Amicus Curiae Brief — Microsoft Corp. v. AT & T CORP.

a7 v . | es |

I-7 ) NEC 1 :

a,

No. 05-1056 ORICE Gr IME CLERK |

IN THE

Supreme Court of the Anited States

MICROSOFT CORPORATION,

Petitioner,

Vv.

AT&T Corp.,

Respondent.

ON WRIT OF CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

BRIEF OF SHELL OIL COMPANY AS

AMICUS CURIAE IN SUPPORT OF PETITIONER

RICHARD L. STANLEY

Counsel of Record

JOHN D. NORRIS

HOWREY LLP

1111 Louisiana St., 25” Floor

Houston, TX 77002

(713) 787-1400

Attorneys for Amicus Curiae

Shell Oil Company

——————— ee ————————————————ESee

WiILSON-EPES PRINTING CO., INC. — (202) 789-0096 — WASHINGTON, D.C. 20001

TABLE OF CONTENTS

I. Congress’ Intended Meaning For “Component”

And “Supplied” Is Best Ilustrated By Examining

Why Process And Method Patents Are Not

Ie Be I TIE siciaredbiinstsiecesaiihapesialaideiulibaibtciensnndeintnbingndiuie 4

Il. For Purposes of 35 U.S.C. § 271(f), Processes Do

Not Have “Components” And Thus

“Components” Cannot Be Intangible....................00:-ss00 6

A. By Mischaracterizing Software As A Process,

The Federal Circuit in Eolas Avoided

Construing The Relevant Statutory Language ........... 7

B. 35 U.S.C. § 271(c) Confirms That Congress

Did Not Intend “Components” To Include

Materials Or Apparatus Used In A Patented

Se GI sccisiniadininesticnisiiuiediitaiguinidsinpiantiniivcanntenes 9

C. The Other Justifications In Eolas For

Extending § 271(f) To Intangible Patented

Processes Are Incorrect And Improper..................... 14

III. Under A Proper Construction Of § 271(f), Process

Steps And Other Intangible Information Are Not

“Components” And Thus Cannot Be “Supplied”’........... 18

I cncrenecticanierstqnennninainicinmnemnapinennetnninintti 27

TABLE OF AUTHORITIES

Page(s)

CASES

AT&T Corp. v. Excel Communications, Inc.,

172 F.3d 1352 (Fed. Cir. 1999)..........cc-csscccsecsccescoceseosecees 8

Bayer AG v. Housey Pharms., Inc.,

340 F.3d 1367 (Fed. Cir. 2003) ...........cccscsccecceneeseeee 20, 21

Brown v. Duchesne,

RL eee 26

Connecticut Nat. Bank v. Germain,

Es PD cectcinitihtidisnmncsnicaitdaninestiitnininninnintiis 11

Deepsouth Packing Co. v. Laitram Corp.,

RE tie: SIU UT xccsicsnnisisinsennsiienialinatiiaitcianiannenes 15, 16, 23

Dowagiac Mfg. Co. v. Minn. Moline Plow Co.,

a Rs Ne CI ceiticecpictnninieninnitinitmeananmnmnanne 26

Enpat, Inc. v. Microsoft Corp.,

6 F.Supp.2d 537 (E.D. Va. 1998) .00......:..ccecceeseseseseeeees 12

Eolas Technologies, Inc. v. Microsoft Corp.,

399 F.3d 1325 (Fed. Cir. 2005)..........ccscesecceesereeeees passim

F. Hoffman-La Roche Ltd. v. Empagran S.A.,

SER SREE Wien rar oe 26

Griffin v. Oceanic Contractors, Inc.,

a a citrenintalcinniticiciiiiiahinttinnitinnnencninicion 14

In re Alappat,

PE ee 8

‘3

Joy Technologies, Inc. v. Flakt, Inc.,

Fe Fr rs Ge Fa ccinecrntentcnstnngnintpeniestciciinictiines 16

Murray v. Schooner Charming Betsy,

es Cr I a iicictiisnitessipictemimtecnencaiiticninsiiniiiianmie 26

NTP, Inc. v. Research in Motion, Ltd.,

418 F.3d 1282 (Fed. Cir. 2005)................000- 5, 16, 19, 20

Parker v. Flook,

Pe a ee PE sccttssicinseccicsctpinnsiniipeieieuieiiatecnpuiiiininintiiinel 18

Pellegrini v. Analog Devices, Inc.,

375 F.3d 1113 (Fed. Cir. 2004) 0... eceeccceeeeeeeeeees 20

Sony Corp. of Am. v. Universal City Studios, Inc.,

EG Ce itaisciennsncscsicsitistipisiessitliniidliiscenniibaineiiamian’ 18

Standard Haven Prods., Inc. v. Gencor Indus., Inc.,

953 F.2d 1360 (Fed. Cir. 1992) .00.......eecceeeseeeeceeeee passim

State Street Bank & Trust Co. v. Signature Fin.

Group, Inc.,

149 F.3d 1368 (Fed. Cir. 1998) 000.00... eceeeceseeseseeseeeeeeees 8

Sullivan y. Stroop,

Fe OP cicceectocnsnnnicintessnitudinisctspnaiiuahiiniinnibeaniiiicnie 11

TRW Inc. v. Andrews,

ee, ee ictetiehnsnscimnntiiiiitiniiatpiaiitidlbindtipteeiiie 1]

Union Carbide Chemicals v. Shell Oil Co..,

425 F.3d 1366 (Fed. Cir.), reh’g denied,

434 F.3d 1357 (Fed. Cir. 2006) .00...........ececeseeeeeseeee passim

United States v. Dubilier Condensor Corp.,

ee ee Oe icticitiiencnrscpnemnineniattccietiianiatiiiaiiiitininioien 18

iti

WMS Gaming, Inc. v. Int'l Game Tech.,

184 F.3d 1339 (Fed. Cir. 1999) ........cccsssssscsssecsusscsssesnsecens 8

STATUTES

Ie ie i inieiicedhec ites alii iii 7, 9,19

FERRED PSR eran vee oreo Sa ane ee 16

TEER ERENT O EN OOP TITS 7

es Oe Ar ee icicntisacniisenincttahiaticieliealelieiadasaniinal passim

ee Ns Oe ED ercinnsetdnnecansntnlinntindnsittitabianiimaniiiidl passim

i passim

OTHER

Seam. BR. 9B-GEB (19OG) aencenncveenvovenssereneorsnnermnnercsnorennen 10

130 Cong. Rec. H10525 (1984)......:..ssscssesssssesseeccneseeneeenveeens 14

132 Congy. i ncisiniitihclinsinidisicbitnisioimripises 15

132 Congr. Rec. S17 (1986) .....e.cceesssesssesssssssneessesssseceseeesses 15

Manual of Patent Examining Procedure,

§ 2106.1V.B.1.a (8 ed. 2001).....c.ccecccccesssecsessessnessuteeeeees 8

Agreement on Trade-Related Aspects of Intellectual

Property Rights (TRIPS), Including Trade In

Counterfeit Goods, Apr. 15, 1994, Marrakesh

Agreement Establishing the World Trade

Organization, Annex 1C, Legal Instruments —

Results of the Uruguay Round vol. 31,33 LL.M. .

Rar aTEITII stisvcnstiiuiiinssiinidnciepinestlahebidnceidenanisiiaibdesinetiianadnienite 25

European Patent Convention, Art. 52 (2006)................. 25, 26

iv

B. Lehman, Overseas Stretch, Legal Times (July 11,

J. Farrand, Territoriality and Incentives Under the

Patent Laws: Overreaching Harms U.S.

Economic and Technological Interests, 88 J. Pat.

& Trademark Off. Soc. 761 (Sept. 2006). .............:sc-se0 13

c %

ee tet phy

a}

=

as

ellghe ag re i :

: Cr aay ew +

lek?

IN THE

Supreme Court of the Anited States

No. 05-1056

MICROSOFT CORPORATION,

Petitioner,

Vv.

AT&T Corp. ,

Respondent.

ON WRIT OF CERTIORARI TO THE UNITED STATES

COURT OF APPEALS FOR THE FEDERAL CIRCUIT

BRIEF OF SHELL OIL COMPANY

INTEREST OF AMICUS

Amicus curiae, Shell Oil Company, is involved in

many aspects of the U.S. patent system, and thus is directly

affected by how the U.S. patent laws are applied to both

patentees and potential defendants in U.S. courts.! A proper

interpretation of when and how infringement liability may be

imposed under U.S. patents concerning importing and

exporting activities among multiple countries has critical

relevance to business decisions involving such things as

manufacturing and shipping locations, supply contracts,

subcontracting, and indemnity agreements. As such, the

Federal Circuit’s recent interpretations of 35 U.S.C. § 271(f)

have created critical legal and business concerns of

! Counsel for amicus curiae authored this brief in its entirety. No person

or entity other than amicus curiae or its counsel made a monetary

contribution to the preparation or submission of this brief. Both

petitioner and respondent have filed with the Court blanket consents for

all briefs amicus curiae.

2

exceptional importance for Shell and any other company

involved in multinational transactions involving technology.

The Federal Circuit’s decision in Eolas Technologies,

Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005),

construing the statutory term “component” and its decision in

this case construing the term “supplied” have rightfully

garnered considerable attention within the domestic software

industry. However, the enormous potential infringement

liability created by the Federal Circuit’s erroneous

construction of § 271(f) extends well beyond these parties

and the software technology at issue. The Federal Circuit’s

incorrect legal pronouncements in Eolas also directly caused

that court to extend liability under § 271(f) to all U.S. method

and process patents performed overseas. Union Carbide

Chemicals v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir.), reh’g

denied, 434 F.3d 1357 (Fed. Cir. 2006). Based on Eolas, the

Federal Circuit has created infringement liability under U.S.

law not only with respect to software developed in the United

States that is later copied and incorporated into foreign .

products and systems covered by U.S. patents, but also with

respect to any material or apparatus exported from the United

States for use in foreign processes or methods.

Shell’s interest in properly construing § 271(f) arose

from its involvement as a party in Union Carbide. In that

case, unlike in Eolas and this case, the only asserted claim

covered a process, not a product or system. Applying

existing law, the district court ruled that there could be no

liability under § 271(f), and hence no damages, arising from

Shell supplying unpatented catalysts from the United States

for use in ethylene oxide production processes run by third

parties entirely outside this country. However, in an opinion

by the same judge that authored Eolas, the Federal Circuit

reversed in Union Carbide, reiterating its view that “every

component of every form of invention deserves the protection

of 35 U.S.C. § 271(f); ie., that ‘components’ and ‘patented

inventions’ under §271(f) are not limited to physical

3

machines.” 425 F.3d at 1379. As shown herein, those

conclusions are wrong.

Because Shell reached a business resoiution of its

particular controversy with Union Carbide before filing its

own petition to this Court, the Federal Circuit’s decision in

Union Carbide was left as the controlling precedent on the

applicability of § 271(f) to process patents. As a result, that

decision remains applicable to Shell and everyone else.

Collectively, the Federal Circuit’s decisions in Eolas, AT&T,

and Union Carbide reflect a fundamental misunderstanding

of §271(f) which, if not changed by this Court, will

adversely affect not only the nation’s software industry, but

every company and industry operating domestically that

supplies any material and apparatus used in processes

performed by their overseas customers.

Specifically, the decision in Eolas is the source of the

Federal Circuit’s serious misconstruction of § 271(f). As

explained herein, the flawed legal conclusions in Eolas were

rendered outside of an actual controversy in that case, and are

directly contrary to the statutory language, Congress’ intent,

and even prior precedent of the Federal Circuit itself. As

recognized by the grant of certiorari by this Court, this case

presents the appropriate vehicle by which to restore the

meaning of the terms “component” and “supplied” in

§ 271(f) to what was understood and enacted by Congress.

Because the process patent scenario of the Union Carbide

case aptly illustrates why the term “component” in § 271(f)

does not apply to process steps or to other intangibles, Shell

is uniquely positioned to provide additional arguments on the

issues before this Court that have not been recognized or

adequately addressed by the parties or the other amici.

4

ARGUMENT

I. Congress’ Intended Meaning For “Component”

And “Supplied” Is Best Illustrated By

Examining Why Process And Method Patents

Are Not Subject To § 271(f)

The view adopted by the Federal Circuit in Eolas as

to the scope of the statutory term “component” in § 271(f)

was deemed controlling in this case, and thus did not receive

any independent analysis. Pet. App. 4a. Necessarily,

therefore, Shell addresses the Federal Circuit’s faulty

reasoning in Eolas. By mischaracterizing software as a

process and wrongly assuming that processes are entitled to

the protections of § 271(f), the Federal Circuit in Eolas

misconstrued the term “component” and then compounded

that legal error in this case by further misconstruing the term

“supplied” as it applies to the software at issue.

Simply put, the Federal Circuit seriously erred when

it declared in Eolas that “every form of invention eligible for

patenting falls within the protection of section 271(f)” and

that patented processes have “components” within the

meaning of § 271(f). 399 F.3d at 1339. As shown herein,

such statements are wrong as a matter of law because the

existing statutory language does not treat patented processes

as having “components” and thus was never intended to

extend the “protection” of § 271(f) to process patents.

Indeed, the Federal Circuit itself had previously held that

§ 271(f) was not implicated when an apparatus recited in a

process claim is exported for use in performing a patented

process overseas. Standard Haven Prods., Inc. v. Gencor

. Indus., Inc., 953 F.2d 1360, 1374 (Fed. Cir. 1992) (noting the

patent “claims a method for producing asphalt, not the

apparatus for implementing that process”). Notably, the

Federal Circuit’s analysis in Eolas never cited that directly

5

contrary precedent, and reached the opposite result without

even attempting to interpret the actual statutory language.

The single § 271(f) question presented in Eolas—

whether software code made in the United States and

exported abroad is a “component of a patented invention”—

did not implicate or require deciding whether process patents

are covered by § 271(f). Undoubtedly adhering to the court’s

prior holding in Standard Havens, Eolas only relied on its

asserted product claim for its § 271(f) position, and therefore

neither party raised or briefed whether the statute applied to

patented processes (which surely contributed to the Federal

Circuit’s unbounded, unprincipled, and incorrect statutory

analysis). Nevertheless, en route to declaring that the

software exported by Microsoft on “golden master disks”

could properly be held to be a “component” of the asserted

computer product claim, the Federal Circuit incorrectly

declared that software was itself a process and that “every

component of every form of invention deserves the

protection of section 271(f).” 399 F.3d at 1339.

While the Federal Circuit in Eolas was unable to

“construct a principled reason for treating process inventions

different than structural products” (399 F.3d at 1339), the

statutory language does exactly that in both 35 U.S.C.

§271(c) and 35 U.S.C. §271(f). By distinguishing “a

component of a patented machine, manufacture,

combination, or composition” from “a material or apparatus

for use in practicing a patented process,” the statutory

language establishes that Congress did not consider or treat

patented processes as having “components” and thus did not

2 In a decision issued after Eolas but before Union Carbide, the Federal

Circuit in NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1321-23

(Fed. Cir. 2005), adhered to Standard Havens while distinguishing Eolas,

at least for method claims. Clearly, therefore, the Federal Circuit's

decisions in NTP and Standard Havens are utterly irreconcilable with

Eolas, AT&T, and Union Carbide as to their underlying interpretations of

§ 271(f).

6

impose any liability under § 271(f) where materials or

apparatus used in performing patented processes are supplied

in or from the United States. Thus, the Federal Circuit in

Eolas not only ignored its own binding precedent and issued

an advisory opinion on a subject unrelated to the parties’

actual controversy, but the Federal Circuit’s flawed

assumption that § 271(f) applies equally to patented products

and processes is legally insupportable.

Properly construed, the infringement statute itself

shows that Congress did not intend or authorize that result.

Moreover, once it is realized that Congress did not

contemplate that the intangible steps of a process could be

“components” for purposes of §271(f), the question

presented here as to whether, when, and why software can be

a “component” of a patented product or system invention .

becomes much easier to resolve. First, unless software is

embodied in a specific physical or tangible structure, it

cannot be a “component” of a patented invention for

purposes of § 271(f). Second, to the extent that such physical

manifestations of software can be a “component” of a

patented product or system, any such “component” can only

be “supplied” by creating, sending, transmitting, or

forwarding the specific physical or tangible structure on

which the software code is embodied.

Il. For Purposes Of 35 U.S.C. § 271(f), Processes

Do Not Have “Components” And Thus

“Components” Cannot Be Intangible

For purposes of § 271(f), the Federal Circuit agreed

that Eolas’ “patented invention” was a “computer program

product.” 399 F.3d at 1339. However, rather than confining

its analysis to deciding whether Microsoft’s software was a

“component” of Eolas’ claimed “computer program

product,” the Federal Circuit improperly undertook to

establish that “every component of every form of invention

deserves the protection of section 271(f).” 399 F.3d at 1339.

Of course, the proper judicial inquiry should not have been

7

whether such protection is “deserved,” but whether Congress

provided such protection. When properly construed, the

statutory language shows that Congress clearly did not.

A. By Mischaracterizing Software As A

Process, The Federal Circuit in Eolas

Avoided Construing The Relevant

Statutory Language

The Federal Circuit in Eolas began from the premise

that it had to decide whether software code made in the

United States and exported abroad is a “component[] of a

patented invention” under § 271(f). 399 F.3d at 1338.

Virtually from the outset of its analysis, however, the Federal

Circuit improperly substituted determining what could be a

“patented invention” for the required inquiry into what

Congress provided could be a “component” of a patented

invention.

The Federal Circuit held that “patented invention” in

§ 271(f) should be broadly construed as including “any new

and useful process, machine, manufacture or composition of

matter.” See 399 F.3d at 1338-39 (citing 35 U.S.C. § 101).

According to the court, “software code alone qualifies as an

invention eligible for patenting under these categories, at

least as processes.” 399 F.3d at 1339. However, that

simplistic view of software is fundamentally wrong, and

directly caused the Federal Circuit’s distortion of the statute

as applied to both software and all patented processes.

Simply put, software is not a process. While software

may represent a patentable process, or may be part of a

patentable process, the software code itself is not a process.

Moreover, that is true whether software is considered to be

merely “intangible 0’s and 1’s” or whether the software is

embodied on a tangible, physical structure such as a hard

drive or computer disk. Indeed, making, selling, or copying a

computer device containing software cannot directly infringe

a process claim under § 271(a). In order for such a process

8

claim to be infringed, the software representing the claimed

process would have to be run or used in a computer. Hence,

the Federal Circuit in Eolas was wrong in characterizing

software code as being a process and thus erred in analyzing

the § 271(f) issue from that perspective.

Nothing cited by the Federal Circuit in Eolas supports

its misplaced premise that software is a process. In re

Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994), simply held

that “a computer operating pursuant to software may

represent patentable subject matter.” However, software

installed on a physical computer structure is a specific-

purpose apparatus for purposes of the patent law. See, e,¢.,

WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348

(Fed. Cir. 1999).3 The method claims at issue in AT&T

Corp. v. Excel Communications, Inc., 172 F.3d 1352, 1359

(Fed. Cir. 1999), were patentable “processes” not because

they were software, but because they produced “a useful,

concrete, and tangible result” (citing State Street Bank &

Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1374

(Fed. Cir. 1998)). Indeed, the portion of the PTO’s Manual

of Patent Examining Procedure (“MPEP”) cited by the

Federal Circuit explains that “[s]ince a computer program is

merely a set of instructions capable of being executed by a

computer, the computer program itself is not a process.” See

399 F.3d at 1339 (citing MPEP § 2106.IV.B.1.a, at 2100-13

(8™ ed. 2001)).

3 For that reason, the Federal Circuit’s rationalization that “a disk is

merely a container that facilitates physical handling of software, like

bottles for liquids or pressurized cylinders for gases” (Pet. App. 8a) is

disingenuous. Liquids or gases do not rearrange or alter the structure of

the containers in which they are inserted. Moreover, because software is

patentable only because a physical computer structure on which the

software is installed becomes a specific-purpose apparatus for purposes

of the patent law, the structural computer device containing the software

is not merely a container, but is the only legally cognizable embodiment

of the software.

9

By characterizing “software code claimed in

conjunction with physical structure, such as a disk” as being

a “process” for purposes of § 101, the Federal Circuit

seriously erred. See 399 F.3d at 1339. Software coupled

with a physical structure, such as a disk or memory, might be

patentable as a machine, manufacture or composition of

matter. However, whether tangible or intangible, software

itself is not a process, but merely represents a process. In any

event, whether or why software may be patentable in its own

right was not even the right question.

Properly analyzed, the relevant issue in Eolas (and

thus in this case) should not have been whether software

could be a “patented invention,” but whether software, after

being exported on golden disks and copied onto computers in

foreign countries, is a “component” of a patented computer

product invention that had been “supplied” from the United

States for purposes of §271(f). By mischaracterizing

software as a process, the Federal Circuit never resolved the

true issues. More importantly, the Federal Circuit never

recognized or analyzed the statutory language revealing

Congress’ specific meaning for the term “component.”

B. 35 U.S.C. § 271(c) Confirms That Congress

Did Not Intend “Components” To Include

Materials Or Apparatus Used In A

Patented Method Or Process

The Federal Circuit’s erroneous assumptions in Eolas

that anything that could be a “patented invention” could be a

“component” of a patented invention and that all “patented

inventions” are composed of “components” are directly

refuted by the existing infringement statute. As shown

below, Congress never used the term “component” when

referring to patented processes or methods, and clearly

distinguished “a component” from “a material or apparatus

for use in practicing a patented process.” In its desire to

announce its own view of proper patent policy, the Federal

Circuit’s assumed scope of the term “component” completely

10

disregards the statutory language and the clear policy choices

already made by Congress.

In drafting § 271(f)(2), Congress adopted language

directly from 35 U.S.C. § 271(c), which defines liability for

contributory infringement for acts within the United States.

See Sen. R. 98-663, at 7 (1984). Given that linked heritage,

it is highly instructive to examine the language in § 271(c)

that was not incorporated by Congress into § 271(f)(2).

Section 271(c) provides:

Whoever offers to sell or sells within the

United States or imports into the United States

a component of a _ patented machine,

manufacture, combination, or composition, or

a material or apparatus for use in

practicing a patented process, constituting a

material part of the invention, knowing the

same to be especially made or especially

adapted for use in the infringement of such

patent, and not a staple commodity of

commerce suitable for substantial

noninfringing use, shall be liable as a

contributory infringer.

As shown by comparing the italicized and bolded passages

ebove, § 271(c) distinguishes between “a component of a

patented machine, manufacture, combination, or

composition” and “a material or apparatus for use in

practicing a patented process.” On its face, the statutory

language unmistakably reveals that Congress did not treat

processes as having “components” and did not intend

“component” to include “a material or apparatus for use in

practicing a patented process.”

If the Federal Circuit’s assumptions in Eolas had

been correct that “patented invention” includes “patented

process” and that a “component” could be a material or

apparatus used in performing a patented process or even a

1]

step or act of such patented process, then Congress would not

have specified separately in §271(c) that contributory

infringement included selling or importing “a material or

apparatus for use in practicing a patented process.” To avoid

rendering the latter phrase entirely meaningless, “a

component” must be entirely distinct from “materials or

apparatus for use in practicing a patented process.”

Notably, Congress incorporated the concept of

‘component” into § 271(f) but did not include the “material

or apparatus for use in practicing a patented process”

language. That drafting choice must be interpreted as

intentional and material. Clearly, the language imported by

Congress from §271(c) reflects its understanding that a

“component” will exist only in patented inventions that are

themselves a machine, manufacture, combination, or

composition. Equally true, the statutory language reflects

Congress’ understanding and intention that patented

processes do not have “components.” Just as § 271(c) does

not use “component” with respect to a patented process,

Congress incorporated that same understanding of

“component” in § 271(c) when drafting § 271(f). See, e.g.,

Sullivan v. Stroop, 496 U.S. 478, 484 (1990) (normal rule is

that “identical words used in different parts of the same act

are intended to have the same meaning”).

Moreover, Congress specifically enacted 35 U.S.C.

§ 271(g) to address when there could be liability under U.S.

patent law for practicing U.S. patented processes in other

countries. As one court recognized, § 271(g) shows

Congress knew how to protect against foreign use of process

patents, and chose to limit such protection only to uses which

4 See, e.g., TRW Inc. v. Andrews, 534 U.S. 19,31 (2001) (“it is a cardinal

principle of statutory construction that a statute ought, on the whole, to be

so construed that, if it can be prevented, no clause, sentence, or word

shall be superfluous, void, or insignificant”); Connecticut Nat. Bank v.

Germain, 503 U.S. 249, 253 (1992) (“courts should disfavor

interpretations of statutes that render language superfluous”).

12

result in products introduced back into the United States. See

Enpat, Inc. v. Microsoft Corp., 6 F.Supp.2d 537, 539 (E.D.

Va. 1998) (“had Congress intended to prohibit U.S.

companies from exporting products which allow foreign

companies to make unauthorized use of patent methods, it

could have done so in clear, unambiguous language like that

found in § 271(g)”).

Contrary to the Federal Circuit’s unsupported

assumptions in Eolas, sound policy supports Congress’

decision not to expand U.S. patent law to every patented

process performed outside the United States. When all or

most of the components of a patented product are

manufactured domestically, or where a component specially

made or adapted for use in a patented product is made

domestically, § 271(f) protects a patentee from acts in this

country affecting the domestic market in the patented

product. However, in many process patent cases, like

Standard Havens and Union Carbide, the exported material

or apparatus is not patented, and no product claim could be

asserted. Making or selling the exported material or

apparatus in this country could not infringe.

If allowed to stand, the Federal Circuit’s view of

§ 271(f) adopted in Eolas, this case, and Union Carbide

would give U.S. patent protection to unpatented products or

apparatus under the guise of enforcing a U.S. process patent

against a process performed entirely in a foreign country.

Absent any effect in a U.S. market served by the U.S. process

patent holder, such as when a product of a patented process is

later imported into this country, no interference by U.S. law

in the non-U.S. markets served by the foreign processes is

justified. That role must be reserved for the foreign patent

systems. To avoid such serious extraterritoriality concerns,

Congress properly did not include the “supplying materials

or apparatus for use in practicing a patented process”

language in § 27i(f) and thus confined U.S. liability for use

of foreign processes to the circumstances covered by

§ 271(g).

13

It should now be clear that this case presents issues

extending well beyond the domestic software industry.

Every industry and company active in international

commerce is now faced with new potential liability never

authorized by Congress. See B. Lehman, Overseas Stretch,

Legal Times (July 11, 2005) (explaining why Eolas “goes

too far”); J. Farrand, Territoriality and Incentives Under the

Patent Laws: Overreaching Harms U.S. Economic and

Technological Interests, 88 J. Pat. & Trademark Off. Soc.

761 (Sept. 2006). Having justifiably relied on Standard

Havens and the plain language of the statute, companies will

now become strongly disinclined to invest in existing or new

U.S. manufacturing, research, or distribution facilities for

materials or apparatus to be used in foreign processes. Such

a significant burden on the country’s economy should only

have been enacted by Congress, not imposed unilaterally by a

federal appellate court first creating and then adopting its

own dicta.

If the unwarranted extraterritorial reach of U.S. law

created by the Federal Circuit’s decisions in Eolas, this case,

and Union Carbide is not undone, enormous amounts of jobs

and investment dollars will be relocated outside the United

States. As one concrete example, the Federal Circuit’s

decisions misconstruing § 271(f) directly affected Shell’s

decision between expanding its existing catalyst production

plant in California, or building a new facility outside the

United States to avoid any possible liability under U.S. patent

law. Similar investment decisions about whether and where

to build, manufacture, do research, and operate within the

United States will be made by countless other companies

involved in international commerce.

Nevertheless, the district court in this case dismissed

such concerns as better addressed through Congressional

action rather than through a judicial engraftment onto

§ 271(f). Pet. App. 37a-38a. Similarly, the Federal Circuit

declared that “possible loss of jobs in this country is not

14

justification for misinterpreting a statute to permit patent

infringement” and that “it is enough that Congress intended

that the language it enacted would be applied as we have

applied it.” Pet. App. 10a-lla (quoting Griffin v. Oceanic

Contractors, Inc., 458 U.S. 564, 576 (1982)). However, the

Federal Circuit got it exactly backwards—both as to the

proper statutory interpretation and as to Congress’ intent. As

shown, the Federal Circuit misinterpreted § 271(f) to find

liability under U.S. patent laws where none was provided or

intended by Congress. Thus, rather than being limited to

resorting to Congress to remedy any dissatisfaction with the

Federal Circuit’s statutory construction, this Court is

authorized and should be obligated to restore § 271(f) to its

proper scope, as originally intended by Congress.

C. The Other Justifications In Eolas For

Extending § 271(f) To Intangible Patented

Processes Are Incorrect And Improper

In light of the express statutory language, the Federal

Circuit’s other rationalizations and justifications set forth in

Eolas as to why § 271(f) should cover patented processes do

not support that conclusion. For example, the Federal Circuit

in Eolas cited the legislative history of § 271(f), but on its

face, the single passage quoted in Eolas only applies to

patented products:

[Section 271(f)] will prevent copiers from

avoiding U.S. patents by supplying

components of a patented product in this

country so that the assembly of the

components may be completed abroad.

399 F.3d at 1340 (citing 130 Cong. Rec. H10525 (1984)).

Because only patented products are mentioned, the above

history does not support the Federal Circuit’s declaration that

Congress was “correcting a loophole for all forms of patented

inventions.” 399 F.3d at 1340. Indeed, because § 271(c)

shows that Congress viewed only “patented products” to

15

have “components,” the opposite conclusion from the one

reached in Eolas should have been compelled.

The conclusion that § 271(f) does not protect U.S.

process patents is also confirmed by the legislative history of

35 U.S.C. § 271(g), passed four years later in 1988. In 1986,

Senate reports discussing the bill leading to § 271(g) stated:

The bill does not attempt to prevent the use of

the [patented] process in another country. If

the U.S. process patentholder has not obtained

a similar patent in another country, he has and

should have no right by virtue of his U.S.

patent to prevent anyone from using the

process in that country. 132 Congr. Rec. $17,

386-02, at 6 (1986).

Current law ... fails to protect against the use

of the process in another country followed by

importation into and use or sale within the

United States of the resulting products.

Simply using the process in a foreign country

where the U.S. inventor does not have a patent

is perfectly legitimate; the measure we are

considering prohibits only the subsequent

importation, use and sale of the resulting

products in this country. 132 Congr. Rec.

$15, 049-01, at 5 (1986).

If §271(f) truly protected against the use of patented

processes in foreign countries in 1984, Congress would not

have stated only two years later that existing law contained

no such protection. Thus, the only protection against use of

patented processes in foreign countries is limited to that

subsequently enacted in § 271(g).

Moreover, even if § 271(f) did more than overrule

Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518

(1972), the patents in that case did not claim any processes

16

using the disclosed apparatus. In Deepsouth, this Court held

that patents on machinery for deveining shrimp were not

infringed by selling the unassembled parts of the accused

device for later assembly and use in Brazil. Jd. at 526-32.

Whether assembled or not, the sale or supply of the

components or materials needed to perform a patented

process has never infringed the process patent, even where

such sale or supply occurs or the resulting apparatus is

assembled in the United States. See Joy Technologies, Inc. v.

Flakt, Inc., 6 F.3d 770, 774-76 (Fed. Cir. 1993) (citing

Standard Havens and other cases).

Nothing in § 271(f) affected or changed that law.

Even if a party supplies in or from the United States all

materials or every piece of equipment needed to build or

operate an apparatus for performing a claimed process, there

has never been any statutory basis for imposing liability

under a U.S. process patent where the parts are assembled

and used in a foreign country. Even when such items are

combined, the “combination” yields an apparatus, not the

process. As explained in Joy, nothing is being “combined

outside the United States in a manner that would infringe the

[process] patent if such combination occurred within the

United States.” See also NTP, 418 F.3d at 1322 (supplying

devices and products “is not the statutory ‘supply’ of any

‘component’ steps for combination into ... patented

methods”).

Yet, the Federal Circuit in Eolas incorrectly declared

that “a ‘component’ of a process invention would encompass

method steps or acts.” 399 F.3d at 1339 (citing 35 U.S.C.

§ 112, 96). However, § 112, 96 only addresses how an

“element in a claim for a combination may be expressed as a

means or step for performing a specified function without the

recital of structure, material, or acts in support thereof.” It

does not even contain the term “component” at all. The

Federal Circuit had no basis for equating an “element” under

§ 112, | 6 with a “component” under § 271(f). The former is

Gertes to ew an Gentes any So Cust, alle Ge kee

17

governs only when supplying parts of an accused product

gives rise to infringement liability. Those distinct statutory

provisions and terms are entirely unrelated, and cannot

support equating “element” of a patent claim with a

“component” of an accused device for purposes of § 271(f).

Hence, the Federal Circuit in Eolas fundamentally

erred in concluding that “[the] statutory language did not

limit § 271(f) to patented ‘machines’ or patented ‘physical

structures” and when it further declared that “the statute did

not limit § 271(f) to ‘machine’ components or ‘structural or

physical’ components.” See 399 F.3d at 1339. That is

exactly what Congress did. As confirmed by § 271(c),

Congress associated “components” only with a “machine,

manufacture, combination, or composition.” Without

question, those are all physical structures or apparatus.

Moreover, by not using “component” when referring to a

patented process, Congress thus limited the coverage for

processes under § 271(c) to “a material or apparatus for use

in practicing a patented process.”

By omitting the latter language from § 271(f),

Congress left no doubt that § 271(f) did not cover anything

supplied for use in a patented process outside the United

States. The statutory language reflects that one cannot

supply or cause to be supplied a process step. Process steps

are clearly intangible, and they are only performed, not

supplied. More importantly, that same reasoning applies to

any other intangible item, not just process steps. As used by

Congress, “components” should be limited to physical or

tangible items that can be supplied and combined to make

patented products overseas, whether or not such modifiers

appear in the statute. Properly interpreted, no other

limitation on “component” needed to be expressed by

Congress to have excluded patented processes and methods

from the scope of § 271(f).

It is not the Federal Circuit’s task or privilege to set

“sound” patent policy for this country. Such difficult policy

18

formulations — including defining what acts should constitute

infringement -- belong exclusively to Congress. See, e.g.,

Parker v. Flook, 437 U.S. 584, 595-96 (1978); Sony Corp. of

Am. v. Universal City Studios, Inc., 464 U.S. 417, 456

(1984); United States v. Dubilier Condensor Corp., 298 U.S.

178, 198-99 (1933). Indeed, this was not even a situation

where Congress had yet to speak. Nevertheless, the Federal

Circuit in Eolas ignored Congress’ policy choices already

embodied in the infringement statute, and incorrectly and

impermissibly substituted its own judgment for that of

Congress under the guise of statutory construction.

When a federal court makes a decision based on its

perception of what is “deserved” — as first done in Eolas (399

F.3d at 1339), reiterated again in this case (Pet. App. 4a), and

quoted yet again in Union Carbide (425 F.3d at 1379), the

court has abandoned its judicial role of interpreting statutes

in favor of usurping the legislative function from the bench.

The Federal Circu’s decision in Eolas equating

“component” in § 271(f) to anything that could be a patented

invention, that court’s decision in this case redefining

“supplied” for purposes of software, and its decision in

Union Carbide extending § 271(f) to all process patents are

neither sound nor consistent with the policy choices already

reached and enacted by Congress.

Ill. Under A Proper Construction Of § 271(f),

Process Steps And Other Intangible

Information Are Not “Components” And Thus

Cannot Be “Supplied”

The above analysis establishing why § 271(f) does

not apply to patented processes is directly significant to the

two questions presented by this case. First, this Court should

not construe “component” for purposes of § 271(f) as

including either process steps or a material or apparatus used

in practicing a patented process. As Congress clearly did not

provide or intend for the term “component” to encompass

such things, this Court should reject the Federal Circuit’s

19

naked assumption that it did. Second, the statutory language

reflects Congress’ realization that processes and process

steps are intangible, and as such, they cannot be supplied. As

used by Congress, “component” is properly limited to

tangible items that can be “supplied” and “combined” to

make patented products, whether or not such modifiers

appear in the statute.

Stated another way, while a process can be a

“patented invention” under § 101, a process does not have

“components” for purposes of § 271(f). As the Federal

Circuit explained in N7P, the very nature of a process

invention may compel a different result under § 271(f) even

though the statute does not expressly limit the type of

invention covered. 418 F.3d at 1322. Properly understood,

no other limitation on the term “component” needed to have

been expressed in § 271(f) to exclude intangible items and

patented processes from its scope.9

As explained in N7P, “{a] method, by its very nature,

is nothing more than the steps of which it is comprised.” Jd.

at 1322. Implicitly recognizing that process steps are

intangible, the Federal Circuit in N7P correctly observed that

“it is difficult to conceive of how one might supply or cause

to be supplied all or a substantial portion of the steps of a

patented method in the sense contemplated by the phrase

‘components of a patent invention’ in section 271(f).” Jd.

The reason for the court’s conceptual difficulty should be

> In that regard, the parties are incorrect in assuming or asserting that

Congress did not provide a specific meaning for “component.” See, e.g.,

Petition, at 15-16 (using general dictionary definition); Brief in

Opposition to Petition, at 13-14 (asserting that “Congress did not

specifically define the word ‘component””); Brief for United States as

Amicus Curiae (“U.S. Brief”), at 7 (asserting that “[b]ecause the statute

does not define the term ‘component,’ the term has its ‘ordinary or

natural meaning”). As shown, the statute defines the term at least by

demonstrating what it is not—as used in §271(c) and § 271(f), a

“component” for purposes of the patent statute cannot be intangible and

cannot be “a material or apparatus used in practicing a patented process.”

20

apparent—to the extent that process steps, software, design

information, data, knowledge, or ideas remain in intangible

form, they cannot be components of anything, including

patented inventions.

For that reason, the Federal Circuit in N7P properly

held that the defendant’s supply of products, such as its

handheld BlackBerry® devices, to customers in this country

did not constitute supplying or causing to be supplied in this

country any steps of a patented process invention for

combination outside the United States so as to infringe the

asserted method claims. 418 F.3d at 1322-23. Although not

expressly recognized in N7P, the additional reason for that

conclusion is that “materials or apparatus for use in a patent

process” are not “components” as that term was defined by

Congress for purposes of § 271(f).

The Federal Circuit’s unsupported assumption first

announced in Eolas that intangible software can be a

“component” is therefore incorrect. Indeed, as revealed in

NTP, the product claim at issue in Eolas was directed to a

software product claimed as comprising “a computer usable

medium having computer readable program code physically

embodied therein” and “computer readable program code.”

418 F.3d at 1322. Thus, by its very terms, the product claim

in Eolas reflected that allegedly intangible software can only

be patentable when claimed in a tangible, physical form; i.e.,

a computer usable medium, such as a hard drive or disk,

having the program code or software physically embodied

therein. Hence, for purposes of the patent laws, this Court

should hold that software cannot be either a “patented

invention” or a “component” absent a physical embodiment

of such computer code.

Viewed in that light, the Federal Circuit’s decisions in

Pellegrini v. Analog Devices, Inc., 375 F.3d 1113 (Fed. Cir.

2004), and Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367

(Fed. Cir. 2003), become instructive. In Pellegrini, the

Federal Circuit held that § 271(f) “applies only where

21

components of a patent invention are physically present in

the United States” and that “there can be no liability under

§ 271(f)(1) unless components are shipped from the United

States for assembly.” 375 F.3d at 1117. Clearly, intangibles

such as process steps, information, or designs cannot be

“physically present” or “shipped” or “combined” into

products unless in tangible form.

In Bayer, the Federal Circuit held that the data

obtained in other countries allegedly using patented

processes to screen for potential drug candidates was not a

“product” for purposes of § 271(g). 340 F.3d at 1371-72

(also noting that the statutory terms were “consistent in

referring to tangible objects and not intangibles such as

information”). The court further reasoned that the liability

exception in § 271(g) where an accused product “becomes a

trivial and nonessential component of another product” also

appears to contemplate “a physical product.” 340 F.3d at

1373. Once again, while instructions, data, and information

become tangible when written down or recorded, that type of

physical embodiment cannot transform those intangibles into

“products” of patented processes or “components” of

patented processes.

Once it is understood that software can only be

recognized by the patent laws when in tangible form, the

flaws in the Federal Circuit’s interpretations of § 271(f)

should become obvious. Nevertheless, Petitioner’s central

premise that its software code is intangible as long as it is

uncoupled from any storage medium or computer (Pet. 3)

may not fully answer the questions presented. Clearly, the

software code is in a tangible form when it is embodied on

© Having accepted the Federal Circuit’s mistaken view of “component,”

Respondent seemingly agrees with Petitioner that its software is

intangible (e.g., Supplemental Br. of Respondents, at 1, 2, 3, 4). If this

Court agrees, the Federal Circuit could be reversed on that basis because

intangible information, whether ideas, designs, or software, is not a

“component” of a patented invention for purposes of § 271(f).

22

the golden master disk that is exported to other countries, and

copies of that code are tangible after the copies are loaded

onto physical structures within the computers assembled in

foreign countries. However, it is undisputed that Microsoft’s

golden master disks are never themselves combined into any

product or system in another country and that the separate

computer drives or disks containing the copied software were

never physically in the United States after the software was

loaded. Therefore, under the proper interpretation of

“component” and “supplied,” there can be no liability under

U.S. patent law with respect to any computer systems falling

within the respondent’s asserted product claims that are

assembled entirely overseas and never subsequently imported

into the United States.

Based on an inapplicable general definition of

“component,” the United States argues that “the software

copy that is actually loaded onto the computers is a part,

element, or ingredient of the patented invention.” U.S. Brief,

at 8. However, that too is overbroad and reflects inexact

terminology. If the “patented invention” in question is a

claimed product or system, the specific copy of the software

that is so loaded on the computer may be a “component” of

the patented invention. However, for the reasons stated, if

the “patented invention” at issue is a process or method, the

software even as loaded on a computer structure is still not

part of the patented process, but is merely a material or

apparatus for use in practicing the process and henc> not a

“component” at all.

The United States otherwise agrees that, for purposes

of § 271(f), software must have “physical existence” or be

“physically embodied” in a computer structure in order for

the software to work and for the patented system containing

the software to have been assembled. U.S. Brief, at 9. While

the United States insists that the software remains

“intangible” even after it has been loaded onto tangible,

physical computer parts to create the specific-purpose

apparatus recognizable under the patent laws, the outcome

23

here is the same either way. If software is deemed to be

intangible in all contexts, then it cannot be a “component”

under § 271(f) as a matter of law. If software can be a

“component” but only when it is represented in tangible

form, then such component cannot be divorced from the

particular physical media on which it is embodied. In that

(case, the only components “supplied” by Microsoft in or

from the United States are its golden master disks which are

never combined with anything outside the United States in a

manner that would infringe Respondent’s asserted product or

system claims.

The Federal Circuit’s attempt to redefine the statutory

term “supplied” to encompass the act of copying solely in

“the context of software distribution” (Pet. App. 6a) cannot

be accepted. Words in a statute must be construed to have a

single meaning. Even where a statute is ambiguous, the

agency or court tasked with its interpretation must adopt one

of the possible meanings. Just as a federal statute cannot

have one meaning in California and another in Texas, the

term “supplied” in § 271(f) cannot have one meaning for

software copied overseas to be incorporated into patented

computer products and another meaning for all other

“components.” Thus, by recognizing software must be in

tangible form to be a “component” under § 271(f), the

Federal Circuit’s fluid approach to interpreting “supplied”

based on the technology at issue is avoided.

If, after § 271(f) was enacted, the overseas purchaser

of the patented shrimp deveining device in Deepsouth had

used the exported and unassembled pieces to make 99

identical copies of each piece that had been shipped from the

United States, and thus assembled a total of 100 such devices

for use or sale outside the United States, there still should be

liability for only one act of infringement under U.S. law, not

for »me hundred. The overseas copying of a software

“component” to be combined into a patented product or

system cannot be treated differently under the same statutory

terms than would be the overseas copying of the physical

24

components of any other “machine, manufacture,

combination, or composition.”

If “supplying” includes foreign copying of all U.S.-

originated software, then the term necessarily would

encompass foreign copying of any and all “components” of

patented products. By the Federal Circuit’s own admission,

that is not what it held. Pet. App. 6a. For the reasons stated

quite adequately elsewhere, that software-specific and result-

oriented interpretation of “supplied” cannot be allowed to

remain the law. See Pet. App. 1la-19a, at 13a (Rader, J.,

dissenting) (“copying and supplying are different acts, and

one act of ‘supplying’ cannot give mise to liability for

multiple acts of copying”); Reply Br. for Pet. 8-10; U.S.

Brief, at 10-18.

The flaws in the Federal Circuit’s reasoning can be

demonstrated using the court’s own analogy. According to

the Federal Circuit, uploading a single copy of software to a

server on the Internet should be sufficient to create liability

for any number of exact copies that are downloaded because

the server “supplies” the software to the user’s computer.

Pet. App. 6a. However, while each copy downloaded from

the server may result in a “supply” of the software to each

individual user, the statute also requires that such supply be

“in or from the United States.” The Federal Circuit ignores

that if the server is located in a foreign country, and the

copies are being downloaded to locations outside this

country, the copies are not being supplied “in or from the

United States.” Similarly, if Microsoft’s golden master disks

are located in a foreign country when the foreign copies are

made, there simply has been no “supply” of the software

copies in or from the United States.

Finally, even if software code is transmitted

electronically from the United States to a foreign country,

only the particular media on which it is stored following such

transmission could be deemed a “component” supplied from

the United States if later combined directly into a patented

25

product or system. However, absent a separate transmission

of the software from the United States for each patented

computer system that is assembled, the software in each

system has not been supplied from the United States. If, as

occurred here, further copies of the initially transmitted

software are made overseas, those copies are embodied upon

separate and distinct computer structures and therefore have

not been supplied from the United States. To conclude

otherwise would ignore the express territoriality restrictions

in the statute, not to mention the presumption against

extraterritorial application of U.S. law. See Pet. 23-29; U.S.

Brief, at 16-17.

If § 271(f) is expanded to cover foreign copies of

software and all process and method paient it will

improperly interfere with the ability of many countries to

regulate their own commercial affairs. As one example,

while business methods are patentable in this country, the

European Patent Convention (“EPC”) has excluded business

methods from patent protection.’ If the Federal Circuit’s

interpretation of § 271(f) is upheld, a U.S. company that

supplies software to the England could be held liable for

infringing a U.S. patent on a business method when the

software performing that method is used entirely in England,

even though England does not even allow patent protection

for business methods.

Similarly, the TRIPS agreement permits members to

exclude from patent protection “diagnostic, therapeutic, and

surgical methods for the treatment of humans or animals.”®

7 EPC, at Art. 52(2)c) (available at http://www.european-patent-

office.org/legal/epc/e/ar52 _html#A52) (last visited December 12, 2006).

8 Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS), Inchuding Trade In Counterfeit Goods, Apr. 15, 1994,

Marrakesh Agreement Establishing the World Trade Organization, Annex

1C, Legal Instruments — Results of the Uruguay Round vol. 31, 33 I.L.M.

1197 (1994), at Art. 27(3)(a).

26

Many countries, including those that adhere to the EPC, have

chosen not to extend patent protection to methods of

administering or treating patients.? Once again, the Federal

Circuit’s view of § 271(f) will interfere with these nations’

choices in how to obtain medicines and treat diseases. U.S.

patent protection on methods of treatment will effectively be

exported with any medicine shipped from the U.S. The

supply of unpatented medicine from the U.S. could be

enjoined for infringing a U.S. patent covering a method of

treatment even though the treatment occurs in a country that

consciously decided not to allow such patent protection.

Principles of international comity cannot be ignored.

See, e.g., F. Hoffman-La Roche Ltd. v. Empagran S.A., 542

U.S. 155, 164, 174 (2004); Murray v. Schooner Charming

Betsy, 6 U.S. (2 Cranch) 64, 118 (“an act of Congress ought

never to be construed to violate the law of nations if any

other possible construction remains”). Historically, U.S.

patent law has been interpreted to limit its extraterritorial

reach. See, e.g., Brown v. Duchesne, 60 U.S. (How.) 183,

197 (1857); Dowagiac Mfg. Co. v. Minn. Moline Plow Co.,

225 U.S. 641, 650 (1915). There is no basis for the Federal

Circuit’s expansive re-interpretation of §271(f) that

incorrectly and improperly interferes with the commerce and

laws of other sovereign nations, whether with respect to

application of their own patent laws or in respecting that

other countries may have elected not to extend patent

protection as broadly as the United States.

9 See, e.g., EPC, at Art. 52(4) (available at http://www.european-patent-

office.org/legal/epc/e/ar52._html#A52) (last visited December 12, 2006).

27

CONCLUSION

For the foregoing reasons, the decision of the United

States Court of Appeals for the Federal Circuit should be

reversed.

Respectfully submitted.

RICHARD L. STANLEY

Counsel of Record

JOHN D. NORRIS

HOWREY LLP

1111 Louisiana St., 25 Floor

Houston, TX 77002

(713) 787-1400

Counsel for Amicus Curiae

Shell Oil Company

DECEMBER 15, 2006