On remand from the Supreme Court of the United States, the US Court of Appeals for the Federal Circuit affirmed a district court decision granting defendant’s motion for judgment as a matter of law (JMOL) that patent owner failed to prove its infringement case under 35 USC §§ 271(a) and 271(f), and denying plaintiff’s motion for a new trial on damages and infringement. Promega Corp. v. Life Technologies Corp., Case Nos. 13-1011; -1029; -1376 (Fed. Cir., Nov. 13, 2017) (Chen, J).

This case generally concerns genetic testing kits assembled in the United Kingdom and sold by Life Technologies. The kits comprised five components, at least one of which was supplied from the United States. Promega, the exclusive licensee of a patent claiming methods and kits for analyzing DNA, sued Life Technologies for infringement, seeking damages. The Federal Circuit initially found that all of the accused products were infringing under § 271(f)(1). However, on review, the Supreme Court held that a single component does not constitute a substantial portion of the components that can give rise to liability under § 271(f)(1), thereby nullifying the Federal Circuit’s conclusion that all of the accused products made by Life Technologies in the United Kingdom infringed under § 271(f) (IP Update, Vol. 20, No. 3).

On remand, the Federal Circuit considered whether a subset of the accused products was liable for infringement under § 271(f). At the district court, Promega had urged an “all or nothing” damages approach based on defendants’ total worldwide sales under § 271(f). Promega did not set forth any evidence to support a damages award based on a subset of total sales. Promega provided no damages expert at trial and made no arguments that damages could be based on a figure other than worldwide sales, despite several reminders from the district court that Promega had not put in evidence to prove liability separately under § 271(a) and § 271(f)(1). 

The Federal Circuit affirmed the district court’s finding that Promega waived any argument that the trial record could support a damages award based on a subset of total sales by failing to oppose Life Technology’s Rule 50(b) motion argument to the effect that Promega had only set forth evidence as to defendants’ total worldwide sales, but provided no evidence to support a damages award based on a subset of the total sales. Thus, the Federal Circuit upheld the district court’s grant of Life Technology’s JMOL that Promega was entitled to no damages.

The Federal Circuit further found that the district court properly relied on its waiver finding (from its JMOL ruling) to support its decision to deny Promega’s motion for a new trial on infringement and damages. Promega’s failure to raise any argument that the evidence at trial supported a damages calculation based on anything other than worldwide sales in response to Life Technology’s Rule 50(b) motion was a deliberate choice and a waiver. The Court found that Promega was on notice that it had not put in evidence to prove liability separately under § 271(a) and § 271(f)(1) because the district court gave Promega a second chance to admit such evidence and Promega declined that opportunity. Thus, the Federal Circuit held that it was not an abuse of discretion to refuse to give Promega unlimited chances to correct deficiencies in its arguments on the record, and that the district court properly denied Promega’s motion for a new trial.

Practice Note: A damages theory not raised in the district court in the first instance cannot be later added when the relied-upon damages theory fails.