SUPREME COURT RULES IN LIFE TECHNOLOGIES CORP. V. PROMEGA CORP.
On February 22, 2017 in Life Technologies Corp. v. Promega Corp, the Supreme Court in a 7-0 judgment (Chief Justice Roberts having recused himself) held that for there to be active inducement of infringement by export of components of a patented product from the United States, it was necessary to export more than one component of the patented product and that export of a single component, no matter how important that component was did not suffice to meet the requirements of the statute.
In 1984, Congress enacted 35 USC 271(f)(1) to overrule the Supreme Court’s decision in Deepsouth Packing Co. v. Laitram that it was not an infringement of a US patent to ship a kit containing the parts used to make a machine claimed in that patent from the United States as long as no assembly took place within the United States. The statutory provision reads:
- 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.
In the dispute between Promega Corporation and Life Technologies Corporation, the patent in suit claimed a toolkit for amplification of very small samples of genetic material to produce samples large enough to be used, for example to produce DNA profiles for law enforcement. The kit comprised five components, one of which was the Taq polymerase enzyme. The exclusive licensee under the patent (Promega) granted a world-wide field of use sublicense under the patent to Life Technologies to produce kits for use by law enforcement agencies. Life Technologies produced the kits in the United Kingdom where most components were made, but manufactured the Taq polymerase enzyme in and exported it to the United Kingdom from the United States.
A dispute arose between the exclusive licensee (Promega) and its sublicensee (Life Technologies) when the sublicensee started to sell kits for uses outside its licensed field of use. As part of its case, Promega alleged that supply of Taq polymerase enzyme from the United States to the United Kingdom was an act of patent infringement under 35 USC 271(f)(1).
At the Federal Circuit two issues arose with respect to 35 USC 271(f): 1) whether there could be active inducement when no third party was involved and 2) whether export of a single component of the kit would constitute infringement.
On the first question, a majority of the Federal Circuit concluded that there could be inducement by any act that brings about or causes infringement. The statute made no reference to any need for this to be by “another”. 35 USC 271(f)(1) differs from 35 USC 271(b) in that an act of direct infringement is not required and the legislative history of 35 USC 271(f)(1) as an override to the Deepsouth decision is consistent with an interpretation that any export of a “substantial portion” of the components can suffice to meet the requirement of the statute.
On the second question, the Federal Circuit held that, in an appropriate case, export of one component, if a key component of the kit, could meet the “substantial portion” requirement of the statute.
Only the second issue was before the Supreme Court. In her opinion, Justice Sotomayor held that the requirement of 35 USC 271(f) that there has to be export of “all or a substantial portion of the components of a patented invention” was not met where only a single component was exported. She reasoned that the linguistic structure of the provision meant that the reference to a “substantial portion” of the components being exported was a quantitative rather than a qualitative requirement. This being the case, a single component could not meet the statutory requirement, however important it might be to the functioning of the kit that was being assembled abroad. In this context, she contrasted the language of 35 USC 271(f)(1) dealing with induced infringement with a parallel provision dealing with contributory infringement where export of “any” component of the patented product might constitute infringement if the other requirements for establishing contributory infringement were met.