The case law regarding extraterritorial liability for patent infringement is extraordinarily complicated ‒ and evolving.
Last year the Supreme Court decided WesternGeco v. ION, widening the scope of 35 U.S.C. § 271(f) by holding that once a domestic act of infringement has been proven under § 271(f)(2), damages resulting from the infringement may be recoverable regardless of where they occur in the world.
This month the Supreme Court asked for the views of the Solicitor General regarding the cert. petition in Texas Advanced Optoelectronic Solutions v. Renesas Electronics America. That case challenges the holding in TransOcean v. Maersk, a 2010 Federal Circuit opinion that found an offer to sell was “within the United States,” even though negotiation and execution of the contract took place abroad, when the two contracting entities were U.S. companies and delivery was to be in the U.S.
Our panel of experts will discuss how district courts have applied WesternGeco to date (including in Power Integrations v. Fairchild in the District of Delaware) and the open questions that remain. They will also analyze relevant case law at both the Supreme Court and the Federal Circuit. In addition, they will also address the challenges in litigating these issues. The cases to be discussed include:
- Halo v. Pulse (Fed. Circ. 2014)
- NTP v. Rim (Fed. Circ. 2005)
- Microsoft v. AT&T (S. Ct. 2007)
- Cardiac Pacemakers v. St. Jude Medical (Fed. Circ. 2009) and
- Life Technologies v. Promega (S. Ct. 2017)
- Danielle Joy Healey, Fish & Richardson, PC
- Prof. Timothy Holbrook, Emory University School of Law
- Thomas Saunders, Wilmer Cutler Pickering Hale and Dorr, LLP