by Dennis Crouch
The Supreme Court has granted a petition for writ of certiorari in the pending patent case of Life Tech. v. Promega Corp (14-1538) – focusing only on Question 2:
Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.
The court will not review the Billy Idol question of whether one can induce ones self.
As the question presented indicates, the case focuses on the statutory interpretation of Section 271(f)(1). That section provides for infringement liability against someone who exports components of a patented invention. The text:
Whoever without authority supplies … from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
I have underlined the requirement that at least “a substantial portion of the components” be supplied before infringement occurs because that language forms the basis for the case.
Here, the case in question involves certain genetic testing that occurred abroad. However apparently a single component of the invention (Taq polymerase) was supplied from the US. For those who have not learned biology in the last 20 years, Taq polymerase is now a commodity product used to amplify DNA via the polymerase chain reaction (PCR).
The jury found that export of the single component was sufficient to meet the requirement of “a substantial portion of the components” when the accused genetic testing kits include a primer mix, a PCR reaction mix, a buffer solution, control DNA, and the polymerase Taq. However, the district court granted JMOL against the patentee. On appeal, the Federal Circuit sided with the jury – finding that substantial evidence supported the verdict.
[The asserted claim] recites five components: a primer mix, a polymerizing enzyme (such as Taq polymerase), nucleotides, a buffer solution, and control DNA. Tautz patent, LifeTech’s domestic arm supplies the Taq polymerase to its facility in the United Kingdom, which both manufactures the remaining four components and assembles all the components into the accused STR kits. Taq polymerase is an enzyme used to amplify the DNA sequences in order to obtain enough replicated sample for testing. Without Taq polymerase, the genetic testing kit recited in the Tautz patent would be inoperable because no PCR could occur. LifeTech’s own witness admitted that the Taq polymerase is one of the “main” and “major” components of the accused kits. In short, there is evidence in the record to support the jury’s finding that a polymerase such as Taq is a “substantial portion” of the patented invention.
On the question of law, the Federal Circuit held that, in some circumstances “a party may be liable under § 271(f)(1) for supplying or causing to be supplied a single component for combination outside the United States.” In his essay on the decision, Jason Rantanen wrote this holding was “probably erroneous.”