Weil Gotshal Converts High Court Win Into Zero Damages for Biotech Client
The Federal Circuit handed a win Monday to Weil partner Edward Reines in a case where his client conceded infringing a DNA-testing patent.
November 13, 2017 at 09:51 PM
3 minute read
Edward Reines of Weil, Gotshal & Manges
A $52 million patent verdict that's been winding through the appellate courts for four years, including a trip to the Supreme Court, was wiped out Monday by the U.S. Court of Appeals for the Federal Circuit.
Federal Circuit Judge Raymond Chen wrote that, even though its opponent had conceded liability for infringing a patent on DNA testing, Promega Corp.'s “all or nothing damages strategy” will now leave it with nothing.
“Promega's deliberate strategy to adhere to a single damages theory had the effect of winnowing out from the case any argument about damages based on a figure other than worldwide sales,” Chen wrote in Promega v. Life Technologies. Once the Supreme Court eliminated recovery for extraterritorial sales, that left Madison, Wisconsin, biotech Promega with zero.
Promega had won $52 million in lost profit damages from Carlsbad, California-based Life Technologies Corp. in a dispute over DNA testing kits. The figure was based on worldwide sales of Life Technologies' kits, including kits assembled outside the United States with a U.S.-made component.
U.S. District Judge Barbara Crabb of Wisconsin knocked out the verdict on the ground that Promega had not proved induced infringement under Section 271(f) of the Patent Act. That provision provides a narrow exception to the usual rule that U.S. patent laws cover only products made in the United States.
The Federal Circuit reinstated the verdict in 2014, only to have the U.S. Supreme Court reverse in this past February.
The high court ruled that Life Technologies' provision of a single component, Taq polymerase, did not represent “all or a substantial portion of the components” of the kits, as required by Section 271(f)(1). That meant no recovery for overseas sales.
The case had been tried by the Troupis Law Office for Promega and Parsons Behle & Latimer for Life Technologies, which is now part of Thermo Fisher Scientific Co.
Edward Reines of Weil, Gotshal & Manges handled post-trial motions and Monday's winning appeal at the Federal Circuit. Carter Phillips of Sidley Austin argued Life Technologies' case to the Supreme Court.
Seth Waxman of Wilmer Cutler Pickering Hale and Dorr represented Promega at the Federal Circuit and the Supreme Court.
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