Federal Circuit reverses its earlier ruling in Life Technologies v Promega

The US Court of Appeals for the Federal Circuit has reversed its findings in Life Technologies v Promega, nine months after the US Supreme Court limited overseas patent infringement.

In February, the Supreme Court reversed the Federal Circuit, holding that supplying a single component of a multi-component invention for manufacture abroad doesn’t constitute patent infringement.

According to the Supreme Court, the relevant part of the Patent Act—section 271(f)(1)—consistently refers to plural components, indicating that multiple components make up the “substantial portion” required for liability.

The Federal Circuit had earlier ruled that a single component was sufficient, handing a win to Promega.

Promega’s patent claimed a toolkit for genetic testing, and Promega sublicensed the kit to Life Technologies for the manufacture and sale of the kits for use abroad.

Life Technologies manufactured one of the kit’s five components, an enzyme known as the Taq polymerase, in the US before shipping it to the UK, where the four other components were made.

However, Life Technologies then began selling the kits outside the licensed fields of use, so Promega sued, arguing that Life Technologies was liable for patent infringement under section 271(f)(1).

That section prohibits the supply from the US of “all or a substantial portion of the components of a patented invention” for combination abroad.

A jury at the US District Court for the Western District of Wisconsin initially found Life Technologies liable for infringement, but the court ultimately backed the company by holding that the “all or a substantial portion” doesn’t cover a single component.

But in its first ruling on the case, the Federal Circuit disagreed with the lower court, finding that the statute’s requirement can be met with a single important component, and reinstated the jury’s verdict that Life Technologies was liable for infringement.

Nine months after the Supreme Court’s judgment, the dispute found itself back at the Federal Circuit.

Yesterday, November 13, the Federal Circuit affirmed the Wisconsin judge’s decision to overturn a damages verdict of $52 million in lost profits for Promega.

The lower court had granted Life Technologies’ motion for judgment as a matter of law (JMOL) that Promega had failed to prove infringement, and had denied Promega’s motion for a new trial on damages and infringement (a motion the Federal Circuit also affirmed).

Circuit Judge Raymond Chen, on behalf of the court, said: “Having reviewed Promega’s responsive JMOL brief, we agree with the district court that Promega waived any argument that the trial record could support a damages award based on a subset of total sales by wholly failing to address Life’s argument on this point.”

Chen went on to say that Promega’s position was completely consistent with the company’s “all-or-nothing damages strategy” pursued throughout litigation.

“Promega’s deliberate strategy to adhere to a single damages theory had the effect of winnowing out from the case any argument about damages based on a figure other than worldwide sales,” he concluded.

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