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Supreme Court, Federal Circuit Deny Damages for Patent Found to Be Valid and Infringed
On Nov. 13, 2017, a Federal Circuit panel of Chief Judge Prost, Judge Mayer, and Judge Chen issued a unanimous decision, authored by Judge Chen, in Promega Corp. v. Life Technologies Corp., Case Nos. 2013-1011, 2013-1029, 2013-1376. On remand from the United States Supreme Court in Life Techs. Corp. v. Promega Corp., 137 S. Ct. 734, 741 (2017), the panel affirmed a grant of judgment as a matter of law by the United States District Court for the Western District of Wisconsin that the plaintiff failed to prove its infringement case under §§35 U.S.C. 271(a) and 271(f)(1). The panel affirmed the district court's denial for a new trial on damages and infringement, and reaffirmed its prior holdings on enablement, licensing, and active inducement issues.
Life Technologies Corporation (Life) sold genetic testing kits consisting of five components assembled in the United Kingdom. At least one of the five components in each kit was supplied from the United States. Promega Corporation (Promega) is the exclusive licensee of Reissue Patent No. 37,984, directed to methods and kits for analyzing DNA to determine the identity and kinship of organisms. Promega sued Life in district court, and was granted summary judgment that Life's accused products met all of the elements of the asserted claims of the patent. The parties stipulated that Life's total worldwide sales of the accused products were worth $707,618,247, and the district court entered judgment on the jury's verdict in this amount. The district court then granted Life's renewed motion for JMOL under Fed. R. Civ. P. 50(b), holding that no reasonable jury could have found that all of the accused products infringed under 35 U.S.C. §§271(a) and/or 271(f)(1). The district court also denied Promega's motion for a new trial, explaining that Promega waived any argument based on a subset of worldwide sales by failing to respond to Life's argument on this issue in its JMOL briefing.
Promega appealed to the Federal Circuit, which reversed the district court's decisions on both motions; holding that the single component supplied from the United States could qualify as a “substantial portion” of the kits assembled in the United Kingdom, and remanding with instructions to conduct a new damages trial. Life petitioned for writ of certiorari, and the Supreme Court granted the petition and reversed the Federal Circuit's judgments, remanding for consideration that “§271(f)(1) does not cover the supply of a single component of a multicomponent invention.” Life Techs., 137 S. Ct. at 743. On remand back to the Federal Circuit, Life argued that the Federal Circuit should affirm the district court's post-trial decisions, because Promega should be held “to its own considered strategic litigation decisions.” Promega argued that a new trial on damages should be ordered because to hold otherwise would result in a “windfall judgment of noninfringement” given Life's admissions that it committed infringing acts in the United States.
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