The issue in WesternGeco LLC v. ION Geophysical Corp., 585 U.S. __ (2018), was whether WesternGeco could obtain lost profit damages from ION, which manufactured components of WesternGeco’s patented marine seismic survey system, then exported and assembled the components outside the United States. ION allegedly violated a statute prohibiting the export of a patented invention’s parts in a way that could constitute patent infringement inside the United States.
The Supreme Court’s opinion, written by Justice Clarence Thomas, overturned decades of Federal Circuit precedent by holding that WesternGeco’s award for lost profits was a permissible application of 35 U.S.C. 284. The panel will discuss the following topics:
- how WesternGeco may affect decisions regarding the location of research and development, manufacturing and contract signing;the immediate and long-term effects on litigation strategy;
- whether the impact will be limited to 35 U.S.C. 271(f)(2) cases or may be broader;
- what kind of proof plaintiffs will need to bolster their claims for worldwide damages;
- how questions of proximate cause could “limit or preclude damages in particular cases,” an issue the Court declined to address.
Eppenauer, who is a member of IPO’s Amicus Brief Committee, authored that organization’s amicus brief with Shook Partner Pat Lujin, Of Counsel Kyle Friesen and Staff Attorney Craig Edgar. The amicus brief successfully asked the Supreme Court "to confirm that foreign activity may be used to show otherwise compensable injuries from patent infringement and to correct the Federal Circuit’s erroneous application of the presumption against extraterritoriality in the present case.”