The US Supreme Court has
granted certiorari to WesternGeco v Ion Geophysical, a case
that will consider whether lost profits arising from prohibited
combinations occurring outside of the US are categorically
unavailable in cases where patent infringement is proven.
petition was filed by Paul Clement of Kirkland & Ellis.
Justice Alito took no part in the consideration or decision of
According to WesternGeco’s petition:
Under 35 USC § 271(f), it is an act of patent
infringement to supply "components of a patented invention,"
"from the United States," knowing or intending that the
components be combined "outside of the United States," in a
manner that "would infringe the patent if such combination
occurred within the United States."
Under 35 USC § 284, patent owners who prevail in
litigation are entitled to "damages adequate to compensate
for the infringement."
In this case, despite affirming that Respondent was liable
for infringement under § 271(f), the majority of a
divided panel of the court of appeals held that Petitioner
was not entitled to lost profits caused by the proscribed
combination. The court of appeals reasoned that even when
Congress has overridden the presumption against
extraterritorial application of the law in creating
liability, the presumption must be applied a second
time to restrict damages.
The question presented is:
Whether the court of appeals 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.
In September 2016, the Federal Circuit issued a new opinion
in the case after the Supreme Court remanded for further
consideration in light of Halo v Pulse. The Southern District
of Texas jury had previously found infringement and no
invalidity as to all asserted claims and awarded WesternGeco
$93.4 million in lost profits and a reasonable royalty of $12.5
On remand, the Federal Circuit vacated the district
court’s judgment with respect to enhanced damages
for willful infringement under Section 284 and reinstated its
earlier opinion reversing the lost profits award, holding that
WesternGeco was not entitled to lost profits resulting from
foreign uses of its patented invention.
David Healey of Fish & Richardson argued for Geophysical
at the Federal Circuit, and filed its
opposition brief at the Supreme Court.