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Attorneys Weigh in on High Court ‘Substantial Portion’ Patent Debate

Westlaw Journal Intellectual Property, Volume 23, Issue 18

29 Dec 2016
Reprinted with permission.

Matthew D’Amore, a partner in the firm’s Intellectual Property Group and a member of the firm’s Life Sciences Practice Group, was quoted in “Attorneys Weigh in on High Court ‘Substantial Portion’ Patent Debate,” published by Westlaw Journal Intellectual Property.

After the Supreme Court grilled biotech firms Life Technologies Corp. and Promega Corp. on the practical implications of finding that sending a single component of a patented invention abroad can constitute infringement, IP experts told Thomson Reuters how they expect the justices to decide the issue.

“Morrison & Foerster IP partner Matthew D’Amore, who is based in New York, said he thought a key question at the oral argument was whether the presumption against extraterritoriality applied, noting that statute expressly contemplates an extraterritorial impact as opposed to a statute that is silent as to its extraterritorial effect.”

“He also noted the specific facts in the dispute between Life Tech and Promega do not lead to a clear test for suppliers.”

“While a qualitative test like that adopted by the Federal Circuit might benefit patent holders, it increases the uncertainty for suppliers, and unless the court comes out with a quantitative-type test, the court’s decision may not resolve that uncertainty even if it reverses or remands,” D’Amore said.

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