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The U.S. Supreme Court continues to be active in patent cases.

In November of last year, the Supreme Court heard oral arguments in both the Oil States case regarding the constitutionality of inter partes review (IPR) proceedings and the SAS Institute case regarding PTAB final written decisions.  The Supreme Court should issue decisions in the Oil States and SAS Institute cases later in 2018.

On January 12, 2018, the Supreme Court granted cert in WesternGeco LLC v. ION Geophysical Corp.  The WesternGeco case involves the recovery of foreign lost profits damages.  More specifically, the issue is whether the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases in which patent infringement is proven under 35 U.S.C. § 271(f).  Section 271(f)(1) of the patent act sets liability for patent infringement for supplying or causing 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.”  35 U.S.C. § 271(f)(1).  In this case, ION was found liable for patent infringement for supplying components of WesternGeco’s patented marine seismic survey system outside of the U.S. that were then assembled abroad by customers to operate systems which read on WesternGeco’s claimed system.  Section 284 of the patent act provides for the award of “damages adequate to compensate for the infringement.”  35 U.S.C. § 284.  These damages may include lost profits.  However, in this case the lost profits occurred outside of the U.S., and the Federal Circuit found that the presumption against extraterritorial application of the law applies to the award of patent infringement damages.  Therefore, the Federal Circuit reversed the jury’s award of lost profits, and now the issue of recovery of lost profits for overseas infringement will be before the Supreme Court.  WesternGeco has not yet been set for hearing.

The Supreme Court may decide to hear more patent cases in the near future.

In R+L Carriers, Inc. v. Intermec Technologies Corp., Petitioner R+L Carriers has asked the Supreme Court to consider whether a determination that a patent claim is “directed to” an abstract idea under Step 1 of the Alice Corp. v. CLS Bank test for patent subject matter eligibility can be made without analyzing the claim limitation requirements of the individually claimed steps.  R+L Carriers seeks guidance from the Supreme Court as to the standard for determining whether a patent claim is directed to an abstract idea.  In R+L Carriers, Petitioner R+L Carriers had presented evidence in the District Court to show that the claimed load planning method is different from conventional load planning, to support R+L Carriers’ position that there was a genuine issue of material fact as to whether the claimed method is directed to an abstract idea.  Nevertheless, the District Court granted summary judgment in favor of Intermec, finding as a matter of law that the claimed method was not patent eligible under Section 101 of the patent act, and the Federal Circuit affirmed the District Court’s decision.  The R+L Carriers petition may be accessed at

In EVE-USA, Inc., et al. v. Mentor Graphics Corporation, Petitioners EVE-USA et al. have asked the Supreme Court to consider under what conditions the doctrine of assignor estoppel is applicable to bar a defendant from asserting the defense of invalidity.  Notably, the Supreme Court has already abolished the analogous doctrine of licensee estoppel.  Petitioners EVE-USA et al. have also asked the Supreme Court to consider the apportionment of damages for lost profits when an infringing multi-component product includes both patented and unpatented components.  In this regard, the Federal Circuit found that apportionment of lost profits damages is met (i.e. that unapportioned lost profits are warranted) solely by showing that a patentee would have made certain sales but for a defendant’s infringement, even if those sales were also driven by features other than the patented feature.  The EVE-USA et al. petition may be accessed at

The Supreme Court is also considering petitions for certiorari in numerous other patent cases.


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U.S. Supreme Court Update