Extraterritorial Liability: Spotlight After WesternGeco

Recorded On: 01/17/2019

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 inTransOcean 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)

Speakers:  

  • Danielle Joy Healey, Fish & Richardson, PC 
  • Prof. Timothy Holbrook, Emory University School of Law 
  • Thomas Saunders, Wilmer Cutler Pickering Hale and Dorr, LLP

Danielle (DJ) Healey

Fish & Richardson, PC

is a Senior Principal at Fish & Richardson, PC. A patent litigator,
DJ has tried cases in the federal courts, ITC, and various arbitration venues.
She has argued appeals before the Federal Circuit, Fourth Circuit,
and Fifth Circuit, and has planned and executed multi-jurisdictional
strategies involving courts and government agencies in the U.S. and Europe. She
also serves as an arbitrator and mediator. She is the author of the recent
article “Patent Infringement Liability
for Extraterritorial Acts” 
and was one of the attorneys for
ION Geophysical in the Supreme Court.

Timothy Holbrook

Emory University School of Law

is a professor at the Emory University School of Law, as well as the University’s vice provost for faculty affairs. A leading patent law scholar,
his work has been cited in briefs before the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit itself has cited his work. He is the author of “Boundaries, Extraterritoriality, and Patent Infringement Damages” as well as the forthcoming “Extraterritoriality and Proximate Cause after WesternGeco.”

Thomas Saunders

Wilmer Cutler Pickering Hale and Dorr, LLP

is a partner, appellate advocate, and litigator at Wilmer Cutler Pickering Hale and Dorr LLP. His practice focuses on IP. In addition to having won several cases at the Federal Circuit, Tom argued and won Kimble v. Marvel Enterprises, Inc.,(S. Ct. 2015), a case about collection of royalties after patent expiration,and was part of the team representing Promega in Life Technologies v. Promega at both the Federal Circuit and the Supreme Court. Tom served as a clerk to the Hon. Ruth Bader Ginsburg of the U.S. Supreme Court.

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