Supreme Court Holds Supplying Single Component Insufficient For Section 271(f)(1) Liability | Practical Law

Supreme Court Holds Supplying Single Component Insufficient For Section 271(f)(1) Liability | Practical Law

In Life Technologies Corp. v. Promega Corp., the US Supreme Court held that supplying a single component of a multicomponent invention is not an infringing act under 35 U.S.C. § 271(f)(1) because a single component is not sufficient to qualify as "a substantial portion" of a multicomponent invention under the statute.

Supreme Court Holds Supplying Single Component Insufficient For Section 271(f)(1) Liability

by Practical Law Intellectual Property & Technology
Published on 22 Feb 2017 • USA (National/Federal)
In Life Technologies Corp. v. Promega Corp., the US Supreme Court held that supplying a single component of a multicomponent invention is not an infringing act under 35 U.S.C. § 271(f)(1) because a single component is not sufficient to qualify as "a substantial portion" of a multicomponent invention under the statute.
On February 22, 2017, in Life Technologies Corp. v. Promega Corp., the US Supreme Court reversed the US Court of Appeals for the Federal Circuit, holding that supplying a single component of a multicomponent invention is not an infringing act under 35 U.S.C. § 271(f)(1) ( (Feb. 22, 2017)). The court held that the term "substantial portion" in Section 271(f)(1) is a quantitative measure, and a single component was not sufficient to qualify as a substantial portion of the multicomponent invention.
Promega Corp. was the exclusive licensee of US Patent No. RE 37,984 (the Tautz patent), which claims a kit for testing DNA samples. The kit allows multiple copies of a particular genetic sequence to be synthesized from a small sample of DNA, a process known as amplification.
Life Technologies Corp. (LifeTech), after obtaining a sublicense to the Tautz patent from Promega, manufactured:
  • Four of the five components of the claimed DNA testing kits in the UK.
  • The last component (Taq polymerase) in the US and then shipped it to the UK facility to be combined with the other components. The assembled kit is sold worldwide.
Four years after sublicensing, Promega sued LifeTech in the US District Court for the Western District of Wisconsin, claiming in relevant part that LifeTech, in supplying Taq polymerase from the US to its UK manufacturing facilities, infringed the Tautz patent under 35 U.S.C. § 271(f)(1). Under Section 271(f)(1), an accused infringer is liable for infringement if it supplies all or a substantial portion of the components of a patented invention.
After trial:
  • The jury found that LifeTech had willfully infringed the patent.
  • LifeTech moved for judgment as a matter of law, arguing that Section 271(f)(1) did not apply because supplying a single component of a multicomponent invention did not constitute "all or a substantial portion" of the invention.
  • The district court granted LifeTech's motion, agreeing with LifeTech's interpretation of "a substantial portion."
On appeal, the Federal Circuit reversed and reinstated the jury's verdict finding LifeTech liable for infringement, concluding that:
  • There are certain instances when a single important or essential component can be a substantial portion of the components of a patented invention.
  • In this case, the claimed DNA testing kits would be inoperable without the single component that LifeTech manufactured in the US and shipped to the UK.
For more on the Federal Circuit's decision, see Legal Update, Federal Circuit Clarifies Infringement Liability Under Section 271(f)(1).
The Supreme Court granted certiorari on the question of whether the supply of a single component of a multicomponent invention is an infringing act under 35 U.S.C. § 271(f)(1). The Supreme Court reversed the Federal Circuit, holding that:
  • Statutory construction suggests that "substantial portion" is a quantitative term rather than a qualitative term because:
    • the neighboring terms of the phrase—"all" and "portion"—convey a quantitative meaning; and
    • the phrase is modified by "of the components of a patented invention" rather than just "of a patented invention," suggesting a quantitative reading of the word "substantial."
  • Considering the qualitative importance of a component would not lead to easy resolution of a close case because most inventions would likely not function at all without any one of their components.
  • The text, context, and structure of the statute supports the fact that a single component can never be a "substantial portion" of an invention under Section 271(f)(1) because:
    • Section 271(f)(1) consistently uses the plural form of "components," in contrast to Section 271(f)(2), which uses the singular form "component" in its text; and
    • reading Section 271(f)(1) as referring only to more than one component gives each subsection a unique application.
The Supreme Court did not opine on how close to "all" components a "substantial portion" must be, leaving that question to the Federal Circuit for future cases. The Supreme Court also did not address how to identify the number of components in an invention, or how that question relates to the claims of the patent.
As a practical matter, counsel dealing with infringement claims under Section 271(f)(1) now must:
  • Address the number of the invention's components that the accused infringer supplies, rather than their qualitative importance to the invention.
  • Wrestle with the uncertainty the Supreme Court has created by declining to opine on:
    • the quantitative measure that should be applied (beyond a single component); or
    • how components should be identified, and whether that inquiry relates to the elements of a patent claim.