Brief of Electronic Frontier Foundation and R Street Institute As Amici Curiae, in WesternGeco, LLC v. ION Geophysical Corp., No. 16-1011
30 Pages Posted: 21 Apr 2018
Date Written: April 2, 2018
The Court’s ruling in this case could vastly expand the reach of U.S. patent law. Although the dispute before the Court involves a claim brought under 35 U.S.C. § 271(f), the theory of damages advanced by the Solicitor General and others could allow extraterritorial damages in all patent cases. Expanding patent damages in this way would effectively transform every U.S. patent into a worldwide patent. That result cannot be justified as a matter of doctrine or policy.
Damages for patent infringement are limited to acts within the United States—to hold otherwise would contradict the plain text of the Patent Act, which has a clear domestic focus. Section 271(a), which limits infringement to acts “within the United States” and importation “into the United States,” is expressly limited to domestic conduct. And although § 271(f) was enacted in response to an extraterritoriality decision of this Court, that statutory provision does not provide for extraterritorial damages; rather, it remains firmly rooted in conduct “in or from the United States.” The legislative history makes clear that Congress’ sole intention with § 271(f) was narrowly to abrogate that decision of this Court and no more, contradicting the notion that § 271(f) expands patent remedies to overseas use. Thus, contrary to the arguments of Petitioner and some amici, the Patent Act explicitly renders foreign injuries inactionable, an observation sufficient to reject Petitioner’s arguments and dispose of this case.
The long-standing assumption of international patent policy is that an innovator who wishes to recover damages for sales or uses in a jurisdiction must apply for a patent in that nation. Disrupting that arrangement will cause a number of harms, many of which would be felt particularly by companies operating in the United States. Extraterritorial damages, especially if imposed under a theory that would apply even to infringement under § 271(a), could expose companies that conduct research and development in the United States to worldwide damages. This would discourage companies from innovating here. International damages could also undermine other nations’ sovereignty. Both the scope of patent law and available remedies differ around the world. This means that allowing damages in U.S. courts for sales and uses overseas could undermine the autonomy of nations that have chosen not to extend patent law to certain fields. Moreover, allowing extraterritorial damages might encourage other nations’ courts to impose damages for sales and use in the United States, thereby undermining U.S. sovereignty.
Keywords: patent damages, extraterritorial, international, proximate cause, overcompensation, double recovery
JEL Classification: O34, K41
Suggested Citation: Suggested Citation