Term: 2016
Docket: 14-1538
Life Technologies Corp. v. Promega Corp.
- Pro
14-1538 LIFE TECHNOLOGIES CORP. V. PROMEGA CORP. DECISION BELOW: 773 F.3d 1338 GRANTED LIMITED TO QUESTION 2 PRESENTED BY THE PETITION. CERT. GRANTED 6/27/2016 QUESTION PRESENTED: 35 U.S.C.§ 271(f)(1) provides that it is an act of patent infringement to "suppl[y] ...in or from the United States all or a substantial portion of the components of a patented invention, . . . in such manner as to actively induce the combination of such components outside the United States." Despite this Court's clear dictate that section 271(f) should be construed narrowly, Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), the Federal Circuit held that Life Technologies is liable for patent infringement for worldwide sales of a multi- component kit made abroad because just a single, commodity component of the kit was shipped from its U.S. facility to its own foreign facility. The questions presented are: 1. Whether the Federal Circuit erred in holding that a single entity can "actively induce” itself to infringe a patent under 35 U.S.C.§ 271(f)(1). 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. LOWER COURT CASE NUMBER: 2013-1011, 2013-1029, 2013-1376
The U.S. Supreme Court case, Life Technologies Corp. v. Promega Corp., revolved around a patent dispute between the two biotech companies over genetic testing kits used in forensic science and clinical research. The issue at hand was whether supplying a single component of a multi-component invention for manufacture abroad constitutes infringement under section 271(f)(1) of the Patent Act, which prohibits supply from the United States of "all or a substantial portion" of components to foreign manufacturers to avoid U.S. patent laws. Promega held an exclusive license for Tautz patent that covered genetic testing kits and sued Life Technologies for selling similar kits overseas containing one component made in the US - Taq polymerase enzyme (an essential ingredient). A jury found Life Technologies liable but this decision was overturned by Federal Circuit court stating that even one important component could be considered as “a substantial portion”. However, on appeal, the Supreme Court unanimously ruled against Promega stating that 'substantial' has quantitative not qualitative meaning thus it refers to more than just one component out of several in patented invention.
In the case of Life Technologies Corp. v. Promega Corp., Justice Sotomayor, joined by Justice Thomas and Justice Alito, dissented from the majority opinion. The dissenting justices argued that a single component does not constitute a substantial portion of the components of a patented invention under Section 271(f)(1) in all cases, regardless of its importance to the overall invention. They disagreed with the majority's interpretation that "substantial" refers only to quantitative measurements rather than qualitative ones as well. According to them, this narrow reading could lead to unjust results where an entity could supply one crucial component without liability while another supplying multiple less important parts would be liable for infringement.
