Greenblum & Bernstein, P.L.C.


Recent Litigation News in Intellectual Property


                                                                                          March 2018


In This Issue

·    Supreme Court’s Patent Venue Ruling in Heartland Gives Another Chance to Transfer Cases        

·    Promega Foreclosed from Seeking Patent Infringement Damages After Supreme Court Loss       






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P. Branko Pejic

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Supreme Court’s Patent Venue Ruling in Heartland Gives Another Chance to Transfer Cases    


In In re: Micron Tech., Inc., the Court of Appeals for the Federal Circuit (“Federal Circuit”) held that the Supreme Court's ruling in TC Heartland LLC v. Kraft Foods Grp Brands LLC was a change in law, such that defendants may now request venue transfers on the grounds that the plaintiff chose the wrong court, even if the defendant had not previously raised the issue.

Prior to Heartland, district courts were split on whether defendants had waived the right to seek a venue transfer in a timely manner.  The Federal Circuit, however, found that because the Supreme Court’s Heartland decision constituted an intervening change in the law, the timeliness issue was overcome.  The Federal Circuit, nevertheless, opined that other factors also come into play in considering whether to grant a transfer motion.

Under the patent venue statute, 28 U.S.C. § 1400(b), patent owners may bring suit in a venue where (i) the defendant resides, or (ii) the defendant both committed an infringing act and has a regular and established place of business.  The Heartland ruling restricted the first path by limiting the meaning of “resides” to the locale where the defendant is incorporated; not every locale where the defendant may be subject to personal jurisdiction

After the Heartland decision was issued, Micron moved to transfer or dismiss the pending infringement action on the grounds that Massachusetts was not a proper venue.  The district court rejected the request holding that Micron had waived the venue argument by failing to raise it in a previous motion to dismiss. The Federal Circuit disagreed, holding that Heartland was a change in the law.  The Federal Circuit, however, didn't order the district court to transfer or dismiss the action, opinion that there may be other reasons to deny Micron's request such as a finding that Micron had forfeited - through other actions - the right to dispute venue, and remanded the case to the district court to decide Micron's motion.     

Promega Foreclosed from Seeking Patent Infringement Damages After Supreme Court Loss    

In a cautionary tale, Promega has been foreclosed from an award of infringement damages despite the accused infringer admitting infringing activities.  Specifically, the Federal Circuit held in, Promega Corp. v. LifeTech Corp., that Promega Corp. was not entitled to an award of infringement damages from an admitted infringer, because Promega relied solely on a damages theory that was rejected by the U.S. Supreme Court. 

By way of background, Promega filed suit alleging that LifeTech directly infringed the Promega patent under (i) 35 U.S.C. § 271(a), for allegedly selling or importing the infringing testing kits in the U.S. and (ii) for inducing infringement under Section 271(f), because LifeTech shipped a single component from the U.S. to a U.K. affiliate to assemble the kits; a party that supplies all or a substantial number of components to someone outside the U.S. to actively induce the manufacture of an infringing product is liable under Section 271(f).

Promega further argued that it was entitled to damages based upon worldwide sales (as opposed to only U.S. sales) of the allegedly infringing kit under the induced infringement theory because every LifeTech kit manufactured in the U.K. and imported into the U.S. had at least a single U.S. component.  Promega, in this respect, declined to proffer any evidence delineating the U.S. sales from global sales, and requested a jury instruction that conflated the two as well. Promega’s downfall was occasioned by the Supreme Court ruling which ultimately held that inducement liability requires supplying a "substantial" number of components, which must be more than one.  Here, Promega only argued that there was one component underlying the worldwide damages theory.

On remand to the Federal Circuit, Promega argued that it should be given a chance to present additional evidence showing what infringing sales could be attributed to the U.S., but the Federal Circuit disagreed observing that Promega had waived any opportunity to reargue its damages theory and present new evidence in support thereof.  As an example, the Federal Circuit noted that after the jury verdict in favor of Promega, LifeTech filed a motion challenging the verdict arguing that Promega failed to present sufficient evidence to establish damages under either a direct infringement or induced infringement theory.  Promega, in opposition, did not dispute that there was insufficient evidence at trial to prove damages for direct infringement, which the Federal Circuit considered to be a waiver by Promega to argue otherwise at a later time.  The Federal Circuit further noted that since direct infringement applies only to sales or imports into the U.S., it was reasonable to conclude that Promega was relying only on the induced infringement (worldwide sales) theory of damages insofar as Promega failed to present evidence relating to U.S. sales.  As such and given the Supreme Court’s rejection of Promega’s induced infringement damages theory, the Federal Circuit found that Promega could not meet its burden to prove damages because - even though LifeTech admitted it had committed infringing acts - there was no evidence of record as to U.S. sales.



The GREENBLUM & BERNSTEIN NEWSLETTER is issued by GREENBLUM & BERNSTEIN, P.L.C., an intellectual property firm, to provide timely news in the field of intellectual property.  The NEWSLETTER provides updates on recent issues of general interest in this field.  The views and/or opinions expressed herein do not necessarily reflect those of GREENBLUM & BERNSTEIN, P.LC.  Information regarding the contents of the Newsletter can be obtained by contacting P. Branko Pejic at GREENBLUM & BERNSTEIN, P.L.C., 1950 Roland Clarke Place, Reston, VA 20191.  Copyright © 2018 GREENBLUM & BERNSTEIN, P.L.C.