On June 22, 2018, the Supreme Court decided WesternGeco LLC v. ION Geophysical Corp. No. 16-1011 and held that patent owners may recover lost profits damages under § 284 of the Patent Act based on infringement under § 271(f)(2) due to reconstruction and sales activities that occur outside the United States. The Court held a party liable for damages where patent infringement occurred in the United States through the supply of components of a patented invention outside the United States, such that the combination of these components would infringe a patent had the combination occurred in the United States.
BackgroundCompetitors WesternGeco and ION Geophysical Corporation develop and sell ocean surveying systems. WesternGeco developed and patented a novel ocean surveying system. ION began manufacturing a knock-off system and supplied the disassembled components to companies outside the United States. Once reassembled, ION’s surveying system was indistinguishable from WesternGeco’s patented system.
WesternGeco sued ION for patent infringement under §§271(f)(1) and (f)(2) of the Patent Act. At trial, WesternGeco proved that it had lost 10 specific survey contracts due to ION’s infringement. The jury found ION liable for infringement and awarded WesternGeco damages of $12.5 million in royalties and $93.4 million in lost profits pursuant to 35 U.S.C. §284, the patent damages statute. ION filed a post-trial motion to set aside the verdict, arguing that WesternGeco could not recover damages for lost profits because §271(f) does not apply extraterritorially. The district court denied the motion. 953 F. Supp. 2d 731, 755–756 (SD Tex. 2013).
On appeal, the United States Court of Appeals for the Federal Circuit affirmed the finding of infringement under §271(f)(1) but reversed the award of lost-profits damages under §271(f)(2). WesternGeco LLC v. ION Geophysical Corp., 791 F. 3d 1340 (2015). The Federal Circuit held that the Patent Act did not allow for the recovery of lost profits due to the presumption against extraterritoriality, which states that “patent law operates only domestically and does not extend to foreign activities.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 454-455 (2007).
WesternGeco successfully petitioned for certiorari on the matter of its lost profits.
The Supreme Court DecisionThe Supreme Court acknowledged that courts ordinarily presume that statutes apply only within the territorial jurisdiction of the United States, quoting Foley Bros. v. Filardo, 336 U.S. 281, 285 (1949). The Court then noted that there is an established two-step framework to decide questions of extraterritoriality. RJR...
