• 軽量

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    軽量

    (LIGHT)
    $$ The distribution device is small in size and light in weight. / 本発明による分配装置は、小型で軽量である。(USP841…

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  • CAFC vacates TTAB decision in Royal Crown/ "zero" case

    The issue was the dismissal of Royal Crown’s opposition to proposed marks of Coca-Cola:

    Royal Crown Company, Inc. and Dr Pepper/Seven Up,
    Inc. (together, “Royal Crown”) appeal a decision of the
    Trademark Trial and Appeal Board (“the Board”) dismissing
    Royal Crown’s opposition to the registration of The
    Coca Cola Company’s (“TCCC”) trademarks for various
    soft drinks and sports drinks including the term ZERO.
    Royal Crown Co. v. Coca-Cola Co. (TTAB Decision),
    Opposition No. 91178927 (Parent Case), 2016 TTAB
    LEXIS 234 (T.T.A.B. May 23, 2016).1 Because we conclude
    that the Board erred in its legal framing of the
    question of the claimed genericness of TCCC’s marks, and
    failed to determine whether, if not generic, the marks
    were at least highly descriptive,

    Background:


    Whether the Board applied the correct legal standard
    to the facts is a question of law. Princeton Vanguard,
    LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 964 (Fed.
    Cir. 2015) (citing In re Dial–A–Mattress Operating Corp.,
    240 F.3d 1341, 1345 (Fed. Cir. 2001)). We review the
    Board’s legal determinations de novo and without deference.
    Hewlett-Packard Co. v. Packard Press, Inc., 281
    F.3d 1261, 1265 (Fed. Cir. 2002).
    Whether an asserted mark is generic or descriptive is
    a question of fact. Princeton Vanguard, 786 F.3d at 964
    (citing In re Hotels.com, LP, 573 F.3d 1300, 1301 (Fed.
    Cir. 2009)); In re Bayer Aktiengesellschaft, 488 F.3d 960,
    964 (Fed. Cir. 2007). “On appellate review of the Board’s
    factual finding of genericness, we determine whether, on
    the entirety of the record, there was substantial evidence
    to support the determination.” Hotels.com, 573 F.3d at
    1302.
    We review the Board’s factual findings for substantial
    evidence, which requires “such relevant evidence as a
    reasonable mind might accept as adequate to support a
    conclusion.” Consol. Edison Co. of N.Y. v. N.L.R.B, 305
    U.S. 197, 229 (1938). The Board’s analysis must encompass
    the entire evidentiary record. See Princeton Vanguard,
    786 F.3d at 970.
    At the outset, because TCCC seeks registration of its
    ZERO-containing marks under Section 2(f) of the Lanham
    Act, TCCC has conceded that ZERO is not inherently
    distinctive in association with the genus of goods at
    issue—soft drinks, energy drinks, and sports drinks. And,
    TCCC thus concedes that ZERO is, to some extent, descriptive.
    The only relief Royal Crown seeks in its oppositions
    to TCCC’s applications is that TCCC be required to
    disclaim the term ZERO.

    (…)

    If the Board concludes that Royal Crown has not met
    its burden to demonstrate the genericness of TCCC’s
    ZERO-bearing marks, TCCC will need to demonstrate the
    acquired distinctiveness of its marks—that, “in the minds
    of the public, the primary significance of a product feature
    or term is to identify the source of the product rather than
    the product itself.” Coach Servs., Inc. v. Triumph Learning
    LLC, 668 F.3d 1356, 1379 (Fed. Cir. 2012) (quoting
    Dial-A-Mattress, 240 F.3d at 1347). Only then can marks
    such as the marks TCCC claims, which TCCC has conceded
    are not inherently distinctive based on its Section 2(f)
    filings, qualify for registration on the principal register.
    See 15 U.S.C. § 1052(f); Two Pesos, Inc. v. Taco Cabana,
    Inc., 505 U.S. 763, 769 (1992).

    The outcome:


    We conclude the Board erred in its legal framing of
    the genericness inquiry in two ways—it failed to examine
    whether ZERO identified a key aspect of the genus at
    issue, and it failed to examine how the relevant public
    understood the brand name at issue when used with the
    descriptive term ZERO. We also find that the Board
    should have first assessed the level of the marks’ descriptiveness
    before determining whether TCCC satisfied its
    burden of establishing acquired distinctiveness. Absent
    such a finding, it is not possible for us to review on appeal
    whether the evidentiary record can support the Board’s
    finding of acquired distinctiveness. We vacate and remand
    for the Board to apply the proper legal standard for
    genericness an

    As to genericness:

    “The critical issue in
    genericness cases is whether members of the relevant
    public primarily use or understand the term sought to be
    protected to refer to the genus of goods or services in
    question.”

    (…)

    The Board’s approach was erroneous. The Board
    asked the wrong question in assessing the alleged genericness
    of the ZERO term. Specifically, the Board failed to
    consider that “a term can be generic for a genus of goods
    or services if the relevant public . . . understands the term
    to refer to a key aspect of that genus.” In re Cordua
    Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016) (emphasis
    added). We explained in In re Cordua that “the test is not
    only whether the relevant public would itself use the term
    to describe the genus, but also whether the relevant
    public would understand the term to be generic
    . Any
    term that the relevant public understands to refer to the
    genus . . . is generic.”

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  • Industry Reaction to WesternGeco LLC v. ION GeoPhysical

    We reached out to our distinguished panel of industry insiders, and the initial reaction is this decision is a clear win for patent owners. Efrat Kasznik: “The expansion of lost profits to include foreign lost profits enhances the ability of a patent owner to recover the appropriate amount damages that would make them whole, without artificially excluding foreign lost profit damages from the pool of available damages. It’s economic justice.” Ronald Abramson: “Today’s decision in WesternGeco is…

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  • Making Patents Great Again: U.S. Supreme Court Allows Foreign Lost Profits for Infringement Under 271(f)(2)

    The U.S. Supreme Court (Justice Thomas) issued the opinion in WesternGenco v. Ion concerning the availability of foreign profits as part of damages under section 284 of the Patent Act.  The U.S. Supreme Court basically holds that section 284 includes lost foreign profits—at least as a remedy to an infringement under 271(f)(2).  Essentially, WesternGenco owns patents directed “to a system that it developed for surveying the ocean floor” and does not license the patents.  ION “manufactured the components for [a] competing system and then shipped them to companies abroad.”  Western Genco sued for patent infringement under 271(f)(1) and (2).  The jury “awarded WesternGenco damages of $12.5 million in royalties and $93.4 million in lost profits.”  ION asserted that the lost profits are unavailable to WesternGenco because “271(f) does not apply extraterritorially.”  The Federal Circuit reversed and “had previously held that 271(a), the general infringement provision, does not allow patent owners to recover for lost foreign sales.”  The U.S. Supreme Court reverses the Federal Circuit.  

    In deciding whether section 284 (in conjunction with 271(f)(2)) applies extraterritorially, the Court examined the focus of the statute(s):

    “If the conduct relevant to the statute’s focus occurred in the United States, then the case involves a permissible domestic application” of the statute, “even if other conduct occurred abroad.”  RJR Nabisco, 579 U. S., at ___ (slip op., at 9).  But if the relevant conduct occurred in another country, “then the case involves an impermissible extraterritorial application regardless of any other conduct that occurred in U. S. territory.” Ibid.

    When determining the focus of a statute, we do not analyze the provision at issue in a vacuum. See Morrison, supra, at 267–269.  If the statutory provision at issue works in tandem with other provisions, it must be assessed in concert with those other provisions. Otherwise, it would be impossible to accurately determine whether the application of the statute in the case is a “domestic application.” RJR Nabisco, 579 U. S., at ___ (slip op., at 9). And determining how the statute has actually been applied is the whole point of the focus test.  See ibid.

    Applying these principles here, we conclude that the conduct relevant to the statutory focus in this case is domestic. We begin with §284.  It provides a general damages remedy for the various types of patent infringement identified in the Patent Act. The portion of §284 at issue here states that “the court shall award the claimant damages adequate to compensate for the infringement.” We conclude that “the infringement” is the focus of this statute. As this Court has explained, the “overriding purpose” of §284 is to “affor[d] patent owners complete compensation” for infringements.  General Motors Corp. v. Devex Corp., 461 U. S. 648, 655 (1983).  “The question” posed by the statute is “‘how much ha[s] the Patent Holder . . . suffered by the infringement.’” Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U. S. 476, 507 (1964). Accordingly, the infringement is plainly the focus of §284. But that observation does not fully resolve this case, as the Patent Act identifies several ways that a patent can be infringed. See §271. To determine the focus of §284 in a given case, we must look to the type of infringement that occurred. We thus turn to §271(f)(2), which was the basis for WesternGeco’s infringement claim and the lost-profits damages that it received. 

    Section 271(f)(2) focuses on domestic conduct.  It provides that a company “shall be liable as an infringer” if it “supplies” certain components of a patented invention “in or from the United States” with the intent that they “will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.”  The conduct that §271(f)(2) regulates—i.e., its focus—is the domestic act of “suppl[ying] in or from the United States.” As this Court has acknowledged, §271(f) vindicates domestic interests: It “was a direct response to a gap in our patent law,” Microsoft Corp., 550 U. S., at 457, and “reach[es] components that are manufactured in the United States but assembled overseas,” Life Technologies, 580 U. S., at ___ (slip op., at 11). As the Federal Circuit explained, §271(f)(2) protects against “domestic entities who export components . . . from the United States.”  791 F. 3d, at 1351.

    In sum, the focus of §284, in a case involving infringement under §271(f)(2), is on the act of exporting components from the United States. In other words, the domestic infringement is “the objec[t] of the statute’s solicitude” in this context. Morrison, 561 U. S., at 267.  The conduct in this case that is relevant to that focus clearly occurred in the United States, as it was ION’s domestic act of supplying the components that infringed WesternGeco’s patents. Thus, the lost-profits damages that were awarded to WesternGeco were a domestic application of §284. 

    Interestingly, the Court notes that it specifically does not address whether other doctrines such as proximate cause may limit damages under its decision.  Justice Gorsuch authored a dissent which was joined by Justice Breyer.  Justice Thomas addresses their dissent by stating:

    Two of our colleagues contend that the Patent Act does not permit damages awards for lost foreign profits.  Post, at 1 (GORSUCH, J., joined by BREYER, J., dissenting). Their position wrongly conflates legal injury with the damages arising from that injury. See post, at 2–3.  And it is not the better reading of “the plain text of the Patent Act.” Post, at 9.  Taken together, §271(f)(2) and §284 allow the patent owner to recover for lost foreign profits. Under §284, damages are “adequate” to compensate for infringement when they “plac[e] [the patent owner] in as good a position as he would have been in” if the patent had not been infringed.  General Motors Corp., supra, at 655. Specifically, a patent owner is entitled to recover “‘the difference between [its] pecuniary condition after the infringement, and what [its] condition would have been if the infringement had not occurred.’” Aro Mfg. Co., supra, at 507. This recovery can include lost profits. See Yale Lock Mfg. Co. v. Sargent, 117 U. S. 536, 552–553 (1886). And, as we hold today, it can include lost foreign profits when the patent owner proves infringement under §271(f)(2). 

    The opinion is available, here. 

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  • Making Patents Great Again: U.S. Supreme Court Allows Foreign Lost Profits for Infringement Under 271(f)(2)

    The U.S. Supreme Court (Justice Thomas) issued the opinion in WesternGenco v. Ion concerning the availability of foreign profits as part of damages under section 284 of the Patent Act.  The U.S. Supreme Court basically holds that section 284 includes lost foreign profits—at least as a remedy to an infringement under 271(f)(2).  Essentially, WesternGenco owns patents directed “to a system that it developed for surveying the ocean floor” and does not license the patents.  ION “manufactured the components for [a] competing system and then shipped them to companies abroad.”  Western Genco sued for patent infringement under 271(f)(1) and (2).  The jury “awarded WesternGenco damages of $12.5 million in royalties and $93.4 million in lost profits.”  ION asserted that the lost profits are unavailable to WesternGenco because “271(f) does not apply extraterritorially.”  The Federal Circuit reversed and “had previously held that 271(a), the general infringement provision, does not allow patent owners to recover for lost foreign sales.”  The U.S. Supreme Court reverses the Federal Circuit.  

    In deciding whether section 284 (in conjunction with 271(f)(2)) applies extraterritorially, the Court examined the focus of the statute(s):

    “If the conduct relevant to the statute’s focus occurred in the United States, then the case involves a permissible domestic application” of the statute, “even if other conduct occurred abroad.”  RJR Nabisco, 579 U. S., at ___ (slip op., at 9).  But if the relevant conduct occurred in another country, “then the case involves an impermissible extraterritorial application regardless of any other conduct that occurred in U. S. territory.” Ibid.

    When determining the focus of a statute, we do not analyze the provision at issue in a vacuum. See Morrison, supra, at 267–269.  If the statutory provision at issue works in tandem with other provisions, it must be assessed in concert with those other provisions. Otherwise, it would be impossible to accurately determine whether the application of the statute in the case is a “domestic application.” RJR Nabisco, 579 U. S., at ___ (slip op., at 9). And determining how the statute has actually been applied is the whole point of the focus test.  See ibid.

    Applying these principles here, we conclude that the conduct relevant to the statutory focus in this case is domestic. We begin with §284.  It provides a general damages remedy for the various types of patent infringement identified in the Patent Act. The portion of §284 at issue here states that “the court shall award the claimant damages adequate to compensate for the infringement.” We conclude that “the infringement” is the focus of this statute. As this Court has explained, the “overriding purpose” of §284 is to “affor[d] patent owners complete compensation” for infringements.  General Motors Corp. v. Devex Corp., 461 U. S. 648, 655 (1983).  “The question” posed by the statute is “‘how much ha[s] the Patent Holder . . . suffered by the infringement.’” Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U. S. 476, 507 (1964). Accordingly, the infringement is plainly the focus of §284. But that observation does not fully resolve this case, as the Patent Act identifies several ways that a patent can be infringed. See §271. To determine the focus of §284 in a given case, we must look to the type of infringement that occurred. We thus turn to §271(f)(2), which was the basis for WesternGeco’s infringement claim and the lost-profits damages that it received. 

    Section 271(f)(2) focuses on domestic conduct.  It provides that a company “shall be liable as an infringer” if it “supplies” certain components of a patented invention “in or from the United States” with the intent that they “will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.”  The conduct that §271(f)(2) regulates—i.e., its focus—is the domestic act of “suppl[ying] in or from the United States.” As this Court has acknowledged, §271(f) vindicates domestic interests: It “was a direct response to a gap in our patent law,” Microsoft Corp., 550 U. S., at 457, and “reach[es] components that are manufactured in the United States but assembled overseas,” Life Technologies, 580 U. S., at ___ (slip op., at 11). As the Federal Circuit explained, §271(f)(2) protects against “domestic entities who export components . . . from the United States.”  791 F. 3d, at 1351.

    In sum, the focus of §284, in a case involving infringement under §271(f)(2), is on the act of exporting components from the United States. In other words, the domestic infringement is “the objec[t] of the statute’s solicitude” in this context. Morrison, 561 U. S., at 267.  The conduct in this case that is relevant to that focus clearly occurred in the United States, as it was ION’s domestic act of supplying the components that infringed WesternGeco’s patents. Thus, the lost-profits damages that were awarded to WesternGeco were a domestic application of §284. 

    Interestingly, the Court notes that it specifically does not address whether other doctrines such as proximate cause may limit damages under its decision.  Justice Gorsuch authored a dissent which was joined by Justice Breyer.  Justice Thomas addresses their dissent by stating:

    Two of our colleagues contend that the Patent Act does not permit damages awards for lost foreign profits.  Post, at 1 (GORSUCH, J., joined by BREYER, J., dissenting). Their position wrongly conflates legal injury with the damages arising from that injury. See post, at 2–3.  And it is not the better reading of “the plain text of the Patent Act.” Post, at 9.  Taken together, §271(f)(2) and §284 allow the patent owner to recover for lost foreign profits. Under §284, damages are “adequate” to compensate for infringement when they “plac[e] [the patent owner] in as good a position as he would have been in” if the patent had not been infringed.  General Motors Corp., supra, at 655. Specifically, a patent owner is entitled to recover “‘the difference between [its] pecuniary condition after the infringement, and what [its] condition would have been if the infringement had not occurred.’” Aro Mfg. Co., supra, at 507. This recovery can include lost profits. See Yale Lock Mfg. Co. v. Sargent, 117 U. S. 536, 552–553 (1886). And, as we hold today, it can include lost foreign profits when the patent owner proves infringement under §271(f)(2). 

    The opinion is available, here. 

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  • WesternGeco v. Ion: Supreme Court holds that foreign lost profits available for infringement under 271(f)

    By Jason Rantanen

    WesternGeco LLC v. Ion Geophysical Corp. (2018), 2018 U.S. LEXIS 3842   Download Opinion
    Majority: Thomas (author), Roberts, Kennedy, Ginsburg, Alito, Sotomayor, and Kagan. Dissent: Gorsuch, joined by Breyer.

    In its final patent-related opinion of this term, the Supreme Court held that 35 U.S.C. § 284 permits the award of lost foreign profits.  In reaching its conclusion, the Court rejected the position of the Federal Circuit that the presumption against extraterritoriality precluded the award.  Full disclosure: I joined an amicus brief written by Emory Professor Timothy Holbrook that argued that the presumption against extraterritoriality applied here.

    From pages 7-8 of the majority opinion:

    In sum, the focus of §284, in a case involving infringement under §271(f)(2), is on the act of exporting components from the United States. In other words, the domestic infringement is “the objec[t] of the statute’s solicitude” in this context. Morrison, 561 U. S., at 267. The conduct in this case that is relevant to that focus clearly occurred in the United States, as it was ION’s domestic act of supplying the components that infringed WesternGeco’s patents. Thus, the lost-profits damages that were awarded to WesternGeco were a domestic application of §284.

    Continue reading WesternGeco v. Ion: Supreme Court holds that foreign lost profits available for infringement under 271(f) at Patently-O.

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  • Supreme Court win for Patent Owners on Lost Foreign Profits in WesternGeco v. ION Geophysical

    Earlier today the United States Supreme Court issued a decision in WesternGeco LLC v. ION Geophysical Corp., which in a 7-2 decision ruled that a patent owner may recover lost foreign profits for infringement under 35 U. S. C. 271(f)(2). The question decided, as set forth in the opinion by Justice Thomas, writing for the majority, was: “The question in this case is whether these statutes allow the patent owner to recover for lost foreign profits.” Thomas simply answered the question in the…

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  • Patently-O Bits and Bytes by Juvan Bonni

    Patently-O Bits and Bytes by Juvan Bonni

    Recent Headlines in the IP World:

    • Renae Reints: Take a Look at the 10 Millionth U.S. Patent (And the First) (Source: Fortune)
    • Jennifer Gronwaldt: Marshall Gerstein Secures Victory for PopSockets at the International Trade Commission (Source: Business Wire)
    •  Andrew Chung: Schlumberger Oil Services Wins in U.S. Supreme Court on Patent Damages (Source: Reuters)
    • Bryan Menegus: Bizarre Amazon Patent Application Suggests Jellyfish-Like Drones for Warehouses (Source: Gizmodo)
    • Andy Boxall: Take a Look at What Could be the Future of Samsung’s Galaxy Phones (Source: Digital Trends)

    Commentary and Journal Articles:

    • Prof. Nishant Dass, Dr. Vikram K. Nanda, and Dr. Steven Chong Xiao: Intellectual Property Protection and Financial Markets: Patenting vs. Secrecy (Source: SSRN)
    • Dave Muoio: Why Walmart Filed a Patent for Blockchain, Wearables and EHR Data (Source Healthcare IT News)
    • Submitted by Trent Ostler: Understanding the Examiner Answer: Analyze Anything New and Contest as Needed (Source: Anticipat Blog)
    • Gordon Harling: IP Policy Reform Needs to Start at Canada’s Universities (Source: The Globe and Mail)
    • Attorney Lucy Rana: Unfaking FIFA: Battling The Ambush Marketing And Counterfeits (Source: Mondaq)

    New Job Postings on Patently-O:

    • Fiala & Weaver P.L.L.C.

    Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

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  • No monkey business “The Evolving IP and IT Landscapes” by AIPLITL

    Little Ape wants u there!
    for AIPLITL

    Chris Job of the Centre for Intellectual Property Law at the University of Pretoria has highlighted an upcoming conference hosted by AIPLITL. This is what you need to know:

    • AIPLITL is The South African Association of Intellectual Property Law and Information Technology Law Teachers and Researchers 
    • This is their annual conference.
    • The conference theme is “The Evolving IP and IT Landscapes” and “promises to provide an excellent opportunity to exchange knowledge and share ideas with colleagues working in the fields of intellectual property law and information technology law.” It looks like a cracker – check out the full program here.
    • Date: Wednesday, 4 July to Thursday, 5 July 2018
    • Time: 08:00 for 08:30 on 4 July
    • Venue: CSIR International Convention Centre, Building 39, Meiring Naude Road, Brummeria, Pretoria 
    • GPS coordinates: S25 45.317 E028 16.606 (South Gate)
    • Enquiries: werner.vanstraaten@up.ac.za
    Be there or be square.
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  • WesternGeco v. ION: Analysis

    Again, here is a link to the opinion (majority opinion by Justice Thomas; dissent filed by Justice Gorsuch, joined by Justice Breyer).  From the opinion:
    Under the Patent Act, a company can be liable for patent infringement if it ships components of a patented invention overseas to be assembled there. See 35 U.S.C. § 271(f)(2). A patent owner who proves infringement under this provision is entitled to recover damages. § 284.The question in this case is whether these statutes allow the patent owner to recover for lost foreign profits. We hold that they do (p.1).

    The majority opinion centers on the Supreme Court’s extraterritoriality analysis, although it does also reiterate, as past decisions have done, that § 284 is intended to provide “full compensation” for the infringement.  (The Court expressly decides not to “address the extent to which other doctrines, such as proximate cause, could limit or preclude damages in particular cases” (p.9 n.3).  I expected the Court would address that issue, and I think it should have.)  Basically, the Court concludes that the conduct that § 271(f)(2) addresses is domestic, and thus that § 284 should be read as providing full compensation for that act of domestic infringement.  Here are some of the key excerpts from what is a fairly short opinion:
    This Court has established a two-step framework for deciding questions of extraterritoriality. The first step asks “whether the presumption against extraterritoriality has been rebutted.” RJR Nabisco, Inc. v. European Community, 579 U. S. ___, ___ (2016) (slip op., at 9). It can be rebutted only if the text provides a “clear indication of an extraterritorial application.” Morrison v. National Australia Bank Ltd., 561 U.S. 247, 255 (2010). If the presumption against extraterritoriality has not been rebutted, the second step of our framework asks “whether the case involves a domestic application of the statute.” RJR Nabisco, 579 U.S., at ___ (slip op., at 9). Courts make this determination by identifying “the statute’s ‘focus’” and asking whether the conduct relevant to that focus occurred in United States territory. Ibid. If it did, then the case involves a permissible domestic application of the statute. See ibid.

    We resolve this case at step two. While “it will usually be preferable” to begin with step one, courts have the discretion to begin at step two “in appropriate cases.” See id., at ___, n.5 (slip op., at 10, n.5) (citing Pearson v. Callahan, 555 U.S. 223, 236–243 (2009)). . . .

    Under the second step of our framework, we must identify “the statute’s ‘focus.’” RJR Nabisco, supra, at ___ (slip op., at 9). The focus of a statute is “the objec[t] of [its] solicitude,” which can include the conduct it “seeks to ‘regulate,’” as well as the parties and interests it “seeks to ‘protec[t]’” or vindicate. Morrison, supra, at 267 (quoting Superintendent of Ins. of N. Y. v. Bankers Life & Casualty Co., 404 U.S. 6, 12, 10 (1971)). “If the conduct relevant to the statute’s focus occurred in the United States, then the case involves a permissible domestic application” of the statute, “even if other conduct occurred abroad.” RJR Nabisco, 579 U.S., at ___ (slip op., at 9). But if the relevant conduct occurred in another country, “then the case involves an impermissible extraterritorial application regardless of any other conduct that occurred in U.S.territory.” Ibid. . . .

    Applying these principles here, we conclude that the conduct relevant to the statutory focus in this case is domestic. We begin with § 284. It provides a general damages remedy for the various types of patent infringement identified in the Patent Act. The portion of § 284 at issue here states that “the court shall award the claimant damages adequate to compensate for the infringement.” We conclude that “the infringement” is the focus of this statute. As this Court has explained, the “overriding purpose” of § 284 is to “affor[d] patent owners complete compensation” for infringements. General Motors Corp. v. Devex Corp., 461 U.S. 648, 655 (1983). “The question” posed by the statute is “‘how much ha[s] the Patent Holder. . . suffered by the infringement.’” Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 507 (1964). Accordingly, the infringement is plainly the focus of § 284.

    But that observation does not fully resolve this case, as the Patent Act identifies several ways that a patent can be infringed. See § 271. To determine the focus of § 284 in a given case, we must look to the type of infringement that occurred. We thus turn to § 271(f)(2), which was the basis for WesternGeco’s infringement claim and the lost-profits damages that it received. . . .

    Section 271(f)(2) focuses on domestic conduct. It provides that a company “shall be liable as an infringer” if it“supplies” certain components of a patented invention “in or from the United States” with the intent that they “will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.” The conduct that § 271(f)(2) regulates—i.e., its focus—is the domestic act of “suppl[ying] in or from the United States.” . . .

    In sum, the focus of § 284, in a case involving infringement under § 271(f)(2), is on the act of exporting components from the United States. In other words, the domestic infringement is “the objec[t] of the statute’s solicitude” in this context. Morrison, 561 U. S., at 267. The conduct in this case that is relevant to that focus clearly occurred in the United States, as it was ION’s domestic act of supplying the components that infringed WesternGeco’s patents. Thus, the lost-profits damages that were awarded to WesternGeco were a domestic application of § 284 (pp. 5-8).

    So, suppose we have a replay of Power Integrations or Carnegie-Mellon.  The infringing conduct at issue is a manufacture, use, or sale that occurs in the United States, in violation of § 271(a), but which triggers a chain of events resulting in (1) the U.S. patent owner losing a sale to the defendant in another country, or (2) the defendant obtaining higher profits on the sales it makes in another country.  Is the U.S. patent owner entitled to its lost profit in case (1), or a higher reasonable royalty in case (2), as long as the causal chain is not too remote–that is, as long as the sales the defendant made abroad were proximately caused by the infringement?  As I’ve noted previously, I’ve come around to the view that the answer is yes, and I’m inclined to read Justice Thomas’s statements as quoted above as supporting that result.  He says that the “focus” of § 284 is “the infringement,” and that § 284 is intended to provide “full compensation” for such infringement; and  § 271(a) defines infringement as the unauthorized domestic manufacture, sale, or use of the patented invention.  In other words, “the conduct relevant to” § 284’s “focus” is domestic conduct, and as long as that is so § 284 provides for full compensation for the harm flowing from that domestic conduct (subject, surely, to normal proximate cause limitations, even if the Court stubbornly refuses to address that topic).  So there’s no need to fret about whether whether the presumption against extraterritoriality applies, I guess.
    In dissent, Justice Gorsuch actually agrees that “WesternGeco’s lost profits claim does not offend the judicially created presumption against the extraterritorial application of statutes.”  Nevertheless, he argues that the Patent Act itself does not “permit awards of this kind” because “[a] U.S. patent provides a lawful monopoly over the manufacture, use, and sale of an invention within this country only,” and “WesternGeco seeks lost profits for use of its invention beyond our borders” (dissent p.1).  But I think Justice Thomas has the better of the argument here, when he states in the majority opinion that this “position wrongly conflates legal injury with the damages arising from that injury” (majority opinion p.9).  And I’m not convinced by Justice Gorsuch’s parade of horribles, for example this:
    Suppose a company develops a prototype microchip in a U.S. lab with the intention of manufacturing and selling the chip in a foreign country as part of a new smartphone. Suppose too that the chip infringes a U.S. patent and that the patent owner sells its own phone with its own chip overseas. Under the terms of the Patent Act, the developer commits an act of infringement by creating the prototype here, but the additional chips it makes and sells outside the United States do not qualify as infringement. Under WesternGeco’s approach, however, the patent owner could recover any profits it lost to that foreign competition—or even three times as much, see § 284—effectively giving the patent owner a monopoly over foreign markets through its U.S. patent. That’s a very odd role for U.S. patent law to play in foreign markets, as “foreign law alone, not United States law,” is supposed to govern the manufacture, use, and sale “of patented inventions in foreign countries.” Microsoft, supra, at 456 (dissent pp. 7-8).
    I have a hard time imagining the initial act of manufacturing the infringing prototype in the U.S. as being the proximate cause of all of the infringer’s sales abroad.  And what about the noninfringing alternative of manufacturing the prototype in a country where it isn’t patented (a point the Solicitor General made in his brief, as I recall)?  That would seem to eliminate most of the damages resulting from the foreign sales, I should think.
    Justice Gorsuch also worries that other countries will follow suit:
    Worse yet, the tables easily could be turned. If our courts award compensation to U.S. patent owners for foreign uses where our patents don’t run, what happens when foreign courts return the favor? Suppose our hypothetical microchip developer infringed a foreign patent in the course of developing its new chip abroad, but then mass produced and sold the chip in the United States. A foreign court might reasonably hold the U.S. company liable for infringing the foreign patent in the foreign country. But if it followed WesternGeco’s theory, the court might then award monopoly rent damages reflecting a right to control the market for the chip in this country—even though the foreign patent lacks any legal force here (dissent p.8).
    I suppose that’s a risk–but for that matter, other countries could interpret their patents as having extraterritorial force altogether, if they wanted to.  But they won’t.  If proximate cause and analysis of noninfringing alternatives would limit the damages available for most of the losses occurring outside the U.S., the practical consequences of WesternGeco won’t be so far-reaching, and won’t provoke such a far-reaching response from other countries. 
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