Supreme Court Finds that Shipping a Single Component Abroad Can Never Constitute Infringement under 35 U.S.C. § 271(f)(1)
In a unanimous decision, the Supreme Court found that Life Technologies Corp. is not liable for infringing a Promega Corp. patent in a situation where it shipped only a single component, Taq polymerase, to a facility in the United Kingdom that created allegedly infringing products. This reversed the Federal Circuit, which had found shipping the single component to constitute infringement, where the single component was used overseas to create the infringing products. The allegedly infringing product is a toolkit for genetic testing that consists of five components. Life Technologies had a license to the patent-at-issue to manufacture and sell the kits for certain law enforcement fields but started to sell the products outside of the licensed field.
Promega sued under § 271(f)(1) of the Patent Act, which prohibits anyone in the U.S. from supplying “all or a substantial portion of the components of a patented invention” for combination abroad. The jury returned a verdict for Promega, but the District Court granted Life Technologies’ motion for judgment as a matter of law, holding that “all or a substantial portion” could not refer to a single component.
The Federal Circuit reversed, finding “there are circumstances in which a party may be liable under § 271(f)(1) for supplying or causing to be supplied a single component for combination outside the United States.” The Federal Circuit, using the dictionary definition of “substantial,” found that a single component could be essential for an invention, and therefore a single component may satisfy the "substantial portion of the components" language in the infringement statute.
In reversing, the Supreme Court held that “a single component does not constitute a substantial portion of the components that can give rise to liability under § 271(f)(1).” The Court reached this conclusion by determining that “substantial portion” had a quantitative meaning instead of a qualitative meaning. The Court stated that very few inventions would work if even a single component was removed and therefore, turning the test into a qualitative test would create an unworkable scenario. The Court also noted that such a broad interpretation of § 271(f)(1) would create conflict with the wording of § 271(f)(2), which can cover the exporting of “any component” if it has no “substantial noninfringing use.”
Justice Alito in his concurrence noted that he does not read the opinion “to suggest that any number greater than one is sufficient.” In his view this case stands for the proposition that one component is not enough but it is unclear how many more are needed for infringement to occur. Justice Roberts recused himself from the case after oral arguments.
The case is Life Techs. Corp. v. Promega Corp., Case No. 14-1538 (Feb. 22, 2017).