Federal Circuit reverses its earlier ruling in Life Technologies v Promega
Life Technologies v Promega to be heard at US Supreme Court
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The US Supreme Court today ruled that supplying a single component of a multi-component invention for manufacture abroad does not constitute patent infringement.
It said 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.
In the case, Life Technologies v Promega, the US Court of Appeals for the Federal Circuit had earlier said that a single component was sufficient, handing a win to Promega. However, that ruling has now been reversed.
The patent in question claims a toolkit for genetic testing. Promega sublicensed it to Life Technologies for manufacturing and selling 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.
Promega sued Life Technologies after the latter began selling the kits outside the licensed fields of use, arguing that Life Technologies was liable for patent infringement under §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, according to the ruling.
Despite a jury initially finding Life Technologies liable for infringement, the US District Court for the Western District of Wisconsin ultimately backed Life Technologies, holding that §271(f)(1)’s phrase “all or a substantial portion” does not cover a single component.
The Federal Circuit disagreed and held that the statute’s requirement can be met with a single important component. It also reinstated the jury’s verdict that Life Technologies was liable for infringement.
Following a petition filed by Life Technologies, the Supreme Court considered 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.
The court said today: “We hold that a single component does not constitute a substantial portion of the components that can give rise to liability under §271(f )(1).”
Justice Sotomayor, who delivered the opinion, said the phrase “substantial portion” has a quantitative, not qualitative, meaning.
She said the section “consistently refers to the plural ‘components’, indicating that multiple components make up the substantial portion”.
Sotomayor did note that a supplier may be liable 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 in this case, she continued, “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”.
More analysis to follow.
SCOTUS, US Court of Appeals for the Federal Circuit, Life Technologies v Promega, genetic testing, patent