoft v. AT&T, Dec 2006
- Microsoft v. AT&T: Transnational patent Law, Feb 07, 2007
- En Banc: Methods do not have Exportable Components and Therefore Method Claims Cannot be Infringed Under Section 271(f), Aug 2009
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