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Can U.S. Patents Be Drafted to Rein in Overseas Infringers?
The increasing transnational nature of communications systems and, more specifically, the frequency and ease with which Internet transactions may be handled from locations around the globe make more difficult the enforcement of certain patent rights. Technology allows transactions involving participants (human and/or machine) to be in more than one nation, and a working system or method to be fragmented across a number of jurisdictions. This type of scenario may frustrate efforts to enforce patent rights when no one jurisdiction includes all of the elements necessary to establish infringement. This situation arises most frequently in the context of the Internet where an accused infringer services U.S. customers using servers located outside the country. Although the U.S. courts have recognized this problem, the law in this area is far from settled and focusing on these issues from the beginning of the patent application drafting process will increase the chances of successfully enforcing such patents.
The U.S. patent laws are territorial. Congress provided that “whoever makes, uses, offers to sell, or sells any patented invention, within the United States … infringes the patent.” 35 U.S.C. '271(a). That is, U.S. patents are not infringed by acts in foreign countries even where those acts would constitute infringement if performed in the United States. Deep South Packing Co. v. Laitram Corp., 406 U.S. 518 (1972). The U.S. Court of Claims (hereinafter “USCC”) refined this doctrine to indicate that infringement could be based, at least in part, on activity outside the United States. Specifically, the USCC found infringement where a part of an accused system was located in Norway stating that “only a portion of the claimed combination … is located outside the United States while the beneficial use of the completed assembly actually occurs within the jurisdiction of the United States.” Decca Ltd. v. The United States, 544 F.2d 1070, 1081 (U.S. Court of Claims 1976) (hereinafter “Decca“).
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
The DOJ's New Parameters for Evaluating Corporate Compliance Programs
The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.
Use of Deferred Prosecution Agreements In White Collar Investigations
This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
A Lawyer's System for Active Reading
Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.