United States: Supreme Court Limits Foreign Reach Of The U.S. Patent Act

The supply from the United States of a single component of an invention, for assembly of the invention abroad, is not patent infringement under Section 271(f)(1) of the Patent Act. This is according to a unanimous ruling yesterday by the United States Supreme Court.

The court found significant limitations on the reach of Section 271(f)(1), a law that states that it is an act of patent infringement to supply from the United States, "all or a substantial portion of the components of a patented invention," to induce the combination of such components abroad. In reaching its decision, the court analyzed the phrase, "substantial portion," in the law, and concluded that the phrase refers to the the number of components exported, not the relative importance of the exported components to the invention as a whole.

The case began when Promega Corporation sued Life Technologies Corp. for infringement of a Promega patent that claims a five-component DNA testing kit. Promega alleged that Life Technologies infringed the patent because Life Technologies manufactured in the United States one of the five components of the testing kit (an enzyme known as the Taq polymerase), and then shipped it to the United Kingdom for assembly there with the other four components of the kit.

At the trial court level, a jury returned a verdict in favor of Promega, but the trial court granted Life Technologies' motion for judgment as a matter of law, finding that Section 271(f)(1)'s mention of "a substantial portion of the components" does not cover the export of a single component of a multi-component invention. On appeal, the U.S. Court of Appeals for the Federal Circuit reversed the judgment and reinstated the jury's verdict. The Federal Circuit relied, in part, on expert testimony during trial that the U.S.-made component is a "main" and "major" component of the testing kit, and further used the dictionary definition of "substantial" to find that Section 271(f)(1) can apply to a single component of a multi-component invention.

The Supreme Court then, yesterday, reversed the Federal Circuit's judgment. In doing so, the Supreme Court first conceded that the "term "substantial" is not defined by the Patent Act, and that the ordinary meaning of the word in isolation is ambiguous. In other words, "substantial" can refer to either the qualitative importance of the component to the invention or to a quantitative large size of the components.

The court noted, however, that in the context of how the word "substantial" appears written in the law, it must mean a quantitative large size and it is not referring to a measure of qualitative importance. For example, as written in the statute, the words "all" and "portion" appear in the same sentence with the word "substantial" — "all or a substantial portion of the components of a patented invention . . ."  Both "all" and "portion" convey a quantitative meaning, as the Supreme Court pointed out citing to several dictionary definitions.

Moreover, according to the court, a qualitative interpretation of "substantial" wouldn't make sense in context, because it would render the phrase, "of the components" superfluous; that is, if a qualitative meaning was envisioned by the statute, the statute could have simply read, "all or a substantial portion of . . . a patented invention . . ."

Having found that the phrase "substantial portion" refers to a quantitative measure, the court next turned to whether a single component can be a "substantial portion," according to the statute. According to the court, a single component cannot meet the statute, because the text uses the plural word "components."  That is, the statue is directed towards supply of "all or a substantial portion of the components of a patented invention . . ." where such components are uncombined, in a manner that the statue later requires, actively induces the combination of "such components" abroad. The court further noted that a companion section of the law, Section 271(f)(2), refers to "any component," in the singular, and that the two sections of the law therefore complement one another. In other words, (f)(1) covers multiple components, and (f)(2) covers a single component (if such a single component is especially made or especially adapted for use in the invention, as required by the language of (f)(2)).

Justice Sotomayor authored the unanimous opinion. Notably, Justice Alito, joined by Justice Thomas, concurred in part and in the judgment, stating, "today's opinion establishes that more than one component is necessary [for liability under §271(f)(1)], but does not address how much more." (Chief Justice Roberts took no part in the decision, having recused himself due to his ownership of stock in Life Technologies' parent company.)

The case might have an immediate effect on how some patent lawyers draft patent claims. As the court did not elaborate on a methodology for determining the number of components of a claimed invention, some patent lawyers may now draft claims in ways that flesh out standard claim elements into multiple constituent parts. For example, claim language that simply recites a "light bulb," might now instead recite, "a filament; a glass casing; and an electrically conductive base," so that export of the light bulb can be argued to be export of multiple components, rather than of a single component. It remains to be seen how the courts will view such claim drafting techniques.

The case is Life Technologies Corp. et al. v. Promega Corp., No. 14-1538, 580 U.S. __ (2017). A copy of the opinion can be found here.

Supreme Court Limits Foreign Reach of the U.S. Patent Act

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