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March 01, 2021

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U.S. Supreme Court Limits Liability for Patent Infringement Based on Extraterritorial Activity

In a near-unanimous opinion, the U.S. Supreme Court ruled in Life Technologies v. Promega that supplying a single component of a multicomponent invention for manufacture abroad does not give rise to liability under 35 U.S.C. § 271(f)(1).[1] 

Life Technologies provides a potential advantage to exporters of commodity products accused of patent infringement.  Under Section 271(f)(1), an exporter is liable for infringement if it supplies “a substantial portion of the components of a patented invention” and induces their combination outside of the United States.  The Supreme Court interpreted “a substantial portion” as requiring a quantitative, not qualitative, analysis.[2]  And as a matter of law, a single component can never constitute a substantial portion of a multicomponent invention.[3]

The patent at issue in Life Technologies claimed a five-component toolkit for genetic testing.  One of those components was an enzyme known as Taq polymerase.  The accused infringer, Life Technologies, manufactured Taq polymerase in the United States and then shipped it to the United Kingdom.  In the United Kingdom, Life Technologies manufactured the remaining components and combined all of them—including Taq polymerase—to make the patented toolkit.[4]

The U.S. Court of Appeals for the Federal Circuit initially applied a flexible, qualitative analysis in favor of the exclusive licensee, Promega.  The Federal Circuit reasoned that Taq polymerase was an important or essential component of the patented toolkit, constituting “a substantial portion” sufficient to invoke liability.[5]

The Supreme Court reversed.[6]  Section 271(f)(1) refers to “components” (plural), but the following provision, Section 271(f)(2), refers to “any component” (singular).[7]  The Federal Circuit’s interpretation would have undermined Section 271(f)(2), which covers a single component if it is “especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use.”  In other words, under Life Technologies, exporting a single, commodity product cannot give rise to liability under either section of 271(f).

While Life Technologies is clear that a single component can never constitute a substantial portion, it remains unclear what number or percentage of components is actually required.  Two out of five?  Three out of five?  Four out of five?  That question was acknowledged, but not answered, in a concurring opinion:  “I do not read the opinion to suggest that any number greater than one is sufficient.  In other words, today’s opinion establishes that more than one component is necessary, but does not address how much more.”[8]

A further unanswered question is the difference (if any) between “components” of a patented invention and “elements” of a patent claim.  That question was similarly acknowledged, but not answered, as unnecessary to resolution of the parties’ dispute.[9]   

Life Technologies is a first step toward a better understanding of Section 271(f)(1).  Future cases may address the number or percentage of components that constitute “a substantial portion” of a patented invention or whether “components” of a patented invention is coterminous with “elements” of a patent claim.  In the meantime, Life Technologies guides parties with a narrow but helpful bit of math:  One is not a substantial number under Section 271(f)(1).


Notes:
[1] 2017 WL 685531 at *2, ___ S.Ct. ___ (2017).

[2] Id. at *6.

[3] Id.

[4] Id. at *3.

[5] Id. at *4.

[6] Id. at *9.

[7] Id. at *7.

[8] Id. at *10 (emphasis in original).

[9] Id. at *3 n.2 (“Because the parties here agree that the patented invention is made up of only these five components, we do not consider how to identify the ‘components’ of a patent or whether and how that inquiry relates to the elements of a patent claim.”).

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Copyright 2020 K & L GatesNational Law Review, Volume VII, Number 69
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About this Author

Andrea Reed, KL Gates Law Firm, Intellectual Property and Complex Litigation Attorney
Associate

Andrea Reed has eight years of experience representing technology companies in intellectual property and other complex commercial litigation. She also provides transactional counseling, including on license and settlement agreements, and advises on various due diligence and competition matters.

Ms. Reed focuses her practice on highly-publicized, competitor-versus-competitor disputes in federal courts throughout the United States. Her recent successes include winning summary judgment of patent inventorship, and, separately, working on a lean,...

617-261-3229
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