LATEST FROM THE SUPREME COURT

WesternGeco LLC v. ION Geophysical Corp., Appeal No. 16-1011 (June 22, 2018)

In its final patent decision of the October 2017 term, the Supreme Court today issued a decision concerning the scope of damages that are available for infringement under Section 271(f). The Court held that damages are available in a U.S. patent infringement case, though products infringing the patent may be assembled or used exclusively overseas. The case is a significant development in the extraterritorial application of U.S. patent laws.

Section 271(f) traces its history to the Supreme Court’s decision in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972). In that case, the Court held that a defendant did not “make” an invention within the United States when it produced the invention’s components in the United States but sold them to foreign buyers for final assembly abroad. Congress created Section 271(f) in response. Section 271(f) states as follows:

(f)(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.

(f)(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.

Written by: Scott D. Eads and Nika F. Aldrich, Schwabe Williamson & Wyatt