On Wednesday, the Supreme Court decided Life Technologies v. Promega, 1 which concerns liability for patent infringement for exporting patented components. Section 271(f)(1) of the Patent Act defines infringement to include “suppl[ying]…from the United States all or a substantial portion of the components of a patented invention…” (emphasis added). The question presented in Life Technologies was whether the supply of a single component of a multicomponent invention could qualify as “a substantial portion” under §271(f)(1). The Supreme Court held it cannot.
Promega sued Life Technologies for infringing its patent on genetic testing kits, which claimed a combination of five components. Evidence at trial showed that Life Technologies supplied only one component (Taq polymerase) from the United States; the other components were manufactured and assembled in the United Kingdom. The district court granted Life Technologies judgment as a matter of law, ruling that a single component is not a “substantial portion” of the components of a patented invention under §271(f)(1). On appeal, the Federal Circuit reversed, reasoning that “substantial” can mean “important” or “essential.” Relying on expert testimony, the Federal Circuit held that Taq polymerase could constitute a “substantial portion” of the components because it is a “main” and “major” component of the claimed testing kits.
The Supreme Court reversed in a majority opinion delivered by Justice Sotomayor, joined by Justices Kennedy, Ginsburg, Breyer, and Kagan. Justice Alito, joined by Justice Thomas, submitted a concurrence joining all but a part of the majority opinion that addressed legislative history (II-C). Chief Justice Roberts recused himself from the case.
The Court first addressed whether the word “substantial” in “a substantial portion” refers to a quantitative or a qualitative measurement. The Court observed that the Patent Act does not define “substantial,” and that the ordinary meaning of “substantial” can be both quantitative and qualitative. However, the Court concluded that, in context, the term “points to a quantitative meaning.” The Court reasoned that the neighboring terms in the statute—“all” and “portion”—are quantitative, and that the modifying phrase “of the components” would be unnatural if “substantial portion” were qualitative.
The Court next addressed “whether, as a matter of law, a single component can ever constitute a ‘substantial portion’ so as to trigger liability under §271(f)(1).” The Court held it cannot, reasoning that the statute’s use of the plural, “components,” indicates that there must be multiple components to constitute the “substantial portion.” The decision contrasts §271(f)(1) with §271(f)(2), which uses the singular, “any component.” Moreover, liability under §271(f)(2) is limited to the supply of non-staple components, whereas §271(f)(1) is not so limited. Thus, the Court reasoned, to read §271(f)(1) to cover a single component would “leave little room for §271(f)(2)” to operate.
Finally, the majority opinion explained that the legislative history of §271(f) “bolsters” its conclusion. Congress enacted §271(f) in response to the Supreme Court’s decision in Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518 (1972), to fill a gap in the enforceability of patent rights for components that are manufactured in the U.S. but assembled overseas. The majority opinion reasoned that its ruling “comports with Congress’ intent.” Justice Alito’s concurrence argues that the legislative history “sheds no light” on the question of “[h]ow much” of the legislative gap Congress intended to fill in enacting §271(f).
In the wake of Life Technologies, we think that the quantitative approach to determining liability under §271(f)(1) will simplify the analysis to an extent; however, questions remain. First, the decision does not address how one determines the number of components that comprise a patented invention. If a limitation of a patent claim has multiple elements, do the elements count as one component or multiple components? Moreover, while Life Technologies instructs that infringement under §271(f)(1) requires more than one component, the Court declined to address how much more is required. Nor, did the Court provide any analytical framework for courts to apply in determining, quantitatively, how many components constitute a “substantial portion” of components. We expect that future decisions will wrestle with these issues.