In Life Technologies Corp. et al. v. Promega Corp. et al., No. 14-1538, 580 U.S. ____ (2017), decided on February 22, 2017, the U.S. Supreme Court held that exporting a single component of a patented multicomponent invention from the United States for combination with other components abroad does not result in patent infringement under 35 U.S.C. § 271(f)(1).
That statute provides that the supply of "all or a substantial portion of the components of a patented invention" in or from the United States, "in such manner as to actively induce" the combination of the components abroad, constitutes patent infringement.
In this case, an exclusive patent licensee, Promega Corporation, sublicensed a patent claiming a toolkit for genetic testing to Life Technologies for law enforcement uses worldwide. Life Technologies manufactured only one of the kit’s five components, a commodity enzyme called Taq polymerase, in the United States, which it then shipped and combined with four other components in the United Kingdom. After Life Technologies sold the kits for unlicensed uses, Promega sued Life Technologies for patent infringement under § 271(f)(1), arguing that the Taq polymerase is the "major" component of the claimed invention and, thus, "a substantial portion" of the kit under § 271(f)(1). The District Court found that the “substantial portion” requirement of § 271(f)(1) did not "embrace the supply of a single component." The Federal Circuit Court of Appeals reversed the District Court's judgment, ruling that a single important component, such as the Taq polymerase, can be “a substantial portion of the components” of a patented invention.
The arguments in this case were rooted on the meaning of the word "substantial" in § 271(f)(1). The Supreme Court specifically refused to adopt a "case-specific approach" that would require the determination of whether a component is a "substantial portion" under either a qualitative approach or quantitative approach. Instead, the Supreme Court interpreted "substantial" as having a quantitative meaning only. The Court held that supplying only one component of a multicomponent invention from the United States for combination abroad is not "a substantial portion of the components," and hence does not constitute infringement under § 271(f)(1).
This holding provides some guidance to industries with global supply chains. The case makes clear that supplying a single component, particularly a commodity component, of a multicomponent invention for combination abroad will not likely constitute patent infringement, even if that single component is qualitatively important to the claimed invention. It remains unclear how a quantitative meaning of the phrase "a substantial portion" should be defined, and the Court specifically deferred the question of how much more or how close to "all" of the components "a substantial portion" must be in the context of a multicomponent invention. The Court also did not reach the question of § 271(f)(1)'s "active inducement" requirement. These issues will likely come up in the future.
It is also important to note that the decision did not address subsection 2 of § 271(f), which provides that supplying "any [non-commodity] component of a patented invention that is especially made or especially adapted for use in the invention" in or from the United States may give rise to infringement liability.