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In This Issue
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Supreme
Court’s Patent Venue Ruling in Heartland Gives Another Chance to Transfer
Cases
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Promega
Foreclosed from Seeking Patent Infringement Damages After Supreme Court Loss
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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.
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