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Promega Corp. v. Life Techs. Corp.

United States Court of Appeals for the Federal Circuit

November 13, 2017, Decided

2013-1011, 2013-1029, 2013-1376


 [***1756]  [*653]   This case returns to us on remand from [**2]  the Supreme Court. See Life Techs. Corp. v. Promega Corp., 137 S. Ct. 734, 741, 197 L. Ed.  [***1757]  2d 33 (2017) (Promega II). Defendants-Appellants (collectively, Life) sought review of our decision in Promega Corp. v. Life Technologies Corp., 773 F.3d 1338 (Fed. Cir. 2014) (Promega I), arguing, inter alia, that we erred in holding that a multicomponent product assembled overseas could infringe a United  [*654]  States patent under 35 U.S.C. § 271(f)(1)1 when only a single component of the product is supplied from the United States. The Supreme Court granted Life's petition for a writ of certiorari, reversed our judgment, and remanded for further proceedings consistent with its holding that "§ 271(f)(1) does not cover the supply of a single component of a multicom-ponent invention." Promega II, 137 S. Ct. at 743.

The Supreme Court's opinion did not affect several of our prior holdings. First, we held that the asserted claims of four patents owned by Promega Corporation [**3]  (Promega) were invalid for failure to comply with the enablement requirement in 35 U.S.C. § 112, ¶ 1. Promega I, 773 F.3d at 1346-50. Second, we held that certain of Life's alleged acts of infringement were not licensed under a 2006 license agreement between Life and Promega.2 Id. at 1357-58. Finally, we held that Life was not required to "actively induce" a third party to combine the components of the accused products to be liable under § 271(f)(1). Id. at 1351-53. Rather, the active inducement requirement could be met if Life had the specific intent to combine the components itself. Id. We reaffirm our holdings on the enablement, licensing, and active inducement issues.

The Supreme Court's opinion, however, requires us to reconsider two of our prior holdings. First, we must reexamine our 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)3 and § 271(f)(1).4 See id. at 1358. Second, we must reconsider our vacatur of the district court's denial of Promega's motion for a new trial on damages and infringement. Id. For the reasons below, we now affirm the district court's decisions on these motions.

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875 F.3d 651 *; 2017 U.S. App. LEXIS 22635 **; 124 U.S.P.Q.2D (BNA) 1755 ***; 2017 WL 5242434


Subsequent History: US Supreme Court certiorari denied by Promega Corp. v. Life Techs. Corp., 2018 U.S. LEXIS 4350 (U.S., Oct. 1, 2018)

Prior History:  [**1] Appeals from the United States District Court for the Western District of Wisconsin in No. 10-CV-0281, Judge Barbara B. Crabb.

Promega Corp. v. Life Techs. Corp., 2012 U.S. Dist. LEXIS 190681 (W.D. Wis., Sept. 12, 2012)

Disposition: AFFIRMED.


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Business & Corporate Compliance, Infringement Actions, Infringing Acts, Indirect Infringement, Making & Manufacturing Infringement, Use, Offers to Sell & Sales, Civil Procedure, Appeals, Standards of Review, Abuse of Discretion, Trials, Judgment as Matter of Law, Postverdict Judgment, Alternative Motions for New Trials, De Novo Review, Patent Law, Remedies, Damages, Measure of Damages, Patentholder Losses, Reasonable Royalties, Evidence, Burdens of Proof, Preponderance of Evidence, Burdens of Proof, Reviewability of Lower Court Decisions, Preservation for Review, Allocation, Damages, Jury Trials, Right to Jury Trial, Constitutional Law, Bill of Rights, Fundamental Rights, Trial by Jury in Civil Actions, Jurisdiction & Review