In 2018, the U.S. Supreme Court held that a plaintiff was entitled to lost foreign profits under 35 U.S.C. § 284 based on direct acts of infringement in the United States under 35 U.S.C. § 271(f)(2). WesternGeco LLC v. ION Geophysical Corp., 138 S.Ct. 2129 (2018) (WesternGeco). The question is: Did WesternGeco effectively overrule the Federal Circuit’s decision in Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013) (Power CAFC), which held that a patent owner cannot recover foreign lost profit damages for direct infringement under Section 271(a), even if the direct infringement occurred in the United States?
An overwhelming majority of courts since WesternGeco have found that the Supreme Court did implicitly overrule Power CAFC – the rationale being that if an entity commits an act of infringement in the United States (under either Section 271(a) or Section 271(f)), it is liable for damages resulting from its conduct abroad so long as that conduct is causally linked to the infringing act. In other words, these courts have reasoned that if WesternGeco applies to acts of infringement under Section 271(f), that same rationale should apply equally to acts of infringement under Section 271(a).
Based on the above, patent holders should seek extraterritorial sales information during discovery and have their experts calculate damages based on both U.S.-only sales and worldwide sales.