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Patent Case Update: Supreme Court Reverses Life Technologies Corp v. Promega Corp.

February 22, 2017

Overview

This morning the Supreme Court reverses the Federal Circuit’s ruling that shipping a single component of a claimed invention to be combined with other components outside of the country can constitute infringement. Not surprisingly, the Court rules that multiple components must be shipped in order to fall within §271(f)(1), which prohibits the supply from the U.S. of “all or a substantial portion of the components of a patented invention” for combination abroad.

Pete

Life Technologies Corp v. Promega Corp.  Promega sublicensed the Tautz patent, which claims a toolkit for genetic testing, to petitioner Life Technologies for the manufacture and sale of the kits for use in certain licensed law enforcement fields worldwide. One of the kit’s five components, an enzyme known as the Taq polymerase, was manufactured by Life Technologies in the U.S. and then shipped to the United Kingdom, where the four other components were made, for combination there. When Life Technologies began selling the kits outside the licensed fields of use, Promega sued, claiming that patent infringement liability was triggered under §271(f)(1), which prohibits the supply from the U.S. of “all or a substantial portion of the components of a patented invention” for combination abroad.

The jury returned a verdict for Promega, but the District Court granted Life Technologies’ motion for JMOL, holding that §271(f)(1)’s phrase “all or a substantial portion” did not encompass the supply of a single component of a multicomponent invention. The Federal Circuit reversed. It determined that a single important component could constitute a “substantial portion” of the components of an invention under §271(f)(1) and found the Taq polymerase to be such a component. 

Held: The supply of a single component of a multicomponent invention for manufacture abroad does not give rise to §271(f)(1) liability.

(a) Section 271(f)(1)’s phrase “substantial portion” refers either to qualitative importance or to quantitatively large size, the statutory context points to a quantitative meaning. Neighboring words “all” and “portion” convey a quantitative meaning, and nothing in the neighboring text points to a qualitative interpretation. Moreover, a qualitative reading would render the modifying phrase “of the components” unnecessary the first time it is used in §271(f)(1). Only the quantitative approach thus gives meaning to each statutory provision.

Promega’s proffered “case-specific approach,” which would require a factfinder to decipher whether the components at issue are a “substantial portion” under either a qualitative or a quantitative test, is rejected. Tasking juries with interpreting the statute’s meaning on an ad hoc basis would only compound, not resolve, the statute’s ambiguity. And Promega’s proposal to adopt an analytical framework that accounts for both the components’ quantitative and qualitative aspects is likely to complicate rather than aid the factfinder’s review.

(b) Under a quantitative approach, a single component cannot constitute a “substantial portion” triggering §271(f)(1) liability. This conclusion is reinforced by §271(f)’s text, context, and structure. Section 271(f)(1) consistently refers to the plural “components,” indicating that multiple components make up the substantial portion.

Reading §271(f)(1) to cover any single component would also leave little room for §271(f)(2), which refers to “any component,” and would undermine §271(f)(2)’s express reference to a single component “especially made or especially adapted for use in the invention.” The better reading allows the two provisions to work in tandem and gives each provision its unique application. 

(c) The history of §271(f) further bolsters this conclusion. Congress enacted §271(f) in response to Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518, to fill a gap in the enforceability of patent rights by reaching components that are manufactured in the United States but assembled overseas. Consistent with Congress’s intent, a supplier may be liable under §271(f)(1) for supplying from the United States all or a substantial portion of the components of the invention or under §271(f)(2) for supplying a single component if it is especially made or especially adapted for use in the invention and not a staple article or commodity. But, as here, when a product is made abroad and all components but a single commodity article are supplied from abroad, the activity is outside the statute’s scope.

SOTOMAYOR, J., delivered the opinion of the Court

Read the full opinion

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