An interesting event has occurred at the Supreme Court in the Life Technologies Corp (Life Tech) v. Promega Corp. (Promega) case (136 S.Ct. 2505 (2016)). Chief Justice Roberts recused himself from the deliberations of the case on January 4, 2017. In order to understand why the events played out the way they did, a brief synopsis of the case is being provided.

Promega Corp. is the assignee of four patents and the exclusive licensee of another patent that claims kits for conducting certain genetic testing, in particular, kits for forensic testing or paternity testing. Promega sued Life Tech for infringing the patents, with Life Tech filing counterclaims that the Promega asserted patents were invalid.

The District Court of the Western District of Wisconsin, 10-CV-0281 (March 28, 2012) held that Life Tech was a direct infringer of the patents and proceeded to the damages portion of the trial. It was at that stage that the issue that eventually ended up at the Supreme Court was identified. In trying to determine damages, the questions was whether those damages could be based on worldwide sales. The jury indicated that they could be so determined, but, in response to LifeTech’s motion to vacate the judgment, the court held that Promega had failed to provide the evidence necessary to sustain the jury’s decision.

On appeal to the Court of Appeals for the Federal Circuit (Federal Circuit, December 15, 2014), the decision was reversed, and LifeTech was therefore liable for worldwide damages. Certiorari was granted based on the issue of whether a single component of a multi-component invention from the US that is sold abroad thus opens up the manufacturer to worldwide sales for infringement -based damages.

On December 6, 2016, oral argument before the Supreme Court was held, in which Chief Justice Roberts was an active participant. However, in a twist just reported by the clerk’s office, it turns out that Chief Justice Roberts did not realize that through his 1,212 shares of Thermo Fisher Scientific, that owns Life Tech, that he should have recused himself. Once it became apparent that the conflict check did not pick up this stock ownership, Chief Justice Roberts recused himself from the deliberations.

Estelle J. Tsevdos, Ph.D is a Director in the Gibbons Intellectual Property Department.