US Supreme Court - WesternGeco LLC v. ION Geophysical Corp. - Damages for Patent Infringing Exports

In WesternGeco LLC v. ION Geophysical Corp., the US Supreme Court held that "under the Patent Act, a company can be liable for patent infringement if it ships components of a patented invention overseas to be assembled there." See 35 U. S. C. §271(f)(2). The Court stated under 35 U.S.C. §284  "a patent owner who proves infringement under this provision is entitled to recover damages" and held the patent owner should recover its lost foreign profits ($90 Million).

Copyright © 2018 Robert Moll. All rights reserved.

Supreme Court - WesternGeco LLC v. ION Geophysical Corp. - International Damages

On January 12, 2018, the U.S. Supreme Court granted a petition for certiorari in WesternGeco LLC v. ION Geophysical Corp.

The issue to be considered is 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 in which patent infringement is proven under 35 U.S.C. § 271(f).

As a reminder, 35 U.S.C. § 271(f) states "Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer."

Copyright © 2018 Robert Moll. All rights reserved.

US Supreme Court - Life Technologies v. Promega - Supplying a Single Component Abroad Doesn't Infringe US Patent Under 35 USC 271(f)(1)

In Life Technologies Corp. v. Promega Corp., the U.S. Supreme Court held supplying a single component abroad for manufacture of a product with multiple components does not infringe a U.S. patent under 35 U.S.C. 271(f)(1). This reverses the Federal Circuit decision, and disagrees with the qualitative argument that a single component can be a "substantial portion" of the components supplied resulting in infringement.

For details and an insightful analysis by Professor John Duffy see SCOTUS Blog.

Copyright © 2017 Robert Moll. All rights reserved.

Federal Circuit - Akamai Technologies, Inc. v. Limelight Networks, Inc. - Infringement by Inducement Requires Direct Infringement

In Akamai Technologies, Inc. v. Limelight Networks, Inc. the Federal Circuit held that the patent owner Akamai failed to prove infringement by inducement by Limelight, because Akamai failed to show direct infringement.

The Federal Circuit held that direct infringement only occurs when a single party or a joint enterprise performs all of the steps of the method. Further, encouraging or instructing others to perform an act is not the same as performing the act and will not result in direct infringement. Instead, multiple entities must be in a principal-agent relationship, a contractual arrangement, or in a joint enterprise.

This case relates to U.S. Patent No. 6,108,703 (the '703 patent). It describes an invention that, among other thing, stores web pages at the content provider (web site) and stores their embedded objects at another domain closer to the client. This is one of inventor Daniel Lewins' contributions to the Web: store popular web pages at the web site so hits can be tracked, but store their embedded objects at domains closer to the browsers to reduce page latency.

Claim 19 of the '703 patent recites a content delivery service, comprising:

• replicating a set of page objects across a wide area network of content servers managed by a domain other than a content provider domain;
• for a given page normally served from the content provider domain, tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain;
• responsive to a request for the given page received at the content provider domain, serving the given page from the content provider domain; and
• serving at least one embedded object of the given page from a given content server in the domain instead of from the content provider domain.

Limelight performed all the steps of claim 19 except for the step of "tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain," which it encouraged customers perform.

Such is insufficient, and the Federal Circuit explained: "In the present case, the asserted claims were drafted so as to require the activities of both Limelight and its customers for a finding of infringement. Thus, Akamai put itself in a position of having to show that the allegedly infringing activities of Limelight’s customers were attributable to Limelight. Akamai did not meet this burden, because it did not show that Limelight’s customers were acting as agents of or otherwise contractually obligated to Limelight or that they were acting in a joint enterprise when performing the tagging and serving steps. Accordingly, we affirm the district court’s grant of Limelight’s motion for JMOL of non-infringement under § 271(a)."

In general, a method claim should be written so that a single entity performs each step to avoid the requirement that the multiple entities that perform the claim be in a principal-agent relationship, a contractual arrangement, or in a joint enterprise.

Copyright © 2015 Robert Moll. All rights reserved.

US Supreme Court - Oral Arguments in Kimble v. Marvel and Commil USA v. Cisco Systems on March 31

On March 31, the US Supreme Court hears oral arguments in the patent cases: Kimble v. Marvel Enterprises and Commil USA, LLC v. Cisco Systems.

The issue in Commil USA: Whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).

The issue in Kimble: Whether this Court should overrule Brulotte v. Thys Co., which held that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se."

The SCOTUS blog will be live blogging the oral arguments at 9:45 am ET.

Copyright © 2015 Robert Moll. All rights reserved.

Supreme Court Oral Hearing on Joint Infringement in Limelight Networks v. Akamai Technologies

Today, the U.S. Supreme Court held an oral hearing in Limelight Networks v. Akamai Technologies.

Here's a copy of the written transcript of the oral hearing.

As a reminder, the parties frame the issues this way: patent owners Akamai and MIT state the issue is whether a party may be liable for patent infringement under 35 U.S.C. § 271(a) or § 271(b) when two or more entities perform all of the steps of a process claim. Accused infringer Limelight Networks states the issue is whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).

For background: Supreme Court Grants Review of Joint Infringement in Limelight Networks v. Akamai Technologies.

Copyright © 2014 Robert Moll. All rights reserved.