Promega Corp. v. Life Technologies Corp.
875 F.3d 651
| Fed. Cir. | 2017Background
- Promega sued Life for infringement of the Tautz patent based on Life’s STR DNA-testing kits assembled in the U.K.; at least one kit component (Taq polymerase) was supplied from the U.S.
- Parties stipulated Life’s total worldwide sales of the accused products during the period: about $707.6 million; Promega pursued lost-profits damages (waiving royalties).
- At trial the jury was instructed to treat “United States sales” as including kits made abroad where a substantial portion of components were supplied from the U.S.; the jury awarded $52 million in lost profits and found most sales licensed.
- The district court granted Life’s post-trial JMOL, finding Promega failed to prove the amount of infringing U.S. sales and that a single U.S.-supplied component could not be a “substantial portion” under § 271(f)(1); it denied Promega’s new-trial motion as waived.
- The Federal Circuit (Promega I) reversed as to § 271(f)(1) (holding a single component could be a “substantial portion”) and remanded for a damages retrial; the Supreme Court (Promega II) then held § 271(f)(1) does not reach the supply of a single component, requiring reconsideration.
- On remand the Federal Circuit affirmed the district court: Promega had waived any alternative damages theory based on a subset of sales by failing to oppose Life’s Rule 50(b) motion, and the record lacked evidence to show all worldwide sales infringed under § 271(a); thus no damages award was proper.
Issues
| Issue | Plaintiff's Argument (Promega) | Defendant's Argument (Life) | Held |
|---|---|---|---|
| Whether § 271(f)(1) covers supply of a single U.S. component to foreign assembly | Single U.S. component (Taq) could be a "substantial portion" and support § 271(f)(1) liability for all kits | § 271(f)(1) does not cover the supply of a single component; such kits assembled and sold abroad cannot infringe | Reversed by Supreme Court: § 271(f)(1) does not cover a single component (Promega II); Federal Circuit follows Supreme Court |
| Whether Promega proved damages amount (lost profits) based on worldwide sales | Worldwide sales stipulation suffices as damages base; evidence also showed some U.S. sales and components from U.S. | Promega failed to prove the quantity of infringing U.S. sales or partition worldwide sales; thus JMOL appropriate | Promega waived alternative damages theories and failed to prove a damages base other than worldwide sales; JMOL for Life affirmed |
| Whether Promega forfeited the right to a new trial on damages after JMOL | Seventh Amendment and precedent require a new damages trial for § 271(a) infringement | Promega waived alternative damages theories by not opposing Rule 50(b); Rule 50(d) does not erase waiver | District court did not abuse discretion: new-trial denied because Promega forfeited/waived the alternative damages theory |
| Whether any subset of Life’s kits infringed under § 271(a) sufficient to sustain damages | Record contains evidence (admissions, witness testimony) of some § 271(a) infringement; a new trial could quantify damages | Evidence was insufficient to show all worldwide sales infringed and Promega failed to present a quantifiable subset at trial | Some unquantified § 271(a) infringement existed, but Promega waived the right to pursue a damages award based on a subset; no damages awarded |
Key Cases Cited
- Life Techs. Corp. v. Promega Corp., 137 S. Ct. 734 (2017) (Supreme Court holding § 271(f)(1) does not cover supply of a single component)
- Promega Corp. v. Life Techs. Corp., 773 F.3d 1338 (Fed. Cir. 2014) (Federal Circuit’s prior decision on infringement and damages, later affected by Supreme Court decision)
- Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 895 F.2d 1403 (Fed. Cir. 1990) (fact of infringement establishes fact of damage; patentee must prove amount)
- Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (patentee bears burden to prove damages)
- Minco, Inc. v. Combustion Eng’g, Inc., 95 F.3d 1109 (Fed. Cir. 1996) (lost-profits measure requires patentee to prove amount)
- Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013) (discussion of general verdicts and multiple liability theories)
- Exxon Shipping Co. v. Baker, 554 U.S. 471 (2008) (rules on waiver and forfeiture promote orderly litigation)
- Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 546 U.S. 394 (2006) (deference to district court’s trial-management choices)