In an effort to curb efforts to circumvent patent protection,
the Patent Act imposes liability for infringement on anyone who
supplies "all or a substantial portion" of a patented
invention's components from the United States for combination
overseas. 35 U.S.C. s 271(f)(1). The Federal Circuit had held that
a single component—in this case, of a five-component test
kit—could be sufficiently important to a patented invention
to constitute "a substantial portion."
The Supreme Court today held that "the supply of a single
component of a multicomponent invention" can never be an
infringing act under Section 271(f)(1). Giving the statutory term
"substantial" a quantitative rather than a qualitative
reading, the Court concluded that the infringing "substantial
proportion" of the "components" must comprise more
than one component. (In contrast, the neighboring subsection,
271(f)(2), imposes liability for the supply of "any
component" under more limited circumstances.)
Justice Sotomayor's opinion was unanimous in most respects.
Justice Alito, joined by Justice Thomas, excepted themselves from a
discussion of the "genesis" of the statute, and pointed
out that the Court's opinion did not explain how to determine
when a multiplicity of components met the statutory test beyond
saying that one is not enough. The Chief Justice did not
participate in the decision.
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In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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