In Texas Lawyer Article, Kirt O’Neill and Clayton Matheson Examine Potential Expansion of Worldwide Recoverable Patent Damages

Texas Lawyer has published the article “Recovering Foreign Profits based on Domestic Acts of Infringement,” written by Akin Gump intellectual property partner Kirt O’Neill and counsel Clayton Matheson. The article looks at the potential expansion of worldwide patent damages that are recoverable under the Supreme Court’s landmark 2018 decision in WesternGeco LLC v. ION Geophysical Corp.

O’Neill and Matheson begin with some background on the case, in which WesternGeco, a developer and builder of ocean floor survey machines, sued ION for infringing several patents covering its survey technology. WesternGeco argued that ION had violated the Patent Act “by manufacturing components of the infringing survey machines and then exporting them for use by its customers abroad.” The jury agreed and awarded $93.4 million in foreign lost profits, the Federal Circuit reversed the award, but the Supreme Court reversed the ruling again.

The authors write that the 7-2 Supreme Court ruling, “has generated speculation” as to how the Court will rule in other infringement contexts since its analysis centered on the section of the law that “controls a patent owner’s recoverable damages regardless of the type of infringement involved.” With another case, Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., working its way through the courts, they write, the Supreme Court “may soon have a chance to definitively resolve the issue.”

To read the full article, please click here.