June 2018: Foreign Lost Profits for Infringement of US Patents

In the case of WesternGeco Ltd. v. Ion Geophysical Corp., the U.S. Supreme Court reversed the Federal Circuit’s rule against extraterritorial lost profits for infringement of U.S. Patents.  The Supreme Court ruled that 35 U.S.C. § 271(f), permits a patent owner to recover lost profits for the defendant’s act of supplying “in or from the United States” products that were shipped abroad and assembled there into an infringing combination.

Section 271(f) provides that:

(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer; and

(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer)

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