UK: Extraterritorial Reach of US Patent Law

Last Updated: 9 March 2006
Article by Koos Rasser

Now that individual Member States of the European Union have given up some of their sovereignty, the extraterritorial jurisdiction of patent judges is a point that merits serious debate.

As the United States is not a member of anything that even approaches the EU in terms of level of cooperation, one might not expect the issue to play much of a role in US court practice. Yet the US patent statute provides a basis for extraterritorial reach, and recent decisions of the Court of Appeals for the Federal Circuit (CAFC) have expanded and solidified that reach. In addition, the CAFC has been called upon to decide whether the US District Courts have subject matter jurisdiction over the alleged infringement of a foreign patent.

Extraterritorial Reach of the US Patent Statute

35 USC 271(f) was enacted in 1984 to close a loophole that had come to the fore in Deepsouth Packing v Laitram Corp, 406 U.S. 518 (1972), where the defendant successfully avoided infringement liability. The defendant manufactured an infringing product in the US that was sold in an overseas market. However, the components for this product were shipped as a kit of parts that were then assembled outside of the US. The Supreme Court held that the overseas assembly of the infringing product avoided infringement because it took place outside the US. Congress disliked the outcome in Deepsouth and subsequently amended the patent statute by adding section 271(f) to 35 USC.

The section consists of two subsections, 271(f)(1) and 271(f)(2). Section 271(f)(2) reads as follows:

"Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial non-infringing use, where such component is uncombined in whole or part, knowing that such component is so made or adapted and intending that such component will be combined outside of 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."

Section 271(f)(1) provides a parallel provision for staple articles where the assembly is directed or encouraged from the US by the defendant.

Until recently, these provisions were applied only to situations where the "components" were pieces of hardware such as machinery parts, etc. This situation has changed in light of a series of CAFC decisions in 2005.

In Eolas v Microsoft, 399 F. 3rd 1325 (Fed. Cir. 2005), Microsoft was found to have infringed an Eolas patent for opening thirdparty applications (or "plug-ins") within a browser. When it came to assessing damages, the patentee asserted that overseas sales of the software should be included in the damages calculation. In the US, Microsoft created golden master disks that were shipped to overseas computer manufacturers who then used these disks to install the infringing software on the hard drives of their computers.

The CAFC sided with the patentee. In an opinion by Judge Rader, the CAFC panel held that "every component of every form of invention deserves the protection of 35 USC 271(f)". The subject matter of a software patent is typically a source code incorporated into some tangible medium. By providing the source code, Microsoft provided a "component" of the patented invention within the meaning of Section 271(f).

Only a few months later, the CAFC revisited the issue in AT&T v Microsoft, 414 F, 3d 1366 (Fed. Cir. 2005). On very similar grounds, the CAFC concluded that Microsoft was liable for oversees production of copies of the infringing software as a result of having provided the master disks to the foreign manufacturers. Interestingly, Judge Rader this time dissented – expressing his dismay with the majority opinion:

"This court’s expansion of [US law] to offer protection to foreign markets from foreign competitors distorts both the language and the policy of the statute."

This is an interesting quote. The result in AT&T is clearly the logical result from the ruling in Eolas. Yet Judge Rader, who was the author of the unanimous decision in Eolas, does not appear ready to take this small extra step. The reason appears to be his unease with the power that it gives US courts over foreign activities.

In Union Carbide v Shell, 425 F.3d 1366, Judge Rader again wrote for the majority. The defendant in this case was found to have infringed a US patent on a chemical process. The patentee tried to collect damages for oversees infringement on the basis that Shell had supplied the catalyst for use in the process from the US. The CAFC found Shell liable for the foreign infringement:

"This case… presents an even stronger basis [than the Eolas case] for applying 271(f) because Shell supplies all of its catalysts from the United States directly to foreign affiliates. Shell’s foreign affiliates do not copy these catalysts and use the copies in a foreign process, but instead use the catalysts supplied by Shell directly in their processes."

There can be no doubt that the CAFC decisions in these three recent cases have put new teeth into 35 USC 271(f).

Also in 2005, the CAFC decided the BlackBerry case – NTP, Inc. v Research in Motion, Ltd., 418 F. 3d 1282 (Fed. Cir. 2005). Research in Motion (RIM) argued that it did not infringe NTP’s patents because an essential component of the accused system, a relay server, was located in Canada. The context of this issue was Section 271(a) that states, "It shall be an infringement to make, use, sell… within the United States". On the face of it, this section does not provide a basis for extraterritorial reach. However, the CAFC looked at the meaning of the term "use" and came to the following definition:

"The use of a claimed system under section 271(a) 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."

Under this definition, the apparatus and system claims were found to be infringed (the required control was deemed to be exercised by RIM’s US customers when they used their handheld devices in the US).

By contrast, the CAFC concluded that a process is only "used" in the US if all process steps are carried out in the US. Therefore, NTP’s method claims were found not to be infringed. There was also no infringement under 271(f) because:

"RIM’s supply of the BlackBerry handheld devices… to its customers in the United States is not the statutory "supply" of any "component" steps for combination into NTP’s patented methods."

Enforcing Foreign Patents in a US Court

There is no statutory basis for a US court to have subject matter jurisdiction over the infringement of a foreign patent. The issue comes up in cases where the US court has personal jurisdiction over the parties as a result of alleged infringement in the US of a US patent, and where the patentee alleges that the same product (or process) infringes parallel foreign patents.

The issue has recently been brought to the fore by a ruling in Voda v Cordis, 2004 WL 3392022 (W.D. Okla.). Mr Voda brought suit against Cordis for alleged infringement of three US patents. He later sought leave to amend the complaint to assert that Cordis was also infringing his Canadian and European patents.

The United States District Court for the Western District of Oklahoma granted the motion. This ruling went up to the CAFC, which has invited amicus briefing on the following issues:

  1. Does a US district court have the authority to decide a claim of infringement of a patent issued by another country?
  2. If so, under what circumstances, if any, should a US district court exercise that authority?

There are two earlier court of appeals cases dealing with these issues. In Ortman v Stanray Corporation, 371 F. 2d 154 (7th Cir. 1967), the court decided that such jurisdiction was possible. It put much weight on the fact that the pivotal issue was whether there had been a breach of contract – an issue that was identical for the US and foreign patents.

The CAFC itself dealt with the issue in Mars v Kabushiki-Kaisha, 24 F. 3d 1368 (Fed. Cir. 1994), where it found that the court had no jurisdiction over the alleged infringement of the Japanese patent owned by Mars. According to the CAFC, in Mars there was no "common nucleus of operative fact" (necessary to establish supplemental jurisdiction). The US patent and the Japanese patent had different claims. In addition, the allegedly infringing activities in Japan were different to those in the US. As the court put it:

"The respective patents are different, the accused devices are different, the alleged acts are different and the governing laws are different. The assertion of supplemental jurisdiction over the Japanese infringement claim would in effect result in the trial court having to conduct two trials at one time."

In the more typical case, the alleged acts may well be identical and even the foreign patents may be more or less identical to the US patents. However, the governing laws will always be different. It is far from clear what the CAFC will rule in the Voda case.

An important hurdle to exercising jurisdiction over foreign patents is the Act of State doctrine that prevents all US courts (state or federal) from questioning the validity of a foreign country’s sovereign acts within its own territory. The grant of a patent probably qualifies as such a sovereign act and makes it impossible for a US court to rule on the validity of a foreign patent. As patent invalidity is a standard defence in patent litigation, the US court would find it difficult to deal properly with a foreign infringement without falling foul of the doctrine. All in all, it appears unlikely that the CAFC will rule in favour of Mr Voda.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.