Law at Issue in This Case
Obscure provision of U.S. patent laws at issue in Microsoft vs. AT&T.
Feb. 20, 2007 – In 2001, AT&T filed suit against Microsoft in federal court in New York alleging that the Microsoft® Windows® operating system infringes on one of its patents for digitally coding and decoding speech. AT&T sought to recover damages from Microsoft based on copies of the Windows software program manufactured in the United States and, invoking a relatively obscure provision of the U.S. patent laws that makes it an act of infringement to “suppl[y] . . . from the United States all or a substantial portion of the components of a patented invention” for assembly abroad, also sought damages based on foreign-manufactured copies of the program.
Microsoft argued that, when it came to the tens of millions of alleged acts of foreign infringement, it could not be held liable because it only sent a single master version of the Windows software program that was then used by the foreign manufacturers to make computers overseas. None of those computers contains any physical parts supplied by Microsoft.
Here’s the full text of the statute invoked by AT&T in its damages claim from Title 35 U.S.C. § 271:
Infringement of patent
(f)(1) 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 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.
(2) 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 noninfringing use, where such component is uncombined in whole or in 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.
