Life Technologies Corp. v. Promega Corp.
137 S. Ct. 734, 2017 U.S. LEXIS 1428, 197 L. Ed. 2d 33 (2017)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
Under 35 U.S.C. § 271(f)(1), supplying a single component of a multi-component patented invention from the United States for combination abroad does not constitute supplying 'a substantial portion of the components' and therefore is not an act of patent infringement.
Facts:
- Promega Corporation was the exclusive licensee of the Tautz patent for a five-component genetic testing toolkit.
- The five components of the kit were: primers, nucleotides, an enzyme known as Taq polymerase, a buffer solution, and control DNA.
- Promega sublicensed the patent to Life Technologies Corporation to manufacture and sell the kits for use in specific licensed fields, such as law enforcement.
- Life Technologies manufactured four of the five components for its kits in the United Kingdom.
- Life Technologies manufactured the fifth component, the Taq polymerase, in the United States.
- Life Technologies shipped the U.S.-made Taq polymerase to its facility in the United Kingdom, where it was combined with the other four components to create the final toolkit.
- Life Technologies then sold the completed kits outside the scope of its license, in clinical and research markets.
Procedural Posture:
- Promega Corporation sued Life Technologies Corporation in the U.S. District Court for the Western District of Wisconsin for patent infringement.
- A jury returned a verdict in favor of Promega, finding Life Technologies had willfully infringed the patent.
- Life Technologies filed a motion for judgment as a matter of law, arguing its conduct was not covered by the statute.
- The District Court (trial court) granted Life Technologies' motion, holding that supplying a single component was not infringement under § 271(f)(1).
- Promega (appellant) appealed the District Court's judgment to the U.S. Court of Appeals for the Federal Circuit.
- The Court of Appeals for the Federal Circuit reversed the District Court, holding that supplying a single, important component could constitute a 'substantial portion' and reinstated the jury's verdict.
- The U.S. Supreme Court granted certiorari to review the Federal Circuit's decision.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does supplying a single component of a multi-component patented invention from the United States for assembly abroad constitute supplying 'all or a substantial portion of the components' so as to trigger liability for patent infringement under 35 U.S.C. § 271(f)(1)?
Opinions:
Majority - Justice Sotomayor
No. Supplying a single component of a multi-component invention does not constitute supplying 'a substantial portion of the components' required to trigger liability under 35 U.S.C. § 271(f)(1). The Court reasoned that the term 'substantial portion' refers to a quantitative, not a qualitative, measurement. This conclusion is based on the statutory text, where 'substantial portion' is surrounded by quantitative terms like 'all' and 'portion,' and modifies the plural 'components.' Furthermore, the statute's structure supports this reading, as the companion provision, § 271(f)(2), specifically addresses the supply of a single, specially adapted component, which would be rendered superfluous if § 271(f)(1) also applied to a single component. A quantitative test is also more administrable than a qualitative one based on a component's 'importance,' which would be difficult for courts and market participants to apply consistently.
Concurring - Justice Alito
No. I agree with the judgment and most of the Court's reasoning but do not join the part discussing legislative history, as it sheds no light on the specific question presented. The Court correctly holds that a single component cannot constitute a 'substantial portion,' meaning more than one component is necessary to trigger liability under § 271(f)(1). However, I write to clarify that the opinion does not address how many more than one component is sufficient; it only establishes that one is not enough.
Analysis:
This decision provides significant clarity for companies with global supply chains by establishing a bright-line rule that exporting a single component of a multi-component invention does not trigger infringement liability under § 271(f)(1). By favoring a quantitative over a qualitative test for 'substantial portion,' the Court prioritized predictability and administrability over a more flexible, case-by-case analysis of a component's importance. This ruling narrows the extraterritorial reach of U.S. patent law but leaves unresolved the question of how many components, more than one, constitute a 'substantial portion,' leaving that determination for future cases.
