NYIPLA Urges Supreme Court to Overturn Federal Circuit’s Bar to Recovery of Patent Damages that Accrue Overseas

By Annemarie Hassett, Irena Royzman, Jordan M. Engelhardt, Jonathan D. Schenker, Robert Rando

Annemarie Hassett, President of the NYIPLA, Irena Royzman, Jordan M. Engelhardt, Jonathan D. Schenker, and Robert J. Rando were authors on the brief.  Irena Royzman is Board Liaison of the NYIPLA’s Committee on Amicus Briefs.

On Tuesday, February 27, 2018, the New York Intellectual Property Law Association (“NYIPLA”) filed an amicus brief on the merits in WesternGeco LLC v. ION Geophysical Corp., No. 16-1011 urging the Supreme Court to overturn the Federal Circuit’s bar to recovery of patent damages accrued abroad. 

The brief explains that the patent damages statute provides prevailing patentees with adequate compensation for damages proximately caused by patent infringement. Specifically, Section 284 provides that “[u]pon finding for the claimant, the court shall award the claimant damages adequate to compensate for the infringement.”

NYIPLA’s brief notes that the Supreme Court and the Federal Circuit have held that damages accrued overseas as a result of domestic patent infringement may be recovered. In WesternGeco, however, the Federal Circuit panel majority adopted a bright-line rule against recovery of foreign profits by prevailing patentees. The panel majority reasoned that awarding damages accrued overseas would violate the presumption against extraterritorial application of U.S. law. The panel majority’s decision adopts a per se bar to recovery of damages accrued abroad and precludes compensation for foreign damages, even if proximately caused by U.S. infringement.

The NYIPLA argues that the Federal Circuit’s bar to recovery of foreign patent damages is at odds with Section 284 and well-settled precedent on compensating patent owners for damages that result from domestic infringement. NYIPLA’s brief further explains that the bar finds no support in the presumption against extraterritorial application of U.S. law. The presumption is a canon of construction used in determining whether a given statute regulates conduct and transactions that occur abroad. As explained in the brief, the question before the Court is not the geographic scope of conduct regulated by any statute, but of damages accruing from an infringer’s domestic conduct.

NYIPLA explains that the Court has never invoked the presumption to bar the recovery of damages accrued abroad as a result of a domestic violation. Indeed, since Section 284 applies only where a domestic legal violation has been established, the presumption is entirely inapplicable. 

The Court is scheduled to hear argument in this case on April 16, 2018.

Click HERE to read the amicus brief on WesternGeco LLC v. ION Geophyiscal Corp.