Summary
finding no 271(f) liability for exportation of instruction for foreign disposal of computer chips
Summary of this case from AT&T Corp. v. Microsoft Corp.Opinion
CIVIL ACTION NO. 02-11562-RWZ
May 7, 2003
MEMORANDUM OF DECISION
Plaintiff Gerald N. Pellegrini is the owner of U.S. Patent 4,651, 069 for a "Back-EMF Brushless D.C. Motor Drive Circuit," issued on March 17, 1987. Defendant Analog Devices, Inc., develops and manufactures high performance analog, mixed signal and digital signal processing integrated circuit chips. These chips are used in a wide rangeof applications. Plaintiff alleges that certain chips, denoted "ADMC" by defendant, infringe his patent when combined with other components in a particular type of brushless motor. Both parties have moved for partial summary judgment.
It is undisputed that all of the ADMC chips are manufactured outside the United States and with very few exceptions, all are also sold and shipped to customers outside the country. Therefore, says defendant, its activities are not subject to United States patent laws, which do not have extraterritorial effect. Rotec Industries, Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. 2000) (stating the a U.S. patent only confers rights within the United States and acts in foreign countries will not infringe on these rights); Freedom Wireless, Inc. v. Boston Communications Group, Inc., 198 F. Supp.2d 11, 15 (D.Mass. 2002) (The "rights conferred to a patent holder by the laws of this country are confined to the United States and its territories.").
Defendant is not seeking summary judgment as to those chips shipped to the United States.
Plaintiff relies on 35 U.S.C. § 271(f) which provides as follows:
Whoever without authority supplies or causes to be supplied in or from the United States 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 outside the United States in a manner that would infringe the patent if such combination occurred within the United States shall be liable as an infringer.
Plaintiff makes much of the fact that defendant's headquarters are located in the United States. Acknowledging that the ADMC chips are not physically supplied "in or from" the United States, plaintiff contends that because instruction for their disposition comes from defendant's United States headquarters, the chips, in some metaphysical sense, come from the United States as well. The difficulty is that the argument, more sophistry than fair reading of clear statutory language, is unsupported also by precedent. Rotec Industries, Inc. v. Mitsubishi Corp., 215 F.3d at 1257-58 (rejecting argument that an offer to supply components from within the United States violates Section 271(f) and affirming dismissal of the claim because components were manufactured outside United States.).
Accordingly, defendant's Motion for Partial Summary Judgment is ALLOWED with respect to all ADMC chips manufactured abroad and shipped to customers in foreign countries. Plaintiff's Motion for Partial Summary Judgment is DENIED.