US Supreme Court Limits Patent Infringement in Foreign Cases in Life Technologies Corp. v. Promega Corp

February 27, 2017

By: N. Scott Pierce and Mary K. Murray, Ph.D.

  • Supply of a single component of a multicomponent invention for manufacture abroad is not a “substantial portion of the components” sufficient to “induce” infringement
  • Export of a single “commodity article” of a multicomponent patented invention is not infringement
  • Supreme Court declines to otherwise define statutory provision for a “substantial portion of the components” constituting induced infringement

The Supreme Court held that export of a single component of a patented invention did not qualify for  statutory induced infringement under 35 U.S.C. § 271(f)(1), nor is there infringement under § 271(f) generally when that single component is a “commodity article.”  In this case, Life Technologies Corp. v. Promega Corp., Promega Corp. (Promega) sued Life Technologies Corp. (Life Technologies), a sub-licensee of Promega, for infringement of U.S. Reissued Patent Number RE 37,984, claiming a toolkit for genetic testing.The toolkit included five components, one of which was Taq polymerase, an enzyme commonly used in amplification of short stretches of DNA by polymerase chain reaction (PCR).

Promega argued that Life Technologies was in violation of the use limitations of its sublicense from Promega, and that this constituted infringement with inducement under 35 U.S.C. §271(f)(1) at least in part because Life Technologies “supplied in or from the United States all or a substantial portion of the components of a patented invention outside of the United States in a manner that would infringe the patent if such combination occurred within the United States ….”  For Promega, the requirement of a “substantial portion” was a qualitative measure of the importance of that component to the invention.  Life Technologies countered that the requirement was a quantitative threshold that required supply of a plurality of “components.”

The Supreme Court agreed with Life Technologies after analyzing the language of 35 U.S.C. §271(f)(1) and comparing that language to use of a singular “component” of §271(f)(2), which specified infringement as supplying “in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use….” The Court declined to provide guidance as to the number of components beyond a single component, if any, that would be necessary to satisfy the threshold requirement of a “substantial portion.”

The Supreme Court further supported their holding by recounting that enactment of §271(f) was a reaction to the 1972 Supreme Court decision of Deepsouth Packing Co. vs. Laitram Corp., 406 U.S. 518 (1972), which held that making or using a patented product outside of the United States was not infringement.  According to the Supreme Court, subsections (f)(1) and (f)(2) filled “a gap in the enforceability of patent rights by reaching components that are manufactured in the United States but assembled overseas….”  The “gap,” according to the Court, did not embrace supply of a single component of a patented article when that component constituted a “commodity.”

Justice Alito with whom Justice Thomas joined, concurred in all but the portion of the majority’s opinion regarding the filling of the “gap” created by Deepsouth Packing.  Further, Justices Alito and Thomas reiterated that the majority opinion did not address how many more than a single component would be sufficient to constitute a “substantial portion of the components of a patented invention” under §271(f)(1).

Chief Justice Roberts recused himself from this case, taking no part in the decision.

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February 27, 2017

By: N. Scott Pierce and Mary K. Murray, Ph.D.

  • Supply of a single component of a multicomponent invention for manufacture abroad is not a “substantial portion of the components” sufficient to “induce” infringement
  • Export of a single “commodity article” of a multicomponent patented invention is not infringement
  • Supreme Court declines to otherwise define statutory provision for a “substantial portion of the components” constituting induced infringement

The Supreme Court held that export of a single component of a patented invention did not qualify for  statutory induced infringement under 35 U.S.C. § 271(f)(1), nor is there infringement under § 271(f) generally when that single component is a “commodity article.”  In this case, Life Technologies Corp. v. Promega Corp., Promega Corp. (Promega) sued Life Technologies Corp. (Life Technologies), a sub-licensee of Promega, for infringement of U.S. Reissued Patent Number RE 37,984, claiming a toolkit for genetic testing.The toolkit included five components, one of which was Taq polymerase, an enzyme commonly used in amplification of short stretches of DNA by polymerase chain reaction (PCR).

Promega argued that Life Technologies was in violation of the use limitations of its sublicense from Promega, and that this constituted infringement with inducement under 35 U.S.C. §271(f)(1) at least in part because Life Technologies “supplied in or from the United States all or a substantial portion of the components of a patented invention outside of the United States in a manner that would infringe the patent if such combination occurred within the United States ….”  For Promega, the requirement of a “substantial portion” was a qualitative measure of the importance of that component to the invention.  Life Technologies countered that the requirement was a quantitative threshold that required supply of a plurality of “components.”

The Supreme Court agreed with Life Technologies after analyzing the language of 35 U.S.C. §271(f)(1) and comparing that language to use of a singular “component” of §271(f)(2), which specified infringement as supplying “in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use….” The Court declined to provide guidance as to the number of components beyond a single component, if any, that would be necessary to satisfy the threshold requirement of a “substantial portion.”

The Supreme Court further supported their holding by recounting that enactment of §271(f) was a reaction to the 1972 Supreme Court decision of Deepsouth Packing Co. vs. Laitram Corp., 406 U.S. 518 (1972), which held that making or using a patented product outside of the United States was not infringement.  According to the Supreme Court, subsections (f)(1) and (f)(2) filled “a gap in the enforceability of patent rights by reaching components that are manufactured in the United States but assembled overseas….”  The “gap,” according to the Court, did not embrace supply of a single component of a patented article when that component constituted a “commodity.”

Justice Alito with whom Justice Thomas joined, concurred in all but the portion of the majority’s opinion regarding the filling of the “gap” created by Deepsouth Packing.  Further, Justices Alito and Thomas reiterated that the majority opinion did not address how many more than a single component would be sufficient to constitute a “substantial portion of the components of a patented invention” under §271(f)(1).

Chief Justice Roberts recused himself from this case, taking no part in the decision.

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