Extraterritoriality and the Active Inducement of Infringement, 19 UIC REV. INTELL. PROP. L. 204 (2020)

Authors

Robert Stier

Abstract

In Merial Ltd. v. Cipla Ltd., the Federal Circuit held that actions taken outside the United States might make a foreign defendant liable for induced infringement of a US patent under § 271(b) of the Patent Act. This article questions whether Merial remains good law after the Supreme Court’s 2018 decision in WesternGECO LLC v. ION Geophysical Corp. There, the Supreme Court held that lost profits from foreign sales were recoverable under § 284 of the Patent Act when they resulted from acts of domestic patent infringement. In reaching that decision, the Court applied the test from RJR Nabisco, Inc. v. European Community to evaluate the potential extraterritorial application of US patent laws. If the same test from RJR Nabisco is applied to § 271(b), an accused infringer who acts entirely outside the United States should not be liable for inducing infringement of a U.S. patent. In other words, this article concludes that Merial has been overruled by implication

Recommended Citation

Robert H. Stier, Jr., Extraterritoriality and the Active Inducement of Infringement, 19 UIC REV. INTELL. PROP. L. 204 (2020)