This article originally was published in PREVIEW of United States Supreme Court Cases, a publication of the American Bar Association.

Case at a Glance: The Court will consider whether the text of 35 U.S.C. § 271(f) imposes liability on those supplying from the United States components of a patented invention “in such a 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 United States,” and whether that liability also relates to the issuance of full compensatory damages where such infringement is found. Section 271(f) specifically targets domestic conduct (supplying components in or from the United States) with an intent that the components will be assembled abroad. The jury here found that respondents violated Section 271(f) by shipping components of petitioners’ patented invention for assembly and use abroad. Because the intended foreign combination occurred and caused petitioners reasonably foreseeable harms, the jury awarded over $93 million in lost profits. The Federal Circuit, however, through application of the presumption against extraterritoriality, reversed the award of lost profits that would have been earned abroad. The Supreme Court will now consider whether the Federal Circuit’s holding that lost profits arising from prohibited combinations occurring outside of the United States are unavailable in cases in which patent infringement is proven under Section 271(f) is proper under the statute.

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