Life Technologies Corporation v. Promega Corporation, No. 14-1538, 580 U.S. ___ (2017) [click for opinion]

Respondent, Promega Corporation ("Promega"), was the exclusive licensee of the Tautz patent, a toolkit for genetic testing. Petitioner, Life Technologies Corporation ("Life Technologies"), manufactured genetic testing kits and obtained a sublicense from Promega to manufacture and sell the kits for use in certain licensed law enforcement fields worldwide. Life Technologies manufactured all of the components for the kits in the United Kingdom, with the exception of one—the Taq polymerase—which was manufactured in the United States and shipped to a facility in the United Kingdom, where it was combined with the other four components of the kits.

Promega sued Life Technologies for infringing the patent by selling the kits outside the licensed fields of use to clinical and research markets. According to Promega, Life Technologies' supply of the Taq polymerase from the United States to its United Kingdom facility triggered liability under 35 U.S.C. § 271(f)(1). Under that provision, a party may be liable for patent infringement if, among other things, it supplies from the U.S. all or a substantial portion of the components of a patented invention, in such manner as to induce the combination of components outside of the U.S. in a manner that would infringe the patent if the combination occurred in the U.S.

At trial, a jury found that Life Technologies had willfully infringed the patent and returned a verdict in favor of Promega. Life Technologies moved for judgment as a matter of law, arguing that § 271(f)(1) did not apply because the phrase "all or a substantial portion" does not encompass the supply of a single component of a multicomponent invention. The district court agreed with Life Technologies and granted its motion.

On appeal, the court of appeals for the Federal Circuit reversed and reinstated the jury's verdict in favor of Promega, holding that "substantial" is defined as "important" or "essential," which suggests that a single component, if considered important or essential, can be "a substantial portion of the components" of a patented invention. According to expert trial testimony, the Taq polymerase is a "main" and "major" component of the kits, thus the court of appeals concluded that it should be considered substantial under § 271(f)(1).

In determining whether the supply of a single component of a multicomponent invention infringes 35 U.S.C. § 271(f)(1), the Supreme Court first examined whether the phrase "a substantial portion" refers to a qualitative or quantitative measurement. Looking to the text, structure and context of § 271(f)(1), the court noted that the term "substantial" is not defined in The Patent Act and its ordinary meaning is ambiguous. However, the court concluded that the context of the term as it is used in conjunction with the terms "all" and "portion" conveys a quantitative meaning. In support of its interpretation, the court also pointed to how the phrase "substantial portion" is modified by "of the components of a patented invention," suggesting that it is the supply of all or a substantial portion "of the components" of a patented invention that triggers liability. The court also found that giving the term a qualitative meaning would result in confusion, as it would be difficult to deny the importance of any one component to an invention, for admittedly few inventions, including the Tautz patent, would function without any one of their components.

The court then concluded that, as a matter of law, a single component cannot constitute "a substantial portion" under § 271(f)(1). Once again the court turned to the text, context and structure of the statute in its analysis. The text of § 271(f)(1) consistently uses the term "components" in the plural form, indicating that multiple components constitute a substantial portion. Furthermore, the structure of § 271(f), as it is separated into §§ 271(f)(1) and 271(f)(2) reinforces this reading. According to the court, § 271(f)(1) prohibits the supply of components, plural, and speaks to whether the components supplied by a party constitute a substantial portion of the components, whereas, § 271(f)(2) refers to "any component," singular, and speaks to whether a party has supplied "'any' noncommodity component 'especially made or especially adapted for use in the invention.'" If one were to read § 271(f)(1) to cover any single component, such a reading "would not only leave little room for § 271(f)(2), but would also undermine § 271(f)(2)'s express reference to a single component 'especially made or especially adapted for use in the invention.'"

Finding that the phrase "substantial portion" in 35 U.S.C. § 271(f)(1) has a quantitative, not a qualitative meaning, and that § 271(f)(1) does not cover the supply of a single component of a multicomponent invention, the court reversed the judgment of the court of appeals for the federal circuit in favor of Promega and remanded the case for further proceedings.