34:4 B ERKELEY T ECHNOLOGY L AW J OURNAL
2019
Pages 919 to 1348
Berkeley Technology Law Journal Volume 34, Number 4
Annual Review
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B ERKELEY T ECHNOLOGY L AW J OURNAL
VOLUME 34 NUMBER 4:ANNUAL REVIEW 2019 TABLE OF CONTENTS
ARTICLES
FOREWORD ... 919 Chris D. Chuang & Katharine H. Cummings
THE SUPREME COURT DENIES REBUTTAL:WESTERNGECO AND
SALVAGING EXTRATERRITORIAL BARS TO PATENT LIABILITY ... 925 Nicholas E. Calcaterra
EXPLORING PATENT TAKINGS AFTER OIL STATES ... 963 Concord Cheung
PATENT LITIGATION POST-SAS:NUANCED IMPLICATIONS OF BINARY
IPRINSTITUTION ... 993 Victoria Constance Huang
THE EVOLUTION OF PATENT VENUE IN THE AFTERMATH OF TC
HEARTLAND ... 1023 Alexander S. Krois
EYE SEE WHAT YOU’RE DOING:AN ANALYSIS OF ALLERGAN’S USE OF
TRIBAL SOVEREIGN IMMUNITY TO EVADE IPR OF THEIR EYE PRODUCT,
RESTASIS ... 1057 Julea Lipiz
ALICE GETS A HAIRCUT:BERKHEIMER AND AATRIX RESTORE FACTUAL
INQUIRY TO PATENT SUBJECT MATTER ELIGIBILITY UNDER § 101 ... 1081 Li Zhang
WILLIAMS V.GAYE:BLURRING THE LINES OF COPYRIGHT
INFRINGEMENT IN MUSIC ... 1113 Paymaneh Parhami
BELMORA LLC V.BAYER CONSUMER CARE AG:UNFAIR COMPETITION AS AN ALTERNATIVE APPROACH TO PENETRATE THE TERRITORIAL
PRINCIPLE IN U.S.TRADEMARK LAW ... 1145 Su Li
THE CLOUDACT:CREATING EXECUTIVE BRANCH MONOPOLY OVER
CROSS-BORDER DATA ACCESS ... 1177 Miranda Rutherford
ERECTING A PRIVACY WALL AGAINST TECHNOLOGICAL
ADVANCEMENTS:THE FOURTH AMENDMENT IN THE POST-CARPENTER
ERA ... 1205 Elle Xuemeng Wang
UNTANGLING SESTA/FOSTA:HOW THE INTERNET’S “KNOWLEDGE”
THREATENS ANTI-SEX TRAFFICKING LAW ... 1239 Megan McKnelly
THE FOREIGN RISK REVIEW MODERNIZATION ACT:HOW CFIUS
BECAME A TECH OFFICE ... 1267 Evan J. Zimmerman
DEFINING THE MARKET FOR TWO-SIDED PLATFORMS:THE SCOPE OF
OHIO V.AMERICAN EXPRESS ... 1305 Sanjana Parikh
SURVEY OF ADDITIONAL TOPICS IN IPLAW ... 1337
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F
OREWORDChris D. Chuang† & Katharine H. Cummings††
The Annual Review is a yearly publication of the Berkeley Technology Law Journal that provides a summary of many of the year’s major developments at the intersection of law and technology. Our aim is to provide a valuable resource for judges, policymakers, practitioners, students, and scholars. Each Note provides a primer on a particular area of law, a development in that area of law, and commentary on that development.
The thirteen Notes in this Issue continue a tradition of covering a wide range of topics. The Notes address developments in patent, copyright, trademark, privacy, technology-focused regulations and legislature, and antitrust.
I. PATENT LAW
The first Note1 in this Section examines the Supreme Court’s decision in WesternGeco v. ION Geophysical Corp.2 to uphold lost profit damages predicated on foreign, non-infringing actions following 35 U.S.C. § 271(f)(2) liability. This Note concludes that the Supreme Court’s use of the RJR Nabisco framework in rebutting the presumption against extraterritoriality opens foreign lost profit liability across all modes of 35 U.S.C. § 271 infringement. Additionally, the Note argues that practitioners and judges may restore the presumption’s role by importing comity concerns into a policy-driven proximate cause analysis for future infringement cases.
The second Note3 discusses the Supreme Court’s Oil States Energy Services, LLC v. Greene’s Energy Group, LLC4 decision, which upheld the constitutionality under Article III and the Seventh Amendment of the inter partes review (IPR)
© 2019 Chris D. Chuang & Katharine H. Cummings.
† Senior Annual Review Editor, Berkeley Technology Law Journal; J.D., 2019, University of California, Berkeley, School of Law.
†† Senior Annual Review Editor, Berkeley Technology Law Journal; J.D., 2019, University of California, Berkeley, School of Law.
1. Nicholas E. Calcaterra, Note, The Supreme Court Denies Rebuttal: WesternGeco and Salvaging Extraterritorial Bars to Patent Liability, 34 BERKELEY TECH.L.J. 925 (2019).
2. 138 S. Ct. 2129 (2018).
3. Concord Cheung, Note, Exploring Patent Takings After Oil States, 34 BERKELEY TECH.L.J. 963 (2019).
4. 138 S. Ct. 1365 (2018).
process. This Note further explores the undecided issue of whether the Takings Clause applies to IPR proceedings and describes a framework for applying regulatory takings analysis to patent rights taken during IPR.
The third Note5 examines the patent litigation landscape after the Supreme Court’s decision in SAS Institute Inc. v. Iancu.6 To explore the consequences of the decision, the Note analyzes 200 Inter Partes Review (IPR) decisions, district court orders on motions to stay pending IPR, and potential social and institutional ramifications of the decision. Based on this analysis, the Note also suggests pragmatic ways for practitioners to approach litigation strategy in the altered landscape.
The fourth Note7 examines how patent venue has continued to evolve in the aftermath of TC Heartland LLC v. Kraft Foods Group Brands LLC,8 which dramatically restricted where plaintiffs can bring patent infringement suits.
Particularly, this Note looks at how both the Federal Circuit and litigants have reacted to the decision, and uses quantitative analysis to map the changes in the landscape of patent venue through the end of 2018.
The fifth Note9 evaluates the Federal Circuit’s decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals,10 which found that tribal sovereign immunity was not an acceptable defense during inter partes review. This Note compares uses of state and tribal sovereign immunity during patent review procedures and patent litigation. Ultimately, this Note argues that sovereign immunity is an inapplicable defense during inter partes review and currently draws an unnecessary distinction between state and tribal immunity.
The sixth Note11 examines recent Federal Circuit cases concerning the factual inquiry underlying the Mayo/Alice patent subject matter eligibility framework. The Note asserts that the Federal Circuit’s decisions represent an overdue clarification of the uncertainty surrounding patent litigation that involves this framework. This Note also proposes guidelines for the application of an evidentiary principle in the adjudication of patent subject matter eligibility.
5. Victoria Constance Huang, Note, Patent Litigation Post-SAS: Nuanced Implications of Binary IPR Institution, 34 BERKELEY TECH.L.J. 993 (2019).
6. 138 S. Ct. 1348 (2018).
7. Alexander S. Krois, Note, The Evolution of Patent Venue in the Aftermath of TC Heartland, 34 BERKELEY TECH.L.J. 1023 (2019).
8. 137 S. Ct. 1514 (2017).
9. Julea Lipiz, Note, Eye See What You’re Doing: An Analysis of Allergan’s Use of Tribal Sovereign Immunity to Evade IPR of Their Eye Product, Restasis, 34 BERKELEY TECH.L.J. 1057 (2019).
10. 896 F.3d 1322 (Fed. Cir. 2018).
11. Li Zhang, Note, Alice Gets a Haircut: Berkheimer and Aatrix Restore Factual Inquiry to Patent Subject Matter Eligibility Under § 101, 34 BERKELEY TECH.L.J. 1081 (2019).
II. COPYRIGHT LAW
The Note12 in this Section evaluates the Ninth Circuit’s decision in Williams v. Gaye,13 where the court held that the global best-selling single of 2013,
“Blurred Lines,” infringed Marvin Gaye’s copyright in his 1977 hit song “Got to Give It Up.” The Note argues that the Ninth Circuit’s decision fails to distinguish between legally protectable and unprotectable elements in music and thus imposes a chilling effect on musical creativity and innovation by allowing composers to seek copyright protection over entire styles and grooves. Specifically, this Note shows how a particular limiting doctrine of copyright law, the scenes a faire doctrine, constitutes an already-existing yet underutilized tool that can bring into legal consideration the tradition and necessity of sharing common elements in music.
III. TRADEMARK LAW
The Note14 in this Section focuses on the circuit split over the territoriality principle of U.S. trademark law in protecting non-registered and not-in-use foreign trademarks in the United States. The Note confirms the value of the Belmora15 decision that allows foreign trademark owners to use the unfair competition clause to fight against trademark abuse, while parsing out the considerations that led to the diverging court decisions using both legal and empirical analysis.
IV. PRIVACY LAW
The first Note16 in this Section analyzes the Clarifying Lawful Overseas Use of Data (CLOUD) Act, passed in March 2018. The CLOUD Act was designed to mitigate existing problems with cross-border data demands made by U.S. and foreign law enforcement. However, the Note argues that in doing so, the law gives the executive branch significant control over extraterritorial data access, which can lead to problems of due process and conflicts of values.
12. Paymaneh Parhami, Note, Williams v. Gaye: Blurring the Lines of Copyright Infringement in Music, 34 BERKELEY TECH.L.J. 1113 (2019).
13. Williams v. Gaye, 885 F.3d 1150 (9th Cir. 2018).
14. Su Li, Note, Belamora LLC v. Bayer Consumer Care AG: Unfair Competition as an Alternative Approach to Penetrate the Territorial Principle in U.S. Trademark Law, 34 BERKELEY
TECH.L.J. 1145 (2019).
15. 819 F.3d 697 (4th Cir. 2016).
16. Miranda Rutherford, Note, The CLOUD Act: Creating Executive Branch Monopoly Over Cross-Border Data Access, 34 BERKELEY TECH.L.J. 1177 (2019).
The second Note17 is created in the wake of the Carpenter v. United States18 decision. Carpenter v. United States is probably the most significant privacy case of this generation. It has a huge impact on data privacy, the third-party doctrine, and Fourth Amendment searches. This Note summarizes this monumental decision, traces the history of data privacy and the third-party doctrine, and discusses the future of the Fourth Amendment in the Post- Carpenter era.
V. REGULATION AND LEGISLATION
The first Note19 in this Section discusses the history and text of the Allow States and Victims to Fight Online Sex Trafficking Act of 2018 (SESTA/FOSTA),20 which creates new criminal and civil liability for interactive computer services (ICSs) involved in the facilitation of sex trafficking on the Internet. Most significantly for the purposes of this Note, SESTA/FOSTA interjects a “knowledge” standard in the existing sex trafficking statute.21 This Note asserts that this knowledge standard muddles the existing sex trafficking statute, concluding that courts should draw on other areas of the law as well as real-world ICS practices in defining ICS knowledge of user-posted, sex trafficking-related content.
The second Note22 analyzes and explains the Foreign Risk Review Modernization Act, tracing its history and analyzing its contents as perhaps the most consequential change in the history of the Committee on Foreign Investment in the United States, commonly known as CFIUS. Ultimately, it argues that Congress took an obscure national security committee and turned it into a quasi-agency technology regulator—but by accident, and without properly equipping CFIUS to do its new job.
17. Elle Xuemeng Wang, Note, Erecting a Privacy Wall Against Technological Advancements:
The Fourth Amendment in the Post-Carpenter Era, 34 BERKELEY TECH.L.J. 1205 (2019).
18. 138 S. Ct. 2206 (2018).
19. Megan McKnelly, Note, Untangling SESTA/FOSTA: How the Internet’s “Knowledge”
Threatens Anti-Sex Trafficking Law, 34 BERKELEY TECH.L.J. 1239 (2019).
20. See Allow States and Victims to Fight Online Sex Trafficking Act of 2017, Pub. L.
No. 115-164 (2018).
21. See id. at § 5.
22. Evan J. Zimmerman, Note, The Foreign Risk Review Modernization Act: How CFIUS Became a Tech Office, 34 BERKELEY TECH.L.J. 1267 (2019).
VI. ANTITRUST
The Note23 in this Section examines the consequences of the Supreme Court’s decision in Ohio v. American Express24 on technology platforms. It applies an economic lens to the majority holding to understand how the decision affects the potential antitrust liability faced by platform companies.
This Note analyzes the dynamics of commonly-recognized platform business models to argue that the ruling should not broadly confer antitrust immunity on two-sided platforms.
23. Sanjana Parikh, Note, Defining the Market for Two-Sided Platforms: The Scope of Ohio v.
American Express, 34 BERKELEY TECH.L.J. 1305 (2019).
24. 138 S. Ct. 2274 (2018).
T
HES
UPREMEC
OURTD
ENIESR
EBUTTAL: W ESTERN G ECO
ANDS
ALVAGINGE
XTRATERRITORIALB
ARS TOP
ATENTL
IABILITY Nicholas E. Calcaterra†I. INTRODUCTION
Since the 17th century, Westphalian sovereignty and comity have been influential fixtures in international law.1 These doctrines, by prescribing mutual respect of exclusive control over one’s country and citizens, compel governments to prevent global conflicts.2 Likewise, the United States has adopted comity concepts in different areas of law.3
In recent years, the Supreme Court and Federal Circuit have wrestled with questions of how to evaluate domestic patent laws in conflict with the presumption against extraterritoriality, a comity-related doctrine.4 The presumption holds that courts should presume U.S. law is only valid within its territories.5 Unless the presumption has been rebutted, courts should wait for instruction from Congress before applying laws extraterritorially.6 Otherwise, the courts must ensure, or at least rationalize, that the law’s extraterritorial effects come from a domestic application.7
The presumption against extraterritoriality has had a powerful role in limiting patent infringement liability. Along with causation and a patent’s technical scope, the geographic scope of a patent defines the boundaries of
DOI: https://doi.org/10.15779/Z38MG7FW4W © 2019 Nicholas E. Calcaterra.
† Nicholas E. Calcaterra, Ph.D., J.D. Candidate, 2020, University of California, Berkeley, School of Law.
1. Joel R. Paul, The Transformation of International Comity, 71 LAW &CONTEMP.PROBS. 19, 22 (2008).
2. See id.; see also STEPHEN D.KRASNER,SOVEREIGNTY,ORGANIZED HYPOCRISY 10 (1999).
3. See William S. Dodge, International Comity in American Law, 115 COLUM.L.REV.2071, 2087(2015).
4. See Am. Banana Co. v. United Fruit Co., 213 U.S. 347, 356 (1909).
5. See RJR Nabisco, Inc. v. European Cmty., 136 S. Ct. 2090, 2100 (2016) (“Absent clearly expressed congressional intent to the contrary, federal laws will be construed to have only domestic application.”).
6. See id.
7. See id.
infringement inquiries.8 In Power Integrations v. Fairchild Semiconductor International,9 the Federal Circuit solidified a patent’s geographic scope as an independent limitation, barring damages predicated on foreign events.10 The Supreme Court in WesternGeco LLC v. ION Geophysical Corp., however, has put this framework on precarious grounds.
In WesternGeco, ION was previously found liable for infringement under 35 U.S.C. § 271(f)(2).11 In addition to a reasonable royalty, WesternGeco alleged they were entitled to lost profits due to lost contracts on the high seas.12 The Federal Circuit denied the claim, arguing that a foreign lost profits award would create an extraterritorial application of U.S. patent laws.13
The Supreme Court reversed, utilizing the RJR Nabisco two-step inquiry for determining impermissible extraterritorial application of U.S. law.14 This inquiry first asks whether “the presumption . . . has been rebutted” by Congress when constructing the statute.15 If not, or if a court chooses to skip the first step, the court must then ask “whether the case involves a domestic application of the statute.”16 Skipping to the second step, the Court in WesternGeco found that the focus of § 284 was to regulate infringement.17 Noting that § 271(f) requires a defendant to supply components from the United States, the Court found that awarding lost profit damages for the infringement was a permissible domestic application of § 284.18 The Court reversed the Federal Circuit, awarding lost profit damages to WesternGeco.19
However, the majority’s analysis under the RJR Nabisco framework seems arbitrary and counterintuitive. Construing the statutory focus of § 284 as only
“infringement,” as opposed to “adequate . . . compensate[ion] for the infringement” appears to contradict much of the Court’s own language and argument.20 Furthermore, relegating the focus of the statute to only the
8. See Stephan Yelderman, Proximate vs. Geographic Limits on Patent Damages, 7 IPTHEORY
2,2,7–9 (2018) (discussing how patent jurisprudence holds parties liable only if they caused infringement of the legal invention (technical scope) within U.S. jurisdiction (geographic scope)).
9. Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1371 (Fed. Cir. 2013) (“It is axiomatic that U.S. patent law does not operate extraterritorially to prohibit infringement abroad.”).
10. See id.
11. See WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129, 2135 (2018).
12. Id.
13. WesternGeco LLC. v. ION Geophysical Corp., 837 F.3d 1358, 1360 (Fed. Cir. 2016).
14. See id. at 2136; see generally RJR Nabisco, Inc. v. European Cmty., 136 S. Ct. 2090, 2101 (2016) (promulgating a two-step framework for deciding extraterritoriality questions).
15. RJR Nabisco, 136 S. Ct. at 2101.
16. Id.
17. See WesternGeco, 138 S. Ct. at 2137.
18. Id. at 2138.
19. Id. at 2139.
20. 35 U.S.C. § 284 (2012).
infringement at issue insulates the statute from its purpose and other important jurisprudence.
Similarly, the Court failed to consider other prevailing doctrines and important questions. The Court explicitly chose to ignore questions of proximate cause.21 By skipping step one of the RJR Nabisco analysis of § 284, the Court also ignored WesternGeco’s assertion that the presumption against extraterritoriality did not apply to any damages provisions.22 But perhaps most perplexing is the Court’s diminishment of damages statutes to “merely the means by which the statute achieves its end of remedying infringements,”
instead of considering how they affect parties in an extraterritorial patent enforcement context.23 By neglecting these important aspects and questions, the Court sought to restrain their holding.24
Yet the Court inadvertently exposed all modes of infringement to the recovery of foreign lost profits. By disregarding the context of § 284 to
“affor[d] patent owners complete compensation” for infringement, the Court’s analysis allows for easy application to other infringement scenarios.25 It is likely that the Court accidentally overturned Power Integrations, terminating the presumption against territoriality as applied to damages.
The loss of geographic limitations on patent damages, however, may be rectified. Practitioners and judges can resurrect the purpose of the presumption against extraterritoriality by importing comity concerns in defining proximate cause. By stressing the important policy of respecting foreign sovereignty, geographic scope may again play a role in limiting patent liability in a manner amenable to both WesternGeco and the previous Federal Circuit holdings.
Part II of this Note gives a brief history of the presumption against extraterritoriality as applied to patent law. Part II also outlines the role of proximate cause in limiting patent liability and how this role interacts with the presumption against extraterritoriality. Part III details the procedural history of WesternGeco and the Supreme Court’s decision. Part IV analyzes how the Court used the RJR Nabisco framework, rejected ION’s arguments, and the consequences of the decision. Part IV also argues that the Supreme Court’s demotion of damages statues and use of the RJR Nabisco two-step inquiry were incorrect, leading to gaps in damages jurisprudence and recovery for infringement damages without territorial restraint. Part V argues that judges and practitioners may be able to limit a patent’s geographical scope, in
21. WesternGeco, at 2139 n.3.
22. Id. at 2136.
23. Id. at 2138.
24. Id. at 2139 n.3 (“In reaching this holding, we do not address the extent to which other doctrines, such as proximate cause, could limit or preclude damages in particular cases.”).
25. Id. at 2137 (quoting Gen. Motors Corp. v. Devex Corp., 461 U. S. 648, 655 (1983)).
harmony with WesternGeco, by imputing comity as a policy consideration for determining proximate cause.
II. THE PRESUMPTION AGAINST
EXTRATERRITORIALITY, PROXIMATE CAUSE, AND THEIR INEVITABLE CLASH IN PATENT LAW
The presumption against extraterritorial application of U.S. patent rights has precedent dating back to 1857.26 Since then, the courts and Congress have mostly upheld the tradition of confining patent rights “within the limits of the United States.”27 Even in instances of legislation by Congress to explicitly rebut that presumption, such as the creation of §§ 271(f) and (g), the courts have applied these statutes narrowly.28 And although the scope of these exceptions continues to be adjusted, the presumption against extraterritoriality itself remains a stalwart of U.S. patent law.29
Similarly, the doctrine of proximate cause as a limiting factor to patent infringement damages has been nearly as longstanding.30 Defining “proximate cause,” however, has not been as simple and consistent as demarcating U.S.
borders. Like its sister doctrine in torts, proximate causation of patent infringement has steadily evolved.31 Originally proximate cause was nebulously characterized, though the general notion was that courts should only award damages that were the “direct and immediate” result of the infringement.32 More recently, it has been defined to include damages that were “reasonably foreseeable” at the time of patent infringement.33 Nevertheless, these
26. See Brown v. Duchesne, 60 U.S. 183, 195 (1857).
27. Id.; see Timothy R. Holbrook, Boundaries, Extraterritoriality, and Patent Infringement Damages, 92 NOTRE DAME L.REV.1745,1760–62(2017).
28. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 442 (2007) (“Recognizing that
§ 271(f) is an exception to the general rule that our patent law does not apply extraterritorially, we resist giving the language in which Congress cast § 271(f) an expansive interpretation.”); see also Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367 (Fed. Cir. 2003) (holding that § 271(g) only applies to the importation of physical objects and not information); see generally Life Techs.
Corp. v. Promega Corp., 137 S. Ct. 734 (2017) (holding that § 271(f)(1) is limited quantitatively and not qualitatively thus the importation of a single component, of a necessary plurality, is not infringing).
29. See Life Techs. Corp. v. Promega Corp., 137 S. Ct. 734 (2017); see also Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1371 (Fed. Cir. 2013) (“It is axiomatic that U.S. patent law does not operate extraterritorially to prohibit infringement abroad.”).
30. See Carter v. Baker, 5 F. Cas. 195, 202 (C.C.D. Cal. 1871) (No. 2,472).
31. See generally Patrick J. Kelley, Proximate Cause in Negligence Law: History, Theory, and the Present Darkness, 69 WASH.U.L.Q. 49 (1991) (discussing developments in proximate cause doctrine as applied to negligence law); Yelderman, supra note 8, at 1–5, 8–10 (citing early and more recent uses of proximate cause doctrine in patent law).
32. Buerk v. Imhaeuser, 4 F. Cas. 594, 595 (C.C.S.D.N.Y. 1876).
33. See Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1546–47 (Fed. Cir. 1995).
standards do not address all considerations for proximate cause in patent law, especially policy-driven goals.34
Unsurprisingly, cases that feature the interaction of both doctrines are more convoluted. Early Supreme Court precedent allowed for compensation based on sales to foreign customers while simultaneously barring similar remedies for sales wholly occurring outside the United States.35 More recently the Federal Circuit attempted to set a bright-line rule, “cut[ting] off the chain of causation” at extraterritorial acts, preventing the award of damages predicated on those acts.36 Therefore, the presumption against extraterritoriality applied to both questions of infringement liability and damages.
Although the Federal Circuit followed this reasoning again in WesternGeco, the Supreme Court reversed, allowing recovery of lost profit damages predicated on non-infringing foreign use.37 In doing so, the Court prioritized the policy of fully compensating patent owners over the longstanding presumption against extraterritoriality. And despite petitioners raising the possible use of proximate cause analysis to reach this conclusion at oral argument, the Court did not examine the issue in its holding for concerns of its wide-reaching implications.38 Thus, for the time being, the Court has recognized proximate cause and the presumption against extraterritoriality as two distinct inquiries.
But in an ever-connected global society, these two doctrines are fated to a head-on collision. Notwithstanding the Supreme Court’s decision to avoid the matter in WesternGeco, there may be room for the Federal Circuit to limit the lost profit damages by a novel proximate cause theory. But the individual jurisprudence of both doctrines, along with cues from cases involving their combination, may give hints at how courts will decide this inevitable conflict.
A. THE PRESUMPTION AGAINST EXTRATERRITORIALITY AND
ENFORCING THE GEOGRAPHICAL SCOPE OF PATENT LAW
Justice Oliver Wendell Holmes, in his American Banana Co. v. United Fruit Co. opinion, accurately captured the philosophy of the presumption against
34. See id. at 1546 (“The general principles expressed in the common law tell us that the question of legal compensability is one to be determined on the facts of each case upon mixed considerations of logic, common sense, justice, policy and precedent.”) (quoting W.PAGE KEETON ET AL.,PROSSER &KEETON ON THE LAW OF TORTS § 42, at 279 (5th ed. 1984)) (internal quotation marks omitted).
35. See Goulds’ Mfg. Co. v. Cowing, 105 U.S. 253 (1882); Dowagiac Mfg. Co. v. Minn.
Moline Plow Co., 235 U.S. 641 (1915).
36. Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1172 (Fed. Cir. 2013).
37. See WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129, 2139 (2018).
38. Id. at 2135, 2139 n.3; see Transcript of Oral Argument at 14, WesternGeco LLC v.
ION Geophysical Corp., 138 S. Ct. 2129 (2018) (No. 16-1011).
