PROMEGA CORPORATION, Plaintiff-Cross-Appellant, MAX-PLANCK-GESELLSCHAFT ZUR FOERDERUNG DER WISSENSCHAFTEN E.V., Plaintiff v. LIFE TECHNOLOGIES CORPORATION, INVITROGEN IP HOLDINGS, INC., APPLIED BIOSYSTEMS, LLC, Defendants-Appellants, 875 F.3d 651

Summary

HOLDINGS: [1]-The U.S. Supreme Court's decision that a licensee that was allowed under U.S. Patent No. RE 37,984 ("the '984 patent") to manufacture and sell genetic testing kits for use in law enforcement fields worldwide did not commit patent infringement under 35 U.S.C.S. § 271(f)(1) when it sold some of its kits outside the licensed fields of use required the court of appeals to reconsider its decision vacating the district court's decision denying the patentee's motion for a new trial; [2]-Although the licensee admitted during trial that it was responsible for some infringement of the '984 patent, the patentee was not entitled to an award of damages under 35 U.S.C.S. § 284 because it waived its right to an award based on a reasonable royalty, only sought damages in the form of lost profits, and failed to offer evidence showing profits it lost due to the licensee's infringing acts.