Federal Circuit: Unquantified Infringement == No Infringement

Life Techs. Corp. v. Promega Corp. (Fed. Cir. 2017)

Normally, patent infringement liability stems from an infringer using all-elements of a claimed invention.  However, a quirky provision found in 35 U.S.C. 271(f)(1) creates liability for exporting some components of a patented invention.  Particularly, the statute requires export/supply of “a substantial portion of the components.”  In its 2017 Life Tech decision, the Supreme Court interpreted this provision — holding that: export of a single component of a multicomponent invention could not meet the “substantial portion” threshold requirement. Namely, one component cannot be a “substantial portion of the components.”

On remand, the Federal Circuit has issued a new opinion in the case — this time affirming the district court judgment that patentee (Promega) failed to prove infringement under 271(f)(1) as required by the Supreme Court decision.

One problem with this analysis though – according to Promega is that – for some of the infringing kits, “it was undisputed at trial that LifeTech supplied more than one component. . . Taq polymerase and primer pairs.”   In a footnote the Federal Circuit dismissed this argument – finding that Promega had not proven particular damages regarding these 2-component exports and thus had no right to collect any damages for the infringement.

US Sales: The decision similarly affirmed of the district court’s JNOV that “that Promega failed to prove its infringement case under 35 U.S.C. § 271(a).”  A major problem with this conclusion is – as the court explains: “that the record contains evidence of admitted infringement by Life under § 271(a).” In its original decision in the case, the Federal Circuit wrote explained:

At trial, LifeTech admitted that some of the sales of its accused genetic testing kits in the United States were “technically an infringement” of Promega’s patents.LifeTech also admitted that Promega was “entitled to be compensated for [LifeTech’s] infringement.” Promega presented evidence to the jury showing sales of LifeTech’s accused kits in the United States. Based on LifeTech’s own admissions, which are supported by evidence in the record, we conclude that LifeTech’s kits made, used, or sold in the United States infringe the Tautz patent under 35 U.S.C. § 271(a).

On remand here, the Federal Circuit has taken a different position — by noting that the exact quantity of US infringement is unknown: “some unquantified number of Life’s kits infringed under § 271(a).”

At trial, Promega had presented world-wide sales numbers – that included both infringing USA kits and the UK kits (component-export elements) in a way that both the district court and now the appellate panel argue waived its right to obtain particularized damages under 271(a) – and as such “any reinstatement of our prior decision on § 271(a) infringement would be moot.”

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12 thoughts on “Federal Circuit: Unquantified Infringement == No Infringement

  1. 2

    “Waived their right” seems harsh in light of the (admittedly non-similar) “allowances” for the Venue change situation.

    Would not the better path here have been a remand in light of the changes wrought by the Supreme Court?

    1. 2.1

      Promega was surely aware of the different infringement theories.

      Again I ask: why would they not make any effort to separate out the different kits being sold? Presumably the damages would be different for the different kits (the ones having more components would be more expensive).

      What’s up with that?

      1. 2.1.1

        Your reply is simply off-kilter from my post.

        Not to say that your question is a “bad” question (and especially considering that it is coming from you, it is actually a very good question), but there is no need to attempt to insert your question as any type of answer to my very different question.


          Why do you think a remand would be “better”?

          The reason that Promega gets nothing is not because the district court applied the wrong law. The district court already saw the problem with Promega’s lumping of infringing acts and ruled on it. There’s no remand by the CAFC to the district court because the issue’s already been dealt with below.

  2. 1

    At trial, Promega had presented world-wide sales numbers – that included both infringing USA kits and the UK kits (component-export elements) in a way that both the district court and now the appellate panel argue waived its right to obtain particularized damages under 271(a)

    Any guesses as to why this was done? Seems incredibly strange for Promega to have failed to break these numbers down but apparently they didn’t. Were they being protective of their sales strategery or something like that?

    1. 1.1

      Under the prior law, it wasn’t necessary to break it down. Not sure how many patent trials you’ve been through, but they are very time pressured and no one wants to put on evidence of all possible breakdowns of damages for every version of a product – and not jury wants to hear it.

      Can you imagine a trial against Samsung for every version of an android phone and every version of installed software in order to anticipate a change in the law to preserve the evidence?

      Remand should have been ordered to allow the breakdown of damages.

      1. 1.1.2

        Yes I can imagine that. Odd that you can’t but tiny imaginations are par for the course among the eternally confused maximalist set.

        We’re talking about two different kits here, presumably sold at different prices for different profits. Of course you break it down for damages.

        Promega has some cr@p attorneys working for them. No doubt about that.

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