Posts Tagged: "lost profit damages"

We reached out to our distinguished panel of industry insiders, and the initial reaction is this decision is a clear win for patent owners. Efrat Kasznik: “The expansion of lost profits to include foreign lost profits enhances the ability of a patent owner to recover the appropriate amount damages that would make them whole, without artificially excluding foreign lost profit damages from the pool of available damages. It’s economic justice.” Ronald Abramson: “Today’s decision in WesternGeco is clearly a win for patent owners, though the Court made considerable efforts to limit its ruling…”

Earlier today the United States Supreme Court issued a decision in WesternGeco LLC v. ION Geophysical Corp., which in a 7-2 decision ruled that a patent owner may recover lost foreign profits for infringement under 35 U. S. C. 271(f)(2). The question decided, as set forth in the opinion by Justice Thomas, writing for the majority, was: “The question in this case is whether these statutes allow the patent owner to recover for lost foreign profits.” Thomas simply answered the question in the opening paragraph saying: “We hold that they do.”

Artist Matt Furie, the creator of the Pepe the Frog anthropomorphic frog character that has gained notoriety for its use in Internet memes, filed a complaint for copyright infringement in the Central District of California. The suit targets a pair of companies managed by far-right conservative radio show host Alex Jones over the use of the Pepe character over the sale of a poster including a likeness of Pepe alongside political figures from the alt-right and the 2016 presidential campaign of Donald Trump.

A jury verdict awarded more than $26 million to a group of plaintiffs including San Diego, CA-based gene analysis firm Illumina, Inc. The jury found that Ariosa Diagnostics infringed upon two patents, awarding $15.7 million in lost profits to Illumina and nearly $11 million in lost profits to Verinata Health… In the recent jury verdict, both Illumina and Verinata lost on willful infringement arguments made against Ariosa during the trial. However, the validity of both patents was confirmed after being challenged by Ariosa during the case.

The Supreme Court will hear WesternGeco LLC v. ION Geophysical Corp., which asks whether the Federal Circuit 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)… Because lost profits damages were awarded for lost contracts for services to be performed on the high seas, outside of the jurisdiction of U.S. patent law, the Federal Circuit reversed that $93.4 million award… In December 2017, the office of Solicitor General Noel Francisco filed a brief for the United States as amicus curiae. The Solicitor General argued that WesternGeco’s entitlement to damages should be informed by the traditional common-law rule that a victim of a tort should be returned to the position that victim would have occupied if not for the defendant’s legal wrong.

In determining indefiniteness of a claim based on a testing method referenced in the patent, courts will evaluate whether the method is well known in the art and could reasonably be adapted for the claimed purpose. Intervening rights is an affirmative defense that may arise when claims are substantially changed after an intervening reexamination. For lost profits, a non-infringing alternative does not have to be a direct substitute; it can be an alternative in a hypothetical market absent the infringing product. Enhanced damages are discretionary and may be declined when willful infringement is not egregious, e.g. in light of its defenses and when patentee amended its claims in reexamination. Irreparable injury based on an erroneous lost profits finding will not stand. Further, a permanent injunction may be reconsidered by evaluating the sales in the actual market after the grant of an injunction.

In Promega Corporation v. Life Technologies Corporation, on remand from the Supreme Court, the Federal Circuit affirmed district court rulings that granted Life Technologies’ motion for judgment as a matter of law (“JMOL”) that Promega Corp. had failed to prove its infringement case under 35 U.S.C. § 271(a) and § 271(f)(1), and subsequently denied Promega’s motion for a new trial.