IEEE Power Electronics Magazine - June 2017 - 76

The Supreme Court
stated that whatever
number of
components is needed
to be a "substantial
portion," it has to be
more than one.

quantitative or qualitative measure is meant by
"substantial," based on the facts of that case. The
court said that such a rule would lead to too
much uncertainty and declined to adopt it.
The court left open the question of how many
components more than one constitute an infringement. Thus, we do not know for sure whether the
Supreme Court would have stated that it is an
infringement of the patent rules to manufacture the
Taq polymerase and one of the other four components in the United States and ship them to England to be combined with the other three elements
of the invention. That is, two out of five may still be
"substantial" if one of the two is a main or major
component of the combination.
While this was a biotechnology lawsuit, the principles apply with equal force to power electronics. A
typical electrical circuit is made up of several
components, one of which may be a key component, such as an application-specific integrated circuit or other specialized chip, with the remainder
being biasing resistors that such chips work with. If
the patent claim is to the combination of components in the full circuit, and only that one specialized
chip is to be exported to be combined with the resistors into the electrical circuit outside of the United
States, then the claim to the full circuit would not
be infringed. One of the takeaways for those seeking
patents in this field, then, is to try to get a separate
patent claim on any special component of the circuit as well as the full circuit. The component
itself may be patentable if it meets the tests of novelty, utility, and nonobviousness that are required for
all inventions to be patentable.

About the Author
Art MacCord (amaccord@maccordmason.com)
has practiced patent, trademark, copyright, and
trade-secret law for over 35 years and is a graduate
of the University of Virginia and George Washington
University Law School. He currently practices with
MacCord Mason PLLC in Greensboro, North Carolina, United States.



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