GE Healthcare Bio-Sciences AB et al v. Bio-Rad Laboratories, Inc., 1-14-cv-07080 (NYSD November 25, 2015, Order) (Swain, J.)
Tuesday, December 1, 2015
Power Integrations Does Not Preclude Discovery of Foreign Sales Information
The court sustained plaintiffs' objections to the magistrate judge's order denying their motion to compel defendant to produce discovery on foreign sales. "[Defendant] asserts that recent Federal Circuit jurisprudence [principally Power Integrations, Inc. v. Fairchild Semiconductor Intern., Inc., 711 F.3d 1348, 1372 (Fed. Cir. 2013)], read in the context of a revitalized presumption against the extraterritorial application of U.S. patent law, precludes discovery concerning foreign sales of an allegedly infringing product. . . . None of [defendant's] cited authorities demonstrates that discovery of foreign sales information – which is relevant to [plaintiffs'] claim for damages for allegedly infringing activities in the United States since it has, at a minimum, implications for the valuation of the invention – is precluded by the presumption against extraterritoriality. Even if [plaintiffs] were only entitled to a 'reasonable royalty for the use made of the invention by the infringer,' the profits that [defendant] allegedly obtained from the sales to foreign customers would be relevant to the determination of a reasonable royalty."