Life Technologies v Promega to be heard at US Supreme Court
Oral arguments in Life Technologies v Promega are due to take place tomorrow in the US Supreme Court to determine whether the US Court of Appeals for the Federal Circuit correctly defined “substantial portion”.
The case arose from patent infringement litigation between the two parties.
Promega sued Life Technologies in the US District Court for the Western District of Wisconsin over its patents, in particular US number RE 37,984.
The ‘984 patent claims a kit comprising a mixture of primers, polymerising enzyme such as Taq polymerase, nucleotides for forming replicated strands of DNA, a buffer solution for performing a PCR, and control DNA.
Life Technologies manufactures genetic testing kits containing the same components as Promega’s patent, but only the Taq polymerase is manufactured in the US and it is shipped to the UK, where the full kits are assembled and distributed globally.
The district court decided that Life Technologies did not infringe the ‘984 patent because only a single component in its kit is from the US. The court further concluded that §271(f)(1) of the US Code requires at least two components supplied from the US before it meets the statute’s requirements of “substantial portion of the components”.
The Federal Circuit disagreed and held that the requirement of the statute can be met with a single component.
Following a petition filed by Life Technologies, the Supreme Court has taken up the question of whether the Federal Circuit “erred in holding that supplying a single, commodity component of a multi-component invention” from the US is an infringing act.
Sandra Kuzmich and Russell Garman of Frommer Lawrence & Haug previously said in an article for LSIPR: “The Supreme Court’s ruling will be closely watched by corporations that supply components from the US for a product manufactured abroad and ultimately sold in the global market.”
They added: “If the Supreme Court upholds the decision rendered by the Federal Circuit, companies may now be liable for damages resulting from the worldwide sales of the foreign product, even if a company’s involvement is limited to exporting from the US a single staple commodity component that is then used in the commercial product.”
