In Promega Corporation v. Life Technologies Corporation, Nos. 2013‑1011, ‑1029, ‑1376 (Fed. Cir. Nov. 3, 2017), on remand from the Supreme Court, the Federal Circuit reviewed its prior holdings and considered whether they were consistent with the Supreme Court’s opinion, which issued in February 2017.

As an initial matter, the Federal Circuit determined that the Supreme Court’s opinion did not affect its prior holdings relating to enablement, licensing, and active inducement. The Federal Circuit determined that two issues, however, required review.

First, the court reexamined its reversal of the district court’s grant of Life’s motion for JMOL that Promega failed to prove infringement. The court affirmed the district court’s JMOL decision because, in view of the Supreme Court’s holding relating to non-infringement under 35 U.S.C. § 271(f)(1), Promega’s evidence of worldwide sales was insufficient evidence to support Promega’s “narrow damages theory” of lost profits for infringement under § 271(a).

Second, the court reconsidered whether it correctly vacated the district court’s denial of Promega’s motion for a new trial on damages and infringement. The court again reversed its prior holding and affirmed the district court. The court explained that this “is an unusual case” because Promega will not receive a damages award after proving infringement. The court found that it was nevertheless proper in this case because Promega waived other damages theories, preventing recovery by abandoning potentially valid damages, by relying “exclusively on a damages theory that ultimately prove[d] unsuccessful.”