On Feb. 22, 2017, the U.S. Supreme Court held that exporting a single component of a multicomponent that is later incorporated into a patented invention for manufacture abroad does not give rise to induced infringement liability under 35 USC 271(f). Life Tech. v. Promega, 580 U.S. __ (2017). Promega sublicensed the asserted patent on genetic testing toolkit to Life Technologies. One of the kit's five components was made by Life Technologies in the U.S. and then shipped to the UK, where the remaining four components were made. Life Technologies sold the kits outside the licensed fields of use. Promega sued Life Technologies for infringement under 35 USC 271(f). The jury returned a verdict for Promega but the district court granted Life Technologies' JMOL holding that the 271(f)'s phrase "all or a substantial portion" did not encompass the supply of a single component of a multicomponent invention. On appeal, the Federal Circuit reversed the judgment reasoning that the Taq polymerase component could constitute a "substantial portion" of the components because it is a "main" and "major" component of the toolkit.
The Supreme Court reversed the Federal Circuit's decision. The Court first addressed whether the word "substantial" refers to a quantitative or qualitative measurement. Looking at the statutory language of the Patent Act and the context, the Court concluded that "substantial" points to a quantitative meaning. The Court next addressed whether a single component can constitute a "substantial portion" as to trigger 271(f)(1) liability and the Court held that it cannot as the statute's use of "components" indicates that a "substantial portion" must have multiple components.
Full text of the opinion is available here.
The Supreme Court reversed the Federal Circuit's decision. The Court first addressed whether the word "substantial" refers to a quantitative or qualitative measurement. Looking at the statutory language of the Patent Act and the context, the Court concluded that "substantial" points to a quantitative meaning. The Court next addressed whether a single component can constitute a "substantial portion" as to trigger 271(f)(1) liability and the Court held that it cannot as the statute's use of "components" indicates that a "substantial portion" must have multiple components.
Full text of the opinion is available here.
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