Supreme Court Decides Life Technologies Corp. v. Promega Corp.

On February 22, 2017, the Supreme Court of the United States decided Life Technologies Corp. v. Promega Corp., No. 14-1538, holding that the supplying of a single component of a multicomponent invention does not qualify as an infringing act under Section 271(f)(1) of the Patent Act of 1952 (“the Act”). The Act prohibits any person from supplying “all or a substantial portion” of a patented invention outside of the United States “in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.” 

Promega Corporation is the exclusive licensee of a patent that covers a toolkit for genetic testing. The toolkit contains five components; it takes small samples of genetic material and generates DNA profiles that can be used by law enforcement agencies for forensic identification and by clinical and research institutions around the world. Promega sublicensed the patent to Life Technologies, which manufactured all but one of the kit components in the United Kingdom. The remaining component was manufactured in the United States, and then it was shipped to the United Kingdom for combination with the other components of the toolkit. 

Years into the parties’ agreement, Promega sued Life Technologies for patent infringement, claiming that Life Technologies had infringed on the patent by supplying the one component from the United States to the United Kingdom, in violation of Section 271(f)(1). After a jury verdict for Promega, the district court granted Life Technologies’s motion for judgment as a matter of law, concluding that section 271(f)(1) did not apply because the phrase “all or substantial portion” did not encompass the supply of a single component of a multi-component invention. The United States Court of Appeals for the Federal Circuit reversed, a party may be liable under section 271(f)(1) even if it merely supplied a single component of a multicomponent patent. 

The Supreme Court reversed, holding that supplying a single component of a multicomponent invention does not qualify as an infringing act under Section 271(f)(1). As a threshold question, the Court concluded that the word “substantial” was a quantitative, not qualitative, measurement, because that reading more closely hewed to the text of Section 271(f)(1) and was more easily administrable than a case-by-case inquiry into the “importance” of the component. 

The Court then squarely rejected the notion that a single component of a multi-component invention could ever constitute a “substantial portion” so as to trigger liability under Section 271(f)(1). The Court based its decision on the statutory text’s use of the plural term “components” and on the consistency of such a reading with the operation of other provisions of the statute. The Court left open the question of how many components would constitute “a substantial portion.” 

Justice Sotomayor delivered the decision for the Court, in which Justices Kennedy, Ginsburg, Breyer, and Kagan joined, and in which Justices Thomas and Alito joined as to all but one part. Justice Roberts took no part in the decision of the case. 

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