The Issue of Lost Profits Stemming from Lost Service Contracts Abroad ION-izes the Federal Circuit

This article originally appeared in Bloomberg BNA’s Patent, Trademark, & Copyright Journal. Reprinted with permission. Any opinions in this article are not those of Winston & Strawn or its clients; the opinions in this article are the authors’ opinions only.

The ‘‘presumption against extraterritoriality’’ has always been an important barometer and safeguard for federal courts to rely on when assessing liability and damages for patent-related transgressions occurring wholly or partially abroad, lest U.S. patent law be allowed to ‘‘rule the world’’ and impinge on the sovereignty of foreign jurisdictions. Recent developments at the U.S. Court of Appeals for the Federal Circuit reveal the tension in applying this backstop principle to exclude from a patentee’s potential recovery the lost profits from lost foreign sales of services that its patented technology would have otherwise performed.