quantitative meaning : CAFC Alert

The Supply of a Single Component of a Multicomponent Invention Is Not an Infringing Act Under 35 U.S.C. §271(F)(1)

Sung-Hoon Kim | March 6, 2017

Life Technologies Corp. et al. v. Promega Corp.

February 22, 2017

Opinion by Sotomayor

Summary:

Promega sued Life Technologies for patent infringement under §271(f)(1) because Life Technologies assembled a kit for genetic testing in the U.K. with a single component manufactured in the U.S. and sold the product worldwide.  The Supreme Court reversed the Federal Circuit’s holding and held that §271(f)(1) does not cover the supply of a single component of a multicomponent invention.  The Supreme Court held that the term “substantial” in §271(f)(1) should have a quantitative meaning rather than a qualitative meaning.

Details:

Promega’s U.S. Reissue Patent No. 37,984 (“the Tautz patent”) is directed to a kit for genetic testing that can be used in various fields.  Promega (exclusive licensee of the Tautz patent) sublicensed the Tautz patent to Life Technologies, but limited the license to a specific field of use.  The patented kit has five components including a polymerase enzyme.  Life Technologies manufactured the polymerase enzyme in the U.S. and shipped it to the U.K.  Life Technologies manufactured other components, assembled all five components in the U.K, and sold the final product worldwide.  After discovering that Life Technologies was selling the product in the U.S. and overseas outside of the license, Promega sued Life Technologies for patent infringement, claiming that patent infringement liability was triggered under 35 U.S.C. §271(f)(1).

35 U.S.C. §271(f)(1):

Whoever without authority supplies or causes to be supplied in or 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.

35 U.S.C. §271(f)(2):

Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined 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.

District Court:

The jury returned a verdict for Promega, finding that Life Technologies willfully infringed the patent.  Life Technologies then moved for judgment as a matter of law, arguing that 35 U.S.C. §271(f)(1) should not be applied because the phrase “all or a substantial portion” does not encompass the supply of a single component (polymerase enzyme).  The district court granted Life Technologies’ motion.

The Federal Circuit:

The Federal Circuit reversed and reinstated the jury’s verdict finding Life Technologies liable for infringement.  The Federal Circuit held that since the dictionary definition of “substantial” is “important” or “essential,” a single component (polymerase enzyme) could be a “substantial portion of the components.”

The Supreme Court:

The Supreme Court held that the supply of a single component (polymerase enzyme) of a multicomponent invention (genetic testing kit) is not an infringing act under 35 U.S.C. §271(f)(1).

The Supreme Court held that the term “substantial” has a quantitative meaning because neighboring terms “all” and “portion” convey a quantitative meaning, and the phase “substantial portion” is modified by “of the components of a patented invention.”  The Supreme Court rejected Promega’s suggestion to adopt both quantitative and qualitative aspects of the components (“case-specific approach”) because it is too complicated.

The Supreme Court held that reading §271(f)(1) to refer “components” as plural and §271(f)(2) to “any component” as singular allows two provisions to work in tandem.

Finally, the Supreme Court held that the history of §271(f) and Congress’s intent support the conclusion.  §271(f)(1) was enacted by Congress in response to the decision in Deepsouth Packing Co. v. Laitram Corp. case, where the Court held that it was “not an infringement to make or use a patented product outside of the U.S.”

Takeaway:

Shipping a single component of a patented invention to be combined with other components overseas is not patent infringement.  This means that companies can ship only one component of a product abroad without patent infringement liability.

How about shipping two components?  The Supreme Court left open the question of how many components are required to be “substantial portion of the components.”

In addition, the Supreme Court did not reach the issue of how to identify a component part of a patented invention under §271(f)(1).

The Supreme Court finally provided a bright-line patent law rule: liability under §271(f)(1) requires more than one component.

Full Opinion

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