Westerngeco L.L.C. v. Ion Geophysical Corp. , 621 F. App'x 663 ( 2015 )

NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WESTERNGECO L.L.C.,
Plaintiff-Cross-Appellant
v.
ION GEOPHYSICAL CORPORATION,
Defendant-Appellant
______________________
2013-1527, 2014-1121, -1526, -1528
______________________
Appeals from the United States District Court for the
Southern District of Texas in No. 4:09-cv-01827, Judge
Keith P. Ellison.
______________________
ON PETITION FOR REHEARING EN BANC
______________________
Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,
HUGHES, and STOLL, Circuit Judges.
WALLACH, Circuit Judge, with whom NEWMAN and
REYNA, Circuit Judges, join, dissents from the denial of
the petition for rehearing en banc.
PER CURIAM.
2 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP.
ORDER
A petition for rehearing en banc was filed by cross-
appellant WesternGeco L.L.C., and a response thereto
was invited by the court and filed by appellant ION
Geophysical Corporation. The petition for rehearing and
response were first referred to the panel that heard the
appeal, and thereafter, to the circuit judges who are in
regular active service. A poll was requested, taken, and
failed.
Upon consideration thereof,
IT IS ORDERED THAT:
The petition for panel rehearing is denied.
The petition for rehearing en banc is denied.
The mandate of the court will issue on November 6,
2015.
FOR THE COURT
October 30, 2015 /s/ Daniel E. O’Toole
Date Daniel E. O’Toole
Clerk of Court
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WESTERNGECO L.L.C.,
Plaintiff-Cross-Appellant
v.
ION GEOPHYSICAL CORPORATION,
Defendant-Appellant
______________________
2013-1527, 2014-1121, 2014-1526, 2014-1528
______________________
Appeals from the United States District Court for the
Southern District of Texas in No. 4:09-cv-01827, Judge
Keith P. Ellison.
______________________
WALLACH, Circuit Judge, with whom NEWMAN and
REYNA, Circuit Judges, join, dissenting from the denial of
the petition for rehearing en banc.
For the reasons articulated in my dissent from the
panel opinion, I dissent from the denial of the petition for
rehearing en banc. See WesternGeco L.L.C. v. ION
Geophysical Corp., 791 F.3d 1340, 1354–64 (Fed. Cir.
2015) (Wallach, J., dissenting-in-part).
In addition, an amicus brief submitted in support of
the petition for rehearing en banc raised the issue of
whether extension of the presumption against
2 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP.
extraterritoriality to damages, in the manner done by the
panel in this case, is at odds with the longstanding and
analogous “predicate act” doctrine in the copyright
context. The predicate act doctrine holds that a copyright
owner “is entitled to recover damages flowing from the
exploitation abroad of . . . domestic acts of infringement.”
L.A. News Serv. v. Reuters Television Int’l, Ltd., 149 F.3d
987, 991–92 (9th Cir. 1998) (tracing the predicate act
doctrine to Judge Learned Hand’s opinion in Sheldon v.
Metro-Goldwyn Pictures Corp., 106 F.2d 45 (2d Cir. 1939),
aff’d, 309 U.S. 390 (1940)); see also Tire Eng’g & Distrib.,
LLC v. Shandong Linglong Rubber Co., 682 F.3d 292, 306
(4th Cir. 2012) (“We adopt the predicate-act doctrine,
which posits that a plaintiff may collect damages from
foreign violations of the Copyright Act so long as the
foreign conduct stems from a domestic
infringement.”); Update Art, Inc. v. Modiin Publ’g, Ltd.,
843 F.2d 67, 73 (2d Cir. 1988) (“It is well established that
copyright laws generally do not have extraterritorial
application. There is an exception—when the type of
infringement permits further reproduction abroad—such
as the unauthorized manufacture of copyrighted material
in the United States.”).
In this case, WesternGeco’s damages flowed from the
exploitation abroad of domestic acts of patent
infringement under § 271(f). The court’s denial of
rehearing en banc unfortunately prevents consideration of
the predicate act doctrine, which is of particular import
given “the historic kinship between patent law and
copyright law.” Sony Corp. of Am. v. Universal City
Studios, Inc., 464 U.S. 417, 439 (1984). For this reason,
and for other reasons already explained, I respectfully
dissent.