Promega Wins $50 Million Jury Verdict -- And The Court Takes It Away Because Promega Did Not Show That Infringing Products Were Made Or Sold In The United States Or Imported Into The United States

Plaintiff Promega Corporation ("Promega") filed an action against Life Technologies Corporation, Applied Biosystems, LLC and Invitrogen IP Holdings, Inc. for infringing and inducing infringement of five patents pertaining to copying of sequences of a DNA strand. In a previous licensing agreement, Life Technologies and Applied Biosystems were permitted to sell the Promega patented products within certain fields. Promega asserted that the defendants were making and selling the products into unpermitted fields, such as clinical diagnostics, clinical research and research markets. The jury agreed with Promega and awarded more than $50 million in damages.

Promega filed a motion to enhance damages, for attorneys and costs and a permanent injunction. The defendants filed a motion asserting that they were entitled to judgment in their favor based on their equitable defenses and also because Promega failed to prove its affirmative case.

Although the district court found that the defendants failed to prove their equitable defenses, the district court agreed with the defendants that Promega had failed to prove infringement. As noted by the district court, "Plaintiff relied on two theories of infringement at trial. First, it argued that defendants sold accused products that included components supplied from the United States, in violation of 35 U.S.C. § 271(f) (1). Second, it argued that the accused products were manufactured in or imported into the United States, in violation of 35 U.S.C. § 271(a). The jury found that all of the accused products defendants sold during the relevant time frame satisfied the requirements for one or both of these provisions."

As explained by the district court, "Defendants argue that plaintiff failed to prove that a 'substantial portion of the components' of the accused products was supplied from the United States, that defendants 'actively induce[d]' the combination of components or that they did so 'in a manner that would infringe the patent is such combination occurred within the United States.'"

Section 271 provides: "[w]hoever without authority supplied or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the...

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