Legal scope again

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According to 35 USC § 271 (a):

Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

A petition for a writ of certiorari, dealing in part with the semantic interpretation of this sentence, is now pending before the Supreme Court. The critical question is how to interpret the adverbial adjunct "within the United States" as applied to the phrase "offers to sell". Does it constrain the location of the offering, or the location of the selling, or perhaps both?

The petitioner argues that the statute should be interpreted as constraining the location of the offering:

Basic English grammar further confirms that the listed acts—makes, uses, offers, or sells—must occur “within the United States.” The use of “within the United States” to modify a list of verbs means that it must modify each member of the list the same way. See Edwin D. Garlepp, An Analysis of the Patentee’s New Exclusive Right to “Offer to Sell,” 81 J. Pat. & Trademark Off. Soc’y 315, 325–26 (1999). This rule works perfectly when requiring the acts of making, using, offering, or selling actually to occur “within the United States.”

On this view, if an offer to sell a patent invention is made outside the United States, contemplating a sale to carried out within the United States, no infringement takes place.

The court of appeals disagreed. A brief in opposition to the petition is here.

My impression is that in phrases of the form [Verb Infinitive LocativePP], the locative generally modifies the infinitive rather than the main verb, as in these examples from the NYT:

The opposition had refused to sit in Parliament since the election in June 2001.
American officials have offered to meet in Moscow or elsewhere in Europe.
Some years ago, Tom Boerman, 44, a special-education researcher in Eugene, Ore., agreed to travel in Mexico with four friends.

It's clear in these cases that the refusing, the offering, and the agreeing (probably) did not take place in the locations specified by the locative PPs, which modify the sitting, the meeting, or the traveling.

Perhaps some of our legally informed readers can explain whether a more systematic exploration of common usage would in principle be relevant to this case.

A couple of earlier LL posts on adverbial scope in statutory interpretation:

"Adverbial modification at the Supreme Court today", 2/25/2009
"Grammatical justice is served", 5/7/2009

[Tip of the hat to David Seidman]



  1. Coby Lubliner said,

    October 30, 2013 @ 9:45 am

    So, if an offer is made in the US to sell a patented invention in another country, no infringement takes place? What if the invention is also patented in that country?

    I assume, by the way, that the "[e]xcept as otherwise provided in this title" includes the case of the proscribed actions being performed by the patent holder. Is that true?

  2. D.O. said,

    October 30, 2013 @ 9:54 am

    I am not a lawyer, but common sense tells me that both offer and the proposed sell should happen within the US. If offer is made outside the US and the sell have not happened (yet) than it's outside American jurisdiction. If the offer is made in the US, but the sell itself should happen outside, it's hard to see what is the substantial harm to the patent holder.

    It seems to me that the adjunct "within the United States" is put in there to contrast the first part of the clause with the second part. Without the second part this adjunct has very little meaning — American laws are in general written to limit conduct within the United States.

  3. rgove said,

    October 30, 2013 @ 9:56 am

    I assume, by the way, that the "[e]xcept as otherwise provided in this title" includes the case of the proscribed actions being performed by the patent holder.

    You missed the phrase "without authority". The patent holder always has authority.

  4. Coby Lubliner said,

    October 30, 2013 @ 10:02 am

    rgove: Thanks for the pointer.

  5. Carrington Dixon said,

    October 30, 2013 @ 10:28 am

    "American laws are in general written to limit conduct within the United States."

    Generally true — but not always. The "Foreign Corrupt Practices" act prohibits bribery of foreign officials; even though, such would almost always take place outside the United States.

  6. marie-lucie said,

    October 30, 2013 @ 11:04 am

    CDixon: What about bribing a foreign diplomat stationed in the US?

  7. Garrett Wollman said,

    October 30, 2013 @ 11:10 am

    Mark, I don't think your parse of the third example is the most plausible. Surely "in New Jersey, Connecticut and New York" attaches to "branches", not "agreed to buy". The actual transaction could take place in a lawyer's office in Delaware.

    [(myl) Yes, you're right. So I've substituted another example.]

  8. Neal Goldfarb said,

    October 30, 2013 @ 12:10 pm

    @myl: "Perhaps some of our legally informed readers can explain whether a more systematic exploration of common usage would in principle be relevant to this case."

    Yes, it would. And I would hope that it would be relevant in practice, as well.

    On the status of the petition: The Court has asked for the views of the Solicitor General—i.e., it wants to know the federal government's position about the legal issue and about whether the petition should be granted. That's a sign that the petition is being taken fairly seriously, but it doesn't mean that a grant is a sure thing.

  9. cs said,

    October 30, 2013 @ 12:21 pm

    My non-lawyer interpretation would be that "offers to sell" and "sells" should be taken as a set. You can't do a certain kind of transaction, and also you can't offer to do that transaction.

    I guess in this case that would mean the restriction applies to the location of the intended sale, not the location of the offer.

  10. GeorgeW said,

    October 30, 2013 @ 12:56 pm

    I would agree with the petitioner on pragmatic grounds. Had the writers of the law intended that it apply to only one activity in the list, the other activities would not be listed. To apply it only to 'sells' would violate some Gricean maxim.

  11. ohwilleke said,

    October 30, 2013 @ 12:59 pm

    The better approach to adjudicating questions like these is to not focus unduly on the proper grammatical construction, to deem the statute to be ambiguous, and to resolve the question based on the outcome most consistent with the policy of the patent statutes rather than the word choice of its drafters who obviously hadn't contemplated the circumstances in which their drafting would be ambiguous (or they would have drafted differently).

  12. J. W. Brewer said,

    October 30, 2013 @ 1:47 pm

    To follow up on the first comment by Coby Lubliner: consider three scenarios: a) offer is made in U.S. contemplating a sale to be made in the U.S.; b) offer is made outside the U.S. contemplating a sale to be made in the U.S.; and c) offer is made in the U.S. contemplating a sale to be made outside the U.S. The statute uncontroversially applies to a (although it's not clear to me what damages can be recovered if the offer to sell is not followed by an actual sale – but there must be some reason why Congress wanted patent holders to be able to sue even if the contemplated sale ends up not happening). This case is about b (although there's a separate argument that the activity contemplated within the U.S. was not a "sale" and thus the preliminaries could not have been an "offer to sell," which could well be a stronger argument or at least enough to allow b to be ducked). But what about c? It seems counterintuitive at first glance (although I am not an expert in the field and might well be missing something) for an offer made in the U.S. to sell something in Norway (something that might well be subject to no patent protection at all under Norwegian law) to be considered to infringe the U.S. patent on that something. That frankly seems more counterintuitive than b So I think an interesting question is whether the petitioner's "grammatical" argument that b) is not infringing can avoid the consequence that c), by contrast, would be infringing. From a policy standpoint, it might be quite sensible to have a statute that bars only a (i.e. both the offer and the sale it contemplates are or would be within the U.S.), but it might be hard to get to that result by syntax alone.

    It is true that one of the background interpretive rules here (think of them as loosely akin to Gricean maxims for the peculiar context of statute-writing and statute-reading) is that there's a presumption against extraterritorial application of U.S. statutes. But in practice there is plenty of room for dispute about both i) how much textual or other evidence you need to override that presumption in the context of a given statute; and ii) what's "extraterritorial," especially in a context where you're talking about preliminary steps toward a domestic transaction.

  13. Sybil said,

    October 30, 2013 @ 5:18 pm

    Not relevant to the question at hand, but I was struck by the lack of any punctuation between "within the United States" and the next clause. The first time I read it I had a moment of genuine confusion. (Just a moment, mind.) This also may be due to the line break after the "or"*. My brain seemed to be expecting the "or" to be followed by "its territories" or something like that: "within the United States or its territories"

    *That's what I see in my browser. I don't know if it is the same for everyone.

  14. Bob Moore said,

    October 30, 2013 @ 5:26 pm

    I can't comment on the law, but I think that as a matter of grammar, I would agree with the petitioner that all the verbs are modified similarly, so that "in the United States" modifies "offer". Without the set of conjoined verbs, the preference for right association would favor modifying "sell", but I think that attachment is blocked by the conjoined-verb structure.

    [(myl) I'm not convinced that the grammatical parallelism makes a difference here. Consider:

    Do you live or wish to live in Kansas and need the most reputable and trustworthy of the Wichita moving companies?
    The Florida thread – for those who live, study, or plan to work in Florida.
    The division of civil affairs handles for the executive secretary correspondence relating to foreign corporations which do business or desire to do business in the Canal Zone, under the provisions of the Executive order of March 20, 1913.

    The wishing need not be taking place in Kansas; the planning need not be taking place in Florida; and the desiring need not be taking place in the Canal Zone, right?]

    As to the fact that this makes offering outside the US to sell inside the US non-infringing, the infringement would occur as soon as the sale was made, under one of the other conjuncts. Of course, in the age of internet commerce, it is highly problematic where the sale takes place if the seller is in one jurisdiction and the buyer is in another.

  15. Rubrick said,

    October 30, 2013 @ 5:50 pm

    Has anyone ever (semi-) seriously looked into the possibility of writing laws in some kind of conlang, perhaps something more akin to a programming language? English is horribly suited to expressing things such as this, precisely because its scoping rules are so fluid.

    Obviously the need for citizens to be able to understand its laws is a consideration here (though really, what percentage can understand them now?). But in this example, even a simple Venn-like diagram would have clarified things enormously.

  16. Jonathan D said,

    October 30, 2013 @ 6:26 pm

    J. W. Brewer, it seems the Congress did want to allow damages for offers to sell whether the sale goes ahead or not (in line with an international agreement), but without that knowledge, I might have thought it was possible that "offers to sell" was included in order to assert jurisdiction over sales in scenario c, with a and b already covered by "sells".

    As far as the language goes, it seems natural to me that "offers to sell within the US" is talking about possible sales in the US, and this seems consistent with the legal/policy aspects. But surely whatever linguistic argument there is is about whether placing "offers to sell" in a list of actions changes the effect of "within the US".

  17. Alan Gunn said,

    October 30, 2013 @ 6:35 pm

    @ Rubrick:

    One of my peeves, though a minor one, is the insistence of people who draft legislation on putting everything in English prose, even when that makes it harder to understand. The Internal Revenue Code contains a number of mathematical formulas which are easily grasped and applied when written as formulas but which take a fair amount of deciphering when expressed in words. (Yes, many lawyers are math dummies, but putting this stuff in formulas doesn't solve that problem, it just sets up a barrier before you get to the math.)

    As for this particular question, I agree with ohwilleke. A friend of mine once described judging as being a delicate balance between following orders and getting it right. If the language doesn't constitute a clear order, figure out what makes sense.

  18. Alan Gunn said,

    October 30, 2013 @ 6:36 pm

    I meant to say "not putting this stuff in formulas …."

  19. maidhc said,

    October 30, 2013 @ 7:08 pm

    It seems to me that the reason for including "offering" is so the patent-holder can take action against an infringer without the burden of proving that a sale actually took place. Merely advertising for sale something that would be infringing to sell would be enough for the patent-holder to take legal action to stop the potential infringement.

    Brewer's case B above is would it be legal in another country to offer to do something in the US that would be illegal there?

    As a concrete example, consider seeds, which can be patented in the US but not in many other countries. Can I meet someone in Berlin and offer to sell them patented seeds for delivery in Wisconsin? Or, conversely, case C, could I meet someone in Wisconsin and offer to sell them seeds for delivery in Berlin?

    Currently the US is seeking to extradite Kim Dotcom, founder of Megaupload, who is a German citizen resident in New Zealand, on charges of piracy of intellectual property. However, intellectual property cases have not been traditionally grounds for extradition. Megaupload is a company headquartered in Hong Kong, but it did rent server space in the US.

    So it does seem that the US is claiming that US IP law applies outside the US.

  20. maidhc said,

    October 30, 2013 @ 7:10 pm

    The Megaupload case is more complicated than I can describe in a brief comment.

  21. Bob Ladd said,

    October 31, 2013 @ 5:17 am

    "So it does seem that the US is claiming that US IP law applies outside the US."

    This is not new. The US has long been one of the only countries in the world to tax its own citizens who are resident abroad on income earned abroad. The Economist recently ran a piece about how foreign banks are asking US citizens to close accounts because the US is instituting new anti-money-laundering laws that impose reporting requirements on foreign banks if they have US citizen account-holders. I can't link to that because of the paywall, but a freely accessible more general (and very balanced) discussion of the issue of "extraterritoriality" is here.

  22. Jake Nelson said,

    October 31, 2013 @ 10:09 am

    So, setting aside the kind of strained parses that can only be taken as trolling, it's "[offer to sell] within the US" vs. "offer to [sell within the US]" that's the interpretation question. I would think the latter would be prohibited already by the separate rule against selling in the US- if it's illegal to sell it here, you're either saying "we'll do something illegal" or you're taking orders you're not going to fulfill, which last I checked was fraud.

    So I would take the "offer" portion as saying you can't make the offer within the US- Item A is patented in the US, and you don't have license from the patent holder. Item A isn't patented in Country B. You want to sell it to a company in Country B. You'll have to go to Country B to talk to them and make the deal there, because offering it to their rep in the US is illegal.

    Which I guess means I agree with the petitioner's specific claim there, though unless I miss my guess as to their motivations, they wouldn't be too happy with the rest of my ruling, were I the judge in their case…

  23. J. W. Brewer said,

    October 31, 2013 @ 10:44 am

    I haven't looked at them myself, but if others are interested, more of the briefs at the cert stage (including amicus briefs from various sources including the Danish government) can be found here: I have no idea what they may have to say about syntax.

  24. J. W. Brewer said,

    October 31, 2013 @ 11:20 am

    The respondent, for what it's worth, characterizes the question presented by the case as "Whether substantial evidence supports the jury’s
    factual finding that two U.S. companies’ execution of
    a contract governed by U.S. law to provide a drilling
    rig in the U.S.—a rig that was under construction
    and contained every element of the patented
    invention at the time the contract was executed—
    was an offer to sell and sale of a patented invention
    within the U.S. under 35 U.S.C. § 271(a)."

    Note the subtle differences in emphasis from the petitioner's formulation, which is "Whether offering, negotiating, and entering into
    a contract in Scandinavia to provide services using a
    potentially patented device constitutes an “offer to
    sell” or “sale” of an actually patented device “within
    the United States,” under 35 U.S.C. § 271(a)."

  25. Jon Weinberg said,

    October 31, 2013 @ 1:41 pm

    It seems to me that maidhc poses the right question, and supplies the right answer. Q: Why did Congress prohibit naked offers to sell in the first place? A: so that the patent holder would be able to take action against a person marketing an infringing product without having the evidentiary burden of proving actual sales. That suggests that the "offers to sell" prohibition is just an evidentiary adjunct of the "sells" prohibition — i.e., that the court below had the better answer, and the petitioner has the worse one.

  26. ohwilleke said,

    October 31, 2013 @ 4:37 pm

    @Rubrick The problem is not that the English language is not capable of expressing the ideas. The problem is that there are many ways of expressing the idea that have subtle flaws and ambiguities that are not obvious until they come up unless you are familiar with that class of problem. Style guides are sufficient without a conlang. Indeed, some states like Colorado and Alaska require statutory language to be drafted by a legislative services department of the legislature with such style guides, and historically, staff drafting assistance to avoid ambiguities has been more widely used in tax legislation than in most kinds of legislation passed by Congress.

    @ Alan Gunn I quite agree re formulas. I am also not a fan of codifying tables derived from a formula, rather than the formula itself, although this is fairly common practice.

  27. Bob Moore said,

    October 31, 2013 @ 5:18 pm

    @myl Those examples are more convincing than your original ones. Point conceded.

  28. a George said,

    October 31, 2013 @ 5:47 pm

    A patent is a territorial right and cannot go outside the jurisdiction of the act. The right is not a right to perform what is defined in the patent claims but a right to prohibit commercial misuse of the technical solution defined by the claims in the patent. An infringer (if determined via a court case to be one) may have a commercial advantage out of offering for sale the technical solution, of selling the technical solution, of manufacturing the technical solution, of importing the technical solution or of using the technical solution. These acts, when performed in the US, have to be authorised by the holder of the US patent, because he has the right to prohibit them. Although the US still aspires to police the world, the US Patents Act has no cause outside the US. For this reason I am extremely surprised to read this post and the question posed looks like an act of desperation. In my role as a European Patent Attorney I am curious, so I am going to make use of the links kindly provided by myl and commenters to find the context of this strange request.

  29. Maryellen MacDonald said,

    November 2, 2013 @ 10:56 am

    re: Mark's "My impression is that in phrases of the form [Verb Infinitive LocativePP], the locative generally modifies the infinitive rather than the main verb…"

    Right. I don't know of data on precisely this structure, but there are studies about [Verb VP-of-some-sort Modifier-of-some-sort] sequences showing overwhelming preference for modification of the nearby/lower verb (such as an infinitive) rather than the higher/more distant verb. There are even claims that this preference comes from an innate, hardwired algorithm in humans, but we don't need to posit that to see why this bias exists. For the infinitive+locative PP examples, there are two things going on: a) the infinitive (sit, meet, travel, etc.) has been more often associated in past experience with locatives than has the higher verb (offer, refuse, agree). These prior co-occurrences are huge in ambiguity interpretation. b) the phrase "to sell, or sells any patented invention" is longer than the modifier "in the United States". Other factors like lexical co-occurrences being equal, there's a much stronger bias for local modification when the modifier phrase is shorter than the local verb phrase compared to when there's a short VP and an equal length or longer modifier. In this latter case, modification of either the distant or local verb is pretty good, e.g. I like to swim very much (modifying "like")/I like to swim very slowly (modifying "swim"). These length-based patterns are quite robust and may be a consequence of how short vs. long phrases get planned during language production.

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