Summary of Life Technologies Corporation v. Promega Corporation

The United States Supreme Court has come out with a controversial patent decision on February 22, 2017, limiting the scope of protection for U.S. patents. Life Technologies Corporation v. Promega Corporation, dealt with an international intersection supply chain and a patent. The science behind the patent is extremely complicated, but essentially the issue of the case was whether a single enzyme that was supplied to a facility in the U.K., which was a component that made up the DNA test kit, infringed the patent. The majority opinion, which was given by Justice Sonia Sotomayor, stated that shipping a single component that makes up a patent is not enough to constitute infringement.

The main argument by both parties was over the definition of “substantial portion” of a component. The Supreme Court rejected the Federal Court’s decision, which held, “there are circumstances in which a party may be liable under §271(f)(1) for supplying or causing to be supplied a single component for combination outside the United States.” Specifically, “the Federal Court concluded that the dictionary definition of “substantial” is “important” or “essential,” which the court read to suggest that a single important component can be a ” ‘substantial portion of the components’ ” of a patented invention. The court relied in part on expert trial testimony that the “Taq polymerase” is a ” ‘main’ ” and ” ‘major’ ” component of the kits, and thus the court ruled that the single Taq polymerase component was a substantial component as the term is used in §271(f)(1).[1]

The question before the Supreme Court was whether the supply of a single component of a multicomponent invention is infringement.  The court had to decide whether it should take a quantitative approach to the term “substantial” or a qualitative approach since it was only one component. The Court found that “substantial portion” is a quantitative threshold and that the threshold must be a great one.[2] This means that it matters more about the quantity of components rather than their importance to the invention. However, the court did state that the fact finder may determine the importance to any given component, one component can never constitute a substantial portion to trigger liability.

As usual, the Supreme Court left us still with more questions. While we know now that one component is not enough to trigger liability we still don’t know what the minimum amount to trigger a “substantial portion” should be. Yet, this does change the playing field for many companies who utilize international supply chains for their patent components to be aware that if a single component, regardless of its importance, if supplied elsewhere is not enough to trigger infringement of a patent.[3]


[1] Life Technologies Corporation v. Promega Corporation, 136 S. Ct. 290 (2015).

[2] “We hold that the phrase “substantial portion” in 35 U. S. C. §271(f)(1) has a quantitative, not a qualitative, meaning. We hold further that §271(f)(1) does not cover the supply of a single component of a multicomponent invention.” Id.

[3] “We are persuaded, however, that when as in this case a product is made abroad and all components but a single commodity article are supplied from abroad, this activity is outside the scope of the statute.” Id.

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