SCOTUS to Examine Extraterritorial Infringement Liability and DamagesMarch 27, 2018

As a follow up to the MVS Briefs Article, “Extraterritorial Infringement Liability,” authored by Heidi S. Nebel, this blog post examines the briefing in the Western Geco LLC v. ION Geophsycial Corp. case set for oral argument before the United States Supreme Court on April 16, 2018.

The question presented to the Court is “[w]hether the court of appeals erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f).” Petition for Writ of Certiorari, WesternGeco, No. 16-1011 (available here).

The Federal Circuit applied the general presumption against extraterritoriality standard, thus basically implying that foreign actions are intervening acts which would sever traditional proximate cause analysis for infringement.

It is the Petitioner’s argument that the presumption against extraterritoriality should not apply here, as the statutes regarding infringement and damages are clear, i.e., the provisions of 35 U.S.C. § 271(f)(1) and (2), which address the situation where a defendant successfully avoided infringement by exporting multiple sub-assemblies of an infringing product which could be easily reassembled upon receipt. See Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 526-538 (1972).

The Respondent rephrases the question presented to state: “[w]hether this Court should overrule Microsoft v. AT&T and eliminate the presumption against extraterritoriality so that infringers are subject to damages under § 284 based on non-infringing foreign use by third parties.” The Microsoft v. AT&T decision held that the presumption against territoriality applied to all laws, and especially patent laws. See 550 U.S. 437 (2007).

Stay tuned to Filewrapper for our next blog post related to this case, which will cover the oral arguments taking place on April 16, 2018.

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