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September 6, 2005
Court Legislation
Courts are forced to interpret a law only because a law requires interpretation. In effect, the judiciary necessarily acts as a legislature when the legislature abdicates. Case in point: 35 U.S.C. §271(a).
35 U.S.C. 271 Infringement of patent.
(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
By itself, prima facie, §271(a) could be broadly interpreted that if "patented invention" was made, used, sold or imported in the U.S., that constitutes infringement; no piecemeal slicing and dicing required.
The Court of Appeals Federal Circuit (CAFC) has however complicated §271(a) in its rulings of NTP v. Research-in-Motion (RIM). In its August 2005 ruling, the CAFC bifurcated system claims and method claims in determining infringement of §271(a). A system is within the United States if it "is the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained." Infringement of a method claim only occurs if "each of the steps is performed within this country." The court had other opinions on §271 for which no statutory basis could be readily perceived by one not inured of the courts weaving case law precedent like a tapestry.
The Patent Reform Act of 2005, currently stalled in Congress, does not address the "solutions" the Court is providing to codify §271(a). One might fault the Court for its decisions, but the Court is only filling a void left by Congress in lack of specificity.
Owing to the significance of the case, numerous interested parties involved in international business, including Microsoft, Intel, and our neighbor to the north, Canada, have filed amicus briefs. An amicus brief is to the court what lobbying is the legislature. The difference is, more often than not, influence peddling carries less weight with the Court than with those on the Hill, who sometimes resemble pigs at a trough. With that in mind, as well with the Court's willingness to comprehend and tackle difficult patent issues, perhaps court patent legislation isn't so bad after all.
Dennis Crouch of Patently-O has offered excellent detailed coverage of the NTP v. RIM case.
Posted by Patent Hawk at September 6, 2005 2:01 PM | The Patent System