On February 22, 2017, the Supreme Court issued its decision in Life Technologies Corp. v. Promega Corp. to address whether the act of supplying from the United States a single commodity component of a multicomponent invention for combination abroad constitutes patent infringement under 35 U.S.C. § 271(f)(1). The Supreme Court reversed the Court of Appeals for the Federal Circuit and held that the supply of a single component is insufficient for infringement under § 271(f)(1).
Promega was the exclusive licensee of a patent1 claiming a toolkit for taking and using DNA samples to generate DNA profiles, which then may be used by law enforcement agencies for forensic identification and by clinical and research institutions. Promega granted Life Technologies a limited field-of-use license under the patent to make and sell DNA testing kits to law enforcement agencies worldwide. Promega sued Life Technologies for patent infringement when Life Technologies began selling its testing kits to unlicensed clinical and research institution markets.
The parties agreed that the claimed kit contains five components: "(1) a mixture of primers that mark the part of the DNA strand to be copied; (2) nucleotides for forming replicated strands of DNA; (3) an enzyme known as Taq polymerase; (4) a buffer solution for the amplification; and (5) control DNA." Life Technologies manufactured all five components in the United Kingdom except for the Taq polymerase, which it manufactured in the United States and shipped to its United Kingdom facility for combination with the other four components.
Patent infringement liability under 35 U.S.C. § 271(f)(1) requires proof that the accused infringer "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." (Emphasis added.) Section 271(f)(1) additionally requires evidence of active inducement. In finding Life Technologies liable for patent infringement, the Federal Circuit considered the dictionary definition of "substantial" and held that supplying a single component that is qualitatively important to the invention, i.e., the accused kits were inoperable without the Taq polymerase, satisfies the "substantial portion" language of § 271(f)(1). The Federal Circuit also held that active inducement under § 271(f)(1) does not require involvement of a third party.
In reversing, the Supreme Court focused on the text of the statute and held that, in context, "substantial portion" must be measured quantitatively, not qualitatively. The Court further held that a single component of a multicomponent invention cannot ever constitute a "substantial portion" sufficient to satisfy § 271(f)(1). However, it did not address how much more than supplying a single component is sufficient to trigger § 271(f)(1): "We do not today define how close to 'all' of the components 'a substantial portion' must be. We hold only that one component does not constitute 'all or a substantial portion' of a multicomponent invention under §271(f)(1). This is all that is required to resolve the question presented."2
Practical Implications
The Life Technologies decision provides clear guidance on the minimum required to invoke § 271(f)(1). Quite simply: one component is not enough. However, other considerations remain. For example, is the claimed invention in fact a multicomponent one, and, if so, what constitutes each component? Recall that in Life Technologies, the parties agreed that the invention had five components and also agreed on a description of each component. In other situations, there may not be such clear-cut answers to these questions.
Once it is determined that the invention is multicomponent and a description of each component is settled upon, there remains the key question left unanswered by the Supreme Court's decision: how much more than one is enough? That is, if more than two or more components of a multicomponent invention are supplied from the US to an overseas location for combination, are the US components sufficient in number to trigger § 271(f)(1)? Does the answer change depending on whether it is two components of a three-component invention versus two components of a fifty-component invention, or something in-between?
Footnotes
1 The patent, U.S. Patent No. RE37,984, expired in 2015.
2 Life Technologies presented two questions in its petition for a writ of certiorari including (1) whether a single entity can actively induce itself to infringe a patent under § 271(f)(1); and (2) whether the supply from the United States of a single commodity component of a multicomponent invention is an infringing act under § 271(f)(1). The Supreme Court granted Life Technologies' petition with respect to the second question only and therefore did not address the Federal Circuit's interpretation of active inducement under § 271(f)(1).
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