{"id":1817,"date":"2017-11-13T21:13:25","date_gmt":"2017-11-14T02:13:25","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1817"},"modified":"2017-11-24T22:31:40","modified_gmt":"2017-11-25T03:31:40","slug":"patent-owner-reminded-that-all-or-nothing-approach-to-damages-has-two-possible-outcomes","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1817","title":{"rendered":"Patent Owner Reminded that All or Nothing Approach to Damages has Two Possible Outcomes"},"content":{"rendered":"

In Promega Corp. v. Life Technologies Corp.<\/a>, [2013-1011, 2013-1029, 2013-1376] (November 13, 2017), the Federal Circuit\u00a0on remand from the Supreme\u00a0Court,\u00a0reaffirm its holdings on the\u00a0enablement, licensing, and active inducement, and on reexamination of its reversal of the district court\u2019s grant of\u00a0Life\u2019s motion for judgment as a matter of law (JMOL) that
\nPromega failed to prove its infringement case under 35\u00a0U.S.C. \u00a7 271(a), affirmed the district court, and on reexamination of its vacatur<\/em> of the district court\u2019s\u00a0denial of Promega\u2019s motion for a new trial on damages\u00a0and infringement, the Federal Circuit affirmed the district court.<\/p>\n

Life filed a renewed motion for JMOL pursuant to\u00a0FRCP 50(b), arguing that\u00a0Promega \u201cfailed to prove the applicable damages for\u00a0patent infringement\u201d and was therefore entitled to no\u00a0damages, which the district court granted because Promega evidence\u00a0could not support a finding that all<\/em> of the\u00a0accused products were sold or imported into the United\u00a0States, even when all reasonable inferences were drawn\u00a0in Promega\u2019s favor.\u00a0 The Federal Circuit originally reversed, based upon its construction of \u00a7271(a) that all of Life’s products infringed.\u00a0 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.<\/p>\n

Promega moved for a new Trial\u00a0arguing for the first time that the
\nevidence could support a damages award based on a\u00a0subset of worldwide sales. The district court denied\u00a0Promega\u2019s motion. The district court reiterated that\u00a0Promega had waived any argument based on a subset of
\nworldwide sales by failing to respond to Life\u2019s argument\u00a0on this issue in its JMOL briefing.\u00a0 The Federal Circuit originally vacated the district court’s action, but on remand found that under the law of the case doctrine,
\nthe district court properly exercised its discretion by\u00a0relying on its waiver finding from its JMOL ruling to\u00a0support its decision to deny Promega\u2019s motion for a new\u00a0trial.\u00a0 Further, the Federal Circuit approved the district court’s reliance on 7th Circuit precedent that\u00a0a party may not
\nintroduce evidence or make arguments in a Rule 59\u00a0motion that could or should have been presented to the\u00a0court prior to judgment.\u00a0 The Federal Circuit said that\u00a0If Promega wanted to argue\u00a0that the evidence at trial supported a damages calculation\u00a0based on anything other than worldwide sales, it should\u00a0have raised such an argument at trial and in response to
\nLife\u2019s Rule 50(b) motion, which specifically attacked\u00a0Promega\u2019s damages case on that very ground.\u00a0 The Federal Circuit observed that Promega\u00a0did not, choosing instead to continue to solely pursue an\u00a0all-or-nothing damages strategy.\u00a0 The Federal Circuit said:<\/p>\n

When a plaintiff deliberately\u00a0takes a risk by relying at trial exclusively on a damages\u00a0 theory that ultimately proves unsuccessful, and, when\u00a0challenged, does not dispute that it failed to present an\u00a0alternative case for damages, a district court does not\u00a0abuse its discretion by declining to give that plaintiff\u00a0 multiple chances to correct deficiencies in its arguments\u00a0or the record.<\/p><\/blockquote>\n

Because it held that Promega is not entitled to any\u00a0damages, the Federal Circuit affirmed the district court\u2019s denial of\u00a0Promega\u2019s motion for enhanced damages under \u00a7 284. The Federal Circuit also\u00a0affirmed the district court\u2019s denial of Promega\u2019s motion\u00a0for a permanent injunction, given that the patent\u00a0had expired.\u00a0 Further, finding that Promega cannot be the \u201cprevailing party\u201d in\u00a0this litigation under 35 U.S.C. \u00a7 285, the Federal Circuit affirmed the district court\u2019s denial of Promega\u2019s motion for
\nan exceptional case finding.<\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Promega Corp. v. Life Technologies Corp., [2013-1011, 2013-1029, 2013-1376] (November 13, 2017), the Federal Circuit\u00a0on remand from the Supreme\u00a0Court,\u00a0reaffirm its holdings on the\u00a0enablement, licensing, and active inducement, and on reexamination of its reversal of the district court\u2019s grant of\u00a0Life\u2019s … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[48],"tags":[],"class_list":["post-1817","post","type-post","status-publish","format-standard","hentry","category-damages"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1817","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1817"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1817\/revisions"}],"predecessor-version":[{"id":1818,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1817\/revisions\/1818"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1817"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1817"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1817"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}