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Alex Roan is an Associate based in the firm’s Boston office. He assists life science and technology companies with a wide variety of intellectual property matters, emphasizing a range of patent prosecution and counseling matters.  He also has experience with trademark registration, post-grant proceedings, and patent litigation, including before the US International Trade Commission.

 

An introduction to § 271

Section 271 of Title 35 of the United States Code is the statute that codifies unlawful acts of patent infringement.  The most commonly asserted provisions are § 271(a) (direct infringement), § 271(b) (induced infringement), and § 271(c) (contributory infringement).  However, other less frequently asserted provisions must also be considered when enforcing United States patents.  For example, § 271(e) pertains to the infringement of patents on pharmaceuticals, specifically barring certain acts, while explicitly permitting others.  Additionally, § 271(f) covers infringement by a party who supplies components of a patented invention to recipients outside of the United States with the knowledge the components will be combined “in a manner that would infringe the patent if such combination occurred within the United States.”  And, finally, § 271(g) covers importation infringement, making liable a party that imports into the United States or offers to sell, sell or uses within the United States a product which is made by a patented process during the term of such a patent.  While possibly the least often litigated, § 271(f) is now before the Supreme Court, in a case examining the applicability of foreign lost profits damages to § 271(f) infringement.

Continue Reading <i>WesternGeco v. ION Geophysical Corp.</i> and Lost Profit Damages under § 271(f)

In an application of 2017 U.S. Supreme Court precedent in Impressions Products, Inc. v. Lexmark Intern., Inc., the Northern District California in International Fruit Genetics LLC v. Orcharddepot.com, No. 4:17-cv-02905-JSW, recently denied a motion to dismiss a claim of patent infringement by holding that the patent exhaustion doctrine did not apply to a sale of a patented product that was outside the scope of the license granted by the patent owner.  This decision helps inform how licenses may be interpreted post-Impression Products.

Continue Reading Patent Exhaustion Defense Unavailable to Reseller after Impression Products