IP Law Daily, PATENT NEWS: High Court to decide whether supplying single component from U.S. can infringe, (Jun 27, 2016)

By Thomas Long, J.D.

The U.S. Supreme Court has granted a petition by Life sciences companies Life Technologies, Applied Biosystems, LLC, and Invitrogen IP Holdings, Inc. (collectively, "LifeTech") asking whether supplying a single, commodity component of a multi-component invention from the U.S. was an infringing act under 35 USC §271(f)(1). The High Court will review a decision of the U.S. Court of Appeals for the Federal Circuit holding that LifeTech could have infringed a patent for a genetic testing kit, owned by Promega Corp.

LifeTech manufactured a key component of genetic testing kits—a certain polymerase used to synthetize chains of DNA—in the United States. LifeTech then shipped that component to its facility in the United Kingdom for incorporation into its kits, which were sold worldwide, including in the United States. Promega filed suit against LifeTech, accusing it of infringing U.S. Patent No. RE 37,984 ("Tautz"). The validity of the Tautz patent was upheld at trial, and the jury found LifeTech liable for infringement. The district court then granted LifeTech’s motion for a finding of noninfringement as a matter of law, holding that LifeTech did not infringe the Tautz patent because no other party was involved in LifeTech’s assembly of the accused kits, and LifeTech supplied only a single component of the kits from the United States.

The Federal Circuit reversed the noninfringement ruling. Section 271(f)(1) provided that a party that supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. The appellate court concluded that no third party was required to state an infringement claim under Section 271(f)(1) based on its construction of the term "induce" to mean "to bring about, to cause." Also, a party may be liable under Section 271(f)(1) for supplying or causing to be supplied a single component for combination outside the United States, the Federal Circuit said. The appellate court also determined that there was evidence in the record to support the jury’s finding that the polymerase supplied by LifeTech was a "substantial portion" of the patented invention.

In its petition for certiorari, LifeTech presented two questions: (1) whether the Federal Circuit erred in holding that a single entity can "actively induce" itself to infringe a patent under 35 USC §271(f)(1); and (2) whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 USC §271(f)(1), exposing the manufacturer to liability for all worldwide sales. The grant of review was limited to the second question.

In its petition for certiorari, LifeTech argued that the Federal Circuit's interpretation of the statutory language "a substantial portion" was incorrect and contrary to the presumption against the extraterritorial application of U.S. law. The term "substantial" did not refer to its dictionary meaning of "important," in a qualitative sense, but rather to its meaning of "large" or "considerable" in quantity, LifeTech contended. The Federal Circuit's holding, according to LifeTech placed any domestic supplier of a commodity component at risk of infringement liability for its customer's foreign sales.

The petition for certiorari in Life Technologies Corp. v. Promega Corp., Docket No. 14-1538, was granted June 27, 2016.

Attorneys: Carter G. Phillips (Sidley Austin LLP) for Life Technologies Corporation, Applied Biosystems, LLC, and Invitrogen IP Holdings, Inc. Seth P. Waxman (Wilmer Cutler Pickering Hale and Dorr LLP) for Promega Corp.

Companies: Life Technologies Corporation; Applied Biosystems, LLC; Invitrogen IP Holdings, Inc.; Promega Corp.

News: Patent