US Supreme Court to review Promega v LifeTech patent case
The US Supreme Court announced yesterday that it has agreed to hear a patent infringement case between Promega and Life Technologies centring on DNA testing kits used to analyse genetic differences between people.
Promega sued LifeTech back in 2010 for patent infringement, accusing the company of selling short tandem repeats (STR) testing kits without being covered by a 2006 cross licence between Promega and LifeTech subsidiary Applied Biosystems.
In the case, a jury at the US District Court for the Western District of Wisconsin ruled that Promega was entitled to $52 million in lost profits after finding that LifeTech had willfully infringed a Promega patent.
The court’s decision was based on LifeTechs’ worldwide sales of genetic testing kits, even though the only connection between LifeTechs’ foreign sales and the US was that LifeTech shipped a single commodity component of the kits from its facility in the US to its own manufacturing facility abroad.
Promega owns four patents covering STR kits and had exclusively licensed a fifth to Applied Biosystems, which is the one related to STR in DNA sequences and is referred to in court documents as the “Tautz patent”.
LifeTech makes genetic testing kits for carrying out a “multiplex amplification of STR loci from DNA samples” , which can be used by the police for forensic identification and even by researchers for the analysis of cancer cells.
LifeTech filed a petition for writ of certiorari at the US Supreme Court June last year, arguing that the US Court of Appeals for the Federal Circuit misinterpreted the law when it found in December 2014 that Promega was entitled to damages based on LifeTech’s testing kit sales.
“First, the court held that a single, integrated entity can ‘actively induce’ itself to infringe a patent by shipping a component to its own overseas facilities. Second, the court held that a single, commodity component of a multi-component invention can be ‘a substantial portion of the components’,” the petition stated.
LifeTech added in the petition: “Each of these serious errors warrants this court’s review. The combination dangerously expands the extraterritorial reach of US patent law.”
John O’Quinn, partner at Kirkland & Ellis, said: “Over the last several years the Supreme Court has taken on a number of important patent cases. Some wondered if the Supreme Court would continue to take up patent cases. Today’s grant shows that the Supreme Court remains interested in these types of issues."
