Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
Foreign Lost Profits Recoverable for Patent Damages
The U.S. Supreme Court recently held that a patent owner may recover lost foreign profits for infringement under 35 U.S.C. §271(f)(2). WesternGeco LLC v. ION Geophysical Corp., No. 16-1011, 138 S. Ct. 2129 (June 22, 2018). This holding rejects the Federal Circuit's categorical exclusion of lost profits damages for foreign sales, and expands the potential for increased damages from domestic competitors operating in foreign markets.
Factual Background
WesternGeco and ION both manufacture devices for acoustically mapping the seabed, technology used by the energy industry to locate oil and gas drilling sites. WesternGeco manufactures a system called the Q-Marine, and sells its services performing surveys for oil companies. ION makes the DigiFIN, which is manufactured in the United States, but sold to customers overseas who assemble the systems and perform the surveys themselves. In 2009, WesternGeco sued ION for infringement of four patents related to this technology.
The jury found the patents infringed under §§271(f)(1) and (f)(2), and awarded WesternGeco both a reasonable royalty of $12.5 million and lost profits damages of $93.4 million, basing its lost profits award on 10 surveys performed by ION's customers using the DigiFIN. The survey contracts were all entered into abroad and performed on the high seas — that is, outside the borders of the United States.
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It
Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
A Lawyer's System for Active Reading
Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.
Blockchain Domains: New Developments for Brand Owners
Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.