In Life Technologies v. Promega, the Supreme Court held that the supply of a single component of a multicomponent invention for combination abroad does not give rise to liability under 35 U.S.C. § 271(f)(1) because the phrase “substantial portion” in that provision refers to a quantitative measurement, and a single component cannot constitute a “substantial portion” under the statute.
Life Technologies licensed from Promega rights to practice patent claims directed to kits for genetic testing in certain fields of use worldwide. Life Technologies manufactured one component of the kit, the Taq polymerase enzyme, in the United States, and shipped it to the United Kingdom. The Taq polymerase was then assembled with the four other components of the kit, which had been manufactured in the UK. When Life Technologies sold kits outside the licensed fields of use, Promega sued under §271(f)(1) of the Patent Act, which prohibits the supply from the United States of “all or a substantial portion of the components of a patented invention” for combination abroad. While a jury returned a verdict of infringement, the District Court entered judgment as a matter of law in favor of Life Technologies. The Federal Circuit reversed, holding that a single important component could constitute a “substantial portion” of the components of an invention under §271(f)(1), and found the Taq polymerase to be such a component. Life Technologies appealed, and the Supreme Court granted certiorari.
The Court found that the reference to a “substantial portion” in §271(f)(1) referred to a quantitative measurement rather than a qualitative one. The context of the statute points to a quantitative meaning of the term “substantial,” in part because the neighboring words “all” and “portion” convey a quantitative meaning. Additionally, a qualitative reading would render the modifying phrase “of the components” unnecessary. The Court further found that a single component could not constitute a “substantial portion” for the purpose of triggering §271(f)(1) liability. The Court contrasted the plural use of “components” in §271(f)(1) with §271(f)(2), which permits liability for overseas supply of “any component of a patented invention that is especially made or especially adapted for use in the invention” from the United States. Reading §271(f)(1) to cover a single component would “leave little room for §271(f)(2),” which refers in the singular to “any component.” The Court thus reversed and remanded to the Federal Circuit.