Docket No. 2013-1011, -1029, -1376
PROST, MAYER, CHEN
November 13, 2017
Brief summary: DC grant of Life’s motion for JMOL that Promega failed to prove infringement under § 271(a) and (f)(1), and its “vacatur of the [DC’s] denial of Promega’s motion for a new trial on damages and infringement” affirmed based on, e.g., “Promega’s deliberate strategy to adhere to a single damages theory”.
Summary: This opinion results from SCOTUS’s 2017 reversal of the FC’s 2014 decision holding that a multicomponent product assembled overseas could infringe a [US] patent under 35 U.S.C. § 271(f)(1) when only a single component of the product is supplied from the” US, “depending on the circumstances in a given case”. Here, LifeTech’s genetic testing kits were assembled in the UK using Promega’s Taq polymerase supplied from the US. The FC first explained that the SCOTUS decision did not affect is prior holdings that Promega’s asserted claims of the “Tautz patent” claiming methods and kits for analyzing DNA (expired in 2015) were invalid for lack of enablement (§ 112, first para.), Life’s alleged actions were not licensed by Promega, and “the active inducement requirement” of § 271(f)(1) “could be met if Life had the specific intent to combine the components itself.” The SCOTUS decision required the FC to reconsider its reversal of the DC’s grant of Life’s motion for JMOL that Promega failed to prove infringement under § 271(a) and (f)(1), and its “vacatur of the [DC’s] denial of Promega’s motion for a new trial on damages and infringement.”
On damages, the FC panel explained that “Promega only sought damages in the form of lost profits”, not a royalty. And “[w]hen a patentee seeks lost profits as the measure of damages, ‘the patent holder bears the burden of proving the amount of the award’” “by a preponderance of the evidence” (Minco, FC 1996; SmithKline, FC 1991). “The linchpin”, the opinion explains, is the DC’s “finding that Promega waived any argument that the trial record supports a damages calculation based on a subset of Life’s total worldwide sales”, and its conclusions that “defendants are entitled to judgment as a matter of law unless all of those sales fall under § 271(a) or § 271(f)(1)” and “Promega had ‘conceded’ the point.” The FC panel agreed with the DC as it “properly conclude[d] that Promega abandoned any alternative damages base when it failed to rebut Life’s argument in its Rule 50(b) motion that Promega did not present evidence that a reasonable jury could have relied on to award damages based on any subset of total worldwide sales” (an “all-or-nothing approach…Promega’s deliberate strategy to adhere to a single damages theory had the effect of winnowing out from the case any argument about damages based on a figure other than worldwide sales” (Tronzo, FC 2001; Exxon Shipping, US 2008). The FC panel also affirmed the DC’s grant of Life’s JMOL motion “[b]ecause there was insufficient evidence to show that all worldwide sales infringed under § 271(a) or § 271(f)(1) (under its proper interpretation)” and “no evidence to support a lost profits damages calculation under the narrow damages theory Promega crafted over the course of litigation.” Promega argued a new trial was warranted because, e.g., it “should have the opportunity to prove infringement under § 271(f)(1)” regarding other kits “that, according to Promega, each contained multiple components supplied from the” US. Life argued “that retrial should not be granted on a waived theory presented for the first time post-judgment” and the right to file a “new trial motion within 30 days after JMOL…does not mean such a motion substantively erases the losing party’s prior litigation positions.” The FC panel agreed with Life since, e.g., “[a] party may not introduce evidence or make arguments in a Rule 59 motion that could or should have been presented to the court prior to judgment” (noting that the DC “afforded Promega a second opportunity” to “prove any lesser damages amount”, which Promega declined, and from that time “was on notice that its untested interpretation of § 271(f)(1) might not prevail”). Thus, the DC decision was affirmed.