Life Techs. Corp. v. Promega Corp. - 137 S. Ct. 734 (2017)

Rule:

The phrase “substantial portion” in 35 U.S.C.S. § 271(f)(1) has a quantitative, not a qualitative, meaning, and § 271(f)(1) does not cover the supply of a single component of a multicomponent invention. 

Facts:

Respondent Promega Corporation sublicensed the Tautz patent, which claims a toolkit for genetic testing, to petitioner Life Technologies Corporation and its subsidiaries (collectively 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 United States 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) of the Patent Act, which prohibits the supply from the United States 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 judgment as a matter of law, 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.

Issue:

Does the supply of a single component of a multicomponent invention for manufacture abroad give rise to §271(f)(1) liability?

Answer:

No.

Conclusion:

The court held that the U.S. Court of Appeals for the Federal Circuit erred when it found that a company that obtained a license under U.S. Patent No. RE 37,984 so it could manufacture and sell genetic testing kits for use in certain licensed law enforcement fields worldwide committed patent infringement under 35 U.S.C.S. § 271(f)(1) when it sold its kits outside the licensed fields of use because it manufactured one of the components of its kits in the United States and shipped that component to the United Kingdom where it was combined with four other components that were used in each kit. The phrase “a substantial portion” that was used in § 271(f)(1) had a quantitative, not a qualitative, meaning, and § 271(f)(1) did not cover the supply of a single component of a multicomponent invention.