Digest of Promega Corp. v. Life Techs. Corp., Nos. 2013-1011, -1029, -1376 (Fed. Cir. Dec. 15, 2014) (precedential). On appeal from W.D. Wis. Before Prost, Mayer and Chen

Procedural Posture: Accused infringer appealed the district court’s grant of summary judgment that the asserted claims are not invalid for lack of enablement and obviousness and an oral ruling that the accused infringer is not licensed. Patent owner appealed the district court’s grant of JMOL of non-infringement, which vacated the jury’s findings of damages and willful infringement. CAFC found four patents not enabled and reversed summary judgment as to enablement, found support for jury verdict of infringement on the fifth patent and reversed the JMOL as to infringement of the fifth patent, affirmed the finding that the defendant is not licensed, vacated damages award and denial of motion for new trial, and remanded for a determination of damages on the fifth patent.

  • Enablement: The CAFC reversed the district court’s finding that all of the patents were enabled, holding four of the patents invalid as not enabled. The patents were directed to DNA amplification techniques “comprising” the use of at least three repeating DNA sequences called “short tandem repeats” (STR) loci. The district court held, and the parties did not appeal, that the claims covered all techniques that used any amount of loci so long as they used at least the loci required by the claims. However, the CAFC referred to the patents’ prosecution history, and the arguments made in support of the validity of the patents over the prior art during the district court action, to determine that finding even a single additional locus that can successfully be used in combination with other loci “is a complex and unpredictable challenge.” Because the patents do not describe all of the combinations of loci covered by the claims, and it would take undue experimentation in an unpredictable field to discover undescribed loci combinations, the CAFC held that the claims were not enabled for their full scope. The defendant did not challenge the validity of the fifth patent.
  • Inducement: The CAFC reversed the district court’s finding of no inducement under 35 U.S.C. § 271(f)(1), holding that “actively inducing the combination of such components outside of the Unite States” does not require the involvement of a third party. The CAFC held that in 35 U.S.C. § 271(f)(1), “induce” simply means to “to bring about, to cause” as opposed “to influence or persuade” and therefore 35 U.S.C. § 271(f)(1) does not require involvement of a third party, i.e. one can “actively induce the combination” by supplying oneself with the components for combination outside of the United States. The CAFC also held that in certain circumstances, supplying a single component can lead to liability under 35 U.S.C. § 271(f)(1), and that there is “substantial evidence to support the jury’s conclusion that the Taq polymerase supplied by LifeTech from the United States to its foreign facility is a ‘substantial portion’ of the components of the LifeTech’s accused genetic testing kits.”
  • Direct Infringement: The CAFC also reversed the district court’s JMOL of noninfringement under 35 U.S.C. § 271(a). The district court had granted the JMOL because plaintiff “had not shown that all its sales were infringing.” The CAFC reversed noting that defendant admitted that sales of the accused kits infringed the patent.
  • Licensing: The CAFC affirmed the district court’s finding that defendant was not licensed because the “‘Forensic and Human Identity Applications’ field-of-use provision does not extend to research, education, and training.”

Prost, dissenting:

  • Inducement: The dissent argued that § 271(f)(1) and its requirement of active inducement necessarily means inducement of another. A party cannot induce itself to infringe. The dissent noted that the Supreme Court has made it clear that 35 U.S.C. § 271(b) requires inducement of another and that the same should apply to 35 U.S.C. § 271(f)(1).