Supreme Court: supply of single component for manufacture abroad does not constitute patent infringement

Supreme Court: supply of single component for manufacture abroad does not constitute patent infringement

The US Supreme Court [official website] ruled [opinion, PDF] in Life Technologies Corporation v. Promega Corporation [SCOTUSblog materials] on Wednesday that the supply of a single component in a multi-component patented invention for manufacture overseas does not violate Section 271(f)(1) of the Patent Act [text, PDF]. Section 271 [LII materials] prevents the supply from the US of “all or a substantial portion of the components of a patented invention” for manufacture abroad. Under 271, the supply must actively induce [Patentlyo report] the combinations in a manner that would infringe if the manufacture had occurred within the US. Promega had sold a license to Life Technologies under ThermoFisher Scientific [corporate websites] to make and sell the testing kits for specified law enforcement fields but sued [Bloomberg report] claiming that Life Technologies was selling the kit outside the licensed fields.The Court in it’s opinion therefore ruled that the supply of a single components does not constitute a “substantial portion.”

The case centered around Life Technologies’ (LifeTech) international sales of genetic testing kits. Portions of the kit were used in the UK where they were combined with additional components [IP Watchdog report] not provided to produce the infringing kit. Infringement does not occur as the manufacture takes place in the UK, however, under Section 271 of the Patent Act, LifeTech can be liable under infringement for their supply of the components. In 2010 Promega sued LifeTech alleging infringement of five of their patents by LifeTech selling the kits. A jury in the trial found that LifeTech willfully infringed as their sales were attributable to the infringing act and a significant portion of those sales were for unlicensed uses. However, the US Court of Appeals for the Federal Circuit [official website] concluded [opinion, PDF] that Promega had invalid patents in four of its five claims due to lack of enablement, finding that Promega’s interpretation of their claims with “open ended language” would lead to potentially limitless circumstances were Promega’s claims could be extended in the art. However, the court did rule that Promega was entitled for damages for infringement of one of the five patents.