Washington Law Review


Stuart Watt


In Paper Converting Machine Co. v. Magna-Graphics Corp., the Federal Circuit rejected the traditional operable assembly standard for determining a "making." In its place, the court adopted a more flexible standard that included partial assemblies that have no significant noninfringing purpose. This test for infringement significantly broadens patent protection and further restricts the permissible activity of competitors allowed during the patent term. The court's standard grants the patent owner a de facto monopoly beyond the expiration date by restricting competitors from making preparations to enter the market after the patent expires. The decision represents a movement by the Federal Circuit toward a much more protectionist view of patents. In achieving this result, however, the court disregarded strong precedent and left patent law uncertain. This Note argues that Paper Converting improperly rejected the traditional operable assembly standard for determining a "making" in light of the prior case law, the established infringement doctrines, and the congressional balancing of competing interests under the patent grant. First, this Note demonstrates the applicability of Deepsouth Packing Co. v. Laitram Corp. and its operable assembly standard to the facts of Paper Converting. Second, it argues that Congress, in weighing the competing interests of the patent grant, incorporated the operable assembly standard into the balance as a limitation upon the patentee's exclusive rights. Third, this Note highlights the uncertainty caused by the Paper Converting standard for infringement and its negative impact on the doctrine of contributory infringement. Fourth, it demonstrates the limiting effect of Paper Converting on preparations of competitors made during the patent term for post-patent market entry. Finally, this Note concludes that the Federal Circuit should have retained the traditional operable assembly standard instead of rewriting patent law.

First Page