At the U.S. Supreme Court oral argument in Western Geco v. Ion, a case about expanding the damages for infringing a U.S. patent to include foreign lost profits, a heated and far-ranging debate ensued. Earlier, some amici curiae had stressed the huge stakes at issue. For instance, Fairchild Semiconductor joined forces with The Internet Association, arguing that allowing lost profits damages from outside the U.S. “would have negative fallout for economic policy, U.S. commerce, and foreign relations.” Even the “threat [of such damages] would encourage important industries to relocate abroad,” they claimed.
In late June, the Court disposed of the matter with an opinion from Justice Thomas. This webinar will focus on the impact of this decision on patent litigation strategy, as well as client counseling. The Court’s decision overturned decades of Federal Circuit precedent by holding that Western Geco’s award for lost profits was a permissible domestic application of § 284. Our panel includes the chief IP counsel for a major multinational; the former head of patents at Microsoft who is now with a law firm where he focuses on strategic IP counseling, IP transactions, and license agreements; and a patent litigator who has been involved in these issues for years on behalf of a patent owner. They will discuss:
- How Western Geco might impact decisions regarding the location of R&D, manufacturing, and contract signing.
- The immediate and long term effects on litigation strategy for both plaintiffs and defendants.
- Whether the impact will be limited to § 271(f)(2) cases or may be broader.
- What kind of proof plaintiffs will need to bolster their claims for worldwide damages.
- How the question of proximate cause “could limit or preclude damages in particular cases,” an issue the Court explicitly declined to address.
- Buckmaster de Wolf, General Electric Company
- Bart Eppenauer, Shook, Hardy & Bacon LLP
- Blair Jacobs, Paul Hastings LLP