The Supreme Court of the United States agreed to review a decision by the US Court of Appeals for the Federal Circuit regarding active inducement infringement under 35 USC § 271(f)(1) in a case important to US manufacturers that supply components of patented inventions for use abroad. Life Technologies Corporation v. Promega Corporation, Case No. 14-1583 (US, June 27, 2016) (decision on cert.)
At the district court, Life Technologies Corporation (LifeTech) acknowledged that by selling certain kits, it directly infringed the asserted patent under § 271(a). Many of those sales were made abroad, however, and LifeTech supplied only a single component of those kits from the United States—the Taq polymerase. For those sales, the district court instructed the jury on active inducement under § 271(f)(1) and, over LifeTech’s objection that it could not induce itself within the meaning of the statute, instructed the jury to include in the damage calculation kits made outside the United States where the Taq polymerase was supplied from the United States.
The jury returned a damage award based on LifeTech’s worldwide sales. Later, on LifeTech’s move for judgment as a matter of law, the district court ruled that § 271(f)(1) requires the involvement of another, unrelated party to “actively induce the combination of components” and that no other party was involved in LifeTech’s assembly of the accused kits overseas. It also found that the statutory phrase “substantial portion of the components” requires at least two components to be supplied from the United States, but that LifeTech supplied only a single component.
On appeal, the Federal Circuit reversed the ruling regarding § 271(f)(1), concluding that even a single component supplied from the United States can constitute “a substantial portion” of the components of a patented invention (IP Update, Vol. 18, No. 1).
The text of 35 USC § 271 (f)(1) reads as follows:
Whoever without authority 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, 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, shall be liable as an infringer. (Emphasis added.)
The question on which the Supreme Court granted certiorari is as follows:
Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 USC § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.
In other words, the Supreme Court will decide if LifeTech’s export of the Taq polymerase was sufficient to be considered a “substantial portion of the components” under the statute, thereby exposing LifeTech to infringement damages based on its worldwide sale of the subject kits.