In Promega Corp. v. Life Technologies Corp., [2013-1011, 2013-1029, 2013-1376] (November 13, 2017), the Federal Circuit on remand from the Supreme Court, reaffirm its holdings on the enablement, licensing, and active inducement, and on reexamination of its reversal of the district court’s grant of Life’s motion for judgment as a matter of law (JMOL) that
Promega failed to prove its infringement case under 35 U.S.C. § 271(a), affirmed the district court, and on reexamination of its vacatur of the district court’s denial of Promega’s motion for a new trial on damages and infringement, the Federal Circuit affirmed the district court.

Life filed a renewed motion for JMOL pursuant to FRCP 50(b), arguing that Promega “failed to prove the applicable damages for patent infringement” and was therefore entitled to no damages, which the district court granted because Promega evidence could not support a finding that all of the accused products were sold or imported into the United States, even when all reasonable inferences were drawn in Promega’s favor.  The Federal Circuit originally reversed, based upon its construction of §271(a) that all of Life’s products infringed.  On remand, the Federal Circuit, after noting that Promega waived reasonable royalty damages and sought only lost profits damages, found that Promega failed to meet its burden of proof.

Promega moved for a new Trial arguing for the first time that the
evidence could support a damages award based on a subset of worldwide sales. The district court denied Promega’s motion. The district court reiterated that Promega had waived any argument based on a subset of
worldwide sales by failing to respond to Life’s argument on this issue in its JMOL briefing.  The Federal Circuit originally vacated the district court’s action, but on remand found that under the law of the case doctrine,
the district court properly exercised its discretion by relying on its waiver finding from its JMOL ruling to support its decision to deny Promega’s motion for a new trial.  Further, the Federal Circuit approved the district court’s reliance on 7th Circuit precedent that a party may not
introduce evidence or make arguments in a Rule 59 motion that could or should have been presented to the court prior to judgment.  The Federal Circuit said that If Promega wanted to argue that the evidence at trial supported a damages calculation based on anything other than worldwide sales, it should have raised such an argument at trial and in response to
Life’s Rule 50(b) motion, which specifically attacked Promega’s damages case on that very ground.  The Federal Circuit observed that Promega did not, choosing instead to continue to solely pursue an all-or-nothing damages strategy.  The Federal Circuit said:

When a plaintiff deliberately takes a risk by relying at trial exclusively on a damages  theory that ultimately proves unsuccessful, and, when challenged, does not dispute that it failed to present an alternative case for damages, a district court does not abuse its discretion by declining to give that plaintiff  multiple chances to correct deficiencies in its arguments or the record.

Because it held that Promega is not entitled to any damages, the Federal Circuit affirmed the district court’s denial of Promega’s motion for enhanced damages under § 284. The Federal Circuit also affirmed the district court’s denial of Promega’s motion for a permanent injunction, given that the patent had expired.  Further, finding that Promega cannot be the “prevailing party” in this litigation under 35 U.S.C. § 285, the Federal Circuit affirmed the district court’s denial of Promega’s motion for
an exceptional case finding.