Life Technologies Corp. v. Promega Corp. (Supreme Court 2017)
In a largely-unanimous opinion, the Supreme Court has ruled that the “supply of a single component of a multicomponent invention for manufacture abroad does not give rise to §271(f)(1) liability.”
The case interprets the patent infringement statute 35 U.S.C. §271(f)(1) that creates liability for supplying from the US “all or a substantial portion of the components of a patented invention” to be combined abroad in a manner that would infringe the US patent (if it had been combined in the US). The patent covers a genetic testing kit that includes five different components. The accused infringement was shipping one component of the kit (Taq polymerase) to the UK for combination with the other components. The Federal Circuit had ruled that a single component could constitute a “substantial portion of the components” under the statute.
Writing for the court, Justice Sotomayor found that the “substantial portion” should be seen as a quantitative requirement and that a single component is not sufficient.
Although they joined with the bulk of the opinion, Justices Alito and Thomas did not join the portion suggesting that 271(f) was intended as a narrow provision enacted by congress only to fill the gap left by Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518 (1972). Rather, in a concurring opinion, justice Alito writes that congress intended “to go at least a little further.” The concurrence also includes its interpretative statement on the majority opinion:
I note, in addition, that while the Court holds that a single component cannot constitute a substantial portion of an invention’s components for §271(f)(1) purposes, I do not read the opinion to suggest that any number greater than one is sufficient. In other words, today’s opinion establishes that more than one component is necessary, but does not address how much more.